T 0353/18 11-11-2020

1. Considering that the respondent's main request was the dismissal of the appeal, the highest-ranking request is auxiliary request 1, which was filed by letter of 12 September 2017 and had been found allowable by the opposition division. In line with the numbering in the opposition proceedings, that request is referred to as "auxiliary request 1" hereinafter.

Auxiliary request 1

2. Amendments: Article 123(2) EPC

2.1 For the assessment of Article 123(2) EPC, the question to be answered is whether or not the subject-matter of an amended claim extends beyond the content of the application as filed, i.e. whether after the amendment the skilled person is presented with new technical information (see G 2/10, OJ EPO 2012, 376, point 4.5.1 of the Reasons and Case Law of the Boards of Appeal of the EPO, 9**(th) edition, 2019, II.E.1 and 1.2.1).

2.2 The appellant's objections are directed to the following amendments made in operative claim 1 as compared with claim 1 as originally filed:

(a) the replacement of the wording "is substantially free of bisphenol-A-diglycidyl-ether ("BADGE") and also substantially free of bisphenol-A-resins" with "contains less than 0.01 wt.% of bisphenol-A-diglycidyl-ether ("BADGE") and bisphenol-A-resins"; and

(b) the addition of the requirement that the claimed composition should be "free of other epoxy groups".

2.3 Therefore, it has to be assessed whether a direct and unambiguous basis for these amendments individually and in combination may be found in the application as filed.

2.4 Regarding amendment (a)

2.4.1 The respondent argued that amendment (a) was derivable from original claim 1 and the third paragraph on page 5 of the application as filed.

Objection regarding the amounts of BADGE and bisphenol-A-resins

2.4.2 In that respect, the wording of claim 1 of the application as filed unambiguously specifies that the claimed compositions are "substantially free" of each of the components BADGE and bisphenol-A-resins.

The third paragraph on page 5 of the application as filed directly follows a paragraph which is directed to a composition according to original claim 1 and in particular contains the same last paragraph "where all weight percentages are ... and the composition is substantially free of bisphenol-A-diglycidyl-ether ("BADGE") and also substantially free of bisphenol-A-resins"; it reads as follows:

FORMULA/TABLE/GRAPHIC

Under these circumstances and given that the term "substantially free" has no clear and accepted meaning, the skilled person would infer from the application as filed as a whole that the compositions according to both original claim 1 and page 5 are specified, in an absolute and general manner, as containing less than 0.01 wt.% BADGE and less than 0.01 wt.% bisphenol-A-resins, as agreed by both parties and in accordance with the decision under appeal.

2.4.3 However, in view of the indication of a single quantity and a single condition and in view of the use of the term "and" between the two compounds, the wording "contains less than 0.01 wt.% of ... (BADGE) and bisphenol-A-resins" in claim 1 of auxiliary request 1 unambiguously specifies that the the sum of the amounts of BADGE and bisphenol-A-resins should be below 0.01 wt.%. Therefore, amendment (a) made in claim 1 of auxiliary request 1 does not reflect the combination of requirements in respect of the amount of each of BADGE and bisphenol-A-resins as defined in claim 1 of the application as filed and differs therefrom.

2.4.4 In that respect, as explained in section 2.4.3 above, the board does not share the opposition division's view that the wording of operative claim 1 was ambiguous and could be interpreted in two ways (see the third paragraph of section VIII b) above). Therefore, there is no reason to turn to the description to interpret the wording of claim 1 of auxiliary request 1 and the respondent's argument that the ambiguous wording of claim 1 of auxiliary request 1 meant it should be read restrictively on the basis of the description is rejected.

For the same reason, the board also rejects the respondent's argument that claim 1 should be read according to the broadest interpretation identified by the opposition division, namely that the amount of each of BADGE and bisphenol-A-resins - not the sum of the amounts - should be below 0.01 wt.%.

