T 2700/17 18-01-2021

Main request - Article 84 EPC

1. In the contested decision, an objection pursuant to Article 84 EPC was retained by the examining division inter alia in view of feature (iv) of claim 1 of the main request, namely ADD.

2. In that respect, it was not contested by the appellant that ADD is an unusual parameter, which is confirmed by the fact that its determination method is indicated in the description in some details and without any reference to usual standards (contrary to e.g. features (i), (ii) and (vi), also specified in operative claim 1). Under these circumstances, it has to be assessed whether or not the indications provided in the description of the application as filed regarding the determination of that parameter are such that they allow an unambiguous determination thereof, which is necessary in order to ensure that the skilled person can determine if he is working within or outside the scope of the claims and/or to allow a fair comparison with the prior art.

3. As indicated in operative claim 1, the method of determination of ADD is described in paragraph 41 of the application as filed, which reads as follows:

"The aggregate disintegration degree with 50-sec vibration is measured at 25°C according to the following procedures (1) to (7):

(1) A round-shaped powder paper (diameter: 50 mm) is placed at the bottom of a SUS cylindrical cup (inner diameter: 50 mm (measured value: 51.7 mm), volume: 150 ml). The inner side surface of the cup is also covered with a powder paper.

(2) The dripping inhibitor is sieved with a 10-mesh sieve, and 50 g of the material passing through the sieve is sampled and placed in the cylindrical cup.

(3) The surface of the dripping inhibitor in the cylindrical cup is smoothened and covered with a round-shaped powder paper (diameter: 50 mm).

(4) A weight (a cylinder having a diameter of 50 mm, weight: 330 g) is placed on the powder paper on the surface, and is tapped for 20 times in a Powder Tester (Hosokawa Micron Corporation) (tapping stroke: 20 mm).

(5) After tapping, a cylindrical cake of the dripping inhibitor is taken out from the cylindrical cup.

(6) The cylindrical cake taken out is placed on a 8-mesh sieve and subjected to vibration for 50 seconds on a Powder Tester (Hosokawa Micron Corporation) (vibration scale: 4.5).

(7) The mass of the PTFE fine powder dropped by vibration is weighed and the aggregate disintegration degree is calculated from the following equation (B):

(Aggregate disintegration degree) = (Mass of dripping inhibitor passed through the sieve during 50 second vibration)/(Total mass of dripping inhibitor) x 100(% by mass) (B)".

Figures 1 to 3 of the application as filed further illustrate the making of the cake of the PTFE powder and the sieving of that cake according to above steps (1) to (5) and (6), respectively.

4. The examining division's objection of lack of clarity in respect of ADD was inter alia based on the following arguments (section 16.3 of the reasons of the decision: see in particular the last 7 lines on page 7 and the first 5 lines on page 8):

(a) The frequency of strokes in step (4) was unknown and had an impact on the determination of ADD;

(b) The frequency of vibration and the amplitude of vibration in step (6) were unknown and also had an impact on the determination of ADD.

It addition, in section 27.1 of the reasons of the contested decision, which was directed to additional clarity concerns regarding feature (iii) according to claim 1 of the main request (but which were not indicated as an objection on which the decision was based), the examining division further held that there was no information in the application as filed regarding the powder tester model number and fabrication year mentioned in said steps (4) and (6) (lines 1-8 of section 27.1) and that to ensure that a comparison with the prior art could be made, care should be taken that the methods of measurement of the parameters specified in the operative claims were not only in the hand of the appellant (last sentence of section 27.1).

5. The Board shares the view of the examining division that at least the frequency of vibration and the amplitude of vibration applied in step (6) of the determination method of ADD, which determine the strength of the vibrations used to break down the cake of PTFE powder prepared and determine the amount of powder which passes through the sieve after 50 seconds, must be known in order to allow an unambiguous definition of ADD. In that respect, it is noted that said sieving is not carried out until the cake is completely broken down and effectively sieved but only to an intermediate degree reached after 50 seconds of vibrations, as is derivable from the table on page 44 of the application as filed, in which it is shown that said sieving step may be carried out for longer time (e.g. 120 seconds), whereby some more particles are further sieved. Therefore, it makes no doubt that the amount of materials sieved after 50 seconds as indicated in step (6) and, thus, the value of the parameter ADD effectively depend on the strength of the vibrations applied, i.e. on the frequency and amplitude of these vibrations.

