T 0657/01 24-06-2003

I. Mention of the grant of European patent No. 0 565 184 in respect of European patent application No. 93 200 971.3 in the name of Great Lakes Chemical Italia S.r.l. (now Great Lakes Chemical (Europe) GmbH), which had been filed on 1 April 1993 claiming an IT priority of 6 April 1992, was announced on 17 June 1998 on the basis of four claims, independent Claims 1 and 4 reading as follows:

"1. Process for obtaining granular forms from powder mixtures of two or more additives for organic polymers in the absence of waxes, paraffins and stearamides, which includes extruding the mixture at a temperature of between about the melting point of the component with the lowest melting point and 140° C, cooling the extrudate at room temperature and cutting or granulating it into pellets, with the condition that, when the mixture consists of two additives, these are not tetrakis[3-(3,5-di-t-butyl-4- hydroxyphenyl)propionyloxymethyl]methane, either in an amorphous or crystalline form, and an antiacid."

"4. Use of the pellets obtained with the process relating to any of the previous claims, combined with organic polymers."

Claims 2 and 3 were dependent on Claim 1.

II. Notice of Opposition requesting revocation of the patent in its entirety on the grounds of Article 100(a), (b) and (c) EPC was filed by

CIBA Specialty Chemicals Holding (Opponent I) on 15. March 1999,

General Electric Company (Opponent II) on 17 March 1999,

Akzo Nobel N.V. (Opponent III) on 17 March 1999, and

W.R. Grace & Co (Opponent IV) on 17 March 1999.

III. The oppositions were inter alia based on documents

E1: EP-A-0 514 784,

E3: EP-A-0 392 392,

E4: Transcript of lecture "Pressagglomeration" held by Dipl.Ing. R. Friedrich on 20 September 1989, and

E5: US-A-4 446 086.

IV. By its decision orally announced on 27 March 2001 and issued in writing on 20 April 2001, the Opposition Division revoked the patent.

The decision was based on a main and two auxiliary requests whose Claims 1 differed from the granted version by the addition of a disclaimer (all requests) and by further amendments (auxiliary requests).

It held that

- all requests met the requirements of Article 123(2) and (3) EPC,

- the disclosure of the patent was sufficient within the terms of Article 83 EPC,

- the main request, although novel by introduction of the disclaimer over E1, was anticipated by E5,

- the first and the second auxiliary requests, although novel over E5, were obvious over E3 in combination with E4.

V. On 13 June 2001 the Patentee (Appellant) lodged an appeal against the decision of the Opposition Division and paid the appeal fee on the same day. The Statement of Grounds of Appeal was submitted on 29 August 2001. A further written submission was filed by the Appellant on 21 May 2003, partly in response to the provisional comments of the Rapporteur attached to the summons to attend oral proceedings dated 12 February 2003.

With the latter submission the Appellant filed four versions of Claim 1 (one main and three auxiliary requests), all these versions essentially corresponding to Claim 1 of the main request underlying the decision under appeal (i.e. being different from the granted version only by the disclaimer introduced to establish novelty over E1), but for the following amendments:

Main request: the words "or granulating" are deleted after the word "cutting"; the relevant passage therefore reading: "... cooling the extrudate at room temperature and cutting it into pellets ...".

First auxiliary request: the word "then" is inserted ahead of the word "cutting"; the relevant passage therefore reading: "... and then cutting it into pellets ..."

Second auxiliary request: the passage "to room temperature" is inserted after the words "at room temperature"; the relevant passage therefore reading: "... cooling the extrudate at room temperature to room temperature and cutting it into pellets ...".

Third auxiliary request: in addition to the same amendment as according to the second auxiliary request, the following new feature is added after "and cutting it into pellets": "... the mixture comprising at least one additive having a melting point above the extrusion temperature of the mixture ...".

VI. The Appellant's arguments as far as they are relevant for this decision and as presented in their written submissions and during the oral proceedings held on 24. June 2003 may be summarized as follows:

(i) The passage in Claim 1 of all requests "cooling the extrudate at room temperature" met the requirements of Article 123(2) EPC in that it was fully supported by the disclosure of Example 1 of the application as filed. The reasons being as follows:

(1) To the skilled person there was no factual difference between the meaning of "cooled to room temperature", i.e. the term used in Example 1 for the treatment of the extruded "spaghetto", and "cooling at room temperature".

Evidence therefor was

- that the latter term was not objected to by the Examining Division, the Opposition Division and by three of the four opposition statements,

- the identity of these two terms when translated into French or Italian, and

- that the word "at" comprised the meaning "indicate the goal of an indirect or implied action" and could therefore be read to mean "cooled until they reach room temperature" (according to Webster's New Collegiate Dictionary, 1981, page 69).

(2) The information "cooling at room temperature" was implicit to the disclosure of the Examples because in the absence of a reference in the application as filed to forced cooling, the skilled person would take it for granted that the cooling was carried out at ordinary conditions, i.e. at room temperature; this was the automatic "default" position.

