T 1587/13 (Unsymetric metallocenes/BASELL) 13-04-2016

1. Admissibility of the appeals

1.1 The appeal by appellant 1 is admissible. This was not contested.

1.2 The admissibility of the appeal by appellant 2 was challenged by appellant 1 (see point X above). In support of its argument, appellant 1 relied on the minutes of the oral proceedings held before the opposition division. In point 3 of the minutes it was stated that the opponent declared "that he wishes not to put forward any arguments against this request in respect of Arts. 123(2), 83, 56, 54(1) and (2)".

1.3 A party is adversely affected within the meaning of Article 107 EPC if the decision fails to meet that party's request. In the notice of opposition, appellant 2 requested revocation of the patent in its entirety. It is clear from the minutes (see point 1) that appellant 2 maintained this request. Accordingly, by deciding that the patent could be maintained in amended form, namely on the basis of the fourth auxiliary request, the division did not fully meet appellant 2's request for revocation of the patent in suit. Appellant 2 was therefore adversely affected by the decision.

1.4 In the board's judgment, the fact that appellant 2 did not present arguments on the fourth auxiliary request cannot be construed as a clear indication of the withdrawal of its request for revocation of the patent. According to established jurisprudence of the boards of appeal, such a withdrawal cannot simply be presumed, but requires an explicit statement (cf. G 1/88, point 2 of the Reasons, T 708/07, point 1 of the Reasons, T 967/98, point 1.1 of the Reasons).

1.5 Moreover, appellant 2 argued that by the time the fourth auxiliary request was considered, the compliance of the preceding requests with the requirements of Article 123(2) and (3) EPC had already been extensively discussed. Appellant 2 had objected to the amendments made in these requests, in particular to the numerous selections made in the third auxiliary request. Since the fourth auxiliary request contained further selections, the arguments with regard to the previous requests continued to apply and there was no need to repeat them. This, however, did not mean that appellant 2 had no objections under Article 123(2) EPC.

1.6 The board has no reason to doubt appellant 2's account of the course of events. Point 2 of the minutes confirms that appellant 2 raised objections under Article 123(2) EPC against the main request and the second and third auxiliary requests. As is apparent from the decision, the opposition division concurred with appellant 2's position with respect to the second and third auxiliary requests (see decision under appeal, pages 11 to 13, point 7, and pages 16 to 17, point 9). Furthermore, the board notes that, contrary to the statements on pages 23 and 25 of the decision under appeal (see points 12.2 and 13.10) indicating that appellant 2 had no objections when the issues of novelty or inventive step were addressed, no such statement can be found with respect to Article 123(2) EPC. Hence, the board can only conclude that the division was well aware of the fact that appellant 2 had indeed objections under Article 123(2) EPC against the fourth auxiliary request. Therefore, appellant 2 was adversely affected by the decision of the opposition division and entitled to appeal.

1.7 The decision T 1297/11, relied on by appellant 1 in support of its arguments, is not relevant. In this decision, the appellant opponent had declared in the oral proceedings before the opposition division that it dropped its objection on novelty. The opposition division understood this declaration as withdrawal of the objection and did not decide on novelty. The board agreed with the division and held that with its declaration, the opponent expressly renounced its challenge to the patent on the ground of lack of novelty.

In the present case, neither the minutes nor the decision under appeal support the presumption that appellant 2 had withdrawn its objections under Article 123(2) EPC against the fourth auxiliary request.

1.8 For the aforementioned reasons, the board concludes that the appeal of appellant 2 is admissible.

Main request

2. Amendments (Article 123(3) EPC)

2.1 Claim 1 of the main request has been amended compared to claim 1 as granted in that the substituents R**(7) and R**(8) in formula (I) in combination with the carbon atoms to which they are attached form a particular ring system**()(see point V above). The definition of this ring system - except for a minor restriction concerning its substitution - is disclosed in claim 5 as granted. This was uncontested.

2.2 However, the parties were divided as to the status and consequently the scope of claim 5 as granted. According to appellant 2, claim 5 as granted was a dependent claim. Therefore, the ring system formed by R**(7) and R**(8), including the substituents R**(9), R**(10), R**(11) and R**(12),**()could not contain more that 40 carbon atoms in accordance with the definition of R**(7) and R**(8)in independent claim 1 as granted (see point II above). Appellant 1 considered claim 5 as granted to be an independent claim, to which the limitation with regard to the number of carbon atoms, as defined in claim 1 as granted, did not apply. The amendment concerning the substitution of the ring system restricted the scope of claim 5 as granted and therefore could not contravene Article 123(3) EPC.

