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T 0257/10 (Lubricant/HENKEL) of 15.5.2012

European Case Law Identifier: ECLI:EP:BA:2012:T025710.20120515
Date of decision: 15 May 2012
Case number: T 0257/10
Application number: 01925970.4
IPC class: C10M 111/00
C10M 173/00
B21C 9/02
B21C 9/00
B21J 3/00
Language of proceedings: EN
Distribution: C
Download and more information:
Decision text in EN (PDF, 104.810K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: Aqueous lubricant for plastic working of metallic material and method of lubricant film processing
Applicant name: Henkel AG & Co. KGaA
Opponent name: -
Board: 3.3.01
Headnote: -
Relevant legal provisions:
European Patent Convention Art 123(2)
Keywords: Amendment (allowable) - supported by original claims - subsequently introduced unsupported feature deleted


Cited decisions:
Citing decisions:

Summary of Facts and Submissions

I. The Appellant lodged an appeal against the decision of the Examining Division refusing European patent application No. 01925970.4.

II. The decision under appeal was based on the set of claims filed with letter of 29 March 2007. The Examining Division held that the subject-matter of claim 1 did not meet the requirement of Article 123(2) EPC, because the feature "which does not contain any other synthetic resin than the wax (C)" was not supported by the application as originally filed.

III. With the statement of grounds of appeal the Appellant filed a main request and first to third auxiliary requests.

IV. In a communication accompanying the summons to oral proceedings, the Board expressed its preliminary opinion. In particular, the Board indicated that it agreed with the Examining Division's finding that the "negative" feature still present in the Appellant's main request had no basis, either explicitly or implicitly, in the application as originally filed. The same applied to the "negative" feature present in the second auxiliary request. Concerning the amendments in the third auxiliary request, the Board requested the Appellant to provide a clear basis for the combination of features in the application as filed. The Board's only objection with regard to the first auxiliary request was the deletion of the expression "or dispersed" in claim 1. The Board also informed the Appellant that it intended to remit the case for further prosecution to the department of first instance, if it came to the conclusion that at least one of the Appellant's requests complied with Article 123(2) EPC.

V. In response to the Board's communication, the Appellant filed a new main request as well as two new auxiliary requests replacing the previously filed requests.

The main request consists of 5 claims with independent claims 1 and 3 reading as follows:

"1. Aqueous lubricant used for plastic working of metallic material which contains (A) water soluble inorganic salt being selected from a group of sulfate, silicate, borate, molybdate and tungstate, (B) one or more than one lubricative agent being selected from molybdenum disulfide and graphite, and (C) Wax, and these components are dissolved or dispersed in water and weight ratio of (B)/(A) in solid state is in the range of 1.0 to 5.0 and weight ratio of (C)/(A) in solid state is in the range of 0.1 to 1.0."

"3. Method of lubricative film processing wherein aqueous lubricant according to any of claim (1) to (2) is applied to the cleaned surface of the metallic material and is dried, and produce the lubricative film of 0.5 to 40 g/m**(2) on the surface of the metallic material."

VI. The Appellant withdrew its request for oral proceedings in reply to a communication by the Board informing it that its main request was considered to comply with the requirements of Article 123(2) EPC.

VII. The Appellant requested that the decision under appeal be set aside and that the case be remitted to the department of first instance for further prosecution on the basis of the main request.

Reasons for the Decision

1. The appeal is admissible.

Main request

2. Amendments

The amendments in claim 1 of the main request are based on claims 1 and 2 as originally filed. Claims 2-5 find their basis in claims 3-6 as originally filed.

The subsequently introduced "negative" feature which was objected to in the decision under appeal and the Board's communication of 6 February 2012 (see points II and IV above) was removed.

The Board therefore concludes that the main request complies with Article 123(2) EPC.

3. Remittal

Since the Examining Division in the decision under appeal refused the patent application solely for the reason of non-compliance with Article 123(2) EPC, the Board considers it appropriate to exercise its discretion according to Article 111(1) EPC and not to examine any further issues during the appeal proceedings but to remit the case to the department of first instance for further prosecution.

4. Since the Board has come to the conclusion that the Appellant's main request is supported by the application as filed and has decided to remit the case to the department of first instance, there is no need to decide on any of the Appellant's auxiliary requests.


For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of the main request.

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