T 1115/10 05-04-2012

Reasons for the Decision

1. The appeal is admissible.

Main request

2. Admissibility

The claims of the main request, which were submitted with the appellant's letter of 2 March 2012, correspond to the claims of the main request filed with the grounds of appeal, amended by (i) the insertion of the term "weight average" before the wording "molecular weight of not more than 10,000", (ii) deletion of the term "low molecular weight" in connection with proteins and (iii) deletion of the word "soy bean" (claim 11) and "soybean protein" (claim 12).

These amendments represent a reaction to the clarity objections (amendments (i) and (ii)) and the objections under Article 123(2) EPC (amendment (iii)) raised by the board in its communication dated 21 December 2011. They do not raise any complex new issues that the respondent or the board could not be expected to deal with in preparation to the oral proceedings. The board therefore admitted the main request into the proceedings (Article 13(1) and (3) RPBA).

3. Interpretation of claim 1

3.1 Claim 1 reads as follows:

"1. An aqueous binder composition for coating glass fibres comprising:

a polycarboxy polymer;

a poly alcohol having at least two hydroxyl

groups; and

a water-soluble extender selected from a group consisting of lignin, polysaccharides having a weight average molecular weight of not more than 10,000, proteins and sulfonated lignins,

the extender being present in an amount sufficient to establish an extender-polycarboxy polymer weight ratio of at least 1:10."

3.2 As to the interpretation of claim 1, both parties were of the opinion that claim 1, by virtue of the wording "a water-soluble extender selected from a group consisting of", covers compositions with one or more (ie mixtures) of the four extenders mentioned in the claim. The board does not see any reason to deviate from this claim interpretation, in particular because the application as filed supports it. In this context, the passage on page 8, lines 22-25 of the application as filed states (see also point 4.2 below):

"The binder composition of the present invention also incorporates a functional quantity of one or more extenders to reduce the overall cost of the binder composition while maintaining acceptable thermoset binder performance. Depending on the extender or extenders selected, ..." (emphasis added by the board).

3.3 Furthermore, as accepted by the respondent and as not disputed by the appellant, the term "an extender-polycarboxy polymer weight ratio" in claim 1 refers to the weight ratio of the specific water-soluble extenders mentioned in this claim and the polycarboxy polymer.

3.4 Finally, the extenders mentioned in claim 1 of the main request in fact constitute four groups of extenders, each group covering a number of chemical compounds (e.g. water soluble proteins cover a variety of different proteins).

4. Amendments of claim 1 - Article 123(2) EPC

4.1 The respondent argued that there was no disclosure in the application as filed of the four specific groups of water-soluble-extenders of claim 1.

It is true that claim 1 as filed simply refers to "an extender". However, the application as filed discloses five groups of extenders, namely water-soluble lignin (claim 10), water-soluble polysaccharides, preferably having a weight average molecular weight of not more than 10,000 (page 9, lines 6 to 7), water-soluble proteins (claim 11), water-soluble sulfonated lignins (page 9, line 8) and soybean protein (claim 12). The four groups of extenders in claim 1 thus represent a selection of four groups out of the five groups of extenders disclosed in general terms in the application as filed. This selection does not represent a singling out of specific extenders. In fact, essentially the same level of generality is kept in claim 1 of the main request as compared with the content of the application as filed. Furthermore, the selected groups of extenders are highlighted in the application as filed by being part of dependent claims (water-soluble lignin and water-soluble protein), by being described as "preferred" (polysaccharides having a weight average molecular weight of not more than 10,000, page 9, lines 3-7) and by being exemplified in example 1 (water soluble sulfonated lignins). In view of this, the four groups of extenders of claim 1 represent a non-individualized sub-set of groups of extenders that do not add any new matter to the general disclosure of the five groups of extenders in the application as filed. The requirements of Article 123(2) EPC are thus met.

