T 0431/03 03-05-2006

1. The appeal complies with Articles 106 and 108 EPC and Rule 64 EPC and is therefore admissible.

2. Interpretation of Claims 1 and 2 as granted

2.1 Claims 1 and 2 as granted (point I, above) refer to a plastic composition which comprises a copolymer comprising an acrylonitrile component, a butadiene component (Claim 2: an acrylic rubber component) and a styrene component, wherein the content of the butadiene component is from 5 to 15 mol% (Claim 2: the content of the acrylic rubber component is from 3 to 15 mol%), the content of the acrylonitrile component is from 40 to 50 mol% (Claim 2: 40 to 55 mol%) and the content of the styrene component is from 40 to 50 mol%.

2.2 Both parties agreed that the molar amounts of the components in Claims 1 and 2 related to the monomers as pointed out in the decision under appeal (point III (a), above). However, there was a disagreement between the parties as to the proper antecedent for the term "wherein" in these claims. According to the respondent, the molar amounts for each component related to the copolymer whereas the appellant was of the opinion that the term "wherein" could also relate to the plastic composition.

2.2.1 When analysing the grammatical structure of Claims 1 and 2, it is evident that the copolymer comprises an acrylonitrile component, a butadiene component (or an acrylic rubber component) and a styrene component. Since the immediately following subordinate clause starting with "wherein" gives the amount of components previously referred to in the context of the copolymer, it would be natural in English to construe the claims by referring "wherein" back to the copolymer, contrary to what is stated in the declaration D23.

2.2.2 It might be true, as argued by the appellant, that the patent specification and the application as originally filed do not disclose a copolymer comprising specific components in specified amounts. However, a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently. As to the question whether or not the term "copolymer" in Claims 1 and 2 as granted has a valid basis in the application as originally filed at all, the board is not empowered to examine this issue because Article 100(c) EPC was not a ground of opposition and the respondent did not agree that this fresh ground for opposition was to be considered (G 10/91, OJ EPO 1993, 420, point 18 of the reasons).

2.2.3 Furthermore, the fact that the term "dans laquelle" (= wherein) in the French claims can refer solely to "composition de matière" (= composition) also cannot support the appellant's interpretation of the claims. The text of a European patent in the language of the proceedings is the authentic text in any proceedings before the European Patent Office and in any Contracting State (Article 70(1) EPC). In the present case, the relevant language is therefore English.

2.2.4 Thus, Claims 1 and 2 as granted read on their own refer to a plastic composition comprising a copolymer whereby the copolymer comprises certain components in specified amounts.

2.3 As regards the term "copolymer" in Claims 1 and 2, the respondent associated the term "copolymer" with a specific type of polymerization and/or a specific polymerization sequence. Furthermore, this term would exclude physical mixtures of polymers, such as acrylonitrile butadiene styrene resins (ABS) and acrylonitrile styrene acrylate resins (ASA).

2.3.1 However, the patent in suit and the application as originally filed, respectively, do not define the term "copolymer". Moreover, as pointed out by the appellant, the term "copolymer" appears in the application as originally filed only in the discussion of the prior art (pages 1-3) but not in relation to the invention.

Furthermore, the passages in paragraphs [0019] and [0022] of the patent in suit (page 6, lines 19-25 and page 8, lines 3-9 of the application as originally filed) merely indicate that the components are polymerized, and that the products of these polymerizations have a certain MI. These passages, and in particular the last sentences thereof, by no means hint at a specific type of polymerization, let alone at a copolymerization of a certain monomer mixture (eg the copolymerization of a mixture of acrylonitrile, butadiene and styrene), or at a certain polymerization sequence.

2.3.2 As a general rule, any ambiguous text must be construed against the interest of the person responsible for drafting it (in the present case the proprietor), and in favour of the person on whom it is imposed (in the present case the appellant as a member of the public). This means that the term "copolymer" has to be interpreted broadly. Hence, in the context of the patent in suit, the term "copolymer" can only mean that the components are polymerized in some form. It does not necessarily imply that the all members of a certain monomer mixture are incorporated into the same polymer chain or that a particular polymerization sequence has to be carried out.

2.3.3 ABS resins are thermoplastic and elastomeric polymer blends comprising a discontinuous butadiene rubber phase and a continuous thermoplastic styrene acrylonitrile phase (SAN). It is the whole two-phase structure which is generally referred to as ABS resin or ABS copolymer as can be seen from document D27 which appears to represent the common general knowledge at the priority date of the patent in suit (1994/1995).

