|European Case Law Identifier:||ECLI:EP:BA:2010:T083107.20100817|
|Date of decision:||17 August 2010|
|Case number:||T 0831/07|
|IPC class:||C08L 67/02|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||Polyester resin composition|
|Applicant name:||Asahi Kasei Kabushiki Kaisha|
|Opponent name:||ZIMMER A.G.
Shell Internationale Research Maatschappij B.V.
|Relevant legal provisions:||
|Keywords:||Decision reasoned in the sense of Rule 111(2) EPC (no) - mere summary of parties' submissions does not reason the decision
Substantial procedural violation (yes)
Remittal to the first instance for further prosecution
Reimbursement of appeal fee (yes)
Summary of Facts and Submissions
I. The grant of European patent No. 1 016 692 in respect of European patent application No. 98 941 706.8, filed as International Patent Application PCT/JP98/03959 on 3 September 1998 and claiming the priority of 3 September 1997 of an earlier application filed in Japan (25268697), was announced on 26 November 2003 (Bulletin 2003/48). The patent was granted with nine claims, including the following independent claims:
Dependent Claims 2 to 7 were appendant to Claim 1.
In this decision, references to passages in the patent in suit as granted will be given underlined in squared brackets, eg . References in underlined italics concern passages in the application as filed, eg page 1, line 1. Furthermore, the following abbreviations will be used herein below:
| EPC 1973 |European Patent Convention, 197|
| |3 version |
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| EPC |European Patent Convention as a|
| |mended in 2000 |
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| NoOp | Notice(s) of Opposition |
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| SGA |Statement of Grounds of Appeal |
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| dec |reference to the decision (unde|
| |r appeal) |
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| rej | reference to the rejoinder |
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| BPE | bis(3-hydroxypropyl)ether |
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| DMT | dimethyl terephthalate |
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| PTT |poly(trimethylene terephthalate|
| |) |
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| [eta] or I.V. | intrinsic viscosity |
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Quoted passages from letters or documents are reported herein literally. By contrast, denotations of cited documents were corrected, where necessary (eg D9: JP-A-5 620 027 as listed in the decision under appeal was corrected to "JP-A-58-104 216 (based on JP patent application 56-200 227)"). References to cited documents in Japanese are to be understood as additionally referring to their translations into English as provided by the parties.
II. On 24 and 25 August 2004, respectively, two NoOp were filed, in both of which revocation of the patent in its entirety was requested.
(1) Both opponents invoked Articles 100(a) and 100(c) EPC 1973 and objected to the validity of the claimed priority and to the range in feature (4) of [Claim 1] (as not being in compliance with Article 123(2) EPC 1973). Furthermore, both opponents raised objections of lack of novelty and lack of inventive step (Articles 52(1), 54 and 56 EPC 1973), referred to a total of eighteen pieces of prior art, ie patent documents and publications, and, furthermore, to
| D1: |the priority document JP-Applic|
| |ation-9-252 686, |
| | |
| D3: |an experimental report which ha|
| |d been filed in an opposition i|
| |n TW, |
| | |
| D4: |a printout of two patent famili|
| |es and |
| | |
| D13: |a (first) Declaration of Ms. Ka|
| |thy S. Kiibler. |
| | |
D3 and D13 were submitted to provide support for an objection of lack of novelty based on Example 6 of
| D2: | EP-A-0 859 020. |
| | |
| | |
The numbering of the cited documents are referred to herein as suggested by the Opposition Division.
(2) Opponent 02 (O-02) additionally raised an objection of insufficiency of disclosure under Articles 100(b) and 83 EPC 1973 and referred in this connection to paragraphs  to  and  disclosing three different methods for making the claimed compositions. In its opinion, however, this disclosure did not provide a "teaching in the patent-in-suit as to how to obtain a polyester resin composition having an intrinsic viscosity of from 0.4-0.8, a cyclic content of 2-3 wt%. and a bis(3-hydroxy propyl)ether content in the range from 0.4-0.5 wt%." (NoOp of (O-02): items 8 to 8.8, in particular 8.4).
