T 0287/14 02-06-2017

Main request

1. Article 123(2) EPC

1.1 The subject matter of claim 1 as granted concerns a polyolefin composition and is defined by a disclaimer "wherein the composition does not contain a beta-nucleating agent" added in the course of the examination proceedings in response to an objection of lack of novelty in view of D1. It was undisputed that that disclaimer was not disclosed as such in the application as originally filed. The opposition division found in its decision that the disclaimer was not allowable because it did not fulfil the requirements set out in the decision of the Enlarged Board of Appeal G 1/03 (OJ EPO 2004, 413).

1.2 In its decision G 1/03 the Enlarged Board decided that a disclaimer that had not been disclosed in the originally filed application may be allowable in order to:

(i) - restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;

(ii) - restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and

(iii) - disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

Also, a disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC. Finally, a claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

1.3 Since D1 is a document according to Article 54(3) EPC for the patent in suit, which has not been disputed by the parties, the question that has to be answered first in view of the admissibility of the disclaimer in claim 1 is whether it restored novelty by delimiting claim 1 against D1 (condition (i) of G 1/03). Thus, in order for the disclaimer to be allowable in this case, it is a precondition that D1 is novelty destroying for the object of granted claim 1 without the disclaimer.

1.4 Claim 1 of D1 discloses polyolefin compositions with high impact strength and high gloss, comprising

A) a heterophasic propylene copolymer containing

a) 50-95 wt% of a matrix phase comprising a propylene homopolymer or a propylene copolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin and

b) 5-50 wt% of a disperse phase comprising an ethylene rubber copolymer with from 20-80 mol% ethylene and from 80-20 mol% of at least one C3-C8 alpha-olefin and where the intrinsic viscosity of the XCS-fraction of the heterophasic copolymer is <= 2 dl/g and

B) a beta-nucleating agent.

1.5 It was submitted by the appellant that the composition of D1 which was the closest to that of claim 1 of the patent in suit corresponded to the subject matter formed by the claims 8, 6, 4 and 3 in combination with claim 1. That specific subject matter formed by the aforementioned combination of dependent claims constitutes a first selection within the disclosure of D1.

1.6 Claim 8 of D1 concerns a process for producing a polyolefin composition according to one of claims 1 to 7, characterized by mixing a heterophasic propylene copolymer containing (a) a matrix phase and (b) a disperse phase, with an effective amount of beta-nucleating agent, melting and homogenising the mixture and cooling and crystallising the mixture.

1.7 It was argued by the appellant that a polyolefin composition resulting from that process contained exclusively an heterophasic propylene copolymer containing the matrix phase (a), the disperse phase (b), a beta-nucleating agent and fillers for enhancing stiffness which leads to an amount in weight percent of the heterophasic propylene copolymer fully within the range 90-99 wt% given in claim 1. As to the only remaining numerical ranges of granted claim 1, namely 60-80 wt% for the matrix phase, 20-40 wt% for the disperse phase and 5.0-60 g/10 min for the MFR, they were overlapping with the ranges in claims 1, 3 and 4 of D1 and the examples of D1 pointed to the overlapping parts of the ranges.

1.8 Even accepting the argument of the appellant that the specific combination of claims directly and unambiguously discloses a composition with all the features of claim 1 apart from the listed ranges, the Board does not agree with the conclusion of the appellant for the following reasons.

1.9 D1 discloses numerical ranges relating to the amount of ethylene rubber copolymer as disperse phase (b) and MFR as follows:

1.9.1 The amount in ethylene rubber copolymer of the disperse phase (b) is generically defined by three ranges in D1, 5-50 wt% (claim 1 and paragraph 9), 7-25 wt% and 9-20 wt% (claim 3 and paragraph 15), overlapping the range of 20-40 wt% of claim 1 of the main request. The polyolefin compositions of examples 3, 7, 8, 10 and 11 of D1 that were found the most relevant by the appellant in that respect are based on polymers 1, 3 and 4 of Table 1a that contain an ethylene rubber copolymer in amounts of respectively 11 wt%, 7.5 wt% and 16 wt%. These amounts are all within the preferred range of 9-20 wt% of D1 but are not within the range of claim 1 of the patent in suit (20-40 wt%). It can only be concluded that D1 generically teaches that the amount in ethylene rubber copolymer of the disperse phase (b) may be chosen within a range (7-25 wt% or 5-20 wt%) overlapping with that of claim 1 of the main request (20-40 wt%), but in order to arrive at the claimed subject matter, a second selection within the general disclosure of D1 is necessary.

