T 1187/17 12-07-2021

I. The applicant filed an appeal against the decision of the examining division refusing European patent application No. 11 804 734.9.

II. The examining division held that the subject-matter of claims 1 and 13 of the main request and the auxiliary request then on file did not comply with the requirements of Article 123(2) EPC and also lacked novelty and inventive step.

The decision under appeal refers to the following documents:

D5: US 5,638,870

D16: US 2009/014081 A1

D17: US 5,469,916

Document D17 is cited in the context of an obiter dictum annexed to the decision under appeal. Its existence and potential relevance were mentioned for the first time in an email sent to the applicant by the first examiner on Thursday 8 December 2016, i.e. two working days before the scheduled date of the oral proceedings before the examining division (Monday 12 December 2016).

III. The appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the claims of the main request or of one of auxiliary requests 1, 2A and 2B filed with the statement of grounds of appeal.

IV. On 27 January 2021, the board issued a communication pursuant to Rule 100(2) EPC.

V. The independent claims of the main request read (for claim 1, the feature references used by the board are indicated in square brackets):

"1. [1] A composite pipe [2] configured for use in extracting hydrocarbons from subsea reservoirs [3] having a pipe wall [4] comprising a composite material formed of at least a matrix and a plurality of reinforcing fibres embedded within the matrix, wherein [5] the pipe wall comprises a local variation in construction in at least one longitudinal section [5b] such that the fibre construction in one longitudinal section of the pipe wall is different from the fibre construction of the composite material in a different longitudinal section, wherein [6] at least one longitudinal portion comprises a local variation in the distribution density of the reinforcing fibres within the matrix material, and wherein [7] the matrix material comprises a polyether ether ketone."

"13. A method of manufacturing a composite pipe configured for use in extracting hydrocarbons from subsea reservoirs, comprising:

forming a pipe wall with a composite material comprising a matrix and a plurality of reinforcing fibres embedded within the matrix; and

varying the fibre construction of the composite material in at least one longitudinal portion of the pipe wall such that the fibre construction in one longitudinal portion differs from the fibre construction in a different longitudinal portion wherein at least one longitudinal portion comprises a local variation in the distribution density of the reinforcing fibres within the matrix material, and wherein the matrix material comprises a polyether ether ketone."

VI. The appellant argued as follows.

(a) Compliance of claim 1 of the main request with the requirements of Article 123(2) EPC

Amended claim 1 is based on claim 1 as originally filed, with the addition of the following features:

- Qualification of the word "pipe" by the word "composite". This amendment has a basis throughout the application (for example page 1, line 4). The exact wording of feature 2 is not disclosed in the application, but the narrow linguistic assessment conducted by the examining division is not appropriate. The focus should be on what is really disclosed to the skilled person (see Guidelines H-IV, 2.2, especially the final paragraph). In accordance with original claim 34, the pipe (of any preceding claim) is "configured for use subsea". Furthermore, page 31, lines 29 to 32, states: "The pipe may be configured for use in transporting product associated with the extraction of hydrocarbons from subsea reservoirs, including accommodating the flow of hydrocarbons, carbon dioxide, water, other chemicals, solid matter, fluid and gas mixes and the like." (emphasis added). The pipe is configured for use subsea and accommodates the flow of hydrocarbons extracted from a subsea reservoir. The words "associated with" are unfortunate, but they would not have obscured the intended meaning to the skilled person. Extraction from a subsea reservoir is also supported by other passages in the description (see Background of the Invention and the first paragraph on page 32).

- Feature 6, which has a basis in original claim 11.

- Feature 7, which has a basis on page 31, lines 3 and 4, of the original disclosure.

(b) Novelty over document D5

The subject-matter of claim 1 is new over document D5 for the following reasons:

- The device of document D5 is not suitable for extracting hydrocarbons from a subsea reservoir. In accordance with col. 1, line 9, and col. 10, line 10, it is intended to form part of a fishing rod, a golf club, a tennis racket or a handlebar. Such tubes are not configured to withstand the high pressures and temperatures or aggressive (acidic) environment typical in the extraction of hydrocarbons. The examining division did not provide any support for the assertion that a fishing rod would be able to transport methane (point 19.1 of the decision under appeal).

- Document D5 does not teach a local variation in the distribution density of the reinforcing fibres within the matrix material. The examining division has not provided any support for its assertion that this feature is taught (point 19.2). In point 2.2 of the annex to the summons to oral proceedings, the examining division argued that, depending on the longitudinal location of a transverse section, the fibres of the textile layer (Fig. 5) would be oriented mainly circumferentially or mainly longitudinally. This academic perspective takes no account of the intended technical meaning of this feature for a person skilled in the art. Fig. 5 of document D5 illustrates a homogenous weave with a uniform fibre distribution density. A "smooth" surface is "rough" at a sufficient level of magnification. Such terms always have a context, and in this specific context the examining division's argument is inappropriate.