III. In a letter dated 6 June 2005, the Patent Proprietor disputed all the arguments of the opponents to their different objections and submitted an Auxiliary Request, which differed from the set of claims as granted, forming the Main Request (section I, above), only by the deletion of [Claims 8 and 9].
(1) More particularly, the Patent Proprietor disputed that D3 represented a true repetition of Example 6 of D2. Rather, it asserted that the amounts of catalysts and additives in D3 differed from those in D2. Moreover, important details were, according to the Patent Proprietor, disclosed neither in D2 nor in D3, eg the temperature at which the phosphorus compound had been added, which was a crucial factor of the process of D2, so that it took the view that "it is questionable whether an experimental example of this Reference can be reliably reproduced at all. In particular, the significance of data depending on the amount of phosphorus compound contained in the esterification product (i.e. the amount of cyclic dimer and BPE) is questionable." (letter: item 6.1.1 a), in particular, the paragraph bridging pages 5 and 6, the table on page 6 and page 7).
(2) With regard to D13, the Patent Proprietor argued that no proof had been provided that the polymer spun in the experiments of D13 had been the product which had been prepared in Example 6 of D2. "In view of this, Reference E11 (= D13) is not suitable for demonstrating that the polyester resin compositions disclosed in Reference E3 (= D2) have a BPE content as stipulated in claim 1 of the Opposed Patent. Instead, Reference E11 appears to be of no relevance for the present case.
Independently, it is noted that the cyclic dimer and the BPE contained in a resin composition are formed not only during the polycondensation, but also during the melt spinning by thermolysis and/or additional polycondensation. Accordingly, it is evident that a fiber differs in composition from the respective raw PTT resin. Thus, the analytical data (relating to a fiber) disclosed in Reference E11 can not provide any evidence regarding the composition of the PTT resin composition prior to melt spinning.
Furthermore, Reference E3, in view of Reference E11 neither explicitly nor implicitly discloses the combination of all features stipulated in claim 1 of the Opposed Patent." (letter: page 11, paragraphs 2 to 4).
(3) Nor would an amount of PTT resin oligomers, in particular its cyclic dimer, inevitably be formed to an extent within the definition of feature (3) in the opposed Claim 1, as shown in [Comparative Example 6] (letter: page 9, paragraphs 2 and 3).
IV. On 8 May 2006, the Opposition Division issued a summons to oral proceedings, to be held on 7 March 2007, and an annex containing a list of all cited references D1 to D22 (cf. section II (1), above), including eg
| D9: |JP-A-58-104 216 (based on JP pa|
| |tent application 56-200 227) (c|
| |f. section I, above, last para|
| |graph), |
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| D11: | EP-A-0 547 553 and |
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| D12: | WO-A-98/23662. |
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(1) Moreover, the annex included the preliminary and non-binding opinion of the Opposition Division on the different objections raised by the opponents with regard to the Main Request and the Auxiliary Request of the Patent Proprietor (section III, above).
(2) More particularly, the Opposition Division was of the preliminary opinion that, firstly, the priority claim mentioned in sections I and II (1), above, was not valid and, secondly, with regard to both requests as above, that the objections under Articles 100(b), 100(c) and 123(2) EPC 1973 would not presumably be successful. Moreover, the Opposition Division indicated that, in its preliminary opinion, the subject-matter of [Claims 8 and 9] was not novel over each of D2, D9, D11 and D12, whereas the subject-matter of the Auxiliary Request would appear to meet the novelty requirement.
(3) Additionally, the Opposition Division referred to the question of inventive step as being one of the issues to be discussed at the scheduled oral proceedings to be held on 7 March 2007.
V. In its letter dated 3 January 2007, Opponent 01 (O-01) provided further arguments concerning the novelty of the claimed subject-matter of both the Patent Proprietor's Main and Auxiliary Requests.
