T 2046/14 06-02-2018

Summary of Facts and Submissions

I. The appeal by the patent proprietor lies against the decision of the opposition division posted on 29 July 2014 revoking European patent No. 1 241 229.

II. The claims of the application as filed which are relevant to the present decision read as follows:

"1. A fuel part excellent in fuel resistance at a weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration."

"6. A material for a fuel part excellent in fuel resistance at a weld portion of the fuel part, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration."

"7. A fuel part excellent in fuel resistance at the weld portion thereof, which is obtained by welding a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof."

"8. A process for producing a fuel part excellent in fuel resistance at a weld portion thereof, which comprises molding or forming a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof, injection molding a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and then, welding the thus molded or formed products."

"9. A resin valve cover welded to the outer layer of a resin fuel tank, thereby sealing a valve-mounting slot formed in the fuel tank, wherein the resin valve cover has a cylindrical shape having one end closed except for a pipe hole for delivering a fuel; the inside portion of the cylinder to be brought into contact with a fuel when welded to the fuel tank is made of a first resin, while the outer portion of the cylinder not brought into contact with the fuel is made of a second resin; and a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration is used as the first resin, while a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof is used as the second resin."

"10. A resin valve cover welded to the outer layer of a resin fuel tank, thereby sealing a valve-mounting slot formed in the fuel tank, wherein the resin valve cover has a cylindrical shape having one end closed except for a pipe hole for delivering a fuel; the inside portion of the cylinder to be brought into contact with a fuel when welded to the fuel tank is made of a first resin, while the outer portion of the cylinder not brought into contact with the fuel is made of a second resin; and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof is used as the first resin, while a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration is used as the second resin."

"15. A fuel part attached to a resin fuel tank, which has a multilayer structure comprising, as an inner layer (A), high-density polyethylene modified with an unsaturated carboxylic acid or derivative thereof and, as an outer layer (B), a polyamide resin having a terminal amino concentration > a terminal carboxyl concentration and containing 3 to 27 wt.% of a plate-crystal inorganic filler."

"16. A fuel part attached to a resin fuel tank, which has a multilayer structure comprising, as an inner layer (A) and an outer layer (C), high-density polyethylene modified with an unsaturated carboxylic acid or derivative thereof; and as an intermediate layer (B), a polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and containing 3 to 27 wt.% of a plate-crystal inorganic filler."

"21. A polyamide resin composition excellent in fuel resistance at a weld portion, which comprises (A) 100 parts by weight of a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration, and (B) 0.05 to 10 parts by weight of layered silicates uniformly dispersed in the polyamide resin."

"22. The polyamide resin composition as claimed in claim 21, wherein the layered silicates have a side length of 0.002 to 1 µm and thickness of 6 to 20 Å and are dispersed uniformly in the polyamide resin while maintaining a layer-layer distance of 20 Å or greater on average."

"23. A fuel part excellent in fuel resistance at a weld portion thereof, which comprises a polyamide resin composition comprising (A) 100 parts by weight of a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration, and (B) 0.05 to 10 parts by weight of layered silicates uniformly dispersed in the polyamide resin."

"24. A fuel part excellent in fuel resistance at a weld portion thereof, which is obtained by welding a polyamide resin composition as claimed in claim 21 and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof."

"25. A process for producing a fuel part excellent in fuel resistance at a weld portion thereof, which comprises molding or forming a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof, injection molding a polyamide resin composition as claimed in claim 21 and then welding the resulting molded or formed products."

III. Claim 1 of the granted patent, which is the sole granted claim relevant to the present decision, read as follows (additions as compared to claim 1 of the application as filed are indicated in bold, deletions in [deleted: strikethrough]):

"1. A [deleted: fuel] part attached to any one of a fuel tank, a fuel hose and a canister and excellent in fuel resistance at a weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration."

IV. Four notices of opposition against the patent were filed, in each of which the revoca­tion of the patent in its entirety was requested.