4.2 The respondent additionally argued that claim 1 covered compositions containing a mixture of more than one of the four groups of extenders and such mixtures were not disclosed in the application as filed.

However, the possibility of more than one extender being present is disclosed in a general way, ie not referring to any specific extenders, on page 8, line 23 ("one or more extenders") and line 25 ("Depending on the extender or extenders selected") as filed. By combining this general disclosure with the non-individualised subset of the four groups of extenders of claim 1, the level of generality is not changed and therefore no new matter is added. The requirements of Article 123(2) EPC are thus not violated.

4.3 The respondent further argued that in claim 1 as filed, the extender-polycarboxy polymer weight ratio referred to the ratio of the weight of any extender, including non-water-soluble extenders, to the weight of polycarboxy polymers, whereas in claim 1 of the main request this ratio referred to the weight of the four specific water-soluble extenders to the weight of polycarboxy polymers only. There was, however, no disclosure in the application as filed that the extender-polycarboxy polymer weight ratio should relate to water-soluble extenders only.

The board cannot accept the respondent's argument. As set out in point 4.1 above, the four groups of water-soluble extenders are clearly and unambiguously derivable from the application as filed. Therefore, contrary to the respondent's argument, the skilled person would read the extender-polycarboxy polymer weight ratio in claim 1 as filed to apply to these four groups of water soluble extenders.

4.4 The respondent also argued that the specific water-soluble extenders of claim 1 were not disclosed in the application as filed in combination with the feature of this claim "for coating glass fibers".

In the board's view, this argument is not convincing as this feature is based on page 9, lines 24-25 as filed, where the following is stated:

"During a typical manufacturing operation, the binder composition will be applied to glass fibers as they are being formed into a mat. The majority of the water will be evaporated from the binder composition to produce a mat coated with a binder."

As this passage follows a paragraph in which the "binder of the present invention" is described and belongs to the section "DETAILED DESCRIPTION OF THE INVENTION", it is clear that this passage, including the feature "for coating glass fibers", constitutes a general disclosure of the binder composition of the invention. Therefore, by combining this feature with the four non-individualised groups of extenders present in claim 1, the level of generality is not changed and consequently no new matter is added.

4.5 The respondent finally argued that the specific water-soluble extenders of claim 1 were not disclosed in the application as filed in combination with the features present in claim 2 (cure catalyst), claim 3 (pH adjuster), claim 4 (corrosion inhibitor), claims 5 and 6 (specific polycarboxy polymers) or claims 13 and 14 (restricted extender-polycarboxy polymer weight ratio) of the main request.

The board cannot accept this argument. With the extender of claim 1 as filed being selected from the four groups of water-soluble extenders disclosed in the application as filed (see point 4.1 above), the features of claims 2-6, 13 and 14 as filed (which are identical to those of claim 2-6, 13 and 14 of the main request) are at least implicitly linked for the skilled person to these extenders by way of being dependent on claim 1 as filed. In other words, contrary to the respondent's allegation, the combination of the four groups of water-soluble extenders with these features of the dependent claims is clearly and unambiguously derivable from the application as filed and hence in line with the requirements of Article 123(2) EPC.

4.6 The amendments in claim 1 of the main request thus meet the requirements of Article 123(2) EPC.

5. Amendments of claim 12 - Article 123(2) EPC

5.1 Claim 12 reads as follows:

"12. An aqueous binder composition according to claim 1, wherein the extender is selected from a group consisting of sodium lignonsulfonate, maltodextrin having a weight average molecular weight of not more than 10,000, and combinations thereof."

Since the group of extenders of claim 12 has been limited to only two members, the "combinations" referred to in this claim in fact represent only one specific combination, namely the combination of sodium lignonsulfonate and maltodextrin having a weight average molecular weight of not more than 10,000.