Since the patent in suit does not further define the term "copolymer" and, consequently, this term has to be interpreted broadly (see point 2.3.1 and 2.3.2, above), a two-phase ABS resin, as for example disclosed in D1, is considered to represent a "copolymer" in the sense of Claim 1. The respondent's argument that an ABS resin is a physical mixture and, therefore, different from a copolymer according to Claim 1 which is obtained by copolymerizing a certain monomer mixture must fail because Claim 1 does not require copolymerizing a certain monomer mixture.

Thus, in principle, an ABS resin (or an ABS copolymer) is a "copolymer" within the meaning of Claim 1 as granted.

2.3.4 As regards ASA resins, there is no doubt that these resins are, as ABS resins, two-phase resins with a continuous SAN matrix and a grafted acrylic rubber phase (D26). D25, cited by the respondent, which merely defines ASA as an abbreviation for acrylonitrile styrene acrylic ester copolymers cannot throw doubt on this fact. Thus, for the same reasons as to why an ABS resin is a "copolymer" within the meaning of Claim 1, an ASA resin is a "copolymer" within the meaning of Claim 2.

Main request (claims as granted)

3. Sufficiency of disclosure (main request)

At the oral proceedings before the board, the appellant withdrew its objection raised under Article 100(b) EPC and no longer challenged the corresponding finding of the opposition division (point X (b), above). Nor does the board see any reason to raise an objection in this respect.

4. Novelty (main request)

4.1 D1

4.1.1 D1 is the only document relied upon by the appellant for novelty against a composition as defined in granted Claim 1.

D1 discloses a thermoplastic composition comprising a copolymer A and 10-50 wt.% (based on A and B) of a graft copolymer B. The copolymer A contains 60-80 wt.% styrene or methylstyrene and 20-40 wt.% acrylonitrile, and the graft copolymer B contains 40-80 wt.% (based on B) of a butadiene rubber grafted with 60-20 wt.% styrene and acrylonitrile in a ratio of 80:20 to 65:35 (pages 2-3 of D1). Such a composition is also referred to as an ABS resin (page 1 of D1).

4.1.2 As explained in point 2.3.3, above, an ABS resin can in principle be cited against the subject-matter of Claim 1 as granted. The relevant question is as to whether or not the disclosure of D1 meets all the requirements of Claim 1.

4.1.3 The appellant based its novelty objection against the subject-matter of Claim 1 as granted on a combination of Example 2 of D1 and the general disclosure on pages 2, 4 and 15-17. Thus, in Experimental Report D12, the graft copolymer B of Example 2 of D1 was repeated and mixed on an extruder with 90 or 87,5 wt.% of a copolymer A (70 wt.% styrene and 30 wt.% acrylonitrile). According to D12, these mixtures meet the requirements of Claim 1 as granted.

4.1.4 It is, however, conspicuous to the board that the combination of copolymer A and graft copolymer B exemplified by the appellant in D12 is not disclosed in D1. Although the composition and the amount of copolymer A used in D12 fall within the general ranges indicated in D1, D1 does not disclose this particular copolymer A with 70 wt.% styrene and 30 wt.% acrylonitrile, let alone the combination of 90 or 87,5 wt.% of such a copolymer A with the graft copolymer B of Example 2. According to D1, 42 wt.% of the copolymer B of Example 2 are mixed on an extruder with 58 wt.% of a copolymer A containing 65 wt.% styrene and 35 wt.% acrylonitrile. In other words, the appellant created a novelty destroying embodiment by arbitrarily selecting the graft copolymer B of Example 2 of D1 and combining it with a copolymer A that is not even explicitly disclosed in D1.

When assessing novelty, the content of a prior art document must not be treated as something in the nature of a reservoir from which it would be permissible to combine different individual features pertaining to the general disclosure and/or the examples in order to create artificially a particular embodiment which would destroy novelty, unless the document itself suggests such a combination of features. In the present case, the combination of copolymer A and graft copolymer B as used in D12 is neither explicitly nor implicitly suggested by the document. Consequently, the experiment carried out in D12 is not novelty destroying to the subject-matter of Claim 1.

4.1.5 Since, furthermore, it has not been shown that any other embodiment disclosed in D1 meets the requirements of Claim 1 as granted, the subject-matter of Claim 1 is novel over the disclosure of D1.

4.2 D2

4.2.1 D2 is directed to a weather and impact resistant resin composition which comprises a graft copolymer (a), a graft copolymer (b) and a copolymer (c). Comparative Example 1 of D2 discloses a graft copolymer (a) obtained by grafting particles of an acrylic rubber with styrene and acrylonitrile. This graft copolymer (a) is mixed with a copolymer (c) made from 70 wt.% styrene and 30 wt.% acrylonitrile.

