T 0846/21 04-05-2022

1. Decision in written proceedings

The decision is issued in written proceedings without oral proceedings.

According to Article 12(8) RPBA 2020, the Board may, subject to Articles 113 and 116 EPC, decide the case at any time after filing of the statement of grounds of appeal.

Given the findings and the order of the decision, the patent proprietor's auxiliary request for oral proceedings has not become effective because the Board sets the contested decision aside.

The case is ready for decision on the basis of the patent proprietor's extensive written submissions and the decision under appeal. No submissions or requests have been filed by the opponent.

For this reason, issuing of the decision in written procedure without oral proceedings is in compliance with the requirements of Articles 113(1) and 116(1) EPC.

2. Sufficiency of disclosure (Article 83 EPC)

2.1 The Board shares the view of the patent proprietor that the finding of the opposition division that the invention according to the main request is not sufficiently disclosed is not correct.

2.2 As rightly argued by the patent proprietor (see statement of grounds of appeal, point 62), it is established jurisprudence of the boards of appeal that an objection of lack of sufficient disclosure presupposes that there are serious doubts substantiated by verifiable facts. The burden of proof is upon the opponent to establish on the balance of probabilities that a skilled reader of the patent, using his common general knowledge, would be unable to carry out the invention (see the Case Law of the Boards of Appeal (CLB), 9**(th) edition, 2019, II.C.9).

2.3 In the present case the Board is of the opinion that the objection of insufficiency of disclosure raised by the opponent and followed by the opposition division is not based on serious doubts substantiated by verifiable facts and that the opponent has not discharged its burden of proof.

2.4 The experimental results submitted by the opponent as D20-1, on which the opposition division relied for its finding of insufficient disclosure, show that five out of the eleven samples tested, have the properties defined in the claims, i.e. silicon oil less than 2% by weight, non-silicon component between 0.1% and 3% by weight and an angle daze lower than 5%, and that two out of these five samples, number 2 and 9, have a seal stress strength greater than 100 g/25 mm while three, number 4, 5 and 8 have a seal strength lower than 100 g/25 mm, where a seal stress lower than

100 g/25 mm indicates a sealing incompatibility and a sealing stress greater than 100 g/25 mm a sealing compatibility (see point 2.5 of the reasons for the decision).

It is uncontested by the opposition division that samples 2 and 9 thus fulfil all the requirements for the layers set out in claim 1 and 15 of the main request (see point 2.6, first paragraph of the reasons for the decision).

2.5 From these facts the Board cannot consider that serious doubts arise that the invention, involving the provision of layers with sealing compatibility, cannot be carried out by a person skilled in the art, since as indicated by the patent proprietor (see statement of grounds of appeal, points 31, 32 and 64) it has in fact been shown by the data submitted by the opponent in combination with the examples of the patent that layers as defined in the claims can be obtained by using the teaching of the patent and common general knowledge.

2.6 Furthermore, as correctly argued by the patent proprietor (see the statement setting out the grounds of appeal, points 33 to 36), that the person skilled in the art could arrive at non working embodiments, is irrelevant as long as the person skilled in the art is still capable of reproducing the invention (see G 1/03, point 2.5.2 of the reasons), which cannot be doubted on the basis of the data submitted by the opponent.

2.7 The finding of the opposition division (see page 9, second sentence, of the reasons for the decision), that the claimed set of features "seems to be a mere definition of a research program, rather than a clear set of instructions to the skilled person enabling him to carry out the invention" is therefore not convincing as it does not appear to be based on a proper evaluation of the evidence submitted.

2.8 Furthermore, the Board cannot follow the argument of the opposition division that, although the seven different film materials disclosed in the patent are shown to have the claimed properties, the corresponding mixing ratio of PP, PE and PB is not known and the person skilled in the art is thus left to perform trial and error testing to reproduce the examples, so that the invention would not be sufficiently disclosed (see point 2.7, last two paragraphs, of the reasons for the decision).

2.9 The Board, while noting that the validity of the tests results shown in the patent specification does not appear to have been contested either by the opponent or by the opposition division, rather shares the view of the patent proprietor (see point 64 of the statement setting out the grounds of appeal) that it is not required to show every single detail of the examples in the patent specification. From the absence of specific details, in particular the mixing ratio of PP, PE and PB, it cannot be necessarily concluded that the person skilled in the art is not in the position of carrying out the invention taking into account the teaching of the patent and the common general knowledge.

2.10 The Board also shares the view of the patent proprietor (see points 55 to 61 of the statement setting out the grounds of appeal) that decisions T 1712/16 and T 1713/16 cited by the opposition division relate to cases in which the claimed subject-matter is different from the one of the opposed patent.

Furthermore, since it has not been clearly and in detailed manner shown how the reasoning followed by the deciding board in those cases should be applied to the present case (see point 2.8.1 of the reasons for the decision) the Board does not consider it either appropriate or necessary to further address this issue.

2.11 The Board thus concurs with the patent proprietor that the opponent has not discharged its burden of proof with respect to the alleged insufficient disclosure of the invention and that the decision of the opposition division that the opposed patent as amended according to the main request does not fulfil the requirements of Article 83 EPC is not correct.

3. Conclusions

The Board is thus of the opinion that the appealed decision cannot be upheld.

Since no objections have been filed in appeal proceedings by the opponent, the Board does not see any reasons preventing the maintenance of the patent as amended according to the main request.