T 1234/04 24-10-2006

I. The mention of the grant of European patent 0 779 351, in respect of European patent application No. 96119763.9, filed on 10 December 1996, was published on 10 July 2002.

II. Notice of opposition was filed by the Respondent (Opponent) in which revocation of the patent in its entirety was requested on the grounds of lack of novelty and inventive step (Article 100(a) EPC).

III. In a decision issued in writing on 6 August 2004, the Opposition Division revoked the patent. The decision was based on a main request corresponding to the patent as granted and on 7 auxiliary requests submitted during the oral proceedings before the Opposition Division.

The Opposition Division came to the conclusion that the subject-matter of the then pending main request, first, fourth, fifth and seventh auxiliary request was not novel. The amendments carried out in the second, third and sixth auxiliary request did not comply with the requirements of Article 123(2) EPC since the application as filed did not provide a basis for the use of the propellant fluids defined in the patent in suit in aerosol formulations comprising a solvent, more precisely ethanol, in any concentration.

IV. On 15 October 2004, the Appellant (Proprietor of the patent in suit) lodged an appeal against the above decision. During the oral proceedings held before the Board on 24 October 2006 the Appellant defended the maintenance of the patent in suit on the basis of a main request and an auxiliary request both requests filed during said oral proceedings and superseding all previous requests.

The main request comprised a set of 8 claims, independent claim 1 reading as follows:

"1. Use as propellant fluid for aerosol formulations comprising ethanol of mixtures containing 1,1,1,2-tetrafluoroethane (HFC-134a), 1,1,1,2,3,3,3-heptafluoropropane (HFC-227ea) and, optionally, also n-butane and/or isobutane, selected from the group consisting of:

| A) | 1,1,1,2-tetrafluoroethane (HFC-134a) | 5-88% by wt |

| | 1,1,1,2,3,3,3-heptafluoropropane | 12-95% by wt |

| |(HFC-227ea) | |

| B) | 1,1,1,2-tetrafluoroethane (HFC-134a) | 10-87% by wt |

| | 1,1,1,2,3,3,3-heptafluoropropane | 12-81% by wt |

| |(HFC-227ea) | |

| | n-butane | 1-30% by wt |

| C) | 1,1,1,2-tetrafluoroethane (HFC-134a) | 18-69% by wt |

| | 1,1,1,2,3,3,3-heptafluoropropane | 30-81% by wt |

| |(HFC-227ea) | |

| | Isobutane | 1-30% by wt |

but excluding use of a mixture consisting of 50% by weight of HFC-134a and 50% by weight of HFC-227ea as propellant fluid for a solution aerosol formulation consisting of

(a) the propellant fluid;

(b) butixocort propionate (11-beta-hydroxypregn-4-ene-3,20-dione-21-thiopropionate-17-butyrate);

(c) 12% by weight relative to the total weight of the formulation ethanol;

(d) 0.25 weight% relative to the total weight of the formulation water; and

(e) 0.0025 weight% relative to the total weight formulation sorbitan trioleate."

The auxiliary request comprised a set of 6 claims, independent claim 1 of that request differing in essence from claim 1 according to the main request in that the mixture of propellant fluid of type C was deleted.

V. According to the Appellant the amendment of claim 1 of the main request and the auxiliary request specifying that the propellant mixtures were used for aerosol formulations comprising ethanol was based on the examples 6 and 7. Since the concentration of ethanol was not critical, these examples could be generalised to any concentration of ethanol as covered by the amended claim 1. A further support for this amendment was provided by the solubility tests reported in the application as filed from which it was derivable that the propellants were intended to be used in aerosol formulations comprising solvents and in particular ethanol. Therefore the amendment of claim 1 did not extend beyond the content of the application as filed.

VI. The Respondent argued that there was no basis in the application as filed for the amendment carried out by the Appellant in claim 1 of each request. The examples only concerned specific concentrations of ethanol and propellant fluids and, thus, could not be considered as a proper basis for the amended claim 1. The description of the application as filed only referred to solubility tests without describing aerosol formulations containing a solvent, with the consequence that claim 1 extended beyond the content of the application as filed.

VII. The Appellant requested that the decision under appeal be set aside and that the case be remitted to the first instance for further prosecution on the basis of either his main or auxiliary request, both requests filed during the oral proceedings held before the Board.

The Respondent requested that the appeal be dismissed.

VIII. At the end of the oral proceedings the decision of the Board was announced.