4.2.2 The appellant repeated Comparative Example 1 of D2 (Experimental Report D13) and found that the resin prepared according to Comparative Example 1 of D2 met all the requirements of Claim 2 as granted. The resin was obtained by polymerizing a mixture containing 12.59 mol% butyl acrylate, 41.01 mol% acrylonitrile and 46.33 mol% styrene and had a melt flow index of 12.93 g/10 min ((as measured at 260ºC with a force of 2.16 kg in accordance with JIS K7210). Hence, the subject-matter of Claim 2 lacks novelty over Comparative Example 1 of D2.

4.2.3 The respondent's argument that the physical mixture of Comparative Example 1 of D2 is different from a copolymer according to Claim 2 which is obtained by polymerizing a certain monomer mixture must fail in view of the interpretation given to the term "copolymer" (point 2.3.1 to 2.3.4, above).

4.2.4 At the oral proceedings before the board, the respondent tried to throw doubts on D13. According to its own calculations, the monomer content of the components in Comparative Example 1 of D2 was slightly different from the figures given in D13, and in particular the acrylonitrile content was with 39.8 mol% outside the range required in Claim 2 as granted. However, this argument is not convincing if only for the reason that the respondent did not provide a calculation for its figures. An unsubstantiated allegation raised for the first time at the very latest moment in the proceedings is not enough to raise doubts against an experimental report that has been on file unchallenged for six years (D13 was filed together with the notice of appeal on 4 May 2000).

4.2.5 In summary, the subject-matter of Claim 2 as granted is not novel over Comparative Example 1 of D2 (Article 54 EPC).

4.3 Under these circumstances there was no need to consider the issue of prior use occurring with the sale of Luran® S KR 2855 and Luran® S KR 2856.

5. The subject-matter of Claim 2 as granted being not novel, the respondent's main request has to be refused.

Auxiliary request I

6. Amendments (auxiliary request I)

6.1 Claims 1-8 of auxiliary request 1 correspond to Claims 1 and 3-9 as granted whereby the dependencies had been amended accordingly.

6.2 Claim 2 as granted ("a plastic composition which comprises a copolymer comprising an acrylonitrile component, an acrylic rubber component and a styrene component …") has been deleted from auxiliary request I. Nevertheless, it is in the legitimate interest of the respondent to pursue claims directed to a plastic card moulded by injection moulding such a composition. Thus, no objections under Rule 57a EPC arise against the introduction of new Claims 9-15 directed to such a plastic card.

Since, furthermore, new Claims 9-15 are merely a linguistic reformulation of Claim 9 as granted in combination with Claims 2-8 as granted, no objections under Article 84 or 123 EPC arise.

6.3 The appellant argued that the claims of auxiliary request I did not meet the requirements of Article 123(2) EPC with respect to the term "copolymer". However, this term was already present in the granted claims. Article 102(3) EPC does not allow objections to be based upon Article 123(2) EPC (or Article 84 EPC), if such objections do not arise out of the amendments made in the course of the opposition or opposition appeal proceedings, respectively (eg T 301/87 (OJ EPO 1990, 335, point 3.8 of the reasons), G 9/91 (OJ EPO 1993, 408, point 19 of the reasons) or T 381/02 of 26 August 2004 (not published in the OJ EPO, points 2.3.2 to 2.3.5 of the reasons)).

7. Novelty (auxiliary request I)

7.1 Claims 1-8 of auxiliary request I correspond to Claims 1 and 3-9 as granted. As can be seen from point 4.1.1 to 4.1.5, above, the subject-matter of these claims is novel over the cited prior.

7.2 It may be convenient to recall at this juncture that the appellant only relied on D2 and the alleged prior use for its novelty objection against a composition as defined in granted Claim 2. Since, however, the claim directed to the composition has been deleted and neither D2 nor the alleged prior use disclose a plastic card moulded by injection moulding such a composition, the subject-matter of Claims 9-15 is novel over this prior art.

7.3 Thus, the claimed subject-matter of auxiliary request I is novel over the cited prior art.

8. Problem and solution (auxiliary request I)

8.1 Claim 1 of auxiliary request I is directed in general terms to a plastic composition useful for forming plastic cards such as credit cards or IC cards, which are used as embossed (paragraph [001] of the patent in suit). Claim 8 is directed to a plastic card made of such a composition, and Claim 9 is directed to a plastic card made of the composition of Claim 2 as granted.

8.2 D8a discloses a method of making cards, and in particular cards including memory and particularly electronic memory, comprising inter alia the step of injecting a thermoplastic material into a mould in order to form the card body (Claim 1). Although styrene butadiene acrylonitrile, ie ABS, is the preferred plastic material (column 2, lines 37-38), other materials could also be used, eg polystyrene, polypropylene and polyamine 11 (presumably polyamide 11) (column 3, lines 31-32). Since ABS resins are copolymers within the meaning of Claim 1 (point 2.3.3, above) and D8a discloses purpose and intended use most similar to the claimed subject-matter, D8a is considered to represent the closest prior art.

