T 1964/17 17-01-2020

Reasons for the Decision

Main request (patent in suit)

1. Admittance of the objection of lack of sufficiency of disclosure related to the repeatability of the examples of the patent in suit

1.1 The objection was made in the respondent's letter of 17 December 2019, after notification of the summons to oral proceedings and therefore at the stage covered by Article 13(2) RPBA 2020. The RPBA 2020 entered into force on 1 January 2020 and is applicable to all appeals pending on that date, subject to the transitional provisions in Article 25 RPBA. In the present case, the summons to oral proceedings was notified to the parties before the date of entry into force of the RPBA 2020. Therefore, according to Article 25(3) RPBA 2020, Article 13(2) RPBA 2020 does not apply to submissions filed after notification of the summons, but Article 13 RPBA 2007 continues to apply to these.

1.2 In its last submission dated 17 December 2019 (section B.II), the respondent argued that the requirements of sufficiency of disclosure were not satisfied because the skilled person would not be in a position to prepare fractions A) and B) as defined in granted claim 1 on the basis of the information provided in the patent in suit in respect of example 2. In that respect, reference was made to the examples of D3, which were said to be similar to the ones of the patent in suit and contained more information regarding the experimental conditions used.

1.3 During the oral proceedings before the Board, the respondent admitted that said objection had never been raised before (neither during the opposition, nor during the appeal proceedings).

1.4 In addition, whereas the objection of lack of sufficiency of disclosure put forward during the opposition proceedings and retained by the opposition division (see section VI above) is related to the accuracy of the method of measurement of the ethylene content of the copolymers defined in granted claim 1, the objection related to the repeatability of the examples of the patent in suit rather addresses the question whether or not the information provided in the patent in suit is sufficient in order to obtain the copolymers as claimed, in particular by following the examples of the patent in suit. In that respect, the latter objection relied on the comparison of the information provided for the examples in the patent in suit with the one provided for the examples of D3, whereby it was held that some information was missing in the patent in suit. In the Board's view, the question of the accuracy of the method of determination of the ethylene content of the fractions of the heterophasic polypropylene copolymer is clearly independent and unrelated to the issue of the repeatability of the examples of the patent in suit. Therefore, the submission of the respondent according to which both objections were interrelated is rejected.

Besides, although document D3 was cited during the opposition proceedings, that document had never been cited until then in the appeal proceedings.

Under these circumstances, the Board considers that the objection of lack of sufficiency of disclosure related to the repeatability of the examples of the patent in suit in view of the examples of document D3 constitutes a completely new objection ("fresh case").

1.5 During the oral proceedings before the Board, the respondent argued that, since the issue had been raised by the Board (section 6.3, second paragraph, first sentence of its communication: see section IX above), he should be allowed to comment and reply on that matter.

However, the passage of the Board's communication relied upon by the respondent does not constitute a new issue raised ex officio by the Board. Rather, said passage reflects the preliminary opinion of the Board that the respondent's objections were only related to the accuracy of the method of measurement of the ethylene content of the copolymers defined in granted claim 1 but not to a lack of information regarding how to prepare copolymers A) and B) as defined in the granted claims, which is an issue which may have to be taken into account when assessing sufficiency of disclosure (as indicated in section 6.2 of said communication: see section IX above). In addition, said statement of the Board is in line with the argument put forward by the appellant in its statement of grounds of appeal (page 7: first sentence of the second full paragraph), according to which the reproducibility of the invention had never been objected to during the opposition proceedings. Therefore, section 6.3 of the Board's communication cannot justify the submission of a new objection by the respondent. In that respect, a preliminary opinion expressed by the Board in its communication and which is based solely on submissions made by the parties is not to be seen as an invitation to submit new requests or new objections that the parties could (and should) have filed earlier.

1.6 In addition, admitting a new objection raised for the first time shortly before the oral proceedings before the Board would go against the stipulations of Article 12(3) RPBA 2020 (corresponding to Article 12(2) RPBA 2007), according to which the respondent should submit its complete case in its rejoinder to the statement of grounds of appeal.