2.4.5 The conclusion in section 2.4.4 is based solely on the wording of claim 1, which is clear by itself. Since that reading was not shown to be either illogical or devoid of technical sense, the board sees no reason to rule out its clear meaning. Moreover, contrary to the respondent's argument during the oral proceedings before the board, the board does not consider that in endorsing this reading it is adopting a mind desirous of misunderstanding, which would be contrary to accepted case law (see Case Law, supra, II.A.6.1).

During the oral proceedings before the board, the respondent further argued that the description should be used to interpret claim 1 of auxiliary request 1 in view of Article 69(1) EPC. However, Article 69 EPC deals with determining the extent of protection of a claim, which is possibly relevant for the purposes of Article 123(3) EPC and in infringement proceedings but is not applicable for Article 123(2) EPC. In addition, although the case law on the relevance of Article 69(1) EPC for interpreting claims has it that the description may be used to interpret the claims and identify their subject-matter, e.g. to judge whether the subject-matter is novel and not obvious or to establish whether the claims are clear and concise, it is also accepted case law that a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and interpret it differently (Case Law, supra, II.A.6.3.2, see in particular the second and third paragraphs).

Therefore, the conclusion in section 2.4.4 above does not deviate from the general principles on claim interpretations in accepted case law, contrary to the respondent's view.

2.4.6 During the oral proceedings before the board, the respondent argued that BADGE was a subgroup of bisphenol-A-resins and that, as a consequence, the distinction between the two components was artificial. Under these circumstances, there would be no distinction between the two interpretations considered by the opposition division.

However, that interpretation is not in line with the overall content of the application as filed and the patent in suit, according to which BADGE and bisphenol-A-resins are treated as separate components. The board further agrees with the appellant that it is indisputable that BADGE is a single monomeric chemical compound and bisphenol-A-resins are a group of organic polymeric materials. Therefore, BADGE cannot be taken to be a subgroup of bisphenol-A-resins. For these reasons, the respondent's argument is rejected.

Further objections raised by the appellant

2.4.7 According to the appellant, the wording of claim 1 meant that the basis to be considered for the definition of the "0.01 wt.%" of BADGE and bisphenol-A-resins was the composition without solvent; this was not supported by the passage in the third paragraph on page 5 of the application as filed, which stated that said basis was the composition with solvent.

However, the last two lines of page 5 of the application as filed explicitly indicate that "all weight percentages provided herein are based on the total dry weight of the coating composition excluding solvent". For the board, said statement undoubtedly applies to the overall content of the application as filed, i.e. including the third paragraph on page 5. The fact that said statement is found in the section "Detailed Description of the Invention" whereas the third paragraph on page 5 of the application as filed is in the section "Summary of the invention" is not a sufficient reason to deviate from the unambiguous indication in the last two lines of page 5, which the board holds to apply to the application as filed as a whole. For the same reason, in view of the last two lines of page 5, the indication "by total weight" in the third paragraph on page 5 of the application as filed is to be read as being based on the total dry weight, i.e. the composition without solvent. Moreover, it would not appear to make much sense to have the weight percentage defined in two different ways in a given claim and also in the description without any clear explanation. For these reasons, the appellant's arguments fail to convince and give the board no cause to deviate from the opposition division's conclusion in that respect.

2.5 Regarding amendment (b), the appellant argued that the application as filed did not support the amendment "free of other epoxy groups".

a) It is correct that claim 1 of the application as filed does not contain any limitation in respect of "other epoxy groups" and that the third paragraph on page 5 of the application as filed discloses the claimed compositions being preferably "substantially free of other epoxy groups" only as a preferred embodiment.

However, in view of the whole of the third paragraph on page 5 of the application as filed, the skilled person would undoubtedly read the term "substantially free" in the same way when used with "other epoxy groups" as when indicated in the same paragraph for BADGE and bisphenol-A-resins, i.e. as meaning either "free of other epoxy groups" or "contains less than 0.01 wt%" of them. In that respect, the board does not share the opposition division's view that the "other epoxy groups" should be considered differently from BADGE and bisphenol-A-resins in view of the overall content of the application as filed (section II.1.1.3 of the reasons of the contested decision). On the other hand, the board does agree with the findings of the opposition division that the wording "substantially free" encompasses "free" and is defined in a general manner, i.e. also for "other epoxy groups", in the third paragraph on page 5 of the application as filed (section II.2.2.6 of the reasons of the contested decision).