(1) Thus, O-01 contradicted the Patent Proprietor's arguments concerning the repetition of Example 6 of D2. In its opinion, it would be evident that, when repeating an example of the prior art, one would fall back as far as possible on the specific details disclosed in the example and, whenever specific clues were missing, one would automatically fill in these gaps in accordance with the normal skills of the person skilled in the art.
(2) More particularly, the phosphorus (P-)compound had, according to O-01, been added in D2 and in D3 in such a manner as was usually done by the person skilled in the art, thereby, of course, avoiding any inappropriate way, eg an addition at temperatures above the boiling temperature of the P-compound, which would prevent the addition of a definite amount. In O-01's opinion, D2 satisfied, at least in the elaboration as disclosed in its Example 6, all the features of the opposed Claim 1, and D3 was a correct repetition of that Example 6, based on the specific details of that example and carried out with application of the common general knowledge (letter: page 2, last paragraph and page 3).
(3) In relation to the Patent Proprietor's argument referred to in section III (3), above, O-01 argued that [Comparative Example 6] was an artificial example which did not mirror the real situation in the field of PTT-manufacturing. In that comparative example, no technically meaningful material was prepared from terephthalic acid ("TPA") and propane diol ("PD") at the relatively low polycondensation temperature of 250ºC (as could be derived from [Table 1] referring to only 9 wt.-% of PTT). Moreover, no P-compound had been added therein at all. The deficiencies of this comparative example would clearly lead to the conclusion that contents of cyclic dimer of < 3 wt.% were to be assumed when carrying out the reaction in technically usual and reasonable process conditions, contrary to the Patent Proprietor's conclusion in the above context concerning the content of cyclic dimer.
Moreover, the repetition in D3 of Example 6 of D2 would have shown that a content of about 1 wt.-% of BPE was obtained, when a Ti-based esterification catalyst, an Sb-based polycondensation catalyst, phosphoric acid and cobalt acetate were used. Hence, this repetition proved that BPE contents were usually in the range 0.4 to 2 wt.-%. In summary, the prior art anticipated the subject-matter of Claims 1 to 7 of both requests (letter: page 5, paragraph 2, and page 6, paragraph 3).
VI. In a letter dated 5 January 2007, the Patent Proprietor requested as the Main Request that the oppositions be dismissed and that the patent in suit be maintained as granted. As an Auxiliary Request, the Patent Proprietor requested that the patent in suit be maintained in amended form on the basis of the amended set of claims (Claims 1 to 7) as submitted with its letter dated 6 June 2005 (cf. section III, above).
(1) With regard to "Patentability" the Patent Proprietor stated in item 3 of its letter "Since novelty of claim 1 has been acknowledged by the Opposition Division in its Preliminary Opinion it will be focused on the issue of inventive step hereinbelow."
(2) However, since the issue of inventive step was not dealt with in the further proceedings, it is not necessary here to refer to the arguments of both sides (patent proprietor and opponents) to this issue.
VII. In a letter dated 8 January 2007, O-02 provided additional arguments to the question of novelty with regard to D2, and it additionally submitted two declarations, ie
| D23 |Declaration of Eckhard Seidel a|
| |nd |
| | |
| D24 |Second Declaration of Kathy S. |
| |Kiibler. |
| | |
(1) Declaration D23 was to demonstrate that a sample of the PTT batch P1017/86 used in Example 6 of D2 had been sent by O-01 to O-02, so that there could be no doubt that it had been the sample described in Example 6 of D2 which was spun and analysed according to the first Declaration of Ms. Kiibler (D13).
(2) Furthermore, D24 contained, according to O-02, analytical data of the above unspun PTT resin sample supplied by O-01 and used in Example 6 of D2, namely the [eta], the contents of BPE, cyclic dimer, "phosphorous" and cobalt, all of which fell within the ranges in the opposed Claim 1. Therefore, the polyester compositions of D2 disclosed, according to O-02, all features of the opposed Claim 1, so that D2 was novelty-destroying for the patent in suit.