This is different from claim 12 as filed in two respects. First, claim 12 as filed contains three different extenders (sodium lignonsulfonate, low molecular weight maltodextrin and soybean protein) and thus covers four different combinations of extenders. Second, claim 12 as filed does not disclose any maltodextrin having a weight average molecular weight of not more than 10,000.

5.2 The combination of sodium lignonsulfonate and maltodextrin having a weight average molecular weight of not more than 10,000 is furthermore not disclosed in the remaining part of the application as filed either. In fact, in order to arrive at the mixture of extenders of claim 12 on the basis of the application as filed, one would have to:

- single out two specific extenders from the five groups of extenders disclosed in general terms in the application as filed, namely sodium lignonsulfonate out of the group of water soluble sulfonated lignins and maltodextrin having a weight average molecular weight of not more than 10,000 out of the group of polysaccharides; and

- apply the general disclosure in the application as filed of mixtures of extenders on page 8, lines 23 and 25 (see point 4.2 above) to these two specific extenders.

This would however be in contradiction to examples 1 and 2 of the application as filed where, instead of the mixture of the two extenders, either the sodium lignonsulfonate (example 1) or the maltodextrin having a weight average molecular weight of not more than 10,000 (example 2) is applied.

More importantly even, by applying the general teaching on page 8, lines 23 and 25 to the two specific extenders singled out from the application as filed, the level of generality would be significantly changed and thus new matter would be added, in contravention to Article 123(2) EPC. This is different from the situation present with regard to claim 1, where the amendment leaves the level of generality essentially unchanged and where consequently, the requirements of Article 123(2) are met.

5.3 As claim 12 of the main request does not meet the requirements of Article 123(2) EPC, the main request is not allowable.

First auxiliary request

6. Admissibility

The claims of the first auxiliary request differ from the claims of the main request only by the deletion of the wording "and combinations thereof" in claim 12. For the same reasons as given above with regard to the main request, the board decided to admit the first auxiliary request into the proceedings (Article 13(1) and (3) RPBA).

7. Amendments - Allowability

Claim 12 of the first auxiliary request contains the requirement that the extender is "selected from a group consisting of sodium lignonsulfonate and maltodextrin having a weight average molecular weight of not more than 10,000". As has been set out above in point 3.2, this wording covers the selection of one or more (ie a mixture of) extenders. Therefore, even though the wording "and combinations thereof" has been deleted in claim 12 of the first auxiliary request, this claim still covers a mixture of the two specific extenders mentioned in this claim, namely sodium lignonsulfonate and maltodextrin having a weight average molecular weight of not more than 10,000. As has been set out above for claim 12 of the main request (points 5.1 and 5.2), such a mixture of specific extenders is not disclosed in the application as filed. Therefore for the same reasons as given above with regard to claim 12 of the main request, claim 12 of the first auxiliary request does not meet the requirements of Article 123(2) EPC.

Second auxiliary request

8. Admissibility

The second auxiliary request, which was submitted during the oral proceedings before the board, was filed in reaction to the respondent's objection that claim 12 of the first auxiliary request had to be interpreted such that it covered combinations of sodium lignonsulfonate and maltodextrin having a weight average molecular weight of not more than 10,000 and that this combination was not disclosed in the application as filed. This objection was raised only during the oral proceedings, at least in this explicit form. Moreover, the only amendment effected by this request compared to the previous requests was the deletion of claim 12 and the re-numbering of claims 13 and 14. The deletion of a dependent claim does not raise any new issues and hence the respondent and the board could be expected to deal with this new request without adjournment of the oral proceedings. The board therefore admitted the second auxiliary request into the proceedings (Article 13(1) and (3) RPBA).

9. Amendments - Allowability

9.1 Due to the deletion of claim 12, the objections raised above against this claim no longer apply.

9.2 As with the main request, the respondent objected that the specific water soluble extenders of claim 1 were not disclosed in the application as filed. However, for the same reasons as given above with regard to the main request (points 4.1-4.5), these arguments are not convincing.