Under these circumstances, above amendment (b) amounts to a single selection within a list of preferred alternative embodiments directed to other epoxy groups, which is disclosed in a general manner in the description of the application as filed.

b) The appellant argued that the application as filed did not disclose that the claimed compositions could be free of other epoxy groups because it would not be possible from a technical point of view to prepare such compositions.

However, the board sees no reason why a composition free of other epoxy groups could not be prepared by selecting each of the components specified in operative claim 1 in such a way as not to contain epoxy groups, as put forward by the respondent. Therefore, there is no reason for the board to consider the embodiment "free of other epoxy groups" to be so illogical or to make so little sense from a technical point of view that the skilled person would have excluded it when reading the application as filed as a whole and in particular the third paragraph on page 5. Therefore, the appellant's objection is not convincing.

2.6 Regarding the combination of features of operative claim 1, including amendments (a) and (b), the appellant argued that if the respondent's reading of amendment (a) in the light of the third paragraph on page 5 of the application as filed were adopted, the subgroup of undesirable components specified in claim 1 of auxiliary request 1 would not be originally disclosed; as indicated during the oral proceedings before the board, this meant that the subject-matter of claim 1 could only be arrived at after performing a series of selections within the third paragraph on page 5 of the application as filed in respect of the specific amounts of BADGE, bisphenol-A-resins and other epoxy groups.

In that respect, the board's view is that the amount of "less than 0.01 wt.%" corresponds to the broadest illustration in absolute terms within the application as filed of the otherwise ambiguous term "substantially free" present in original claim 1. Therefore, if the respondent's reading of amendment (a) were adopted, there would be no need for a selection within the ambit of the original description in order to specify an amount of less than 0.01 wt.% for each of BADGE and bisphenol-A-resins. Moreover, upon reading claim 1 as construed by the respondent, the person skilled in the art would arrive at the subgroup of undesirable components specified in claim 1 of auxiliary request 1 after performing a single selection, namely that the composition should be free of other epoxy groups.

2.7 In view of the above, it is concluded that amendment (a) cannot be held to be directly and unambiguously derivable from the application as filed, for the reasons indicated in sections 2.4.2 to 2.4.6 above. However, all the appellant's other objections pursuant to Article 123(2) EPC fail to persuade.

2.8 For that reason, auxiliary request 1 does not fulfil the requirements of Article 123(2) EPC and is not allowable.

3. Although the issues of sufficiency of disclosure and novelty are irrelevant for auxiliary request 1 in view of the above decision pursuant to Article 123(2) EPC, the board deems it appropriate to address them in the present decision since they were discussed in full during the appeal proceedings, in particular at the oral proceedings before the board (in view of their relevance for the then remaining pending requests),

and may be relevant at a later stage in view of the remittal of the case to the department of first instance (see section 8 below).

4. Article 100(b) EPC

4.1 To meet the requirements of sufficiency of disclosure, an invention has to be disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person, without undue burden, on the basis of the information provided in the patent specification, if needed in combination with the skilled person's common general knowledge. In the case in hand, this means that the skilled person should in particular be able to prepare a coating composition according to claim 1, which is contested by the appellant.

4.2 The appellant argues that the information provided in the patent in suit does not allow the skilled person to know which specific conditions to apply in order to arrive at a useful composition.