V. The contested decision was based on

- the patent as granted as main request,

- the first and the second auxiliary requests filed with letter of 30 September 2011 and

- the third to fifth auxiliary requests filed during the oral proceedings before the opposition division in replacement of the third to the fifth auxiliary requests filed with letter of 15 April 2014.

Claim 1 of the first auxiliary request read as follows (additions as compared to claim 1 of the application as filed are indicated in bold):

"1. A fuel part attached to a fuel tank and excellent in fuel resistance at a weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration, which is obtained by welding a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof."

Claim 1 of the second auxiliary request was identical to claim 1 of the first auxiliary request.

Regarding the third auxiliary request,

- claims 1, 7, 8 and 16-18 corresponded to claims 1, 7, 8 and 23-25 of the application as filed, whereby the fuel part was further defined as being "selected from the group consisting of valves attached to a fuel tank";

- claims 9-14 were identical to claims 9-14 as original filed;

- the wording of claim 15 corresponded to that of original claim 22 (taking into account that it depended on original claim 21).

Claim 1 of the fourth auxiliary request read as follows (additions as compared to claim 1 of the application as filed are indicated in bold):

"1. A fuel part selected from the group consisting of valves attached to a fuel tank and excellent in fuel resistance at the weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration, which is obtained by welding a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof."

Claim 1 of the fifth auxiliary request was identical to claim 1 of the fourth auxiliary request.

VI. In the contested decision the opposition division inter alia held that:

- The main request did not fulfill the requirements of Article 123(2) EPC because the application as filed did not support any part attached to a fuel tank which is not a valve, any part attached to a fuel hose and any part attached to a canister. Also, it was held that there was no support in the application as filed for a part attached to a fuel hose or canister (see section 2.4.1 of the contested decision).

- Claim 1 of each of the first and the second auxiliary requests did not satisfy the requirements of Article 123(2) EPC and Article 84 EPC. Regarding Article 123(2) EPC it was in particular argued that there was no support in the application as filed for a fuel part attached to a fuel tank which was not a valve or which did not comprise a plate-crystal inorganic filler or wherein the modified polyolefin was not an intermediate adhesion layer (section 2.5.1 of the contested decision). Regarding Article 84 EPC, the feature "fuel part" was found to lack clarity, in particular because it was not a term known in the art (fourth paragraph of section 2.5.2 of the contested decision).

- Claim 1 of each of the third to the fifth auxiliary requests were held to satisfy among others the requirements of Article 123(2) EPC but not those of Article 56 EPC.

VII. The patent proprietor (appellant) appealed the above decision. With the statement setting out the grounds of appeal the appellant requested that the opposition division's decision be set aside and that the patent be maintained as granted (main request) or, alternatively, that the patent be maintained in amended form according to any of the first to the eleventh auxiliary requests filed with the statement of grounds of appeal. In that respect, the first and the second auxiliary requests corresponded to the first and the second auxiliary requests dealt with in the contested decision, the third to the fifth auxiliary requests corresponded to the third to the fifth auxiliary requests filed with letter of 15 April 2014 and the sixth to the eighth auxiliary requests corresponded to the third to the fifth auxiliary requests dealt with in the contested decision.

Claim 1 of the third auxiliary request read as follows (additions as compared to claim 1 of the application as filed are indicated in bold):

"1. A fuel part selected from the group consisting of valves, joints for fuel hose, canister connecting nozzles and separators, attached to a fuel tank and excellent in fuel resistance at a weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration."

Claim 1 of the fourth auxiliary request read as follows (additions as compared to claim 1 of the application as filed are indicated in bold):

"1. A fuel part selected from the group consisting of valves, joints for fuel hose, canister connecting nozzles and separators, joined to a fuel tank and excellent in fuel resistance at a weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration, which is obtained by welding a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof."

Claim 1 of the fifth auxiliary request was identical to claim 1 of the fourth auxiliary request.

