T 1131/01 18-11-2003

I. Mention of the grant of European patent No. 0 633 272 in respect of European patent application No. 94 110 168.5 in the name of SPHERILENE S.r.l. (now BASELL TECHNOLOGY COMPANY B.V.), which had been filed on 30 June 1994 claiming an IT priority of 7 July 1993, was announced on 17 September 1997 on the basis of 21 claims, Claim 1 reading as follows:

"1. A supported catalyst for the polymerization of olefins, comprising:

(A) a porous organic support functionalised with groups having active hydrogen atoms;

(B) at least one organo-metallic compound of aluminium containing at least one heteroatom selected from oxygen, nitrogen and sulphur; and

(C) at least one compound of a transition metal selected from those of groups IVb, Vb or VIb of the Periodic Table of the Elements, containing at least one ligand of the cyclopentadienyl type."

II. Notice of Opposition requesting revocation of the patent in its entirety on the grounds of Article 100(a) and (b) EPC was filed by Univation Technologies LLC on 17 June 1998.

The opposition was inter alia based on documents

D1: EP-A-0 563 917 and

D2: EP-A-0 598 543.

III. By its interlocutory decision announced orally on 20 June 2001 and issued in writing on 17 August 2001, the Opposition Division held

(a) that the subject-matter of the (then) main request did not comply with the requirements of Article 54 EPC, but

(b) that the requirements of the EPC were met by the patent as amended according to the claims of the (then) first auxiliary request.

IV. Claim 1 of the said main request differed from its granted version by two features in section (A) as emphasised in the following quotation:

"(A) a porous organic polymer support functionalised with groups having active hydrogen atoms, having a porosity (B.E.T.) higher than 0.2 cm3/g;" (emphasis added).

V. In the Opposition Division's view, the subject-matter of this Claim 1 was anticipated under Article 54(3) EPC by documents D1 (prior art for all designated contracting states except for DK) and D2 (prior art for the designated contracting states DE, FR, GB, IT and NL) because both documents disclosed supported metallocene/aluminoxane catalysts comprising porous supports made from polyamides and polycarbonates which met all features of Claim 1 of the main request including, in particular, the feature "polymer support functionalised with groups having active hydrogen atoms".

This conclusion resulted from the fact that the afore- mentioned feature was considered to embrace polymers which (only) showed functional groups having active hydrogen atoms and thus included polyamides comprising "functional" amide groups within the polymer chain as well as polycarbonates having terminal "functional" hydroxyl groups, because these "functional" groups contained active hydrogen atoms.

VI. On 16 October 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 filed on 19 December 2001.

Therewith the Appellant resubmitted as its main request Claims 1 to 21 of the main request underlying the decision under appeal (cf. sections I and IV above) and additionally filed, as auxiliary request, a further set of 21 claims identical to the main request but for the following proviso in the definition of component (A) of Claim 1:

"(A) a porous organic polymer support functionalised with groups having active hydrogen atoms, having a porosity (B.E.T.) higher than 0.2 cm3/g, polyamides and polycarbonates being excluded;" (emphasis added).

VII. The arguments of the Appellant presented in the written submissions and at the oral proceedings held on 18 November 2003 may be summarized as follows:

(a) In the Appellant's view, the word "functionalised" in the context of the feature of Claim 1 "porous organic polymer support functionalised with active hydrogen atoms" was to be regarded as a product-by-process feature, i.e. was intended to characterise a "standard" polymer which had been modified to bear groups having active hydrogen atoms alien to said "standard" polymer.

(b) "Standard" polyamides and polycarbonates, like those disclosed in D1 and D2, which only "showed" functional groups having active hydrogen could not therefore be regarded as polymers functionalised with groups having active hydrogen.

(c) This resulted from the chemical structure of these "standard" polymers as outlined in documents

D33: Kirk-Othmer "Encyclopedia of Chemical Technology", Vol. 19, pages 454 to 457, and

D34: Kirk-Othmer "Encyclopedia of Chemical Technology", Vol. 19, pages 584 to 586.

(d) In support of the argument that a functionalised polymer was a "standard" polymer modified in order to comprise pending functional groups the Appellant furthermore submitted new documents D35 to D44.

(e) This interpretation of the word "functionalised" was also in line with the following disclosure of the patent in suit:

(i) The use in the statements on page 2, lines 53 to 58 of the term "functional group" referring to groups which had been introduced by "functionalisation-modification";

(ii) The reference on page 3, lines 4 to 17 to the preparation methods of the preferred functionalised, partially cross- linked styrenic polymers, either by "functionalisation- modification" of a precursor polymer made from a styrenic monomer and a cross-linkable comonomer or by direct copolymerisation of styrenic monomers with comonomers functionalised with groups containing active hydrogen atoms;

(iii) The indication on page 8, lines 29 to 31 of methods for the qualitative and quantitative determination of functional groups, which, in the Appellant's view, would be unnecessary if the presence and amount of functional groups having active hydrogen atoms were known as intrinsic properties of "standard" polyamides and polycarbonates;

(iv) The same conclusion applied to the statement on page 3, lines 1 to 3 of the patent specification which referred to a minimum amount of functional groups.