(3) Referring to the annex to the summons, O-02 additionally disputed the different preliminary conclusions drawn by the Opposition Division on novelty of the Main and the Auxiliary Requests. Claims 8 and 9 of the Main Request related to a fibre and a fabric, respectively, obtainable from the polyester resin composition of Claim 1 of that request. Since, moreover, Claim 1 of the Main Request was identical to Claim 1 of the Auxiliary Request, and whilst agreeing to the finding in the annex that the Main Request lacked novelty, O-02 disputed the Opposition Division's preliminary opinion that the subject-matter of Claim 1 of the Auxiliary Request would be novel.
VIII. The oral proceedings were held on 7 March 2007. According to the minutes, which were communicated to the parties on 23 March 2007, the above Main Request (section I, above) was withdrawn by the Patent Proprietor, who made the above Auxiliary Request (section III, above) at the same time its new Main Request (see also dec: Facts and Submissions, point 10).
(1) Apparently the issues of Article 123(2) und 83 EPC 1973 were shortly addressed at the hearing (items 3 and 4 of the minutes). According to item 2 of the minutes, the main issue discussed was, however, the issue of novelty, in particular on the basis of Example of D2 in combination with D13 and the additional Declarations D23 and D24.
(2) As regards an indication of the Chairman, that Claim 1 of the main request might be considered as lacking novelty with respect to a combination of example 6 of D2 with the newly filed declarations D23 and D24, the Patent Proprietor argued, that D23 and D24 had been late filed and that the time for analysing these documents had not been sufficient. Therefore, these documents should not be admitted in the procedure.
(3) However, the documents had, according to the Chairman, been filed within the time limit of Rule 71a EPC 1973 and the Patent Proprietor could have asked for an extension of time. Moreover, "It was also noted that D23 and D24 are not really new documents since there are related to documents which are in the procedure (D13/D2). The chairman announced that D23 and D24 are accepted in the procedure for their highly relevance under Art. 114(2) EPC".
(4) By contrast, the Patent Proprietor argued that O-02 tended to demonstrate that the contents of cyclic dimer and BPE in the composition were implicitly disclosed in D2, whilst D2 provided no clear information in this respect. Moreover, the Patent Proprietor contested the validity of D24 and asserted in this connection that not all information relating to the sample having the batch number P1017/86 as sent by O-01 to O-02 had been provided, that the experimental conditions in the determination of the BPE content differed from those in the patent in suit, that the [eta]-values and the P-contents were not the same in D24 and in D2, but that the difference of the P-contents in these documents were different to an extent which could not be explained by experimental error. Therefore, no comparison between the experiments in D2 and D24 would be possible which led the Patent Proprietor to conclude that the measurements had not apparently been made on the same samples. Furthermore, the Patent Proprietor contested also the validity of D23. "He declared that all the evidence was in the hand of the opponent and according to the case law the full burden of prove rests on the opponent."
(5) By contrast, O-02 explained, on the one hand, the difference of the P-contents as the result of usual experimental variations and different measurement methods and referred, on the other hand, to the different P-contents reported in D13 as having been measured on one sample. According to O-01, the P-content could increase depending on the experimental conditions (minutes: page 2, paragraph 6).
(6) "The patentee could not explain the difference in D13, which perhaps is due to the spinning conditions, however he insisted that according to the technical expert the maximum measurement error is 2% at not 25%." (minutes: page 2, paragraph 7).
(7) At the end of the oral proceedings, the Opposition Division stated, that no objections concerning Article 123(2) EPC 1973 (in addition to those submitted in the written procedure) had been formulated by the opponents, and came, moreover, to the conclusions that Article 83 EPC 1973 was met, but that Claim 1 lacked novelty with respect to Example 6 of D2 in the light of the evidence D23 and D24 and revoked the patent in suit (minutes: page 2, penultimate paragraph and page 3).
IX. The decision was issued in writing on 23 March 2007.
(1) In the "Facts and Submissions" part of the written decision, the Opposition Division provided, apart from a list of the cited references, ie D1 to D24, a short summary of the written opposition proceedings, including a reference to the final date of 8 January 2007 for making written submissions (Rule 71a EPC 1973) as set by the Opposition Division (item 7 of the facts).
