T 1963/20 (SODIUM HYPOCHLORITE/Olin) 08-06-2022

Reasons for the Decision

1. Admission of the requests filed with the statement of grounds of appeal

1.1 In the examination procedure, the appellant was made aware of the deficiencies of the then-main request in the annex to the summons to oral proceedings before the examining division.

1.2 However, the appellant chose not to address the deficiencies, either in writing or during the oral proceedings. Instead, it withdrew its request for oral proceedings and requested a decision according to the state of the file.

1.3 The examining division hence decided to refuse the patent application with reference to the reasons notified to the appellant in the annex to the summons to oral proceedings.

1.4 In the appeal proceedings, the appellant filed a new main request whereby inter alia the ranges in dependent claim 16 of the present main request were amended.

1.5 Auxiliary request 1 contains the same amendments as the main request but with claim 16 deleted entirely.

1.6 Auxiliary requests 2 to 6 contain altogether three different versions of amended ranges of the sodium hypochlorite and the sodium chloride content in claim 1.

1.7 Auxiliary request 7 contains a single claim, which is the combination of the features encompassed by claim 9 of the request forming the basis of the impugned decision, with all the other claims being deleted.

1.8 The main request and all the auxiliary requests are to be considered as an amendment to the appellant's case and their admission is subject to the board's discretion (Article 12(4) RPBA (2020)).

1.9 The primary object of appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020).

1.10 Thus the intention is to review the correctness of the first-instance decision rather than to continue examination by other means (case law book of the Boards of Appeal, 9th edition, V.A.4.2.2). By presenting amended requests, which are apt to present a new case, only in appeal proceedings, the appellant makes it impossible for the board to examine the contested decision.

1.11 Concerning the main request, it is not apparent why the amendments, particularly the amended ranges contained in claim 16, could not have been submitted in the examination proceedings. This consideration also applies to auxiliary requests 2-6, since they contain amended ranges/deletions too. Indeed, the appellant was informed of the deficiencies in the annex to the summons before the examining division but decided not to file amended claims, and even to withdraw its request for oral proceedings.

The perception that the filing of further requests did not seem promising in view of the opinion of the examining division is not valid circumstances which might justify the filing of the claims only in appeal proceedings.

The main request and auxiliary requests 2 to 6 are therefore not admitted into the appeal proceedings.

1.12 The question of whether auxiliary request 1 is to be admitted into the appeal proceedings is not relevant to the present decision, as the requirements of Article 123(2) EPC are not met anyway (see reasoning below).

1.13 Auxiliary request 7 refers exclusively to the features encompassed by claim 9 of the request forming the basis of the impugned decision. Claim 1 is the only claim of this request.

Since the features encompassed by claim 9 and the corresponding passage of the description (para. [0027]) were dealt with in the decision under appeal, the restriction to this claim meets the primary object of appeal proceedings of reviewing the decision under appeal in a judicial manner (Article 12(2) RPBA 2020). In addition, the amendments are not complex, and clearly overcome the issues which have led to the decision under appeal (Article 12(4) RPBA 2020).

Auxiliary request 7 is therefore admitted into the appeal proceedings.

2. Auxiliary request 1, Article 123(2) EPC

The appellant argues that claim 3, which was added in the examination phase, had a basis in para. [0027] of the original application.

The first sentences of para. [0027] read:

"[0027] A sample of hypochlorite solution having about 28% sodium hypochlorite, 7% sodium chloride, and 0.6% sodium hydroxide was cooled to 0 degrees C. Formation of pentahydrate crystals was initiated by adding a few sodium hypochlorite pentahydrate crystals previously prepared. The mixture rapidly formed a network of crystals and became semi-solid. A 500 gram sample of this semi-solid mixture was added to a laboratory mill ..."

The definition of the composition according to the subject-matter of claim 1 of the first auxiliary request does not include the amount of 0.6% sodium hydroxide.

Sodium hydroxide provides stability to the composition, a central aspect of the patent application (see paragraphs [0010]-[0011]). It is therefore a feature which is in close interrelation with the remaining components of the example. Paragraph [0027] of the original application thus does not directly and unambiguously disclose the composition without the specified amount of sodium hydroxide.

The appellant argues that it was conceivable for the skilled person to add alternative alkali. This argument however already fails because the subject-matter of claim 1 does not require alkali at all.

Therefore the subject-matter of claim 3 does not have a basis in para. [0027] of the original application (Article 123(2) EPC).

3. Auxiliary request 7, Article 123(2) EPC

The examining division argued that the amounts of hypochlorite and sodium chloride were closely associated with the sodium hydroxide content and the temperature of example 3 as originally filed, so the amounts of the components first mentioned could not be considered in isolation.

In view of the insertion of "0.6% sodium hydroxide", the objection concerning the first feature is clearly overcome.

As to the second feature in question, the board does not share the examining division's view, as it is not derivable from example 3 as originally filed that, after the formation of the pentahydrate crystals had been initiated, the samples were further processed at a specific temperature.

Thus the sole claim of auxiliary request 7 is considered to meet the requirements of Article 123(2) EPC.

3.1 Auxiliary request 7, Article 54(1) and (2) EPC

In the examination procedure D1 to D3 were cited by the examining division as anticipating the novelty of the subject-matter of claim 1 of the main request underlying the impugned decision.

D1 discloses a process for producing an aqueous slurry of sodium hypochlorite pentahydrate crystals which contains less than 3% by weight sodium chloride (claims 4 and 9).

D2 discloses a process for producing an aqueous slurry of sodium hypochlorite pentahydrate crystals which contains a very low amount, i.e. less than 1%, of sodium chloride.

D3 discloses a process for producing an aqueous slurry of sodium hypochlorite pentahydrate crystals which contains less than 3% by weight sodium chloride (claims 4 and 9).

Already because of the different sodium chloride composition, the subject-matter of claim 1 is novel over D1 to D3.

4. Auxiliary request 7, Article 56 EPC

The patent application is directed to a sodium hypochlorite composition.

All three documents D1 - D3 are directed to the production of a sodium hypochlorite composition and qualify as a starting point for an inventive-step objection. However, only D1 and D3 disclose a residual sodium hydroxide concentration, and are thus considered a more-promising starting point.

The technical problem the patent application attempts to solve is to provide a stable sodium hypochlorite composition (paragraph [0014] of the original application).

According to paragraphs [0014] and [0015], this technical problem is credibly solved by ensuring a certain sodium hydroxide and sodium chloride content in the composition.

However, D1 and D3 also seek to provide a stable sodium hypochlorite composition.

Therefore the technical problem must be reformulated to a less-ambitious one, which is to provide an alternative stable composition.

The solutions provided in D1 and D3 teach the skilled person away from the solution provided by the subject-matter of claim 1 because they teach not exceeding a sodium chloride concentration of 3% by weight.

The subject-matter of claim 1 is thus not rendered obvious by the cited prior art.