Claim 1 of the ninth auxiliary request read as follows (additions as compared to claim 1 of the application as filed are indicated in bold):

"1. A fuel part selected from the group consisting of resin valve covers being welded to a polyethylene fuel tank of automobiles using gasoline and gasohol, and excellent in fuel resistance at the weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration."

Claim 1 of the tenth auxiliary request read as follows (additions as compared to claim 1 of the application as filed are indicated in bold):

"1. A fuel part selected from the group consisting of resin valve covers being welded to a polyethylene fuel tank of automobiles using gasoline and gasohol, and excellent in fuel resistance at the weld portion thereof, which comprises a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration, which is obtained by welding a crystalline polyamide resin having a terminal amino group concentration > a terminal carboxyl group concentration and a polyolefin resin modified with an unsaturated carboxylic acid or derivative thereof."

Claim 1 of the eleventh auxiliary request was identical to claim 1 of the tenth auxiliary request.

VIII. In their reply to the statement of grounds of appeal each of opponents 1, 2 and 4 (respondents 1, 2 and 4) requested that the appeal be dismissed.

IX. Issues to be discussed at the oral proceedings were specified by the Board in a communication dated 1 September 2017, in which it was in particular indicated that respondent 3 (opponent 3) had not made any submission. Also, the following issues were inter alia identified:

- The appellant had not explained why the decision reached by the opposition division regarding the main request would be wrong and the Board saw no reasons to depart from the opposition division's findings (section 5.3);

- It appeared that the first and the second auxiliary requests neither satisfied the requirements of Article 123(2) EPC (section 7.3) nor of Article 84 EPC (section 8.3). Regarding Article 123(2) EPC the same line of argumentation as that used in the contested decision was followed. Regarding Article 84 EPC, it was indicated that no arguments or evidence was submitted by the appellant to refute the opposition division's view according to which the term "fuel part" had no accepted definition in the art and was, thus, unclear;

- Considering that it appeared that the appellant was not adversely affected by the decision of the opposition division as far as the third to the fifth auxiliary requests were concerned, the third to the fifth auxiliary requests might have to be not admitted into the proceedings pursuant to Article 12(4) RPBA (section 9);

- Considering that the wording "valves attached to a fuel tank" was found at a single passage of the application as filed and within a list of alternative embodiments, the question arose whether a valid support in the application as filed could be found for the subject-matter of claims 7, 8 and 16-18 of the sixth auxiliary request (section 10);

- The question arose if the ninth to the eleventh auxiliary requests should be not admitted pursuant to Article 12(4) RPBA. In particular, it appeared that each of the ninth to the eleventh auxiliary request comprised claims directed to "resin valve covers" instead of the "valves" defined e.g. in the sixth to the eighth auxiliary requests. Those requests also appeared to be related to different embodiments of the resin valve covers otherwise defined e.g. in claims 9-14 of the sixth auxiliary request, i.e. they appear to be related to fundamentally different subject-matter (section 17.2).

X. During the oral proceedings, which were held on 6 February 2018 in the absence of respondent 3 as announced by letter of 12 December 2017, the appellant submitted a new ninth auxiliary request. The then pending ninth to eleventh auxiliary requests were renumbered tenth to twelfth auxiliary requests.

The new ninth auxiliary request corresponded to the sixth auxiliary request whereby claims 7, 8 and 16-18 had been deleted, the remaining claims being renumbered accordingly.

XI. The appellant' arguments, insofar as relevant to the decision, may be summarised as follows:

Main request - Article 100(c) and 123(2) EPC

(a) Considering that the terms "fuel part" and "part" were disclosed interchangeably in the application as filed, the subject-matter of claim 1 was based on original claim 1. A further support was provided at page 2, lines 17-21 and page 3, lines 1-2 of the application as filed. In that respect, the description should be taken into account to interpret the claims. Also, according to Article 69 EPC the description and the drawings shall be used to interpret the claims and it could not be derived from the application as filed that a "part" in the sense of the present invention was not necessary a "fuel part". Although the exact wording of claim 1 was not explicitly disclosed as such in the application as filed, it was derivable from the application as filed as a whole. The skilled person would understand what the wording "a part attached to any one of a fuel tank, a fuel hose and a canister" only referred to the specific "fuel parts" disclosed in the description.