Furthermore, the last sentence in point 8 of the facts read as follows: "With his letter dated 08.01.2007 and received 16.01.2007, the opponent 02 introduced the documents D23 and D24 into the proceedings, while maintaining his initial request for revocation of the opposed patent in total."
(2) In the second part of the decision titled "Reasons for the decision", the Opposition Division identified the parties' requests, ie the Patent Proprietor's request that the patent in suit be maintained with Claims 1 to 7 as filed on 6 June 2005 and a description adapted accordingly, and the opponents' request that the patent in suit be revoked in its entirety under Articles 100(a), 54, 56, 100(b), 83 and 100(c) and 123(2) EPC 1973 (dec: Reasons 3.1 and 3.2).
(3) In Reasons 4.1 and 4.2, reference was then made to the arguments presented by the parties in relation to Articles 100(c) and 123(2) EPC 1973, concerning the amendment of the range of feature (4) of Claim 1 during the examination proceedings from "2 wt% or less" to "from 0.4 to 2 wt% or less", encompassing the expression "or less", which, according to the opponents, "initially was not a part of the claim wording as originally filed, thereby extending the scope of said claim 1 beyond the contents of the initially filed application papers." In contrast thereto, the Patent Proprietor had argued that the amendment ("this problem") did not correspond to an undue generalisation of the claims related to a question of clarity (Article 84 EPC 1973), which was not, however, a ground for opposition.
(4) In Reasons 4.3 the Opposition Division took the view that "the said problem" did not involve an undue generalisation of the claims, but "could relate only to a question of sufficiency of disclosure (Art. 83 EPC)", which ground for opposition was to be discussed separately, and, in Reasons 4.4, decided that the opposed patent fulfilled the requirements of Article 123(2) EPC 1973.
(5) The "problem" referred to in section IX (4), above, was resumed in Reasons 5.1 with regard to Articles 100(b) and 83 EPC 1973. After having referred to the arguments of both sides (Reasons 5.1 and 5.2), the Opposition Division then gave its opinion in Reasons 5.3, "that, taking account of the experimental information in the description and the working examples of the granted specification, the wording of the independent main claim 1 according to the new main request discloses the invention in a manner which is sufficient for an average person skilled in the art, in order to carry out the teaching of the invention without any further undue burden." Furthermore, "the redundant wording of 'or less' should be regarded as a synthax mistake of merely editorial character, which does not prevent the average person skilled in the art from carrying out the teaching of the invention without any undue experimental burden when taking account of the enabling disclosure as provided in, e.g., paragraphs  to  in view of the corresponding working examples 5.4 Therefore, the Opposition Division decided, that the opposed patent fulfills the requirements of the Art. 83 EPC.".
(6) Starting under the heading "6. Article 100 (a) and Article 54 EPC", the Opposition Division summarised the arguments of the parties concerning the novelty issue (dec: Reasons 6.1 to 6.3):
"6.1 The opponents both contested novelty of the opposed patent in view of the analyzed polyester resin samples corresponding to working example 6 of cited prior art document D2 when taking account of the experimental data as provided in cited documents D18 and D24 as additional evidence. Especially, the opponents pointed out, that documents D23 and D24 must be regarded as being lately filed and therefore not relevant for the proceedings. Furthermore, the opponents confirmed, that opponent 01 has provided the opponent 02 at least twice with a polyester resin sample as claimed, i.e., in the years 1997 and 2002, respectively, in order to carry out extensive analytical investigations therewith. However, the exact content of phosphorous compounds depends strongly on the post-processing treatment of a specific sample, i.e., any additional annealing and/or drying steps as carried out after sample preparation, which dependency in view of the opponents is an obvious explanation for the observed deviations in certain analytical results, i.e., different phosphorous contents. Furthermore, as concerns the analysis of the samples as specified in D24 especially, those deviations correspond to common measurement errors depending on the exact measurement method as concretely used in a special case. These typical errors are well known to the average expert and do not result in an invalidation of the measurement as such, which must be still regarded as reliable.
