T 1459/11 21-07-2015

1. The appeal is admissible

2. Main request - Art. 123(2) EPC

2.1 Claim 19 specifies inter alia that the blown film is made from polyethylene having an annealed density of greater than 957 kg/m**(3). On page 36 of the application as filed the results of the examples relating to blown films are discussed. Following that discussion, at line 18 it is stated that "The density of all films as defined above is preferably greater than 957 kg/m**(3)."

That passage does not contain the word "annealed". Said term in combination with blown film is present only in a single example, namely example 6.2. However it is not stated either at this part of the description or elsewhere that the further densities reported in the examples relating to blown films are annealed densities.

It is not even entirely clear to which of the examples the wording on page 36 "as defined above" refers, i.e. whether to the immediately preceding example 7, to examples 6 and 7 or to all films of the application.

Even applying the most favourable interpretation for the appellant that the lower limit of the density at page 36 is intended to apply not only to the films of the example families 6 and 7 but in general to all films of the application, there nevertheless lacks a disclosure that the density so meant is the annealed density. Consequently there is no general disclosure in the application as filed that films satisfying the other features of claim 1 have an annealed density in the defined range.

The feature "having an annealed density of greater than 957 kg/m**(3)" thus represents an unallowable generalisation of the disclosure of example 6.2 of the application as originally filed.

2.2 Consequently the subject-matter of claim 19 of the main request extends beyond the content of the application as originally filed, contrary to the requirements of Art. 123(2) EPC.

2.3 The main request is therefore refused.

3. First auxiliary request

3.1 Admissibility

According to the appellant this request should be admitted to the proceedings because it had been filed "in response" to the communication pursuant to Art. 15 RPBA issued by the Board in preparation of the oral proceedings.

3.2 According to Art. 15(1) RPBA the purpose of the communication is to draw attention to matters "which seem to be of special significance....or containing other observations that may help concentration on essentials during the oral proceedings" (emphasis of the Board).

The purpose of the communication is thus - explicitly -to establish the framework of the oral proceedings. The communication does not - explicitly or implicitly - represent an invitation or opportunity to file further written submissions or to shift the focus of the case to be heard at oral proceedings, it being recalled that the terms of the appeal are determined by the statement of grounds of the appeal and the reply thereto (Art. 12(2) RPBA).

3.3 Consequently there is no legal basis in either the EPC or the RPBA for the filing of a "response" to a communication pursuant to Art. 15 RPBA. This means that a Board is under no obligation to take such a "response" into account. Furthermore in view of the purpose of the communication pursuant to Art. 15 RPBA the argument that a "response" to the communication cannot be regarded as late filed, is moot. Any submissions - either arguments or requests - contained in such a "response" that go beyond those contained in the statement of grounds of appeal or the reply thereto may constitute an amendment to the case presented, and it is a matter for the discretion of the Board whether such submissions are to be taken into account (Art. 13(1) RPBA).

3.4 The first auxiliary request - filed with said "response" retains the feature of the "annealed density" having a specific lower limit which gave rise to the refusal of the main request.

3.5 Consequently, the conclusions reached for the main request apply to the first auxiliary request meaning that said request is prima facie not allowable.

3.6 The first auxiliary request is therefore not admitted to the proceedings.

4. Second auxiliary request (filed as auxiliary request with the statement of grounds of appeal) - Art. 123(2) EPC

4.1 A basis for the subject-matter of claim 19, i.e. specifying a blown film from crosslinked polyethylene satisfying the mathematical relationship, without any limitation as to the density, is provided by the disclosure of original claim 19, together with the passage at original page 4 lines 23-26, disclosing the mathematical relationship as applying to films "made by the above process", which includes the crosslinking step. The feature "blown films" is disclosed at page 16, line 25 as an optional feature.

Thus the subject-matter of claim 19 is based on the generality of the original description together with a single selection (blown films).