- Using the teaching of document D5, selections from three lists are needed to arrive at (i) a device comprising piled portions containing resin, (ii) a resin comprising PEEK and (iii) a resin comprising reinforcing fibres. As taught in col. 8, lines 3 to 16, the piled pieces may comprise a natural material such as cork, so a first selection is required for them to have any resin at all. Furthermore, having selected resin, it is taught that the piled portion may comprise only the resin, in which case there is no fibre construction in one longitudinal section of the pipe wall that is different from the fibre construction of the composite material in a different longitudinal section, since there are no fibres at all in the piled portions. Lastly, PEEK is just one material which must be selected from a list (see col. 4, lines 49 to 53). There is no incentive to make such a selection from the three above-mentioned lists. The examining division has not explained why there would be only one single list (point 19.3 of the decision).

(c) Novelty over document D17

The written reasoning provided in the decision under appeal in relation to document D17 is erroneous: it repeats verbatim wording used in point 19 of the decision in relation to document D5 and does not apply to document D17.

The subject-matter of claim 1 is new over document D17, as the latter does not disclose features 5b and 6. The examining division asserts that indicia 13 or 54 compress the composite to alter the fibre distribution density, prestress and mechanical properties, but it did not point to any part of document D17 which explicitly teaches that the indicia compress the composite material to give rise to a different fibre construction. Such a fibre construction is not inherently disclosed either, for the following reasons:

- The function of indicia is not to compress the matrix, but simply to remain in place to provide detectable elements which make it possible to establish how much pipe has been fed into a downhole (see Background of the Invention). As a result, elements such as 54, 64 and 74 are taught to be narrow and thin (see for example col. 5, lines 21 to 22). There is no evidence that any pressure is applied to the underlying composite material by the indicia which is sufficient to compress it and give rise to a different fibre construction.

- Even if some small amount of compression of the composite did take place, the thermoplastic matrix of a composite material of this type is compressible and would absorb the additional pressure without displacing the fibres. This would not result in a difference in fibre construction or variation in fibre distribution density.

(d) Inventive step in view of document D16

The examining division offered no analysis of the features which it considered document D16 to disclose, for the purpose of assessing inventive step using the problem/solution approach. It simply asserted that document D16 discloses (Figs. 1 to 8, pages 1 to 3) all the features of both claims except PEEK material. On the contrary, claim 1 is new over document D16 for the following reasons:

- The device of document D16 is not suitable for extracting hydrocarbons from a subsea reservoir. It relates to air conditioning piping for aircraft (paragraph [0002]) and is not configured to withstand the high pressures and temperatures or aggressive (acidic) environment typical in the extraction of hydrocarbons. The examining division did not explain where document D16 disclosed this feature.

- There is no mention of polyether ether ketone (PEEK) as the matrix material (phenolic and epoxy resins are mentioned instead in paragraph [0022]). This has been accepted by the examining division (see paragraph 20.1 of the decision under appeal).

- Features 5b and 6 are not disclosed. There is no explicit teaching of these features, and it is not apparent why they should be inherent either.

(e) Inventive step in view of document D17

The invention is intended for extracting hydrocarbons from subsea reservoirs. To this end, a thermoplastic, PEEK polymer matrix is used, which may withstand high pressures and especially high temperatures (PEEK melts at around 343°C) but is also flexible, so pipes made of PEEK can be spooled (for example for use as a subsea riser or jumper, see original application, page 1, Background of the Invention). Document D17 is the closest prior art because it relates to hydrocarbon extraction and so has the most similar purpose to the invention (see Guidelines G-VII, 5.1). However, document D17 does not disclose features 5b and 6. These features address the problem of providing regions of modified properties, such as strength, to meet specific needs (see originally filed patent application, page 2, lines 14 to 21) in pipes for subsea hydrocarbon extraction. None of the documents cited by the examining division teaches how to solve this technical problem or, more importantly, provides features 5b and 6 to solve the problem. The examining division considered the disclosure of this feature to be implicit but did not provide any reasoned justification for this finding. If necessary, a technical expert from the applicant can be presented to further explain why this finding is not correct.

Combination with document D5

Document D5 provides no teaching in relation to pipes that would be suitable for subsea hydrocarbon extraction. Instead, it concerns the unrelated technical fields of fishing rods, golf clubs, tennis rackets and handlebars (see document D5, col. 1, line 9, and col. 10, line 10). In consequence, a skilled person starting from document D17 and wishing to modify a pipe suitable for subsea hydrocarbon extraction would have had no cause to consider document D5. In the unlikely event that a skilled person in the technical area under consideration would nevertheless have considered document D5, they would have found no explicit teaching in it to vary the local fibre distribution density in the composite material forming the pipe wall to provide regions of modified properties. Indeed, there is no mention at all in document D5 of the fibre distribution density. Further, there is no implicit teaching in document D5 to vary the fibre distribution density either. It is not correct that in sections II, III and IV in Fig. 9, the inner fibres are surrounded by a varying thickness of piled part 115 which may not contain any fibres, thereby reducing the fibre distribution density in those portions, as asserted in point 19, sub-paragraph 1, of the decision under appeal.