However, there is no evidence to support the appellant's objection. Therefore, the board has no reason to believe that the skilled person would have any difficulty preparing compositions according to claim 1 of auxiliary request 1 by following e.g. the teaching in the table in paragraph 33 of the patent in suit and using a preparation process described in paragraphs 31, 32 and 34, if needed complemented by common general knowledge. There is also no evidence on file that any such composition would be unsuitable for producing coatings for metal sheet substrates of metal cans as defined in operative claim 1. In particular, the appellant did not furnish any evidence on appeal to refute the opposition division's conclusion that the requirements of sufficiency of disclosure were fulfilled.

Under these circumstances, the appellant's arguments give the board no cause to overturn the opposition division's decision regarding sufficiency of disclosure.

5. Article 54(3) EPC

5.1 The novelty objection put forward by the appellant on appeal is based on document D1 and made pursuant to Article 54(3) EPC.

5.2 The appellant's objection is based on the modification to example 18 of D1, in which the copolymer according to example 7 (an acrylic resin which differs from component (b) as defined in operative claim 1 only in that it has an acid number of 29.8, not of "below 20") would be replaced by that according to example 10 of D1 (a component (b) according to operative claim 1); according to the appellant, this replacement was supported by paragraphs 83 and 84 of D1.

5.3 In that respect, the respondent did not dispute that the overcoat composition according to example 18 of D1 differed from the composition according to operative claim 1 only in that the acrylic resin used in it had an acid number outside the range defined in claim 1.

5.4 In the board's view, paragraphs 83 and 84 of D1, do not explicitly teach specifically replacing copolymers, as contemplated by the appellant, but rather mention a larger number of alternative replacement options. In that respect, paragraph 83 teaches that the functional (meth)acrylic (co)polymer to be used in the overcoat compositions according to D1 may be a (co)polymer containing one or more functional groups selected from carboxyl, hydroxyl and oxirane, i.e. selected among three generic groups of copolymers. Furthermore, paragraph 84 addresses that first group of carboxyl-functional copolymers in more detail, particularly as regards the nature and amounts of the suitable comonomers which may be used.

In addition, whereas example 10 of D1 is disclosed as being illustrative of a (meth)acrylic acid (co)polymer comprising a hydroxyl functionality, example 7 of D1 is disclosed as being a (meth)acrylic acid (co)polymer comprising a carboxylic functionality, both of which are taught by D1 as being suitable embodiments for the functional (meth)acrylic (co)polymer of the overcoat composition according to claim 1 of D1 (see claim 14, paragraphs 83, 84, 88, 89 and tables II, III and IV of D1). Therefore, the replacement contemplated by the appellant means that the skilled person would have to use and actively select, in example 18, a different kind of functional (meth)acrylic (co)polymer taught in D1.

Under these circumstances, it cannot be held that replacing, in example 18 of D1, the copolymer according to example 7 with that according to example 10 is directly and unambiguously derivable from D1.

5.5 The appellant further argued that the person skilled in the art would understand that they could replace the carboxyl-functional (meth)acrylic copolymer according to example 7 used in example 18 of D1 with either

- a copolymer of 2-hydroxyethylmethacrylate (HEMA) with ethyl methacrylate or

- a carboxyl-functional (meth)acrylic copolymer in which less methacrylic acid is used compared with example 7, such as 0.5% , 1 %, or 2%,

because paragraph 84 of D1 disclosed both of these as suitable alternative functional (meth)acrylic acid (co)polymers.

However, in the absence of a pointer in D1 to any such modifications to example 18, it cannot be held that they constitute disclosure that is directly and unambiguously derivable from that document. Therefore, the appellant's objections fail for the same reason as outlined in section 5.4 above.

5.6 During the oral proceedings before the board, the appellant further argued that under accepted case law the specific disclosures of carboxyl-functional (meth)acrylic copolymer containing 0.5 wt.%, 1 wt.% and 2 wt.% methacrylic acid, as indicated in paragraph 84 of D1, constituted explicit disclosure for the carboxyl-functional (meth)acrylic copolymer to be used in example 18 of D1.

