T 1934/14 15-03-2018

Main request (patent as granted)

1. Priority

1.1 The patent in suit is based on an European application filed as an international application on 23 June 2004 and claiming two priorities P1 dated 24 June 2003 (D8) and P2 dated 19 September 2003 (D9).

D1 is a WO application in English which was filed on 17 September 2004, published on 31 March 2005, i.e. after the filing date of the application on which the patent in suit is based, and which claims two priorities P'1 (JP 2003-329109) and P'2 (JP 2003-329110), both dated 19 September 2003 (i.e. the same date as P2).

Therefore D1 is at most relevant for novelty pursuant to Article 54(3) EPC, namely only if the subject-matter of granted claim 1 does not benefit from any of the priority P1 or P2.

1.2 In the contested decision, the opposition division concluded that none of the priorities (P1 and P2) claimed by the patent in suit could be acknowledged (see section 4.1 of the reasons on page 10).

1.3 In its reply to the statement of grounds of appeal the respondent requested that its arguments in respect of priority of the patent in suit submitted during the opposition proceedings be considered (letter of 19 March 2015: section 5.1). However, no details of the argumentation were given, nor was it explained why the conclusion reached by the opposition division was incorrect. In those circumstances, those submissions of the respondent in respect of priority fail to set out expressly all the facts, arguments and evidence relied upon. As a consequence they do not meet the requirements set out in Article 12(2) RPBA and for this reason are not taken into account by the Board, as was indicated in the Board's communication (see section VII above).

1.4 In its letter dated 15 February 2018 the sole arguments provided by the respondent in respect of priority was that example 4 of D1 was covered by the examples of P1 and/or P2 and could, thus, not be novelty destroying (letter of 15 February 2018: section 4.2). That line of argumentation is, thus, not directed to the entitlement to priority of granted claim 1 as was argued for the first time during the oral proceedings.

1.5 Since no further arguments regarding priority were put forward in writing by the respondent, it was only during the oral proceedings before the Board that the respondent submitted for the first time the line of arguments according to which granted claim 1 benefited from the priority date of P1/D8. Therefore, the submission of those arguments during the oral proceedings before the Board constitutes an amendment to a party's case and its admission to the proceedings is subject to the Board's discretion (Article 13(1) RPBA) and underlies the additional stipulations of Article 13(3) RPBA.

1.5.1 In that respect, it cannot be agreed with the respondent that any crucial issue, here the right to priority, may be addressed at any time during the proceedings by the parties. This would not only be contrary to the stipulations of Article 12(2) RPBA, according to which the appellant should submit a complete case in its statement of grounds of appeal, but it would also not satisfy the requirements of due process (efficient conduct of the proceedings) and the need for economy of the proceedings (Article 13(1) RPBA). Besides, according to the case law, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of his rights as early and completely as possible, in particular in inter partes proceedings in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (Case Law of the Boards of Appeal of the EPO, 8th edition, 2016, IV.E.4.1.2 and 4.1.4). This is particularly true in a case like the present one where the relevant objections were known from the beginning of the appeal proceedings. Therefore, the respondent's argument is rejected.

1.5.2 The sole justification provided by the respondent why the arguments regarding priority of granted claim 1 were put forward for the first time during the oral proceedings was that they were based on decision G 1/15, which was very recent. However, since that decision was taken and made available on 29 November 2016 and published in September 2017 (OJ EPO 2017, A82), it could have been taken into account by the respondent earlier, in particular in direct reply to the Board's communication (dated 12 October 2017) or in the respondent's letter of 15 February 2018 (in which decision G 1/15 was indeed cited but in support of a different line of argumentation). Therefore, the respondent's argument is not convincing.