2.3 In the board's judgement, the amendment in claim 1 of the main request broadens the scope of the claims as granted, irrespective of the status of claim 5 as granted for the following reasons:

2.3.1 The board concurs with appellant 2 in that according to claim 1 as granted the ring system which can be formed by substituents R**(7) and R**(8) does not contain more than 40 carbon atoms. Claim 1 of the present main request encompasses ring systems formed by R**(7) and R**(8) which can contain far more than 40 carbon atoms, since each of the substituents R**(9), R**(10), R**(11) and R**(12) can have up to 40 carbon atoms. The scope of claim 1 of the main request is therefore clearly broader than the scope of claim 1 as granted.

2.3.2 Claim 5 as granted is directed to compounds having the particular ring system of claim 1 of the main request (i.e. a ring system which may contain far more than 40 carbon atoms), however, only**()in combination with a specific substituent A. The latter is defined as a substituted silylene group or a substituted or unsubstituted ethylene group (see point II above). Therefore, even if claim 5 as granted were to be considered as an independent claim to which the limitation with respect to the number of carbon atoms does not apply, it does not encompass compounds where A is any divalent atom or divalent group as defined in claim 1 of the main request.

2.4 It follows from the above that claim 1 of the main request encompasses compounds, which are neither covered by claim 1 as granted nor by claim 5 as granted. Hence, the board concludes that the amendments in claim 1 of the main request extends the scope of protection conferred by the claims as granted and therefore contravenes Article 123(3) EPC.

First auxiliary request

3. Amendments (Article 123(2) EPC)

3.1 Claim 1 of the first auxiliary request has been amended by introducing specifically selected definitions for each of the substituents in formula (I) (see point V above).

3.2 According to appellant 1, the subject-matter of claim 1 of the first auxiliary request has its basis in the combined reading of claims 1, 2, 3, 4 and 5 as originally filed.

3.3 The board does not agree, particularly in view of the inconsistent definition of the substituents R**(7) and R**(8) in claims 3 and 5 as originally filed.

Claim 3 discloses the presently claimed definitions of the substituents R**(2), R**(3), R**(4) and R**(6)in combination with a particular definition of R**(7) and R**(8), namely a "divalent organic group T having from 1 to 40 carbon atoms where T together with the two carbon atoms of the cyclopentadienyl ring forms a saturated or unsaturated, substituted or unsubstituted ring system which has a ring size of from 5 to 7 atoms... ". This definition is clearly inconsistent with the corresponding definition of the substituents R**(7) and R**(8) in claim 5, where the number of carbon atoms can be considerably higher in view of the definition of R**(9) to R**(12), each of which may have up to 40 carbon atoms. In these circumstances, the board is of the opinion that the skilled reader would primarily rule out reading claims 3 and 5 in combination, irrespective of the general reference in claim 5 to any of claims 1 to 4, or, as argued by appellant 2, in due consideration of said reference, he would consider the limitation with respect to the ring system formed by R**(7) and R**(8) to apply to a combination of claims 3 and 5. A group of compounds, as claimed in claim 1 of the first auxiliary request, with R**(7) and R**(8)as**()defined in claim 5 and R**(2), R**(3) R**(4) and R**(6)as defined in claim 3 is therefore not directly and unambiguously derivable from the claims as originally disclosed.

Appellant 1's argument that the definition of R**(7) and R**(8)in claim 3 as originally filed can simply be ignored and replaced by a definition, which is essentially inconsistent with the previous definition, cannot be accepted, unless there is a clear basis for such an understanding in the description of the application as originally filed. However, no such group of compounds is disclosed anywhere in the description as originally filed.

3.4 Hence, the board concludes that the subject-matter of claim 1 of auxiliary request 1 is not clearly and unambiguously derivable from the application as filed. Claim 1 therefore extends beyond the content of the application as originally filed, contrary to Article 123(2) EPC.

