T 1152/05 08-04-2008

Summary of Facts and Submissions

I. The grant of the European patent No. 0 690 889 in the name of Solvay Engineered Polymers (later LyondellBasell Advanced Polyolefins USA Inc.) in respect of European patent application No. 94 912 848.2 filed on 23 March 1994 and claiming priority of the US patent application No. 36607 filed on 24 March 1993 was announced on 31 July 2002 (Bulletin 2002/31) on the basis of 18 claims.

Independent Claims 1, 10, and 17 read as follows:

"1. An improved light stabilized polymeric composition that does not interfere with acid curative coating systems comprising:

(a) thermoplastic polyolefin;

(b) monomeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 1% by weight;

(c) a polymeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.8% by weight; and

(d) an ultraviolet light absorbing agent present in an amount of 0.1% to 1% by weight,

wherein the monomeric hindered amine light stabilizer, the polymeric hindered amine light stabilizer and the

ultraviolet light absorbing agent, in combination, provide light stability to the composition and hence resistance to degradation from UV light to the composition.

10. An article comprising a molded light stabilized polymeric composition according to claim 1 and having an exterior surface, and an acid curative coating system upon at least a portion of the exterior surface of the molded composition.

17. A method of making a partially painted thermoplastic polyolefin article that does not interfere with an acid curative coating system, said method comprising the steps of:

incorporating into a thermoplastic polyolefin, a light stabilizer package comprising a monomeric hindered amine light stabilizer having a basicity or pKa of no greater than 7, a polymeric hindered amine light stabilizer having a basicity or pKa of no greater than 7, and an ultraviolet light absorbing agent, wherein each of the monomeric hindered amine light stabilizer, the ultraviolet light absorbing agent and the polymeric hindered amine light stabilizer are present in an amount of at least about 0.1% to provide light stability to the composition and hence

resistance to degradation from UV light; and

painting at least a portion of said stabilized thermoplastic polyolefin with an acid catalyst activated single component paint system to form a stable, partially painted thermoplastic polyolefin article."

Claims 2 to 9, 11 to 16, and 18 were dependent claims.

II. On 28 April 2003, a Notice of Opposition against the patent was filed by Ciba Speciality Chemicals Holding Inc. The Opponent requested revocation of the patent in its entirety on the grounds of lack of novelty and lack of inventive step (Article 100(a) EPC), of insufficiency of disclosure (Art.100(b) EPC), and of extension of subject-matter (Art.100(c) EPC).

III. In an interlocutory decision announced orally on 20 April 2005 and issued in writing on 12 July 2005, the Opposition Division held that the grounds of opposition did not prejudice the maintenance of the patent in amended form on the basis of Claims 1 to 17 submitted as fourth auxiliary request at the oral proceedings of 20 April 2005.

Independent Claims 1, 9 and 16 thereof read as follows:

"1. An improved light stabilized polymeric composition that does not interfere with acid curative coating systems comprising:

(a) thermoplastic polyolefin;

(b) monomeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.2% by weight;

(c) a polymeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.8% by weight; and

(d) an ultraviolet light absorbing agent present in an amount of 0.1% to 1% by weight,

wherein the monomeric hindered amine light stabilizer, the polymeric hindered amine light stabilizer and the

ultraviolet light absorbing agent, in combination, provide light stability to the composition and hence resistance to degradation from UV light to the composition.

9. An article comprising a molded light stabilized polymeric composition according to claim 1 and having an exterior surface, and an acid curative coating system upon at least a portion of the exterior surface of the molded composition.

16. A method of making a partially painted thermoplastic polyolefin article that does not interfere with an acid curative coating system, said method comprising the steps of:

incorporating into a thermoplastic polyolefin, a light stabilizer package comprising a monomeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 in an amount of 0.1% to 0.2% by weight, a polymeric hindered amine light stabilizer having a basicity or pKa of no greater than 7, and an ultraviolet light absorbing agent, wherein each of the ultraviolet light absorbing agent and the polymeric hindered amine light stabilizer are present in an amount of at least about 0.1% to provide light stability to the composition and hence

resistance to degradation from UV light; and

painting at least a portion of said stabilized thermoplastic polyolefin with an acid catalyst activated single component paint system to form a stable, partially painted thermoplastic polyolefin article."