6.2 The patentee counterstated, that in his view the working example 6 of D2 was not reproduced in an exact manner from the opponents' side, since the usual and common measurement error corresponding to the determination of the phosphorous content should be at most about 2 %. The opponents, however, have the burden of proof, in order to demonstrate the characteristics of the samples of example 6 of D2 unambiguously, and in view of the patentee the opponents failed to comply with said requirement. Especially, in view of the patentee, the cited prior art document D2 does not disclose unambiguously the cyclic dimer content according to condition (3) and the BPE-content according to condition (4) of the new independent main claim 1. Furthermore, the opponents did not provide any evidence for the presence of any implicit or inherent disclosure of said conditions (3) or (4) in D2.
6.3 As regards D23, the patentee denied the possibility to remind exact experimental conditions in sufficient detail after more than 9 years, which fact in his view invalidates said D23 as a clear and reliable document of evidence. As regards D24, the patentee pointed out, that on each of pages 1 or 2 of said document D24 completely different experimental situtations are described, such resulting in lack of reliability as concerns this document. Especially, the conditions for the gas chromatography analysis were different in D2, on the one hand, and in D24, on the other hand. Furthermore, the analytical data as concerns the phosphourous or cobalt content are quite different in the said two documents. Therefore, in view of the patentee, said documents D23 and D24 both should be regarded as being not relevant for the present case."
(7) These statements were followed by the following comments and findings of the Opposition Division:
"6.4 Therefore the opposition division is of the opinion, that D24 represents an authorization which confirms the results achieved in example 6 of D2. Therefore, taking account of the contents of D13, D23 and D24 serving as additional evidence, the working example 6 of D2 anticipates the subject matter according to independent main claim 1 of the new main request. Especially, said example 6 of D2 relates to a polyester resin composition satisfying the conditions (1) to (4), i.e., (1) poly(trimethylene tere phthalate) occupies 90 wt.-% or more; (2) a phosphorous compound corresponding to from 10 to 250 ppm in terms of the amount of phosphorous element is contained; (3) 3 wt.-% or less of cyclic dimer is contained; and (4) from 0.4 to 2 wt.-% or less of bis(3- hydroxypropyl)ether is contained and copolymerized with poly(trimethylene terephthalate) corresponding to the technical features as defined in the amended claim 1 of the new main request. Consequently, taking account of the patentee's new main request as filed 06.06.2005 , the subject matter of the opposed patent is not novel. Therefore, the said new main request is not allowable in view of the provisions of the Arts. 54 and 100 (a) EPC.
6.5 The opposition division decided, that the laterfiled documents D23 and D24 are correctly filed under the provisions of the Rule 71 (a) EPC, and that these documents are highly relevant for the proceedings in view of the provisions of the Art. 114 (2) EPC. Furthermore, the opposition division decided, that the opposed patent does not fulfill the requirements of the Art. 54 EPC over the disclosure of prior art document D2, especially working example 6, in view of the documents D13, D23 and D24 serving as additional evidence.
7. The opposition division consequently decided to revoke the opposed European patent 1 016 692 in its entirety under the Art. 102 (1) EPC for lack of novelty (Arts. 100 (a) and 54 EPC)."
X. On 16 May 2007, an appeal was filed, with simultaneous payment of the appeal fee, against this decision by the Patent Proprietor (Appellant), who requested that the decision under appeal be set aside and that the oppositions be dismissed. The SGA was received on 23 July 2007. A new set of claims, dated 23 July 2007, was filed together with the SGA.
(1) On the first page of its SGA, the Appellant formulated the following requests:
"It is requested to set the Decision of the Opposition Division dated 23 March 2007 aside and
1. to remit the case to the first instance and to reimburse the Appeal Fee (deficiency under Rule 68 (2) EPC),
2. to remit the case to the first instance on basis of the enclosed Main Request for the further consideration of the inventive step."
