T 0222/08 (Pigment concentrates/BASF) 16-02-2011

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of late-filed requests

2.1 The admissibility of the main request and auxiliary request 2 filed with the letter of 14 January 2011 was not contested by the respondents. The board sees no reason to differ. Indeed, the amendments undertaken with respect to requests previously on file were of a clear and simple nature (deletion of claims, deletion of optional features). Moreover, said requests were filed as a direct response to the communication sent as an annex to the invitation to oral proceedings (cf. point VII above).

2.2 Auxiliary request 1 filed with the letter of 14 January 2011 was, however, not admitted into the proceedings for the following reasons:

Article 12(2) RPBA (Rules of Procedure of the Boards of Appeal; see Supplement to OJ EPO 1/2011, 38 to 49) requires that the appellant's statement of grounds of appeal contain its complete case. Any amendments to that case can be admitted and considered at the board's discretion. In exercising this discretion, the board must consider a range of factors such as the

complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA). Other criteria to be taken into account, according to established case law of the boards of appeal, include whether or not the newly filed amendments are clearly allowable, and whether or not there is proper justification for their late filing.

In the present case, the independent process claim as granted comprised a single step of "dispersing dry organic pigment granules in an ink varnish" (cf. point I above). In each of the eight requests considered in the decision under appeal (cf. point III above), this claim was restricted to a process comprising at least two steps, namely, one of "wet granulation using an extruder granulator followed by drying of the granular extrudate" (step (a)), and a dispersion step (b) using specific equipment, namely, "a kneader of the Z-blade type or an extruder" or "an extruder" (see decision under appeal, annexes 1 to 8). Similarly, the respective independent process claims 1 of the forty-two requests filed with the statement of grounds of appeal each comprised steps (a) and (b) (cf. point IV above). Analogous claims were maintained in the thirty-six requests filed with the letter of 29 October 2008 (cf. point VI above). Thus, up to this point in proceedings, the appellant had conveyed a consistent case of seeking to defend process claims based on a specific granulation step in combination with a specific dispersion step.

About one month prior to the date scheduled for oral proceedings before the board, the appellant filed auxiliary request 1, in which the granulation step (a) had been deleted from claim 1 (cf. point X above). This deletion represents a total departure from the numerous requests previously filed, and results in a substantial redefinition of the characterising features of the invention as lying in the details of the dispersion step alone.

The only reason provided by the appellant for the late filing of auxiliary request 1 was the recent change in representative. However, this is not considered to be a valid ground for justify the late change to the appellant's case, since it must be assumed

that all actions taken in the opposition proceedings and opposition appeal proceedings prior to the change in representative had been undertaken with agreement of the appellant and reflected the way in which the appellant wished to conduct its case.

In the absence of convincing justification, it would not be in keeping with the principle of procedural fairness to admit this unexpected and material amendment to the appellant's case at such a late stage in the procedure.

Furthermore, it was a matter of dispute between the appellant and respondents as to whether the amendments introduced into claim 1 of auxiliary request 1 were clearly allowable under Article 123(2) EPC. In this context, the appellant referred to the claims of the patent in suit as providing the basis for amended claim 1. It is noted that it is the claims as originally filed that are of relevance in this context. Examination thereof reveals that the individual features that have now been incorporated into claim 1 of auxiliary request 1 are to be found in a number of separate claims, namely, independent claim 1 and dependent claims 3, 4, 7 and 9, which are each dependent on all preceding claims. In addition, the features concerned are partly presented as members of lists (cf. claim 7, "carrier vehicle"; claim 9, "dispersing equipment"). Therefore, it cannot be said to be immediately apparent that the combination of features now claimed is directly and unambiguously disclosed as a preferred embodiment in the application as originally filed. Hence, the amendments introduced do not fulfil the criterion of clear allowability with respect to Article 123(2) EPC.

In view of the considerations outlined above, the board comes to the conclusion that the admittance of auxiliary request 1 at this late stage in the proceedings would have been contrary to procedural fairness and would not have been conducive to procedural economy. The board therefore exercises its discretion not to consider this request.

3. Added matter (Article 123(2) EPC)

3.1 Main request

Claim 1 of the main request relates to a process for the manufacture of a dispersed pigment concentrate comprising steps (a), (b) and (c). In step (b), a pulp of 40-80% pigment concentration is produced by "dispersing the dry organic pigment granules from step (a) in a printing ink varnish using a kneader of the Z-blade type or an extruder". In step (c), the fully dispersed pulp from step (b) is diluted.

The appellant identified the last paragraph on page 6 of the application as originally filed as providing the basis for said step (b). Indeed, this is the only passage of the application as originally filed referring to the production of "a pulp of 40-80% pigment concentration". This paragraph reads as follows (emphasis added by the board):

"The dispersed pigment concentrates so produced by this process have a pigment concentration ranging from 20-75% but preferably from 30-60%. The process of manufacture for example using conventional kneaders e.g. of the Z-blade type is most conveniently but not exclusively carried out by adding the appropriate amount of carrier, for example a printing ink varnish, mixing said varnish in the mixer rather than metering in the appropriate quantity of granules over a period of 1-20 mins but more normally 2-5 minutes to produce a pulp of 40-80% pigment concentration but more ideally 50-65%. The granules rapidly wet out and are dispersed after 5-45 minutes but more often over 5-30 minutes. The resulting fully dispersed viscous pulp is then diluted by careful addition of carrier vehicle e.g. ink varnish and if required any other desired additives to the required pigmentation level of the final concentrate. The concentrate is then discharged for use in the appropriate application at the required pigmentation level."

In the above excerpt, the emphasis in bold type has been added by the board in order to highlight features of the dispersion step that have been omitted from step (b) according to claim 1 of the main request. It is clear from the underlined expressions "to produce" and "the resulting" that the preceding features in bold relating to the mode and duration of mixing, and the duration of dispersion are to be viewed as being essential limiting features in the production of the "fully dispersed viscous pulp".

The argument of the appellant that the skilled person would understand said features to be optional is relevant to the question of what might be rendered obvious by the content of the application as originally filed taking into account the general knowledge of the skilled person. This must be clearly distinguished from the question of what has been directly and unambiguously disclosed in the application as filed.

Thus, several features that were presented as being essential in the application as originally filed have now been omitted from step (b) of claim 1. This constitutes an unallowable generalisation of a preferred embodiment, which is not unambiguously disclosed in the application as filed.

Hence, at least on the basis of this objection, claim 1 of the main request contravenes the requirements of Article 123(2) EPC. It is therefore not necessary to decide on the further objections raised by the respondents under Article 123(2) EPC with respect to this claim.

3.2 Auxiliary request 2

The appellant did not advance any additional arguments in favour of auxiliary request 2 with respect to the issue of added subject-matter.

Since claim 1 of this request also omits the features highlighted above in bold type, the conclusions under point 3.1 apply equally thereto.

Therefore, claim 1 of auxiliary request 2 does not meet the requirements of Article 123(2) EPC.