1.5.3 Besides, admitting into the proceedings the new line of arguments regarding the validity of the claimed priority for granted claim 1 would have required to deal with new and complex issues for the first time during the oral proceedings (e.g. partial priority; validity of D8/P1, even if it apparently does not explicitly disclose any determination method for feature 1.5, as briefly disputed by the parties during the oral proceedings before the Board), which, in the Board's view, would have required a postponement of the oral proceedings in order to give sufficient time to the appellant to prepare a suitable line of counterarguments, which is contrary to the stipulations of Article 13(3) RPBA.

1.5.4 For those reasons, the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA and its power under Article 13(3) RPBA by not admitting into the proceedings the new line of arguments regarding the validity of the claimed priority.

1.6 As a consequence, there is no reason to deviate from the conclusion of the opposition division according to which granted claim 1 as a whole does not benefit from any of the priority dates of P1 and/or P2.

2. Novelty over D1

2.1 The novelty objections put forward by the appellant are based on examples 4 and 11 of D1.

2.2 The respondent argued that examples 1 to 5 of the patent in suit were disclosed in the priority documents P1 or P2, so that priority was at least valid for those examples. Therefore, the respondent considered that the priorities of the patent in suit were also valid for a composition according to example 4 of D1 since it was substantially identical to those examples of the patent in suit, the consequence being that example 4 of D1 could not be a valid prior art (see in particular letter of 15 February 2018: section 4.2).

In view of the above, the respondent's objection is based on the argument that example 4 of D1 is "substantially identical" to some of the examples of the patent in suit covered by the priority documents, but the respondent never argued that example 4 of D1 was identical to any of the examples of P1 and/or P2. However, according to G 2/98 (OJ EPO 2001, 413), priority pursuant to Article 87(1) EPC may be acknowledged to a subsequent application for the same subject-matter as in a previous application only if the skilled person can derive that subject-matter directly and unambiguously, using common general knowledge, from the previous application as a whole (see headnote and sections 2, 3, 6.8, 8.2 and 9 of the reasons)). In that respect, it is in particular explained in G 2/98 that the concept of "the same invention" is to be interpreted narrowly and to be equated with the concept of "the same subject-matter".

As a consequence, since example 4 of D1 was not shown to be identical to any of the examples of P1 and P2, i.e. those examples do not concern "the same subject-matter", it cannot be concluded that its subject-matter is directly and unambiguously disclosed in P1 or P2. Therefore, the respondent's argument according to which example 4 of D1 could not be a valid prior art pursuant to Article 54(3) EPC is rejected.

2.3 Since it was not contested by the respondent that examples 4 and 11 of D1 were entitled to the priorities claimed by D1 and further considering the conclusions reached in above sections 1 and 2.2, examples 4 and 11 of D1 are valid prior art disclosures pursuant to Article 54(3) EPC.

2.4 Example 4 of D1 (page 123) discloses the treatment of water-absorbing particles (E1) with a solution of aluminium sulfate, whereby (E1) are water-absorbing resin particles obtained from acrylic acid which is internally crosslinked and which is further surface crosslinked (example 1 of D1, pages 119-120). It may further be derived from the data indicated in Table 2 of D1 (page 130) that the water absorbent resin composition prepared in example 4 of D1 satisfies all the requirements of granted claim 1 apart from features 1.5 and 1.7, which are not specifically indicated in D1.

Besides, example 4 of D1 was carried out according to the general teaching of the patent in suit, in particular regarding

- the nature of the internally crosslinked water-absorbing particles (paragraphs 39-42, 46);

- the surface crosslinking of said particles (paragraphs 58-65);

- the treatment of the above surface crosslinked particles with a solution of a multivalent metal component (paragraphs 66, 67, 95-104, 109-115; examples 1-4; granted claim 7). In that respect, it was in particular not contested by the respondent that the solution concentration of the multivalent metal compound (B) was in accordance with the teaching of paragraphs 97, 99, 109 and 114 of the patent in suit, in which it is indicated that said concentration should be in a specific range in order to carry out the invention. The appellant's argument, according to which the concentration of the multivalent metal compound composition used in example 4 of D1 is 48 wt.% (see notice of opposition: page 13, last paragraph of section 3.1.3.1; the same argument was put forward at the oral proceedings before the Board), i.e. according to granted claim 7 and paragraph 99 of the patent in suit, was also not contested.