(2) As regards No. 1 of the requests in section X (1), above, the Appellant argued that the decision under appeal should fulfil certain requirements as set out in Rule 68(2) EPC 1973. However, the decision under appeal contained only a repetition of the arguments set forth by the parties, but failed to contain the reasoning, ie those arguments/?observations of the Opposition Division in a logical sequence, which would justify the order. It would, furthermore, be necessary that this reasoning was complete and independently comprehensible and would make clear the conclusions drawn from the facts and the evidence brought forward by the parties. The need for a complete and detailed reasoning would be particularly great when dealing with contentious points, which were important for the decision. In the present case, this would, in particular, concern the relevance of D23 and D24 in combination with D2, which has led to the revocation of the patent in suit.
(3) As could be seen from Reasons 6.4 (to wit its second sentence, as quoted in section IX (7), above), followed by "a recitation of the wording of claim 1", the decision under appeal was lacking a reasoning and it was therefore, in the Appellant's view, defective under Rule 68(2) EPC 1973 (now Rule 111(2) EPC).
(4) As regards No. 2 of the requests in section X (1), above, the Appellant mentioned that the Opposition Division had only decided on novelty of the (former) Main Request, but had never discussed about, let alone decided on the inventive step of that request. Therefore, the case should be remitted to the first instance for dealing with the issue of inventive step.
(5) After having explained, with reference to a number of passages in the application as originally filed, the amendment in Claim 1 of the set of claims mentioned in sections X and X (1), above, the Appellant set out its arguments concerning the question of novelty of these new claims. Again, it objected to the decision under appeal in that the Opposition Division would not provide any reasoning for its conclusion as could be seen from a quoted passage of Reasons 6.4 (from its first two and last sentences, cf. sections IX (7) and X (3), above). This would make it impossible for the reader of the decision to deduce which legal considerations and conclusions led to this finding.
(6) The late filing of D23 and D24 had, in the Appellant's opinion, deprived the Appellant from responding in an appropriate way, eg by attempting to conduct experiments itself. In any case, it would have, however, been evident that there had been significant differences between D24 and Example 6 of D2 in the I.V., the P- and the Co-contents given and that D2 had been silent about the BPE and cyclic dimer contents. Therefore, the sample referred to in D24 allegedly corresponding to the sample of Example 6 as disclosed in D2 could not represent a direct repeat of that Example 6. These inconsistencies would further be aggravated by the content of D23 citing, in conjunction with that Example 6, values for the I.V., the P- and the Co-contents which were different from those values presented in D24, but identically reflected the disclosure set fourth for Example 6 in D2. This cast considerable doubt, in the Appellant's opinion, on the measurements of the BPE and cyclic dimer contents. Moreover, the Appellant questioned further formal aspects concerning the production, presentation and filing of both documents (SGA: pages 6 and 7), which would have made it immediately apparent for the Opposition Division that D23 and D24 contained irreparable deficiencies and were unclear, which should have prevented them from being admitted into the proceedings. "Although the above observations have already brought forward during the Oral Proceedings before the Opposition Division these facts do not appear to have duly been appreciated by the Opposition Division. Furthermore, from the above it is immediately apparent that the attempt by the Opponents do demonstrate that the feature of the BPE content and cyclic dimer content are implicit in Example 6 of D2 failed. In particular, as is established practice according to the jurisprudence of the Boards of Appeal , in order to demonstrate that a certain feature or features are implicit to a prior art disclosure ( D2, Example 6) it has to be demonstrated by the Opponents that exactly following the conditions/methodologies set forth in the prior art inevitably leads to an embodiment that directly and unambiguously falls within the ambit of the opposed claim. Based on the evidence provided by the Opponent 2 severe doubts remain as to whether the experimental data provided in fact represents a direct repeat of Example 6 of D2." (SGA: page 7, paragraphs 2 and 3).
(7) Additionally, the Appellant presented further arguments to support its opinion, that the measurements in D24 were not reliable, and concluded: " it is immediately evident that even the subject-matter claimed in the patent as granted can not be anticipated by the disclosure of D2, in particular Example 6, i.e., the subject-matter claimed should have been considered novel. In order to distinguish the subject-matter further over the art the new, amended set of claims for the Main Request is submitted herewith." (SGA, page 12, paragraph 1).
