T 0081/14 12-03-2015

1. The appeal is admissible.

2. Main request and auxiliary requests 1 and 2 - Article 100(c) EPC

2.1 Claim 1 of the main request is directed to a sintered cemented carbide body comprising tungsten carbide, a binder phase and a solid solution phase which is the sole solid solution phase in the body and comprises at least one of the carbides and carbonitrides of a combination of zirconium, niobium, and tungsten. The body has a mass ratio Nb/(Zr+Nb) of at least 0.5.

2.2 By contrast, claim 1 as originally filed relates to a body with one or more solid solution phases and does not recite the amount of Nb/(Zr+Nb). Paragraphs [0026] and [0030] and claim 16 of the application as filed disclose as a preferred feature of the invention a mass ratio of Nb/(Zr+Nb) of greater than 0.5.

2.3 The appellant indicated, as basis for extending the range of the mass ratio Nb/(Zr+Nb) to include 0.5, the examples (samples A, C to F, H to J, L and N) of the application which involve the use of a (Zr,Nb)C 50/50 powder.

2.4 According to the respondents there was no clear disclosure that in the examples this ratio is a mass ratio. However, claims 16 and 17 as originally filed explicitly refer to a mass ratio Nb/(Zr+Nb). Moreover, the contents of the different constituents given in the examples are all expressed in weight%. Therefore, the Board is satisfied that a person skilled in the art would understand that the Nb/(Zr+Nb) ratio referred to throughout the application and in particular in the examples is a mass ratio.

2.5 Nevertheless, it remains to be established whether the skilled person could recognise without any doubt from the application as filed that this feature is not closely related to the other characteristics of the examples and applies directly and unambiguously to the more general context of claim 1.

2.5.1 While it is true that in the examples different process conditions and compositions are applied, only one example with a Nb/(Zr+Nb) ratio of 0.5 (sample C) is disclosed to result in a sole solid solution phase. For the other examples the application either discloses a structure with two solid solution phases (samples D and F) or provides no information as to the presence and number of the solid solution phases (samples A, H to J and L).

2.5.2 Contrary to the appellant's view this point is relevant for determining the allowability of the amendments, because it affects the information provided to the person skilled in the art in respect of which conditions were necessary to obtain a single solid phase as required by claim 1. This information does not directly and unambiguously disclose that the Nb/(Zr+Nb) ratio of 0.5 is not linked to the other features of the examples, in particular the composition, when a body with a sole solid solution phase is to be obtained. On the contrary, the fact that some examples result in a two-phase structure makes clear that a close relationship between this ratio and the further features relating to the composition of the body exists.

2.6 Since these further features were not included in claim 1 of the main request, this claim contains subject-matter which extends beyond the content of the application as originally filed.

2.7 The same objection applies to the auxiliary requests 1 and 2. Accordingly, none of the main request and the auxiliary requests 1 and 2 is allowable.

3. Auxiliary request 3 - Article 84 EPC

3.1 The feature that the use of claim 8 concerns a product "obtained according to the method of any one of claims 1 to 7" was not present in the claims as granted but is the result of a post-grant amendment. Hence, the objection under Article 84 EPC raised against this feature has to be considered.

3.2 Article 84 EPC provides that the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description. The requirement laid down in this article that the claims have to be clear reflects the demand for legal certainty, which is of paramount importance in any system where the rights of the public are affected by the grant of a monopoly.

3.3 Present claim 8 is directed to the use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool. Hence, the claim comprises process and product features and is notionally equivalent to a claim directed to a process for the production of a cutting tool using the sintered cemented carbide body (see G2/88, point 5.1 of the Reasons, OJ 1990, 93). Accordingly, as acknowledged by the appellant itself, the steps of the method for the production of the sintered cemented carbide body do not form part of the claimed activity. Indeed, had the appellant intended to include these steps in the claimed method it could have drafted the claim in different terms, for instance by directing it to a process for the production of a cutting tool using a sintered cemented carbide body and comprising the production of said sintered cemented carbide body according to the method of any one of claims 1 to 7.

Therefore, the reference in claim 8 to the steps of the method for the production of the sintered cemented carbide body does not define process features but solely the features of the product (the sintered body) used in the claimed method. As a consequence, the issue at stake when considering this reference in the context of Article 84 EPC is the assessment of the clarity of product features.

3.4 To ensure legal certainty the definition of a product is normally done by means of the structural features of the product, i.e. by features which can be verified on the product. A definition in terms of the process of manufacture, in the following a "product-by-process definition", in lieu of a definition in terms of structural features is reserved for cases wherein the latter definition is not possible. This principle is well established in the case law for a claim which is directed to a product, in the following a "product-by-process claim" (see for instance T150/82, point 10 of the Reasons, OJ 1984, 309).

It is true that present claim 8 is not directed to a product but to a process. However, there is no reason to make the principles underlying the assessment of the clarity of product features dependent on the fact that said product features appear in a claim directed to a product or in a claim directed to a method.

3.5 The appellant disagreed with this position and submitted that in case of infringement the features pertaining to the method of production of the sintered carbide would be fully taken into account by the court, so that the use of a sintered body which is merely obtainable by the method of any one of claims 1 to 7 but not actually obtained by this method would not infringe claim 8.

However, the Boards of Appeal are concerned only with validity and not with infringement, which is a matter reserved for the courts of the different contracting states, which may interpret the same claim in different ways. Accordingly, the Board is not in the position of considering the (possibly different) interpretations given to a "product-by process definition" in national infringement proceedings. This applies all the more in a case like the present one, wherein no specific decision of a national court has been submitted for consideration to the Board.