Therefore, the requirements of Article 123(2) EPC were met.

First and second auxiliary requests

(b) The subject-matter of claim 1 of the first auxiliary request was either supported by the combination of original claims 1 and 7 or by the passage at page 15, line 23 to page 16, line 7 of the application as filed. Considering that it was derivable from the application as filed as a whole that claims 1 and 7 constituted preferred embodiments, the skilled person would have combined them. Also, the modified polyolefin layer mentioned at pages 15-16 of the application as filed did not have to be included in claim 1, since it did not represent a mandatory but only a preferred feature. Therefore, claim 1 of the first auxiliary request, which was identical to claim 1 of the second auxiliary request, satisfied the requirements of Article 123(2) EPC.

(c) Regarding Article 84 EPC, the term "fuel part" according to claim 1 of the first and second auxiliary requests had an accepted meaning in the present technical field. Should that view be contested, the skilled person would understand its meaning from the description of the patent specification as a whole and would be in a position to identify what was encompassed by the scope of operative claim 1.

Third to fifth auxiliary requests - Admittance

(d) Considering the argumentation provided by the opposition division during the oral proceedings the then operative third to fifth auxiliary requests would not have overcome the objections retained against the higher ranked requests. To accommodate the opposition division, those requests were not discussed at the oral proceedings, but were not actively withdrawn and were, thus, part of the final decision.

The appellant had the right to file auxiliary requests together with its statement of grounds of appeal, in particular in reply to the findings of the opposition division in the contested decision, as was the case here.

For those reasons, the third to fifth auxiliary requests formed part of the appeal proceedings and were not inadmissible pursuant to Article 12(4) RPBA.

Sixth auxiliary request - Article 123(2) EPC

(e) Claims 7, 8 and 16-18 of the sixth auxiliary request were based on the combination of each of the original claims 7, 8, and 23-25 with the passage at page 19, lines 1-3 of the application as filed. A single selection within the list of articles disclosed in that passage was necessary in order to arrive at the subject-matter being claimed. The fact that various independent claims were present in the application as filed did not affect that conclusion. For those reasons, claims 7, 8 and 16-18 fulfilled the requirements of Article 123(2) EPC.

Seventh and eighth auxiliary request - Article 123(2) EPC

(f) Regarding claims 1, 7, 15 and 16 of the seventh auxiliary request and claims 1, 7 and 14 of the eighth auxiliary request, the same arguments as for claims 7, 8 and 16-18 of the sixth auxiliary request were valid.

Ninth auxiliary request - Admittance

(g) The ninth auxiliary request was filed in direct response to the Board's decision in respect of the sixth to the eighth auxiliary requests. Considering that the appellant could not foresee the decision of the Board in respect of the sixth auxiliary request, the ninth auxiliary request was submitted at the first possible opportunity. Since the operative claims were already present in the sixth auxiliary request, the ninth auxiliary request could not take by surprise the respondents.

In the Board's communication, it was only indicated that there might be an issue of Article 123(2) EPC in relation to claims 7, 8 and 16-18 of the sixth auxiliary request, which was neither a final decision nor an objection. Therefore, the ninth auxiliary request should be admitted.

Tenth to twelfth auxiliary requests - Admittance

(h) It was an appellant's right to present new requests at the beginning of the appeal. In the present case, the tenth to twelfth auxiliary requests were submitted in direct reaction to the contested decision and were filed together with the appellant's statement of grounds of appeal. Besides, the amendments made in those requests satisfied the requirements of Article 123(2) EPC since they were based on page 22, third paragraph of the application as filed. Therefore, the tenth to the twelfth auxiliary requests should be admitted into the proceedings.