8.3 As can be seen from Table 1 in the patent in suit, the plastic composition of Claim 1 is excellent in mouldability and yields a plastic card where deformation or cracking of embossed letters is prevented at the time of the embossing operation (Examples 1-4). However, this advantageous balance of properties is not achieved with a composition which does not have the required amount of components (Comparative Example 1) or the required melt flow index (Comparative Example 2). The same is true for a plastic card made from the composition required in Claim 9 (Table 11 of the patent in suit; Examples 48-51 versus Comparative Examples 12-13).

8.4 Therefore, the objective technical problem to be solved by the claimed subject-matter has to be seen in the provision of a plastic composition that prevents when moulded into a plastic card deformation or cracking of embossed letters and has good mouldability and/or (for the subject-matter of Claim 9) the provision of a plastic card having this balance of properties.

In view of the examples and comparative examples in the patent in suit (point 8.3, above), the board is satisfied that the above identified objective technical problem is solved by the features required in Claims 1 and 9 of auxiliary request I.

9. Inventive step (auxiliary request I)

9.1 It remains to be decided whether the proposed solution, ie the plastic composition of Claim 1 or the plastic card made from the plastic composition required in Claim 9, is obvious from the available prior art.

9.2 In D8a itself, there is only a general reference to ABS resins. There is no hint to a specific ABS resin which would meet the requirements of Claim 1, let alone a hint that such a resin would provide advantageous effects associated with cracking of embossed letters and mouldability.

There is also no hint in D8a to use a resin as required in Claim 9 having an acrylic rubber component.

9.3 It may be true that, as argued by the appellant, some of the compositions falling within the general disclosure of D1 meet the requirements of Claim 1. However, there is neither an explicit nor an implicit disclosure in D1 of a composition as claimed in Claim 1 nor any suggestion that a composition with these specific parameters would provide the advantageous effects associated with cracking of embossed letters and mouldability. The mere fact that the compositions disclosed in D1 "overlap" with the composition of Claim 1 is not enough to render the subject-matter of Claim 1 obvious. Moreover, a combination of D1 with the closest prior art would be based on hindsight since without the knowledge of the teaching of the patent in suit a person skilled in the art had no incentive whatsoever to focus on the particular composition required in Claim 1 of auxiliary request I in order to solve the stated objective technical problem.

9.4 D7 discloses in Claim 1 a process for the manufacture of thermoplastic resins where a monomer mixture of vinyl cyanide compound (eg acrylonitrile), an aromatic vinyl compound (eg styrene) and a compound having an imide group are copolymerized in the presence of a cross-linked acrylic rubber. The thermoplastic resins have excellent weather, impact and thermal resistance and can be moulded (page 2).

9.4.1 According to the appellant, the compositions of D7 "overlap" with the composition required in Claim 9. However, this allegation has never been proven. But even if there is an overlap, there is no explicit nor implicit disclosure in D7 of a composition as required in Claim 9 of auxiliary request I nor any suggestion that a composition with these specific parameters would provide the advantageous effects associated with cracking of embossed letters and mouldability. Again, a combination of D7 and D8a would be based on hindsight.

9.4.2 No other conclusion with respect to inventive step of Claim 9 of auxiliary request I can be reached when D7 is chosen as the closest prior art, as proposed by the appellant. Apart from the fact that it has not been demonstrated that the compositions of D7 "overlap" with the composition as required in Claim 9, there is no hint in D7 to select from the general disclosure of D7 a specific composition and to use it for moulding plastic cards, let alone a hint to the composition required in Claim 9 of auxiliary request I leading to the above mentioned advantageous technical effects. It appears that also this approach of the appellant is based on the knowledge of the invention and, therefore, cannot succeed.

9.5 A person skilled in the art would also not consider a combination of D8a with the resin disclosed in Comparative Example 1 of D2. Apart from the fact that D2 is not concerned with the moulding of plastic cards at all, there is also no hint that a resin not even belonging to the invention of D2 would provide the advantageous effects referred to in the patent in suit.

9.6 In summary, the solution to the stated problem does not arise in an obvious way from the state of the art. Consequently, the subject-matter of Claims 1 and 9 of auxiliary request I, and, by the same token, the subject-matter of Claims 2-8 and 10-15 involves an inventive step.

10. Because the respondent succeeded on auxiliary request I, there was no need to consider its further auxiliary requests.