5.1 The appellant argued that, as regards the vibration frequency and amplitude of vibration used in step (6), the reference to the powder tester of HMC to be used together with the calibration method indicated in paragraph 135 of the application as filed implicitly disclosed the vibration conditions. In that respect, it was in particular derivable from D5 that at the priority date of the present application no powder tester model of HMC was available which provided the option to select from different frequencies of vibration in step (6) when determining ADD of a given powder sample and that they all had the same frequency of vibration. Therefore, the same results would have been obtained for ADD no matter which HMC powder tester available at the priority date was used to carry out step (6) according to the application as filed, so the appellant.

5.2 However, even when providing D5, the appellant has not indicated which absolute value of frequency of vibration was actually used in the apparatus used in step (6) of the method of determination of ADD indicated in the application as filed.

5.3 Nor has the appellant indicated which amplitude of vibration was actually used in said step (6).

5.3.1 In that respect, the appellant argued that the configuration of the powder tester regarding the amplitude of vibration was implicitly disclosed in view of the reference to a powder tester of HMC and of the further indication at paragraph 135 of the application as filed regarding the calibration used.

5.3.2 However, the indications in paragraph 135 are neither indicated in operative claim 1, nor in paragraph 41 of the application as filed. Therefore, there is no reason to consider that they mandatorily have to be applied when determining feature (iv) according to claim 1 of the operative main request.

5.3.3 In addition, even if these indications were present in the claims (as was done in the operative first auxiliary request), it would not overcome the objection made by the examining division because such a calibration procedure can only be valid for the precise apparatus used by the appellant to carry out the experiments of the application as filed (which is still not known), but says nothing as to the absolute values of that parameter i.e. which amplitude of vibration should effectively be used by the skilled person when carrying out step (6). In particular, even if it is indicated in paragraph 135 that the vibration scale of 5.5 corresponds to the amplitude of 1 mm, no information was given to clarify what the vibration scale of 4.5 (which is indicated in step (6) of paragraph 41 of the application as filed) means, either in absolute terms or as compared to the vibration scale of 5.5.

5.4 Regarding the reference to the HMC powder tester given in the application as filed and the additional information provided in D5 according to which all HMC powder testers available before the priority date of the application as filed had an identical and fixed frequency of vibration and amplitude of vibration when carrying step (6), it remains that should said apparatus have evolved over the past years and said sieving device have been modified, no comparison with a prior art document using the same apparatus would still be possible, in particular if the apparatus used in the application as filed were not to be available any more. In that respect, it has in particular to be taken into account that, in the proceedings related to the examination of the European application derived from D4, it was found out that various models of powder testers were developed by HMC throughout the years, whereby in particular the tapping mechanics had been completely redesigned (minutes of the oral proceedings held on 12 December 2019: section 8). The same issue arises in case of future evolution of said apparatus or, even, in case said apparatus would not be available any more. In particular, should for instance a HMC powder tester which allows different frequency to be used as indicated in D5 (bottom of page 2, with reference to the PT-X apparatus) be used, the skilled person does not know which configuration should be selected, nor even if any of the options available for that apparatus actually corresponds to the ones used in the powder tester effectively used in the application as filed. Also, no information would be available if the ADD measurement were to be made with a powder tester from a different company than HMC.

For those reasons, the skilled person is, even with the information of D5, still not in a position to determine unambiguously feature (iv) according to claim 1 of the main request.

5.5 In the Board's view, the above concerns are of particular relevance because, in the absence of the information regarding the frequency of vibration and amplitude of vibration to be used in step (6) of the method of determination of ADD according to paragraph 41 of the application as filed, it cannot be ensured that the subject-matter for which protection is sought, even if it were to have been shown to be clearly defined at the priority/filing date of the present application, would remain unambiguously defined until the end of the term of the patent. In other words, that information is required to ensure that legal certainty in respect of the scope of protection is given throughout the lifetime of the patent.

It may be noted that the above conclusion, which is reached by considering that the requirements of Article 84 EPC are to be satisfied over the whole patent term and not only at the priority date, is in line with accepted case law according to which the presence of trademarks in claims is normally unallowable pursuant to Article 84 EPC because the meaning of such trademarks and therefore the definition of the subject-matter being claimed and for which protection is sought may change over time (Case Law of the Boards of Appeal of the EPO, 9**(th) edition, 2019: II.A.3.1, paragraph related to T 762/90 of 29 November 1991; see also: T 409/10 of 8 October 2013: sections 3.2 and 3.3, end of the second paragraph, of the reasons and T 2577/11 of 17 September 2014: section 2, third paragraph, of the reasons).

6. In the Board's view, similar considerations apply regarding some additional lack of information regarding the tapping procedure used in step (4) of the determination method of ADD given in paragraph 41 of the application as filed, as already held by the examining division.