XII. The respondents' arguments, insofar as relevant to the decision, may be summarised as follows:

Main request - Article 100(c) and 123(2) EPC

(a) As already concluded by the opposition division, there was no direct and unambiguous support in the application as filed for the subject-matter of claim 1.

First and second auxiliary requests

(b) There was no direct and unambiguous support in the application as filed for the subject-matter of claim 1 of the first auxiliary request. The passage bridging pages 15 and 16 did not provide a valid support, because it was directed to an embodiment comprising an adhesion layer, which was not reflected in operative claim 1.

Claim 1 of the second auxiliary request was identical to claim 1 of the first auxiliary request.

For those reasons, the first and the second auxiliary requests did not satisfy the requirements of Article 123(2) EPC.

(c) The term "fuel part" had no accepted definition in the art. Therefore, the skilled person was not in a position to determine unambiguously the scope of claim 1, contrary to the requirements of Article 84 EPC.

Third to fifth auxiliary requests - Admittance

(d) The third to fifth auxiliary requests were identical to the third to fifth auxiliary requests filed with letter of 15 April 2014. However, those requests were not defended during the oral proceedings before the opposition division and were eventually replaced by the third to the fifth auxiliary requests dealt with in the contested decision. Therefore, the appellant was not adversely affected by the decision of the opposition division as far as those requests were concerned. Under those circumstances the third to the fifth auxiliary requests should not be admitted into the proceedings pursuant to Article 12(4) RPBA.

Sixth auxiliary request - Article 123(2) EPC

(e) The subject-matter of claims 7, 8 and 16-18 could only be arrived at after combining specific independent claims with the passage at page 19, lines 2-4 of the application as filed. However, that combination was not directly and unambiguously disclosed and led to creating subject-matter which was not disclosed as such in the application as filed. For instance, there was no disclosure in the application as filed of valves obtained by welding a polyamide and a polyolefin according to claim 7 (see in particular the product-by-process feature) and/or of a process for producing a valve by moulding and welding according to operative claim 8.

Seventh and eighth auxiliary request - Article 123(2) EPC

(f) Regarding claims 1, 7, 15 and 16 of the seventh auxiliary request and claims 1, 7 and 14 of the eighth auxiliary request, the same arguments as for claims 7, 8 and 16-18 of the sixth auxiliary request were valid.

Ninth auxiliary request - Admittance

(g) All the objections retained against the higher ranking requests were on file from the beginning of the appeal proceedings and were already known from the opposition proceedings. They were also identified in the Board's communication which had been sent well in advance of the oral proceedings. Under those circumstances, there was no justification why the ninth auxiliary request was only submitted at the latest possible opportunity, namely on the day of the oral proceedings and only after the Board had announced its decision regarding the higher ranking requests. For those reasons, the ninth auxiliary request should not be admitted into the proceedings.

Tenth to twelfth auxiliary requests - Admittance

(h) The tenth to the twelfth auxiliary requests were directed to completely different subject-matter than that dealt with in the higher ranking requests. The claims were now directed to "valve covers" defined in a completely different manner than the valve covers defined in the claims of the higher ranking requests. Admitting those requests into the proceedings forced the respondents to deal with new subject-matter which had never been claimed before. In that respect, there had been no surprising development of the case and all objections dealt with in the contested decision were known by the appellant. For those reasons, the tenth to the twelfth auxiliary requests should not be admitted into the proceedings.

XIII. The appellant requested that the decision under appeal be set aside and that the patent be maintained as granted (main request), or, alternatively, that the patent be maintained in amended form according to any of the first to eighth auxiliary requests filed with the statement of grounds of appeal, or on the basis of the ninth auxiliary request filed during the oral proceedings on 6 February 2018, or on the basis of the tenth to twelfth auxiliary requests, filed as ninth to eleventh auxiliary requests with the statement of grounds of appeal.

The respondents 1, 2 and 4 requested that the appeal be dismissed.