Dependent Claims 2 to 7, 8, 10 to 15, and 17 were based on granted Claims 2 to 7, 9, 11 to 16, and 18.

IV. Notice of Appeal was filed on 9 September 2005 by the Opponent with simultaneous payment of the prescribed fee.

V. Notice of Appeal was filed in the Dutch language by the Patent Proprietor (at that time Solvay Engineered Polymers) on 12 September 2005. A French translation of the Notice of Appeal was provided on the same day.

In the Notice of appeal it was requested that the appeal fee be deducted from the deposit account No. 28020006.

On 15 November 2005, the Patent Proprietor filed its Statement of Grounds, in which maintenance of the patent in suit on the basis of the first auxiliary request submitted during the oral proceedings before the Opposition Division was requested.

VI. In its Statement of Grounds of Appeal filed on 18 November 2005, the Opponent submitted in particular that Claims 1 and 16 of the set of claims on the basis of which the Opposition Division had decided that the patent could be maintained did not meet the requirements of Article 123(2) EPC. In that respect, it argued essentially as follows:

(i) The amendments carried out in the course of the Examining procedure in the proviso at the end of Claim 1 were not allowable under Article 123(2) EPC.

(ii) The proviso in granted Claim 1 no longer made reference to the ability of the substrate to be coated by a acid catalyst activated single component paint system.

(iii) The incorporation of only a lower limit of 0.1% for the three light stabilizing components in Claim 16 (granted Claim 17) was not supported by the application documents which referred to closed ranges (cf. page 10, lines 18 to 26).

(iv) The incorporation of the range 0.1 to 0.2% for the monomeric hindered amine in Claims 1 and 16 was not supported by the application as filed.

(v) Although a value of 0.2% was indicated in Tables III and XII for the monomeric hindered amine, this was done in specific compositions comprising specific amounts of the other components.

(vi) The incorporation of the range 0.1 to 0.2 % for component (b) in Claim 1 would have necessitate the following steps:

(alpha)) Arbitrary selection of one of the 3 components (b) to (d) and restriction of the concentration range of (b), independently of the remaining components;.

(beta) Arbitrary selection of an example of a concrete stabilizer combination;

(gamma) Isolated consideration of only the component (b) in the arbitrary selected example;

(delta) Arbitrary selection of the range 0.1 to 1% on page 10 of the original description;

(epsilon) Selection of the upper limit of that range as the end-point which could be replaced (i.e. the lower limit might also have been replaced); and

(zeta) Arbitrary replacement of the limit value 1% by the value 0.2% inferred from the arbitrarily selected example.

(vii) It was hence evident that a new range had been created, which had not been considered by the inventors.

(ix) Reference was also made to the decision T 288/92 of 18 November 1993 (not published in OJ EPO).

VII. In a communication issued on 28 March 2006, the Board expressed its preliminary view that the appeal of the Patent Proprietor should apparently be deemed not to have been filed.

VIII. With its letter dated 30 May 2006, the Patent Proprietor submitted two new auxiliary requests.

It also presented inter alia arguments concerning Article 123(2) EPC, which may be summarized as follows:

(i) The composition according to Claim 1 was entirely characterized by the presence of components (a)-(d). The deleted expression "to provide a stable substrate... component system" represented no technical limitation and could be deleted without adding new subject-matter.

(ii) The reference to the coating system could be deleted because the coating system was already mentioned in the first lines of Claim 1.

(iii) The ranges of monomeric HALS (hindered amine light stabilizer), polymeric HALS and UV light absorbing agents of respectively 0.1-1%, 0.1-0.8% and 0.1-1% were fully supported by the description on page 3, paragraph [0008] of the patent in suit.

(iv) The range for the monomeric HALS of 0.1 to 0.2 % (claim 1, first auxiliary request) was also supported by the description (cf. package 5 of Table III with no limitation to a specific monomeric HALS, and in combination with no specific polymeric HALS and UV-stabilizers; Table XII (B-low) for Tinuvin® 440 which was a monomeric HALS.