Besides, according to the case law, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of his rights as early and completely as possible, in particular in inter partes proceedings in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, V.A.4.1.2, 4.2.1 and 4.4.1). For that reason, the argument of the respondent according to which he had no reason to address that issue before having received the Board's communication is rejected.

1.7 Admitting said new objection of lack of sufficiency of disclosure would also not satisfy the requirements of due process (efficient conduct of the proceedings) and the need for economy of the proceedings (Article 13(1) RPBA 2007).

1.8 Finally, it is true that, as argued by the appellant during the oral proceedings before the Board, admitting into the proceedings the new objection of lack of sufficiency of disclosure could have required a postponement of the oral proceedings in order to give sufficient time to the appellant to prepare a suitable line of counter-arguments, which is contrary to the stipulations of Article 13(3) RPBA 2007.

1.9 For those reasons, the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA 2007 and its power under Article 13(3) RPBA 2007 by not admitting into the proceedings the objection of lack of sufficiency of disclosure related to the repeatability of the examples of the patent in suit raised for the first time by the respondent in its letter of 17 December 2019.

2. Cited documents

2.1 In the present case, the statement of grounds of appeal was filed before the date of entry of the RPBA 2020 (1 January 2020) and the reply thereto was filed in due time. Therefore, according to Article 25(2) RPBA 2020, the basis of the proceedings is governed by the stipulations of Article 12(4) RPBA 2007.

2.2 Document D1D was not admitted into the proceedings by the opposition division (section 2 of the reasons of the contested decision). However, D1D was submitted anew by the respondent together with its rejoinder to the statement of grounds of appeal. In that respect, the mere fact that the opposition division did not admit a late-filed document (here, D1D) and did not exceed the proper limits of its discretion by not admitting it does, in principle, not prevent the Board from admitting the document (T 971/11, of 4 March 2016, sections 1.1 to 1.3 of the reasons; T 1403/13, of 25 June 2018, sections 2.3 of the reasons). In particular, a submission which would have been admitted into the appeal proceedings, if it had been filed for the first time at the outset of those proceedings, should not be held inadmissible pursuant to Article 12(4) RPBA 2007 for the sole reason that it was already filed before the department of first instance and not admitted (T 971/11, section 1.3 of the reasons). Therefore, in the absence of any request by the appellant not to admit D1D, nor any compelling reasons by the Board, there is no reason to hold D1D inadmissible pursuant to Article 12(4) RPBA 2007.

2.3 Document E4, which was late-filed during the opposition proceedings, was also cited but not referred to in the reasons of the contested decision (due to the numbering "E4" given to two different documents in section 7 of the section "Facts and Submissions" of the decision, namely documents E1A and E4 as identified in above section IV, the document E4 referred to in section 3.9 of the reasons of the decision is in fact said document E1A). In particular, no decision was taken regarding its admittance. However, in the absence of any objection in that respect during the appeal proceedings and further considering that both parties relied on that document (statement of grounds of appeal: page 4, third paragraph; rejoinder to the statement of grounds of appeal: section 5.34; oral proceedings before the Board), nor any compelling reasons by the Board, there is no reason to hold E4 inadmissible pursuant to Article 12(4) RPBA 2007.

2.4 In the absence of any objection regarding the admittance of document D12, which was filed together with the rejoinder to the statement of grounds of appeal, nor any compelling reasons by the Board, there is no reason to hold D12 inadmissible pursuant to Article 12(4) RPBA 2007.

3. Sufficiency of disclosure

3.1 In order to meet the requirements of sufficiency of disclosure, an invention has to be disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person, without undue burden, on the basis of the information provided in the patent specification, if needed in combination with the skilled person's common general knowledge. This means in the present case that the skilled person should in particular be able to prepare a propylene composition according to claim 1.