Moreover, although it is in general desirable that the interpretation of the meaning of the claims given by a court in infringement proceedings and that given by a board of appeal or a court when considering the validity of a claim are consistent with each other, situations exist wherein this is not achieved. Indeed an example of such a situation concerns "product-by-process claims". In the decision of the UK High Court of Justice, Chancery Division, Patents Court of 21 November 2014, in Hospira v. Genentech ([2014] EWHC 3857, points 143 to 147) Mr Justice Birss considered that, as far as infringement is concerned, a product "obtained by" a process means a product which has actually been obtained by that process. However, he did not adopt the same interpretation for the issue of validity but took instead the view that a new process which produces a product identical to an old product cannot confer novelty on that product, an interpretation corresponding to the established case law of the Boards of Appeal for a "product-by-process claim" (Case Law of the Boards of Appeal of the European Patent Office, 7h edition 2013, II.A.7.). Hence, the issue raised by the appellant is not specific to the use of "product-by-process definitions" in use claims but concerns also "product-by-process claims". Therefore, it cannot support the appellant's view that the requirements to allow a "product-by-process definition" are to be considered only for claims directed to a product and not for claims directed to a use.

Finally, the issue to be considered in the present case is not the interpretation of the claim for assessing novelty and inventive step, but rather whether the definition of the product chosen by the appellant is clear or not.

In view of these considerations, the allegedly different way in which claim 8 would be interpreted in infringement proceedings fails to dissuade the Board from applying the principles developed for "product-by-process" claims when considering the definition of the sintered body used in claim 8.

3.6 The same applies in respect to the reference to Swiss type claims made by the appellant. The so-called Swiss-type claims are claims directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application. According to decision G5/83 (OJ 1985, 64) they were to be allowed even in a case in which the process of manufacture as such does not differ from known processes using the same active ingredient, provided that the therapeutic application is new and inventive. The application of this special approach, which derived the novelty from the intended therapeutic use of the medicament, was restricted to claims to the use of substances or compositions intended for use in a method referred to in Article 52(4) EPC 1973 (corresponding to present Article 53(c) EPC), a so-called "medical use" (G5/83, last paragraph of point 21 of the Reasons). Accordingly, this approach finds no place in the consideration of a "product-by-process definition", i.e. a definition which does not involve the intended use of a product, let alone an intended "medical use", but rather concerns its process of production.

3.7 Therefore, the Board is satisfied that when considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the "product-by-process claims" are in general to be applied, also in the case of a claim directed to the use of that product.

3.8 Applying said principles to present claim 8 the Board sees to reason why it would not have been possible to define the sintered body in terms of structural features, namely composition, microstructure and mechanical properties, i.e. the features which characterise the product in the examples of the patent in suit.

The appellant failed to convince the Board to the contrary, because it did not indicate concretely in which respect it would not be possible to define in terms of structural features a carbide body obtained by the method of claims 1 to 7.

3.9 Accordingly, the use of a product-by-process definition in claim 8 of auxiliary request 3 results in a lack clarity.

4. Auxiliary request 4 - Sufficiency of disclosure

It is undisputed that the patent in suit discloses how to carry out an embodiment (sample O) falling within the scope of claim 1.

The respondents submitted that this information was not sufficient to carry out the claimed invention over the whole breadth of compositions covered by claim 1. To support their view they referred to sample S124-2 of D24. It is true that this sample exhibits two solid solution phases, contrary to what is requested by claim 1. However, sample S124-2 relates to a composition with a ratio Nb/(Zr+Nb) of 0.6, which is the same of sample O of the patent, in other words a composition for which the patent provides enough information to carry out the invention.

Therefore, the respondents failed to provide evidence in support of their view that a person skilled in the art reading the patent and using his common general knowledge would be unable to carry out the invention over the whole breadth of compositions covered by claim 1. In the absence of this evidence it is concluded that the requirements of Article 83 EPC are complied with.

5. Description

The Board accepts that in the present case an adapted description does not need to be submitted until a version of the claims has been found to be allowable. However, in the interest of an efficient procedure, since paragraphs [0024], [0031] and [0032] of the patent as granted (the main request presently on file) have been objected under Article 100(c) EPC, the Board considers it appropriate to deal also with this point.

According to paragraph [0026] as originally filed if the cemented carbide body has a mass ratio Nb/(Zr + Nb) of greater than about 0.5 the formation of a single homogeneous solid solution phase or the formation of two or more coexisting solid solution phases within the sintered cemented carbide body is remarkably increased.

This passage has been amended: according to paragraph [0024] as granted if the cemented carbide body has a mass ratio Nb/(Zr + Nb) of at least 0.5 the formation of a single homogeneous solid solution phase within the sintered cemented carbide body is remarkably increased.

Therefore, the range of the mass ratio of Nb/(Zr + Nb) has been extended to comprise 0.5. Moreover, the effect of this range is now taught to be the obtention of one single solid solution phase, whereas in the application as granted said effect was merely the obtention of single solution phases in whatever number. Hence, this amendment is not merely a deletion of an embodiment but provides the reader of the patent with a teaching which was not comprised in the application as originally filed.

Therefore, the amendments extend beyond the content of the application as filed.

A similar consideration applies in respect of paragraphs [0031] and [0032] of the patent as granted (see paragraphs [0033] and [0034] as originally filed).

6. Remittal

In its decision the Opposition Division did not decide upon the objections based on Article 100(a) EPC. Hence, the Board considers it appropriate to remit the case to the Opposition Division for further prosecution in order to give the parties the possibility to have these issues considered by the Opposition Division.