1.9.2 The melt flow rate (MFR) of the polyolefin compositions according to D1 is defined in claim 4 and in paragraph 16 of D1 as being comprised between 1 and 30 g/10min, preferably between 2.5 and 10 g/10 min, showing some overlap with the range of 5-60 g/10 min of claim 1 of the main request. The specific MFR values of the compositions according to the examples 3, 7, 8, 10 and 11 of D1 cited by the appellant are 2.9, 4.7, 4.9, 4.2 and 4.7 g/10min (Table 2). While these values of MFR are within the preferred range of D1, they are all outside the claimed range of the patent in suit. Even if some of these values of the examples of D1 come close to the lower end of the area of overlap, non of them was shown to fall within the range of 5-60 dl/g. It can only be concluded that D1 generically teaches that the polyolefin compositions may have an MFR within a range overlapping with that of claim 1 of the main request, but in order to arrive at the claimed subject matter, a third selection within the general disclosure of D1 is necessary.

1.10 A total of three selections within D1 is therefore needed to arrive at polyolefin compositions falling under claim 1 of the main request. D1 does not point at this very specific set of three selections. It has also not been established that the selected features of the polyolefin compositions (presence of an inorganic filler, amount in ethylene rubber and MFR) were in any way convergent so that the specific compositions selected clearly arose from D1. The Board can only conclude that D1 does not take away the novelty of claim 1 of the main request.

1.11 Under these circumstances there was no necessity to disclaim beta-nucleating agents from the scope of claim 1 in order to restore novelty over D1 as no lack of novelty was present. Therefore, the disclaimer of claim 1 of the main request does not fulfil the first condition set out in the decision of the Enlarged Board of Appeal G 1/03. As there was evidently no basis for that disclaimer in the description as originally filed, its introduction in claim 1 infringes Article 123(2) EPC.

1.12 The appellant also submitted that the disputed disclaimer did not to contribute to the technical teaching of the claimed subject-matter; its addition to claim 1 thus could not be considered to contravene the requirements of Article 123(2) EPC for the reasons given in G 1/93 (OJ EPO 1994, 541).

1.12.1 As regards decision G 1/93, a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC (see headnote 2). However, also according to this decision, the idea underlying the requirements of Article 123(2) EPC is that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (G 1/93, point 9 of the reasons). Therefore, if such a feature added to a claim is found to provide a technical contribution to the subject-matter of the claimed invention, it would give the applicant an unwarranted advantage and the amendment is to be considered contrary to the requirements of Article 123(2) EPC (see G 1/93, point 16 of the reasons).

1.12.2 In the present case, the disputed disclaimer is a feature providing necessarily a technical contribution to the claimed subject-matter since it excludes beta-nucleating agents generally known in the art to induce crystallization of polypropylene homo- and copolymers in polyolefin compositions, as already indicated by the name of the class of compounds and as also shown for instance in D1 itself (paragraph 11) and in D10 (paragraphs 69-74), whereby the presence of crystals has an undisputable effect on the chemical and mechanical properties of the composition. Therefore, the disclaimer, by modifying the technical characteristics of the matrix phase of the polyolefin composition of claim 1, necessarily gives the appellant an unwarranted advantage by restricting the claimed subject-matter to a group of polyolefin compositions having specific technical characteristics and properties. Therefore, even taking into account the exception in decision G 1/93, the disclaimer in question constitutes an amendment that contravenes the requirements of Articles 123(2) EPC.