The skilled person starting from document D17 would not have extracted information from document D5 to vary the fibre distribution density in a composite material for the following reasons:

- Claim 1 relates to "a composite pipe ...". If there were no fibres in piled part 115, then it would not be made of composite material and the pipe would not be a composite pipe. A skilled person starting from document D17 and seeking to make a composite pipe would have had no incentive to extract information relating to a layer which is not made of composite material.

- Moreover, a selection must be made from within document D5 for there to be resin but no reinforcing fibres in piled part 115. The alternatives are (see col. 8, lines 3 to 12) reinforcing fibre + resin, resin only or natural material such as cork (in which case there is no resin or reinforcing fibre present). Importantly, there is no discussion of the role of the reinforcing fibre distribution density, and since the piled parts 115 may be made of cork, the presence of either reinforcing fibres or resin in piled pieces 115a and 117a is entirely optional. Far from pointing to the fact that the distribution density of reinforcing fibres in the resin is important, it would have been evident to a skilled person that document D5 considered them to be an unimportant aspect. The skilled person starting from document D17 would not have extracted any information from document D5 relating to the advantage of having a local fibre distribution density within the composite material.

- If there were no reinforcing fibres in piled piece 115a, then the only composite material would result, post-melting (see col. 7, lines 41 to 49), from prepreg sheet 123 and woven fabric 131. There is no teaching of a local fibre distribution density variation in melted layers 123 and 131. Layer 115 in the finished article would not be a composite material if there were no fibres, so there could be no variation in fibre distribution density there either. Lastly, there is no teaching in document D5 which supports the assertion that the skilled person would have considered the combination of layers 123+115+117+131 to be a unitary composite material, even if 115 and 117 did not comprise composite material (because there were no reinforcing fibres). On the contrary, document D5 would in that case teach providing a sandwich of non-composite material between layers of composite material. Consequently, the skilled person starting from document D17 would not have extracted any teaching from the disclosure of document D5 to create a local variation in fibre distribution density within the composite material.

Thus, the subject-matter of claim 1 is not obvious in view of the disclosure of documents D17 and D5.

Combination with document D16

Document D16 provides no teaching in relation to pipes

that would be suitable for subsea hydrocarbon extraction. It relates to air conditioning piping for aircraft (paragraph [0002]). In the unlikely event that a skilled person in the technical area under consideration would nevertheless have considered document D16, there is no explicit teaching in document D16 to vary the local fibre density in the composite material forming the pipe wall to provide regions of modified properties. Indeed, there is no mention at all in document D16 of the fibre distribution density. Further, there is no implicit teaching in document D16 to vary the fibre distribution density. The examining division argued that, with reference to Fig. 4, there would automatically be a higher fibre distribution density in the parts where reinforcing means 2 are present than in sections where they are not present (see point 20.5 of the decision under appeal).

However, the technical teaching of document D16 is insufficient to make any such determination, so that assertion goes beyond what may be derived from document D16, which discloses fabrics impregnated with resin:

- It is not stated in document D16 that the reinforcing means 2 compress the structural plies 5 (which are the composite plies in question) in a way that is sufficient to cause any changes in the fibre distribution density. In fact, no information is provided about the degree of compression.

- The resin may be thermoplastic or thermoset (see paragraphs [0002] and [0005]), although the exemplified materials (phenolic resin and epoxy resin) are both thermoset materials, which are known to be rigid, brittle and relatively incompressible. There is insufficient information in document D16 to determine whether any compression of thermoset materials would occur, let alone a degree of compression sufficient to "provide regions of modified properties, such as strength, to meet specific needs in pipes for subsea hydrocarbon extraction". Also, since the claims relate to a thermoplastic (PEEK) matrix, there would have been no reason for a skilled person to seek information from document D16 on how thermoset materials might perform under compression.

- Moreover, even if the resin were thermoplastic, a thermoplastic matrix of a composite material of this type would be capable of absorbing some additional pressure without displacing the fibres (see also point 2.2.3(b) of the statement of grounds of appeal). However, there is insufficient information in document D16 to determine whether any sufficient compression of such thermoplastic materials would occur. Consequently, it cannot be assumed that a variation in fibre distribution density would result from the arrangement of document D16.

Thus, the subject-matter of claim 1 is not obvious in view of the disclosure of documents D17 and D16.

Other combinations

Since neither document D5 nor document D16 discloses feature 6, a combination of document D17 with documents D5 and D16 cannot render the claimed invention obvious either. Moreover, a skilled person would have had no incentive to combine a document relating to the manufacture of fishing rods (D5) and a document relating to air conditioning piping (D16) with a document in the technical field under consideration.