However, even if the passage in paragraph 84 of D1 were to constitute an explicit disclosure for an acrylic resin having an acid number below 20 according to component (b) of operative claim 1, there would still be no explicit or implicit disclosure to modify example 18 of D1 using specifically an acrylic resin of this kind. Therefore, the appellant's objection must fail for the same reasons as outlined in sections 5.4 and 5.5 above.

5.7 The board further concurs with the opposition division (section II.2.6.2 of the reasons of the contested decision) and the respondent that the skilled person has to make a series of choices within the ambit of D1 as a whole in order to arrive at the specific combination of features in operative claim 1, at least regarding e.g. the amount and acid number of the acrylic resin (component (b) of operative claim 1; paragraphs 81 and 83-93 of D1) and the nature of the crosslinker (component (c) of operative claim 1; paragraphs 73-80 of D1). Therefore, it cannot be concluded that the subject-matter of claim 1 is directly and unambiguously derivable from the description of D1.

In that respect, the appellant's considerations on the concept of selection inventions (statement of grounds of appeal: bottom of page 12 and page 13), i.e. the selection of a sub-range of numerical values from a broader disclosed range (Case Law, supra, I.C.6.3.1), are irrelevant since multiple selections within the ambit of D1 have to be made in order to arrive at the subject-matter of operative claim 1. Therefore, the question to be answered is whether or not D1 contains any pointer to the specific combination of selections to be made (Case Law, supra, I.C.6.3.3); as outlined in sections 5.4 to 5.6 above, that is not the case here.

5.8 In view of the above, the appellant's novelty objections in view of D1 fail to convince and give the board no cause to overturn the opposition division's decision in that respect.

5.9 Under these circumstances, there is no need for the board to address the issue of the validity of the priority of D1, which was in dispute between the parties.

Auxiliary request 1a

6. Admittance

6.1 The appellant objected to the admittance into the proceedings of auxiliary request 1a, which was filed at the oral proceedings before the board.

6.2 Considering that in this case the parties were sent the summons to oral proceedings in August 2020, the admittance of auxiliary request 1a is subject to the stipulations in Article 13(2) RPBA 2020 (see transitional provisions according to Article 25(1) and (3) RPBA 2020), according to which an amendment to a party's case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

6.3 In that respect, the respondent argued that the board's decision regarding Article 123(2) EPC took it by surprise, in particular in view of the accepted case law on interpreting claims.

However, as outlined in sections 2.4.2 to 2.4.6 above, the board does not consider the decision pursuant to Article 123(2) EPC to be surprising in view of the case law. In addition, the issue of the reading of amendment (a) identified in section 2.2 above had already arisen during the opposition proceedings; it was dealt with in the contested decision and further pursued in the statement of grounds of appeal. From the outset of the appeal proceedings, the respondent should have taken into account that the board may overturn the opposition division's decision in that respect; the fact that the board did so cannot be deemed surprising in order to justify the filing of an additional auxiliary request addressing the issue at such a late stage of the proceedings. In the case in hand, there is no doubt that the respondent could have filed such a request earlier e.g. in direct reply to the statement of grounds of appeal.

6.4 The respondent further held that due to the current Covid-19 pandemic it had trouble obtaining its American client's authorisation to defend auxiliary request 1a.

However, the board sees no reason why the Covid-19 pandemic would have stopped the representative from contacting their client using usual communication means such as phone, emails or videoconferences.

6.5 In view of the above, there are no exceptional circumstances in the case in hand that justify not submitting auxiliary request 1a until the oral proceedings before the board. Therefore, auxiliary request 1a is not admitted into the proceedings (Article 13(2) RPBA 2020).

Auxiliary request 2

7. Article 123(2) EPC

Claim 1 of auxiliary request 2 contains the same amendment (a) as identified in section 2.2 above, which is not allowable pursuant to Article 123(2) EPC for the reasons outlined in section 2.4.2 to 2.4.6 above. Under such circumstances, the same conclusion in respect of Article 123(2) EPC for auxiliary request 1 is also inevitably reached for auxiliary request 2.