Fourth auxiliary request (identical to the request that the opposition division considered to meet the requirement of the EPC)

4. Amendments (Article 123(2) EPC)

4.1 Claim 1 of the fourth auxiliary request has been amended by selecting, amongst others, a specific meaning (i.e. hydrogen) from a list of meanings for each of the substituents R**(10), R**(11) and R**(12). As correctly observed by the opposition division, there is no explicit disclosure in the application as filed indicating that each of the substituent R**(10), R**(11)or R**(12), is hydrogen. According to claim 5 as originally filed, the substituents R**(9) to R**(12) are identical or different and are each hydrogen, halogen or an organic radical having from 1 to 40 carbon atoms. The same disclosure is to be found on page 9, lines 28 to 30 of the description as originally filed. In the board's judgement, the selection that each of the substituents R**(10), R**(11) and R**(12) is hydrogen amounts to an inadmissible singling out of a specific sub-group, which is not disclosed as such by the application as originally filed (see T 801/02; point 2.2.1 of the Reasons; T 859/94, point 2.4.3 of the Reasons).

4.2 In the decision under appeal, the opposition division considered that the amendment with respect to the substituents R**(10)to**()R**(12) had a basis in the examples of the application as filed, which all shared this particular feature.

4.3 The board notes that in example 7 the substituent R**(10) is methyl, not hydrogen. Moreover, in examples 1 to 6, in which R**(10), R**(11), R**(12)are hydrogen, the substituent A is dimethylsilanediyl, the substituent M**(1)Xn is ZrCl2, the substituent R**(1) is methyl, the substituent R**(5) is isopropyl and the substituents R**(3) and R**(9) are specifically substituted phenyl groups. From these examples, the skilled person derives nothing more than the bare disclosure of the structural elements in their particular combinations. Taking the meaning "R**(10)to R**(12) equal to hydrogen" out of the only context in which it is disclosed in the application as filed (namely the individual compounds in examples 1 to 6 with their specific substitution pattern) and combining it with the general definitions of the substituent A, M**(1)Xn , R**(1), R**(3), R**(5) and R**(9) according to claim 1 of the fourth auxiliary request, creates a new group of compounds. The skilled person is thus provided with technical information that is not directly and unambiguously disclosed in the application as filed.

4.4 According to appellant 1, the selected definitions of each of the substituents in claim 1 of the fourth auxiliary request had a basis in the application as filed. All substituents were independent from each other and could therefore be readily combined. Moreover, all selections were made to limit the scope of the claims as granted and therefore could not contravene Article 123(2) EPC.

4.5 The board does not agree. As set out in points 4.1 and 4.3 above, there is no disclosure of a group of compounds of the general formula (I) with R**(10), R**(11) and R**(12) being hydrogen. Appellant 1's argument that the selected definitions for all substituents had a basis in the application as filed, is therefore not accepted. Furthermore, the board also notes that according to established jurisprudence of the boards of appeal, the content of an application cannot be considered as a reservoir from which features pertaining to different embodiments can be arbitrarily combined in order to artificially create a particular embodiment. In the present case, claim 1 of the fourth auxiliary request is the result of a combination of definitions of substituents in formula (I), which have been picked from numerous options disclosed for each individual substituent. In the board's judgment, for such a claim it is not sufficient to provide a basis for each individual feature alone, but rather to provide a clear and unambiguous disclosure for the combination of the selected definitions. In this context, the board notes that the application as filed describes certain groups of compounds on page 13, line 11 to page 15, line 20, none of which, however, discloses a group of compounds having the particular combination of substituents as defined in claim 1 of the fourth auxiliary request.

Decision T 902/02, to which appellant 1 referred, is not considered to be relevant in the present case. The amendment in the case underlying said decision was the result of a selection from a single list of explicitly disclosed equivalent alternatives. In the present case, there are numerous selections from various lists including the triple selection that each of R**(10), R**(11) and R**(12) is hydrogen.

4.6 The board also does not accept appellant 1's argument that merely because the amendment restricted the scope of the claims it was admissible under Article 123(2) EPC. Article 123(2) EPC prohibits amendments which generate "subject-matter that extends beyond the content of the application as originally filed". Thus, the introduction of any technical information - in the present case the creation of a new sub-group - that a skilled person would not have objectively and unambiguously derived from the application as filed, even if it results in a restriction, is prohibited (see decision T 288/92, point 3.1 of the Reasons).

4.7 For the reasons mentioned above, the board concludes that claim 1 of the fourth auxiliary request has been amended in such a way that its subject-matter extends beyond the content of the application as originally filed, contrary to Article 123(2) EPC.