4.2 In the case of claim 20 the mathematical relationship is disclosed in original claim 20. The mathematical relationship is also discussed at page 36, line 7 of the application as filed. This latter disclosure of the relationship is however restricted to the specific reticulated polyethylene of "the above examples". As pointed out above (point 2.1), it is however not unambiguous whether the reference to "the above examples" is intended to cover only the example family 7 or also the example family 6, both of which refer to blown films. In any case the consequence of the reference to "the above examples" is that the mathematical relationship of claim 20 is not disclosed as being generally applicable to all polymers made by the process of the application but is restricted to a specific, albeit ambiguously defined, subset thereof.

Original claim 20 does not contain the features "crosslinked" or "blown". Although these features are disclosed in the application in general, there is no disclosure thereof - individual or in combination - specifically in the context of whichever group of polymers satisfies the mathematical relationship of claim 20. Consequently, the combination of the features "blown film" and "crosslinked" in operative claim 20 constitutes a two-fold selection compared to the application as originally filed, and thus contravenes the requirements of Art. 123(2) EPC.

The second auxiliary request is therefore refused.

5. Third auxiliary request - Admissibility

Claims 19 and 20, which were filed after issue of the summons to oral proceedings, diverge from the corresponding claims of the second auxiliary request (auxiliary request submitted with the statement of grounds of appeal) in that they are no longer directed to a "blown film" but to a "film". The feature "crosslinked" is maintained.

The argument of the appellant that the amendment by deletion of "blown" was undertaken "in response" to the communication of the Board cannot in itself provide support for the admissibility of this request for the reasons explained with respect to the first auxiliary request in respect of Art. 15 RPBA (points 3.1 to 3.3 above).

The consequence of the amendment by which the restriction to "blown films" has been removed is to change the case compared to that presented on appeal by extending the scope of claims 19 and 20.

5.1 In exercise of the discretion permitted pursuant to Art. 13(1) RPBA the Board does not consider it appropriate to permit this change of case at such a late stage of the proceedings.

5.2 The third auxiliary request is therefore not admitted to the proceedings.

6. Fourth auxiliary request - Admissibility

6.1 All claims relating to the film have been removed.

Again, the appellant submitted that this amendment had been undertaken "in response to the communication of the Board".

The problems arising from the claims directed to the films were however already raised during the proceedings before the opposition division and resulted in the revocation of the patent.

As a consequence the patent proprietor would have been aware already during the opposition proceedings that there were concerns with respect to the claims directed to films, and it would have been possible for and incumbent on the patent proprietor to submit a set of claims from which the film claims had been deleted as an auxiliary request during the course of the opposition proceedings, insofar as the patent proprietor considered that a patent so restricted would be of interest.

Such a course of action on the part of the patent proprietor would have resulted in a decision by the opposition division in respect of all the independent claims, in the form of different requests, whilst still preserving for the patent proprietor the right to file an appeal inter alia in order to seek to have the film claims reinstated following consideration by the Board, meaning that both families of claims would have been the subject of consideration upon appeal.

6.2 As a consequence of the failure to submit such an amended set of claims to the opposition division and the resulting absence of any decision in respect thereof, admitting the fourth auxiliary request to the present appeal proceedings would necessitate immediate remittal of the case to the opposition division, resulting in a further opposition procedure and possibly a further appeal procedure. Such remittal would thus extend the period of uncertainty for the opponent and the public.

The argument of the appellant that no further delay would occur as a consequence of admitting the fourth auxiliary request is thus manifestly incorrect.

6.3 Since it was apparent during the opposition proceedings that retaining the claims directed to films would likely lead to revocation of the patent, the patent proprietor would have been aware of the need for a request corresponding to the present fourth auxiliary request. Such a request could therefore have been filed during the opposition proceedings before the opposition division. Under these circumstances, the Board considers it appropriate, pursuant to Art. 12(4) RPBA, not to admit the fourth auxiliary request to the proceedings.