9.3 The respondent additionally argued that the term "polysaccharides having a weight average molecular weight of not more than 10,000" in claim 1, which was not present in the granted claims, lacked clarity. In particular the respondent held the view that there was no disclosure on how to determine the weight average molecular weight of the polysaccharides and that it was common general knowledge that weight average molecular weight values could vary depending upon the method by which they were measured.

In the board's view, it may well be that according to common general knowledge, weight average molecular weight values depend on the measurement method applied in as far as high molecular weights (eg 500,000 or higher) are concerned. This does however not necessarily extend to low weight average molecular weights such as required by claim 1 (not more than 10,000) and no proof has been provided that the alleged dependence exists also for these low weight average molecular weights. In the absence of any such proof, it can be assumed in the appellant's favour that the weight average molecular weight of not more than 10,000 in claim 1 does not depend on the measurement method. The inclusion of this weight average molecular weight in claim 1 therefore does not infringe the requirements of Article 84 EPC.

9.4 The respondent further argued in writing that the restriction of the molecular weight range in granted claim 7 from "about 100 to about 200,000" to "about 1000 to about 10,000" in claim 7 of the main request violated the requirements of Rule 80 EPC. (This argument was not reiterated during the oral proceedings).

The restriction of the lower limit of 100 is however clearly a reaction to the opponent's objection under Article 100(b) EPC (second paragraph on page 5 of the notice of opposition) that oligomers or polymers do not exist that have two or more carboxy groups and at the same time are characterised by a molecular weight of only 100. The simultaneous amendment of the upper limit results from the incorporation of the range of 1000-10000 as originally disclosed and thus meets a potential objection under Article 123(2) EPC.

Hence, the amendment of claim 7 meets the requirement of Rule 80 EPC.

9.5 The respondent finally raised an objection in writing under Article 123(2) EPC against the feature "starch having a weight average molecular weight of not more than 10,000" in claim 9. (Again, this objection was not reiterated during the oral proceedings). This feature is however based on claim 9 as filed ("low molecular weight starch") in conjunction with page 9, lines 5-7 as filed, which defines the molecular weight of the starch (a polysaccharide) to be a weight average molecular weight of not more than 10,000. The feature objected to thus meets the requirements of Article 123(2) EPC.

9.6 On the basis of the board's interpretation of claim 1 (the extender-polycarboxy polymer weight ratio refers to the weight ratio of the specific water-soluble extenders to the polycarboxy polymer, see point 3.3 above), the respondent withdrew its objection under Article 123(3) EPC and the board is satisfied that the requirements of this Article are met.

9.7 The respondent has not raised or maintained any further objections under Articles 123(2)/100(c) EPC, 123(3) EPC and 84 EPC or Rule 80 EPC and the board is satisfied that the requirements of these provisions are met by the amendments effected in the second auxiliary request.

Remittal

10. The remaining grounds of opposition under Articles 100(a) and (b) EPC have not been dealt with yet by the opposition division. To allow a full examination of these grounds at two levels, the board has decided to exercise its discretion under Article 111(1) EPC to remit the case to the opposition division for further prosecution, in line with the appellant's request.

Request for apportionment of costs

11. The respondent requested the payment of its costs, including the cost of its professional representative incurred for reviewing the twelve new requests filed by the appellant with its letter of 2 March 2012 (of which the main and first auxiliary requests have been discussed above) and for attending the oral proceedings.

As has been set out above in point 2, the appellant's requests constituted a reaction to the board's preliminary opinion issued as the annex to the summons to oral proceedings. Such a reaction constitutes the normal way of proceedings and in no way justifies the apportionment of costs for reviewing any claim sets filed as such a reaction.

With regard to the costs for attending oral proceedings, this request is equally unjustified, not least because no reasons were given or are apparent to the board why it was only the filing of the new claim sets that made the respondent's attendance at the oral proceedings necessary.

The request for apportionment of costs is therefore refused.