(v) The contents of polymeric HALS and UV stabilizers were different in both Tables.

(vi) Thus, there was no reason to suppose that the value of 0.2 % given in Table III could only be used in connection with the contents of polymeric HALS and UV absorbers mentioned in that Table.

(vii) Original claim 17 contained no numerical range for the concentrations, and consequently the original disclosure was not limited to an upper numerical limit.

(viii) The ranges for each component were given on page 10, lines 18-26 of the patent as filed, in each case with 0.1 % as the lower limit.

(ix) It was then allowable in Claim 16 to replace the "unlimited amount" of each component by an open- ended range with the originally mentioned value as the lower limit.

IX. In its letter dated 18 July 2006, the Opponent maintained its view that Claims 1 and 16 of the set of claims on which the Opposition Division had decided to maintain the patent in suit infringed Article 123(2) EPC.

Concerning the new auxiliary requests, it was submitted that they contravened Article 123(2) EPC.

X. In its letter dated 3 August 2006, the Patent Proprietor submitted that its appeal should be deemed to have been filed. It requested under Rule 88 EPC that the term "Traduction" be deleted from the Notice of Appeal filed in French on 12 September 2005, and that the remaining amount of 20% of the appeal fee be deducted from its account No. 28020006.

While admitting that it had erroneously tried to benefit from the 20% tax reduction which might be granted according to Article 14(4) EPC, it essentially argued that the EPO should have drawn the attention of the Patent Proprietor to this evident mistake, and should have invited the Patent Proprietor to remedy this deficiency before the expiry of delay for filing the notice of appeal. It relied in particular on the decisions J 27/92 (OJ EPO 1995, 288) and J 13/90 (OJ EPO 1994, 456).

XI. Oral proceedings were held on 8 April 2008 before the Board.

At the oral proceedings, the discussion firstly focussed on the question as to whether or not the appeal of the Patent Proprietor should be deemed to have been filed.

(i) In that respect, the Patent Proprietor while essentially relying on the arguments presented during the written phase of the appeal, made additional submissions which may be summarized as follows:

(i.1) The document presented as translation in French of the Notice of Appeal had been submitted within the time limit mentioned in Article 108 EPC.

(i.2) Thus, it should be considered that a Notice of Appeal in one of the official language of the EPO (i.e. French) had been filed in time.

(i.3) In the Notice of Appeal filed on 12 September 2005, it had requested to deduct the appeal fee from the account but no amount was mentioned.

(i.4) The EPO was wrong in deciding to deduct only 80% of the appeal fee.

(i.5) In any case the 20% of the appeal fee which were lacking should be regarded as a small amount. Reference was made to the decision J 27/92 in that respect.

(i.6) Reference was made to Article 9(1) of the Rules Relating to Fees and in that context to the discretion of the EPO to overlook small amounts having regard to all the circumstances of the case, i.e. in the case under consideration here the consequences for the Patent Proprietor to have its appeal not deemed to have been filed.

(ii) The arguments presented by the Opponent in that respect may be summarized as follows:

(ii.1) The Notice of Appeal had been filed in Dutch. Since the Patent Proprietor did not have its principal place of business within the territory of a Contracting State, its appeal should not be deemed to have been filed.

(ii.2) The decision J 27/92 was not concerned with the payment of the appeal fee.

(ii.3) Furthermore, in contrast to the case under consideration in J 27/92, no wrong information had been given by the EPO.

(ii.4) It was not obvious from the Notice of Appeal that the Patent Proprietor was not entitled to file it in Dutch, since the address mentioned at the bottom of the Notice of Appeal was that of Solvay in Brussels.

(iii) The Board, after deliberation having informed the Parties that the appeal of the Patent Proprietor was not deemed to have been filed, the discussion moved to the question of the allowability of Claims 1 to 16 of the set of claims on which the Opposition Division had decided to maintain the patent in suit.