2.5 It is further conspicuous that example 4 of D1 was carried out in a very similar manner to examples 1-4 of the patent in suit, in particular example 4 (e.g. compare the particle size features of example 4 in the table at page 28 of the patent in suit with those of example 4 in table 2, page 130 of D1; see also the multivalent metal concentration of 48 % in example 4 of D1 and of 51.2 % indicated as feature A in table 2 of the patent in suit).

In that respect, although it is correct that example 4 of D1 and examples 1-4 of the patent in suit differ in the nature of the mill which was used to crush the water absorbent particles (vibrating or pin mill in examples 1-4 of the patent in suit: page 24, lines 24, 45, 55 and page 25, line 17; roll mill in example 4 of D1: page 120, line 10), it was not shown by the respondent that the nature of said mill had any impact on the properties of the water absorbent particles (in particular on features 1.5 and 1.7), nor is there any indication in the patent in suit that it plays any role. Also, said feature was not shown to be reflected in any way in granted claim 1. Therefore, the respondent's argument relying on the nature of said mill is rejected.

2.6 Regarding comparative example 3 of the patent in suit, which was argued by the respondent as showing that it was possible to prepare water absorbent compositions according to the teaching of the patent in suit and exhibiting all the features of granted claim 1 apart from feature 1.7, it is noted that said example was not carried out using the same procedure as in example 1 of D4 and/or examples 1-4 or claim 7 of the patent in suit: whereas it was prepared by simultaneous mixing of the surface crosslinker and of the metal component (paragraph 178 of the patent in suit), the processes of examples 1-4 of the patent in suit and of example 4 of D1 both comprise first preparing the internally and surface crosslinked water absorbent particles (referential examples 1 and 4 of the patent in suit; example 1 of D4) and then adding/mixing the multivalent metal component (examples 1-4 of the patent in suit; example 4 of D1). In that respect, the respondent himself argued that processes differing from each other in that manner resulted in different compositions (see letter of 19 March 2015: section 5.2, second to fourth paragraph), which was not contradicted by the appellant. Therefore, it cannot be concluded from comparative example 3 of the patent in suit that the preparation procedure used in example 4 of D1 may lead to particles not satisfying feature 1.7 of granted claim 1, contrary to the respondent's view.

2.7 In view of the above, the respondent has neither provided evidence, nor put forward any convincing arguments which could explain why features 1.5 and 1.7 of granted claim 1 would not be satisfied in example 4 of D1, although said example was carried out according to the teaching of the patent in suit and in a very similar manner to examples of the patent in suit. Moreover the respondent constantly argued that sufficiency of disclosure was given, as was also decided by the opposition division, which also points to the conclusion that features 1.5 and 1.7 are met in example 4 of D1.

2.8 In addition, although the issue of novelty over example 4 of D1 was at stake during the whole opposition and appeal proceedings, the respondent has decided not to provide any information in respect of the missing features 1.5 and 1.7, whereby there appears to be no reason why this would not have been possible, since D1 is a document of the respondent himself.

2.9 In particular in view of the above, considering that example 4 of D1 was carried out according to the teaching of the patent in suit and in a very similar way to the examples of the patent in suit by the respondent himself, it would have been the duty of the respondent to provide the data relative to the two features. The deliberate choice to keep them secret, when all informations on file point to the conclusion that the features are met, cannot result in a decision in favour of the respondent.

2.10 In view of this, it has to be concluded that following the teaching of the patent in suit and its examples, as was indeed done in example 4 of D1, must lead to water absorbent compositions according to granted claim 1.

