T 0474/08 (Branched primary alcohol composition/SHELL) 02-07-2009

1. The appeal is admissible.

Main and auxiliary requests 1 and 2

2. Amendments (Article 100(c) EPC)

2.1 The patent in suit has been opposed inter alia on the ground that the subject-matter of the patent extended beyond the content of the application as filed (Article 100(c) EPC). In particular, the feature in granted claim 1 "a branched primary alcohol composition having from 11 to 36 carbon atoms" was objected to for having no basis in the application as filed.

Claim 1 of the sole request pending in the decision under appeal did not comprise this feature, so that the Opposition Division took no decision on whether or not this feature was supported by the application as filed. Nevertheless, the Opposition Division decided that the subject-matter of the claim which was amended during the opposition proceedings by the deletion of this feature extended the protection conferred by the European patent, contrary to the requirement of Article 123(3) EPC.

This feature has been now reintroduced into claim 1 of the main and auxiliary requests 1 and 2 pending in these appeal proceedings. Thus, in claim 1 of those requests the branched primary alcohol composition is defined inter alia by having from 11 to 36 carbon atoms. Hence, it must be examined by the Board as to whether or not the ground for opposition under Article 100(c) EPC was justified by the presence of such a feature in the claims.

2.2 In order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed it has to be examined whether that claim comprises technical information which a skilled person would not have directly and unambiguously derived from the application as filed.

2.3 The Appellant referred exclusively to page 39, line 14 to 17 of the application as filed to support this feature. This passage comprises the disclosure of a C8 to C36, particularly a C11 to C19 branched primary alcohol composition as a starting material for the preparation of anionic surfactants.

Irrespective of whether or not this passage provides a support for a branched primary alcohol composition per se having from 11 to 36 carbon atoms, the indicated carbon number range is not disclosed in combination with the other features characterising the claimed composition, e.g. that at least 75 wt% of the molecules in the primary alcohol composition have chain lengths ranging from 14 to 21 carbon atoms or that the composition has from 5 to 25% branching on the C2 carbon position relative to the hydroxyl carbon atom. Thus, the feature that "at least 75 wt% of the molecules in the primary alcohol composition have chain lengths ranging from 14 to 21 carbon atoms" is disclosed on page 10, lines 27 to 30 of the application as filed only in combination with a particular average chain length per molecule, namely 11 to 21, and therefore not for any branched primary alcohol composition having from 11 to 36 carbon atoms.

The Appellant argued that all features of claim 1 defining the composition, though disclosed in isolation in the application as filed, were intended to be read in combination.

However the finding of whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed is not a matter of what was intended in an application, but rather the matter which technical information a skilled person would directly and unambiguously derive from the content of the application as filed. In the present case, those features in claim 1 are not originally disclosed in combination, so that the specific combination of the features now required provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed.

Thus, the application as filed does not provide a proper basis for defining the composition as now defined in claim 1, claim 1 being an undue combination of features generating fresh subject-matter.

2.4 Therefore the Board concludes that claim 1 extends the subject-matter claimed beyond the content of the application as filed justifying the ground for opposition pursuant to Article 100(c) EPC, so that the main and the auxiliary requests 1 and 2 must be rejected.

Auxiliary requests 3 to 5

3. Clarity (Article 84 EPC)

Although Article 84 EPC may not be raised as ground for opposition in the sense of Article 100 EPC, Article 101(3)(b) EPC stipulates that, if taking into consideration the amendments made by the Proprietor of the European patent during opposition (appeal) proceedings, the patent and the invention to which it relates do not meet the requirements of the European Patent Convention, the patent shall be revoked. Thus, according to established jurisprudence of the Boards of Appeal, the Board has the power to examine an objection based on Article 84 EPC, as long as the objection arises out of the amendments made to the granted patent (see decisions T 301/87, OJ EPO 1990, 335, point 3.8 of the reasons; G 9/91, OJ EPO 1993, 408, point 19 of the reasons). Therefore it must be examined whether or not the amendments introduced into the granted claims are in keeping with the requirements of Article 84 EPC, in particular with that of clarity.

3.1 Claim 1 has been amended to read "A branched primary alcohol composition in the C12 to C20 range…".

From this wording it is firstly not clear whether or not the fresh carbon number range, which following the construction of the claim's wording qualifies the composition, applies to any component comprised in the composition or only to the branched primary alcohols present in the composition.

According to the Appellant, the skilled person would immediately understand that the indicated range only applies to the branched primary alcohols present in the composition. However, even if one were to follow the Appellant's reading, it would still not be clear whether the definition of the composition should be interpreted in a restrictive way, i.e. requires any branched primary alcohols comprised in the composition to fall within the indicated range, thereby excluding the presence of branched primary alcohols outside this range, or whether it is to be interpreted in a open way, i.e. the composition comprising branched primary alcohols in the indicated range, but may also comprise branched primary alcohols outside this range. Consequently, the amendment made in the claim is ambiguous and lacks clarity.

3.2 The Appellant argued that the wording was indented to mean a composition comprising only branched primary alcohols in the specified carbon number range, i.e. with the exclusion of the presence of any primary alcohols outside this range.

However, giving a particular plausible interpretation of the claim cannot overcome the deficiency in the present case, since the definition of the composition in claim 1 remains open to another interpretation being likewise plausible, i.e. that the composition may comprise further components including branched primary alcohol outside the indicated range.

Moreover, the Board notes that paragraph [0037] of the patent specification indicating that the olefin feed, which is the starting material for producing the branched primary alcohol, generally does not consist of 100% olefins within the specified carbon number range, as such purity is not commercially available, thus necessarily producing branched primary alcohols not all of them falling within the specified range. Therefore the Appellant's interpretation appears rather inconsistent with the description of the patent in suit.

3.3 In these circumstances, the Board arrives at the conclusion that the amendment carried out in claim 1 of auxiliary requests 3 to 5 leads to a lack of clarity of the claim. Hence, auxiliary requests 3 to 5 should be rejected (Article 84 EPC).