In that respect, both Parties essentially relied on their written submissions. Following preliminary observations of the Board concerning in particular the allowability of the range 0.1 to 0.2% of component (b) in Claim 1 of that set of claims, the Patent Proprietor filed a set of Claims 1 to 15 labelled "1. auxiliary request" and a set of Claims 1 to 14 labelled "2. auxiliary request" in order to replace the requests then on file, i.e. the set of Claims 1 to 17 on which the Opposition Division had decided to maintain the patent in suit, the set of Claims 1 to 16 submitted as auxiliary request I with letter dated 30 May 2006, and the set of Claims 1 to 17 of the auxiliary request II submitted with letter dated 30 May 2006.

Claim 1 of the "1. auxiliary request" submitted at the oral proceedings before the Board read as follows:

"1. An improved light stabilized polymeric composition that does not interfere with acid curative coating systems comprising:

(a) thermoplastic polyolefin;

(b) monomeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.2% by weight;

(c) a polymeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.8% by weight; and

(d) an ultraviolet light absorbing agent present in an amount of 0.1% to 1% by weight,

wherein the monomeric hindered amine light stabilizer, the polymeric hindered amine light stabilizer and the

ultraviolet light absorbing agent, in combination, provide light stability to the composition and hence resistance to degradation from UV light to the composition and wherein (b) is present in amount which is equal to or greater than the amounts of either of the (c) or (d)."

Claims 2 to 15 corresponded to Claims 2 to 15 of the request on which the Opposition Division had decided to maintain the patent in suit.

Claim 1 of the "2. auxiliary request" read as follows:

"1. An improved light stabilized polymeric composition that does not interfere with acid curative coating systems comprising:

(a) thermoplastic polyolefin;

(b) monomeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.2% by weight;

(c) a polymeric hindered amine light stabilizer having a basicity or pKa of no greater than 7 present in an

amount of 0.1% to 0.8% by weight; and

(d) an ultraviolet light absorbing agent present in an amount of 0.1% to 1% by weight,

wherein the monomeric hindered amine light stabilizer, the polymeric hindered amine light stabilizer and the

ultraviolet light absorbing agent, in combination, provide light stability to the composition and hence resistance to degradation from UV light to the composition wherein the monomeric hindered amine light stablizer [sic] is 2, 2, 6, 6-tetramethyl-4-(2-dodecyl-succinamidyl)-piperydinyl acetamide or 1, 3, 8-triazaspiro(4.5)decane-2, 4-dione and the polymeric hindered amine light stabilizer is a N-(2-hydroxyethyl)-2, 2, 6, 6-tetramethylpiperidin-4-ol-succinic acid copolymer and wherein (b) is present in amount which is equal to or greater than the amounts of either of the (c) or (d)."

Claims 2 to 7, and 8 to 14, corresponded to Claims 2 to 7, and 9 to 15 of the request on which the Opposition Division had decided to maintain the patent in suit.

The Patent Proprietor submitted that Claim 1 of the request labelled 1. auxiliary request differed from Claim 1 of the set of claims on which the Opposition Division had decided to maintain the patent in suit in that the feature that "(b) is present in amount which is equal to or greater than the amounts of either of the (c) or (d)." has been incorporated therein. This feature was in its view supported by lines 23 to 25 on page 9 of the application as originally filed. Concerning Claim 1 of the request labelled 2. auxiliary request, it submitted that it further incorporated features of Claim 8 of the set of claims on which the Opposition Division had decided to maintain the patent in suit.

XII. The Appellant (Opponent) requested that the decision under appeal be set aside and the patent be revoked.

The Patent Proprietor requested that its appeal be deemed to have been filed, that the decision under appeal be set aside and the patent be maintained on the basis of the set of claims 1 to 17 submitted as first auxiliary request at the oral proceedings before the Opposition Division.

Should the Board decide that the appeal of the Patent Proprietor is not deemed to have been

filed, the Patent Proprietor requested that the decision under appeal be set aside, and the patent be maintained on the basis of the first or second auxiliary request, both filed during the oral proceedings before the Board. Furthermore, reimbursement of the appeal fee was requested.