2.11 It is correct that, as indicated in T 231/01 (section 5.6), there should be no room for speculation when assessing novelty. In particular, in the passage of that decision relied upon by the respondent, it is indicated that the criteria for assessing novelty is not based on likeliness, but on identity of technical information between the content of the prior art disclosure and the subject-matter claimed. However, in the present case, the respondent has not provided any evidence or argument to refute the conclusion reached from the technical analysis of all the facts on file and according to which example 4 of D1 must satisfy features 1.5 and 1.7 of granted claim 1 (see sections 2.3 to 2.10 above), when all information to do this were fully in its hands. In arriving at its conclusion, the Board does not consider that it deviates from the criteria of "identity of technical information" indicated in section 5.6 of T 231/01. In particular, the Board did not consider that it was "likely" that features 1.5 and 1.7 may be satisfied in example 4 of D1, but rather arrived at the conclusion that all the facts on file show that those features have to be met and that no evidence or convincing argument was provided by the respondent to refute that conclusion, even if the data were in its hands. Therefore, the respondent's argument is rejected.

2.12 The same conclusion as for example 4 of D1 is reached in respect of example 11 of D1 (page 137, referring to example 8 on page 135; Table 6, page 143), in particular taking into account the teaching of the patent in suit and the similarity between example 11 of D1 and example 5 of the patent in suit. Also in that respect, no evidence or convincing argument was advanced by the respondent to explain or at least render plausible why features 1.5 and 1.7 would be not satisfied in example 11 of D1, when all the information was in its hands.

2.13 For those reasons, the subject-matter of granted claim 1 is not novel over examples 4 and 11 of D1.

Auxiliary requests 1 and 2

3. Admittance

3.1 Considering that auxiliary requests 1 and 2 were filed during the oral proceedings before the Board, their admittance to the proceedings underlies the stipulations of Article 13(1) and (3) RPBA.

3.2 The issue of novelty of granted claim 1 in view of example 4 of D1 was at stake throughout both the opposition and the appeal proceedings and was in particular identified as a possibly relevant issue in the Board's communication, which was sent well in advance of the oral proceedings.

Although the issue of novelty of granted claim 1 in view of example 11 of D1 was first raised in the appellant's last written submission dated 21 December 2017, the respondent did not react to that objection before the day of the oral proceedings before the Board and only after a decision on granted claim 1 was announced. In particular, said objection was not at all considered in the respondent's last written submission dated 15 February 2018.

In that respect, no justification was provided by the respondent to explain why auxiliary requests 1 and 2 were first submitted at the very last opportunity, which, as explained above (see section 1.5.1) is neither in accordance with the stipulations of Article 12(2) RPBA, nor satisfies the requirements of due process and the need for economy of the proceedings.

3.3 Besides, admitting any of auxiliary requests 1 or 2 to the proceedings would have raised new and complicated issues regarding e.g. the following points:

- How should the disclaimer be formulated in order not to remove more than is necessary to restore novelty over D1 (see headnote of G 1/03: section 2.2)?

- Considering the length of the disclaimer in both auxiliary requests, does it satisfy the requirements of clarity and conciseness indicated in section 2.4 of the headnote of G 1/03?

Under those circumstances, the appellant should have been provided with sufficient time to prepare appropriate lines of argument, whereby it is credible that he would not have been in a position to defend its case at the oral proceedings before the Board. Therefore, admitting any of auxiliary requests 1 or 2 into the proceedings would have required an adjournment of the oral proceedings, which goes against the stipulations of Article 13(3) RPBA.

3.4 For those reasons, the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA and its power under Article 13(3) RPBA by not admitting auxiliary requests 1 and 2 into the proceedings.

4. Documents E7 and D14 to D25 are not relevant for the present decision. Therefore, there is no need for the Board to elaborate any further on their admittance, which was in dispute between the parties (see section XIII).

5. The main request being not allowable and auxiliary requests 1 and 2 being not admitted into the proceedings, the patent is to be revoked.