3.2 In the Board's view, the opposition division's conclusions (see section VI above), which form the basis of the respondent's objections in relation to the information provided in E1/E1A, E2, E4, D1, D1C, and D1D, is directed to a possible ambiguity regarding the determination of the ethylene content of propylene copolymers A) and B) according to paragraph 36 of the patent in suit, in which it is merely indicated that these ethylene contents were determined "by IR spectroscopy".

However, even if the opposition division's and respondent's arguments were to be followed, they constitute no evidence that, carrying out the teaching of the patent in suit, in particular concerning the preparation process (paragraphs 16 and 26-30; examples 1-2) and the catalyst system (paragraphs 17-25) to be used, the skilled person would not be in a position to prepare a propylene composition according to granted claim 1, in particular satisfying the ethylene contents of polypropylene copolymers A) and B) defined therein. In that respect, it was never argued by the respondent that there were no known methods in the art to determine such ethylene contents. In addition, the respondent was even able to determine ethylene contents in the range specified in granted claim 1 using different methods known in the art, albeit obtaining different results with the various methods (see D1, D1C and D1D). Therefore, the evidence put forward by the respondent shows that the determination method of the ethylene content may be ambiguous, but fails to demonstrate that the skilled person is not in a position of preparing a composition according to granted claim 1. Therefore, the respondent's arguments also for that reason are at most related to the issue of clarity pursuant to Article 84 EPC, but not to sufficiency of disclosure.

In view of the above, it makes no doubt that the arguments of the respondent are related to the question whether or not the skilled person knows whether he is working within or outside the scope of the granted claims, which, in the circumstances of the present case, is at most a matter of clarity pursuant to Article 84 EPC (which cannot be dealt with here at the appeal stage: see decision G 3/14, OJ EPO 2015, 102), as put forward by the appellant.

It is additionally noted that the above conclusion applies to all the objections made by the respondent regarding the determination method of the ethylene content in both fractions A) and B) defined in operative claim 1, i.e. it applies to the arguments related to both the determination method of ethylene content in each of fraction A) or B), as well as to the impact of the split of A) and B) and of the determination thereof.

3.3 The respondent and the opposition division considered additionally that the requirements of sufficiency of disclosure were not satisfied because the error of measurement made when determining the ethylene contents specified in granted claim 1 was larger than the breadth of the range specified in said claim. Therefore, the skilled person was not able to carry out such measurement, so the respondent.

However, the respondent's objection (which was retained by the opposition division) relies on calculations of the error of measurement made taking into account the information regarding the reproducibility indicated in E1/E1A (repeatability indicated in Table 1; the fact that the appellant considered the repeatability "r" within a laboratory whereas the respondent considered the repeatability "R" among laboratories does not play a role hereinafter). Since E1/E1A, as agreed by the parties, is directed to a method of determination of ethylene contents in a range of 35-85 % ethylene (see e.g. E1: section 1.1), which is outside both ranges of interest as defined in granted claim 1 (4.0% to 6.5% for fraction A) and 18.5% to 23.5% for fraction B)), it makes no doubt that said method would not be considered by the skilled person to determine ethylene contents in the ranges defined in granted claim 1. Therefore, the information on reproducibility indicated in E1/E1A is not relevant for the present case, contrary to the respondent's view.

In addition, the calculations related to the accuracy of the methods of determination of ethylene known in the art made by the respondent were derived from information obtained from calibration curves made upon a range of ethylene contents which either encompass samples with ethylene contents ranging from close to zero to up to almost 80% (see Figure 1 of D1C), i.e. which extend far outside both ends of the ranges of interest, or which are even limited to ethylene contents far outside the ranges of interest (Table 3 of D1C and paragraph above it: ethylene contents as indicated in E1/E1A, namely between 40 and 75 %). Such calibrations, in the Board's view, are not in line with usual laboratory practice, whereby calibration curves are determined around the range of interest, as argued by the appellant. The fact that the calibration curves of Figure 1 of D1C encompass the ranges of interest also does not convince because using a calibration range extending so far outside both upper ends of the ranges of interest is likely to increase the inaccuracy of the determination method, especially in the lower end of the range, which is even more important in respect of fraction A) as defined in granted claim 1 (which is defined with lower ethylene contents and over a smaller range).