Auxiliary request 3

8. Remittal for further prosecution

8.1 During the oral proceedings before the board when discussing the admittance of objections under Article 123(2) EPC against claim 1 of auxiliary request 3, there turned out to be a discrepancy between the wording of that claim in the clean and the annotated versions of that request. The respondent declared that the clean version was the valid one and that the discrepancy was due to an error when preparing the annotated version of auxiliary request 3.

8.2 The appellant pointed out that it had worked on the assumption that the two versions were identical and had prepared the case only on the basis of the annotated version.

8.3 In proceedings before the EPO, users of the European patent system who are parties to proceedings must act in good faith. In the case in hand, there is no indication on file, and nor has the appellant alleged, that the respondent acted contrary to the principle of good faith when preparing the annotated version of auxiliary request 3. However, the same is also valid for the appellant. The respondent filed auxiliary request 3 during the opposition proceedings by letter of 20 October 2017. When filing that request, and even later on in the appeal proceedings, the respondent did not provide detailed information on the basis for the amendments in the application as originally filed. In view of the information provided by the respondent, the appellant had no reason to doubt that the annotated version of auxiliary request 3 was correct and matched the clean version.

8.4 While in view of these considerations the board has no doubt that both parties acted in good faith, account needs to be taken of the principle of protection of legitimate expectations, under which users of the European patent system should not suffer a disadvantage as a result of having relied on erroneous information received from the department of first instance or the Boards of Appeal (cf. G 2/97, OJ 1999, 123, point 4.1 of the reasons). While there was no erroneous information from the opposition division or the board in this case, the outcome was the same as the appellant received erroneous information as a result of the respondent providing two different versions of auxiliary request 3 and was given no indication of this discrepancy.

8.5 Furthermore, there is no provision in the EPC establishing any legal primacy of the clean version over an annotated version of a request, so if they are different only a declaration by the proprietor can establish the valid one. In the case in hand, however, this declaration was not provided until the oral proceedings before the board. Thus, in view of the above, the appellant could assume the annotated version of auxiliary request 3 was correct up to that point in time and should not suffer a disadvantage as a result of having done so, even though the respondent declared later that the annotated version was not the valid one.

8.6 Pursuant to Article 111(1) EPC the board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. Under Article 11 RPBA 2020, the board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.

8.7 The discrepancy between the two versions of auxiliary request 3 concerns the amounts of BADGE and bisphenol-A-resins in the composition, i.e. a feature which was central to the appellant's objections under Article 123(2) EPC and which could not be interpreted in isolation from other features, for instance the weight percentages of the further components, especially in view of the use of the term "consisting of" in the preamble of the claim. Consequently, the allowability of any such amendment pursuant to Article 123(2) EPC may additionally depend on further amendments made to the claims; if several amendments are made compared with the application as filed, which appears to be the case here, the question arises as to whether the application as filed provides a basis for the claimed combination of features.

8.8 Since the appellant relied on the correctness of the annotated version of auxiliary request 3, it did not provide any written submissions on the specific wording of claim 1 of the clean version of auxiliary request 3, in particular as far as Article 123(2) EPC is concerned. Not raising objections in this respect until the oral proceedings was therefore justified and, as explained above, cannot result in a disadvantage for the appellant.

8.9 However, a ruling on the valid version of auxiliary request 3, namely the clean version filed by letter of 20 October 2017, would have required a substantive discussion for the first time during the oral proceedings before the board, without any prior exchange of arguments between the parties. Handling the case in this way would clearly run contrary to the primary object of the appeal proceedings, which is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020).

8.10 In view of the above, the board considers that in the case in hand there are "special reasons" in the sense of Article 11 RPBA 2020 justifying the remittal of the case to the department of first instance for further prosecution; this was explicitly agreed to by the appellant and was not contested by the respondent at the oral proceedings before the board.

8.11 For these reasons, the case is remitted to the department of first instance for further prosecution (Article 111(1) EPC; Article 11 RPBA 2020).