6.1 In that respect, the appellant put forward that the arguments retained by the examining division in that respect were immaterial (statement of grounds of appeal: page 5, third paragraph of section 3.2.1). It is noted that, although these arguments were put forward by the appellant in respect of clarity of the compression ratio (CR) parameter according to feature (iii) of operative claim 1, they are related to steps (1) to (5) of the method of determination of CR according to paragraph 40 of the application as filed, which are identical to steps (1) to (5) of the determination method of ADD according to paragraph 41 of the application as filed. Therefore, these arguments of the appellant are also valid for the assessment of clarity of feature (iv) of operative claim 1.

6.1.1 However, the Board shares the opinion of the examining division that at least the frequency of tapping applied in step (4) of the method described at paragraph 41 of the application as filed is to be expected to play a role on the degree of compaction of the powder and, therefore, on the determination of the value of the parameter ADD. Indeed, at higher frequency, the powder has possibly less time to "settle down" between two strokes, which can be expected to have an impact on the resulting cake subject to the further procedure and, therefore, to have an impact on the determination of ADD, as already indicated by the examining division in the last four lines of page 7 of the contested decision.

6.1.2 In its statement of grounds of appeal, the appellant merely indicated that "it would rather seem that the frequency of tapping ... has no significant influence on the resulting compaction density". That assertion is, however, not supported by any evidence or even arguments. Therefore, it is not sufficient to overcome the objection of the examining division, which, in the Board's view, is credible for the reason indicated above.

6.2 In addition to the examining division's argument regarding the frequency of tapping, the Board indicated in its communication that similar considerations appeared to be valid regarding the force of tapping applied in said step (4) (section 6.5.2, second paragraph in combination with section 6.6.3) since, also in that respect, the stronger the force of tapping applied, the higher the compaction will be in the resulting cake thus formed.

However, no argument was provided by the appellant to refute that objection and no information regarding said force of tapping was shown to be unambiguously derivable from the application as filed or provided by the appellant in reaction to the Board's communication, in particular at the oral proceedings before the Board. In that respect, doubts in particular arise regarding the meaning of the expression "tapping stroke: 20 mm" indicated in step (4) of the method according to paragraph 41 of the application as filed.

7. In view of the above, it is concluded that essential technical information is missing in the application as filed in order for the skilled person to be able to determine unambiguously feature (iv) as indicated in operative claim 1. Further considering that the appellant has deliberately defined the subject-matter of operative claim 1 by means of that unusual parameter and using a method which was not shown to be commonly used in the art, it would have been its duty to provide full information how said feature may be unambiguously determined. Since, as explained above, that requirement is in the present case not satisfied, there is a fundamental lack of technical information concerning the determination method of that feature so that the skilled person is not in a position to determine unambiguously if he is working within or outside the scope of the operative claims. For these reasons, claim 1 of the main request does not fulfill the requirements of Article 84 EPC.

8. Under these circumstances, the arguments put forward by the appellant in appeal do not justify that the Board overturns the conclusion of the examining division on clarity regarding feature (iv) mentioned in claim 1 of the main request. For that reason, the main request does not satisfy the requirements of Article 84 EPC and is not allowable.

Auxiliary requests - Article 84 EPC

9. First auxiliary request

As compared to claim 1 of the main request, the amendments made in claim 1 of the first auxiliary request are, as acknowledged by the appellant during the oral proceedings before the Board, related to a calibration procedure of the HMC powder tester. However, as indicated in section 19.1.1 of the contested decision, although said information provides more details regarding how to configurate the powder tester used, it was still not shown to allow an unambiguous determination of feature (iv). Therefore, the conclusions reached in respect of clarity for the main request (see sections 5 and 6 above, in particular section 5.3.3 regarding said calibration procedure) are also valid for the first auxiliary request.

10. Second to ninth auxiliary requests

Claim 1 of each of the second to ninth auxiliary requests contain the same feature (iv) as in claim 1 of the main request or of the first auxiliary request. In the absence of any arguments why the amendments made in claim 1 of each of the second to ninth auxiliary requests may overcome the objections pursuant to Article 84 EPC identified above in respect of feature (iv) according to claim 1 of the main request or of the first auxiliary request, the same conclusion in respect of clarity as outlined for claim 1 of the main request and of the first auxiliary request is bound to be reached for claim 1 of each of the second to the ninth auxiliary requests.

11. In view of the above conclusions regarding lack of clarity of feature (iv) specified in claim 1 of each of the operative requests, there is no need for the Board to deal with any other issues mentioned in the contested decision or identified in the Board's communication.

12. Since none of the appellant's requests is allowable pursuant to Article 84 EPC, the appeal is to be dismissed.