Under such circumstances, the argument of the respondent (which was retained by the opposition division) fails to convince.

3.4 Further taking into account that the features defining the composition of claim 1 and discussed during the opposition and appeal proceedings (ethylene content and split of fractions A) and B)) are very common in the art, it is further credible that, as argued by the appellant, controlling the comonomer content of a polymerisation process is well within the possibility of the skilled person without any burden. In particular, it is agreed with the appellant that comonomer contents are commonly controlled in industrial plants and that the specifications of commercial products are usually more restricted than the ranges defined in granted claim 1.

3.5 It is further noted that, according to paragraph 30 of the patent in suit, the compositions according to granted claim 1 may be obtained by mere blending of polypropylene copolymers A) and B).

3.5.1 In that respect, it was not shown by the respondent that the skilled person would have any difficulty to carry out such a preparation process, which merely resides in the mechanical blending of two polymers as defined in granted claim 1. There is also no reason for the Board to doubt that such a process cannot be carried out on the basis of common general knowledge, since it is a routine operation for the skilled person working in the field of polymers.

3.5.2 The respondent was of the opinion that, in view of the large amount of information provided in the patent in suit regarding sequential polymerisation and of the scarce information regarding a blending process, the compositions of granted claim 1 had to be prepared by sequential polymerisation. Besides, since the patent in suit did not provide sufficient information in respect of said sequential polymerisation (see sections 3.1 and 3.2 to 3.5 above), the requirements of sufficiency of disclosure were not satisfied.

However, the subject-matter of granted claim 1 was not shown to be limited, even implicitly, by the process used to prepare it. Therefore, there is no reason to reduce the question of sufficiency of disclosure to the sole preparation process by sequential polymerisation, contrary to the respondent's view. Therefore, considering that it is explicitly indicated in paragraph 30 of the patent in suit that the compositions being claimed may be prepared by mechanical blending and since it was not shown that the skilled person would have any difficulty in carrying out such a mechanical blending on the basis of the general knowledge of the skilled person working in the technical field of the patent in suit, there is no reason for the Board to consider that the skilled person is not able to prepare a composition according to granted claim 1 by first preparing each of fractions A) and B) separately and then blending these two fractions together.

For that reason, the argument of the respondent is rejected.

3.6 In view of the above, the arguments regarding sufficiency of disclosure put forward by the appellant and/or retained by the opposition division fail to convince and the contested decision has to be set aside.

4. Remittal

4.1 The issues of novelty and inventive step were addressed neither in the contested decision, nor in the appeal proceedings. Further considering that the appellant and the respondent both requested remittal to the department of first instance, the Board finds it appropriate to remit the case to the department of first instance for further prosecution (Article 111(1) EPC).

4.2 In this respect, the complete absence in the decision under appeal of an analysis of the grounds of opposition of lack of novelty and lack of inventive step together with the request of remittal of both parties are, according to the Board, special reasons in the sense of Article 11 RPBA 2020, for which a remittal of the case to the opposition division is appropriate.

4.3 Regarding the remittal to the department of first instance, it is pointed out that, in view of the above assessment of sufficiency of disclosure, it seems that possible differences between data related to the ethylene content of fractions A) and/or B) as defined in granted claim 1 may be obtained when different methods of determination are used (which appears to be an issue known in the art, as indicated in E3: page 1, right hand side column, second full paragraph). Although that variability in the results depending on the determination method considered was not found to amount to a lack of sufficiency of disclosure for the reasons indicated above, it may nevertheless play a role when assessing novelty of the subject-matter being claimed over the prior art and/or when assessing the difference(s) between said subject-matter and the closest prior art in the analysis of inventive step, as it was explicitly acknowledged by the appellant during the oral proceedings before the Board (see section XIII (j) above).