First to third auxiliary requests

2. Admittance

2.1 The first to third auxiliary requests were filed by the appellant on 20 April 2017, after the reply to the statement of grounds of appeal by the respondent on 21 October 2014. Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion is exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

2.2 Claim 1 of the first auxiliary request differs from claim 1 as granted in that the wording "which polyolefin composition comprises" has been replaced by "which polyolefin composition consists of" and in that the disclaimer "wherein the composition does not contain beta-nucleating agent" has been removed.

2.3 Such amendments were introduced in order to look for a solution to the disclaimer issue which was the central point on which revocation was based. Therefore there was no justification not to file appropriate requests at the outset of the appeal proceedings. Moreover, the amendments do not provide a clear solution to the issue, since, in spite of the introduction of the expression "consists of", the presence of the "comprising" language in the definition of the matrix phase and of the disperse phase, leaves strong doubts as to whether the presence of beta-nucleating agents is excluded. Under these circumstances and in particular in view of the need for procedural economy, the Board finds it appropriate to exercise its discretion by not admitting the first auxiliary request into the proceedings.

2.4 The subject matter of claim 1 of the second and third auxiliary requests was reformulated as a process for preparing a polyolefin composition consisting of meltmixing 90 to 99 wt% of a heterophasic propylene copolymer base resin with 1 to 10 wt% of inorganic filler, based on the propylene copolymer at temperatures from 175°C to 250°C, and cooling and crystallizing the melt. The heterophasic propylene copolymer of that composition mentioned in claim 1 contains a matrix phase (a) and a disperse phase (b) defined by the same open formulation as that used in claim 1 of the first auxiliary request.

2.5 The situation is therefore the same as the one detailed for the first auxiliary request in point 2.3 above.

2.6 In addition, the process of claim 1 of the second and third auxiliary requests sets out that the amount of 1 to 10 wt% in inorganic filler meltmixed with 90-99 wt% of the heterophasic propylene copolymer is based on the propylene copolymer. Claim 1 as granted did not specify that the amount in inorganic filler was based on the propylene copolymer. On the contrary, claim 1 as granted implied that the amount in inorganic filler and that of the heterophasic propylene copolymer were both based on the polyolefin composition as a whole. As a result, the extent of the modifications performed in the second and third auxiliary requests appears to raise further issues of Article 123 EPC (paragraphs 2 and 3) and/or Article 84 EPC that were not part of the discussion before the opposition division and that have been raised for the first time in appeal proceedings.

2.7 Under such circumstances the Board finds it appropriate to exercise its discretion by not admitting the second and third auxiliary requests into the proceedings.

Fourth and fifth auxiliary requests

3. Admittance

3.1 The fourth and fifth auxiliary requests were filed by the appellant on 30 May 2017, just three days before the oral proceedings. Such late filed amendments are not admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

3.2 Claim 1 of the fourth and fifth auxiliary requests corresponds to the process for preparing a polyolefin composition of claim 1 of the second and third auxiliary requests respectively, further amended in that the heterophasic propylene copolymer, the matrix phase (a) and the disperse phase (b) are defined by a closed formulation and in that the matrix phase (a) consists of "a propylene homopolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin". As to the definition of the matrix phase (a) now part of claim 1 of both requests, the limitation to a propylene homopolymer seems is not in line with the fact that the polymer can still contain substantial amounts of ethylene or C4-C8 alpha-olefin comonomers, thereby raising serious doubts as to whether claim 1 refers to a homopolymer or a copolymer, amounting to an issue of lack of clarity (Article 84 EPC). This issue, together with the issue relating to the basis for the calculation of the amount in inorganic filler relating to the second and third auxiliary requests mentioned above in point 2.6, implies that the fourth and fifth auxiliary requests contain amendments that add further complexity to the case at the latest possible stage of the proceedings.

3.3 Apart from the fact that the amendments present in claim 1 of the fourth and fifth auxiliary request constitute a very late attempt to address an issue, the allowability of the disclaimer, that was already known to the appellant since the decision of the opposition division in 2013, the large number of amendments raises numerous issues relating to Article 123(2) and (3) EPC as well as Article 84 EPC which the Board and the other party could not reasonably be expected to deal with without adjournment of the oral proceedings. The fourth and fifth auxiliary requests are therefore not admitted into the proceedings according to Article 13(3) RPBA.