(f) The Appellant denied the validity of the argument that, in view of the jurisprudence of the EPO, the product-by-process character of the word "functionalised" made "standard" polyamides and polycarbonates indistinguishable from structurally identical polyamides and polycarbonates which had been prepared by appropriate "functionalisation-modification" of "precursor" polymers, because, in its view, the skilled person would not consider such structurally identical polyamides and polycarbonates as "functionalised" polymers.

(g) Consequently, the subject-matter of the main request was novel over documents D1 and D2.

(h) For the reasons given in the decision under appeal for the allowability of the then first auxiliary request the subject- matter of the main request also involved an inventive step.

(i) In the event that the novelty objection of the decision under appeal against the subject-matter of the main request was maintained, novelty could be established, in the Appellant's view, by the exclusion of polyamides and polycarbonates from the support materials to be used according to Claim 1 of the auxiliary request.

(j) In view of the fact that the issue of the allowability of a disclaimer which was not based on the application as filed was pending before the Enlarged Board of Appeal, the Appellant agreed that the present appeal proceedings be stayed until a decision is rendered by that body in the respective cases G 1/03 (referring to T 507/99, OJ EPO 2003, 225) and G 2/03 (referring to T 451/99, OJ EPO 2003, 334).

VIII. The arguments of the Respondent/Opponent submitted in its letter dated 4 July 2002 and at the oral proceedings may be summarised as follows:

(a) The sole question that needed to be decided with regard to the issue of novelty vis-à-vis D1 and D2 was whether the polymer supports disclosed in these documents met the feature of Claim 1 "organic polymer support functionalised with groups having active hydrogen atoms". All other features of Claim 1 of the main request were clearly anticipated by D1 and D2.

(b) The interpretation of this feature was to be made on the basis of the content of the specification of the patent in suit itself. Support in this exercise contained in the newly cited textbook excerpts D33 and D34 was accepted by the Respondent, whereas the further newly cited documents D35 to D44 should, in its view, be excluded from consideration for lack of relevance.

(c) Considering the standard rules of the English language the word "functionalised" in that feature could only be interpreted to mean that the polymer support possessed groups having active hydrogen atoms.

(d) There could be no doubt that the polyamides and polycarbonates disclosed as support materials in D1 and D2 met this requirement because their active hydrogen atoms could be quantitatively determined by the method suggested in the patent in suit, i.e. by gas-volumetric measurement after reaction with aluminium triethyl.

(e) This test could not, therefore, support the Appellant's assertion that the claimed invention only covered polymer supports whose active hydrogen atoms were situated on pendant groups, and excluded polymers whose active hydrogen atoms were situated on the polymer backbone or in terminal position.

(f) Since this could only lead to the conclusion set out in sub-section (c) above, there was no need to investigate whether polyamides and polycarbonates disclosed in D1 and D2 could be conceived as "functionalised" polymers, i.e. as polymers resulting from some modification of, respectively, a "standard" polyamide or "standard" polycarbonate which did not comprise functional groups other than those constituting the "genuine" polymer structure.

(g) However if this issue should become decisive then it was to be considered that even "ordinary" polyamides and polycarbonates could, at least theoretically, be regarded as products of a modification of a precursor polymer, eg by addition of further repeating units to a "precursor" polyamide or end-capping of a "precursor" polycarbonate with (possibly backbone-identical) terminating monomers. A possible product- by-process interpretation of the word "functionalised" could not therefore provide novelty because its process character was not so as to make the resulting polymer distinguishable from "non-functionalised" polymers.

(h) The main request must therefore be refused for lack of novelty of the subject-matter of Claim 1 over D1 and D2.

(i) In the Respondent's view, the auxiliary request was not allowable (1) because the proviso in Claim 1 was not sufficiently strictly based on the respective disclosures of D1 and D2 as was required for a disclaimer, and (2) because it was not supported by the application as filed and therefore contravened Article 123(2) EPC as had been held in T 323/97 (OJ EPO 2002, 476).

(j) Moreover, until now it had not been established that the subject-matter of Claim 1 of the auxiliary request without the disclaimer enjoyed the claimed priority; in the Respondent's view, it was incumbent on the Appellant to show that all positive features of this amended claim found support in the claimed combination in the priority document.

(k) In view of the referral to the Enlarged Board of Appeal of the issue of the allowablity of disclaimers which are not based on the original disclosure, the Respondent agreed that, for a decision on the novelty of the subject-matter of the auxiliary request, the case should be stayed.

IX. The Appellant requested that the decision under appeal be set aside and that the patent be maintained on the basis of the claims of the main request or of the auxiliary request both filed on 19 December 2001.

The Respondent requested that the appeal be dismissed or, if not, the proceedings be suspended pending decision of the Enlarged Board of Appeal on disclaimers, and the Board consider submitting a question to the Enlarged Board: "If in a claim an amendment is made which does not find basis in the specification as filed and in the priority document, is the claim to priority then validly maintained for that claim?", and if the first auxiliary request is not refused, then the case be remitted to the first instance for examination of inventive step.