(ii) Alternatively, in application of the principles set out in G 1/93 (OJ EPO 1994, 541) the passage "cooling at room temperature" did not contravene the requirements of Article 123(2) EPC because this feature provided no technical contribution, but merely excluded something from protection and did not therefore give an unwarranted advantage to the Patentee.

(iii) This conclusion was particularly valid with regard to Claim 1 of the second and third auxiliary requests because by supplementing the passage "cooling at room temperature" by the words "to room temperature" it became even more conspicuous that what really mattered was the latter feature; the consequence being that the passage objected to was clearly rendered technically inessential and could remain in Claim 1 without contravention of Article 123(2) EPC as was held in the wholly analogous situation according to T 553/99 of 21 February 2001 (not published in the OJ EPO).

(iv) The Appellant submitted furthermore arguments with regard to other objections under Article 123(2) EPC, including the admissibility of the disclaimer which had been introduced during the first stage opposition proceedings, as well as with regard to the issues of novelty and inventive step.

VII. The Respondents presented their counterstatements in the following written submissions

Opponent I: 13 September 2002 and 10 April 2003,

Opponent II: 5 March 2002 and 5 June 2003,

Opponent IV: 7 May 2002,

and at the oral proceedings.

Opponent III refrained from making any written comments and did not attend the oral proceedings.

The arguments of the Respondents as far as they are relevant for this decision can be summarized as follows:

(i) The feature "cooling at room temperature" in Claim 1 of all requests went beyond the content of the application as filed.

(ii) However, this feature could not be deleted because it was already comprised by the granted version of Claim 1 with the consequence that its removal would result in an extension of the granted scope, contrary to Article 123(3) EPC.

(iii) By specifying the cooling conditions with the term "cooling at room temperature" instead of "cooling to room temperature", as according to the disclosure of the application as filed, the final temperature of the cooled extrudate was no longer restricted to room temperature but could be higher, thus giving the Patentee an unwarranted advantage over third parties which was contrary to the purpose of Article 123(2) EPC as set out in G 1/93 (Reasons 16).

(iv) As regards the consent to the passage "cooling at room temperature" of the previous instances of the EPO, reference was made to Section 13 of the Reasons of G 1/93 which held that it did not, in principle, matter that such amendment had been approved by the Examining Division because the ultimate responsibility for an amendment lay with the Applicant or Patentee.

(v) Since the language of the proceedings was English, it was the version in this language that determined the scope of Claim 1 and any possible alteration of the scope in another language was irrelevant.

(vi) The Appellant's position that, in the present case, "cooling at" and "cooling to" had the same meaning was at variance with the understanding of these terms by the competent skilled person, i.e. the expert in chemical engineering, because in this field the terms "cooling at" and "cooling to" had clearly a different meaning: the former relating to the thermal cooling environment and the latter to the final temperature of the cooled matter.

(vii) Any diverging interpretation, including those resulting from other meanings of the preposition "at" contained in Webster's New Collegiate Dictionary, required an explicit pointer in the patent specification which is missing.

(viii) The passage "cooling at room temperature" therefore clearly provided a technical contribution to the claimed subject-matter; this was even implicitly acknowledged by the Patentee at the granting stage by introducing this passage in order to establish novelty over E3.

(ix) Nor would the skilled person, in the absence of any information in the application as filed with respect to the thermal cooling conditions, regard "cooling at room temperature" as an inevitable "default" measure that was implicit to the disclosure of the application because the art comprised several cooling methods involving cooling temperatures different from room temperature, including cold air and water.

(x) Furthermore, for an added feature to be admissible under Article 123(2) EPC its clear and unambiguous disclosure was required; a merely possible interpretation from a host of other alternative interpretations was anyway insufficient.

(xi) In these circumstances, the conditions set out in Headnote 2 of G 1/93 for concluding that an added feature did not contravene Article 123(2) EPC because it did not provide a technical contribution to the subject-matter of the claimed invention was not met.

(xii) By supplementing the passage "cooling at room temperature" with the words "to room temperature", as proposed by the Appellant according to the second and third auxiliary requests, the technical contribution of the former passage was not affected and this passage not made redundant because the thermal cooling conditions and the final temperature of the cooled extrudate related to two separate technical measures.

For that reason the present situation was different from that underlying T 533/99 in which case the added feature relating to the position of the display surface of the claimed reflection minimizing apparatus covered the unsupported feature relating to the position of the display unit.

(xiii) In addition to the afore-mentioned arguments, the Respondents submitted further objections under Article 123(2) EPC, inter alia alleging the inadmissibility of the disclaimer which had been introduced in order to establish novelty over E1, as well as arguments relating to the issues of sufficiency, novelty and inventive step.

VIII. The Appellant requested that the decision under appeal be set aside and that the patent be maintained on the basis of the main request or the first to third auxiliary requests submitted on 21 May 2003.

The Respondents requested that the appeal be dismissed.