(8) In view of the course and the outcome of the further proceedings, it is not necessary to consider here the Appellant's further arguments concerning the question of novelty of the claimed subject-matter (SGA: page 12, paragraph 2 ff to page 18).
XI. In its rejoinder, dated 22 January 2008, Respondent II/?O-02 disputed the Appellant's arguments, requested that the appeal be dismissed and submitted two further Declarations D31, to confirm the measurements concerning sample P1017/86 as provided in D23, and D32, concerning a further optical parameter (mentioned in the SGA) of that sample, both declarations being signed by Mr Kirsten, an employee of Respondent I/O-01.
(1) In particular, the Respondent "utterly fails to appreciate Appellant's point" with regard to the Appellant's request 1 as quoted in section X (1) (above), because the Opposition Division had, in the Respondent's opinion, clearly identified the relevant passages of D2, eg Example 6, and had then accepted the supporting evidence provided in D23 and D24 and had thus concluded that Claim 1 under consideration at that time was implicitly disclosed in D2. Comprehending the decision under appeal and its reasoning would place no undue burden on the reader and, as such was fully in compliance with Rule 68(2) EPC 1973 (rej: chapter 3).
(2) In chapters 5 and 6 of the rejoinder, Respondent II then disputed the various aspects of the Appellant's objections to the admission of D23 and D24 into the proceedings, on the basis that none of these objections would be valid or relevant.
(3) Since they had been filed within the time limit of Rule 71a EPC 1973/Rule 115 EPC, neither of D23 and D24 could be considered as being late-filed. Moreover, in the Respondent's opinion, they were highly relevant for the proceedings. Therefore, the decision to include them in the proceedings had been correct. Moreover, D24 reported measurements, like those carried out on fibres spun from the same PTT resin in D13, and thus merely confirmed that the PTT exemplified in D2 fell within the contested claims. D24 merely supported the evidence supplied in D13 and the facts asserted in the NoOp. It was well known to the skilled person that, while properties of PTT resin and fibres spun therefrom might differ slightly, the values of such properties were usually within a small range from each other. In order to support its assertions concerning the validity of D24, the Respondent referred to a number of explanations in chapter 6 of its rejoinder. Moreover, the Respondent argued that the Appellant, who had not submitted the results of any tests carried out in order to rebut the evidence provided in D13, would have had ample time and opportunity to do so (rej: 5.5 and 5.6).
(4) Respondent II summarised its arguments that it had, in D23 and D24, provided evidence that material exactly according to the prior art (ie a sample of the actual material formed in Example 6 of D2) exhibited all the features of the contested claims by testing the material according to the protocols defined in the patent in suit. Therefore these documents were, in the Respondent's view, accurate and had been correctly been included in the opposition proceedings (rej: 5.11).
(5) In chapter 7 of the rejoinder, Respondent II furthermore raised questions concerning the wording of the new Main Request and its meaning as submitted with the SGA and concluded that the new wording and, thus, the Main Request should not be allowed.
XII. Respondent I, in its rejoinder dated 11 February 2008, took a similar position as Respondent II, above, to the question of whether the decision under appeal complied with Rule 68(2) EPC 1973/Rule 111(2) EPC.
(1) Moreover, it pointed out that it would be unclear which set of claims should form the basis for these appeal proceedings and raised the question of whether the new set of claims (section X, above), if assumed to be the Main Request, could form the basis of an admissible appeal, because the new wording of new Claim 1 constituted, in Respondent I's opinion, an improper amendment.
(2) Furthermore, the Respondent additionally gave its view concerning the issues of novelty and inventive step in relation to the new set of claims.
XIII. The oral proceedings were held on 17 August 2010 in the absence of Respondent II who had informed the Board in its letter of 3 August 2010, that it would not be represented at the oral proceedings.
(1) At the outset of the hearing, the Appellant was, in view of the different requests in the Notice of Appeal and in the SGA (sections X and X (1), above), invited to clarify the status of its requests.
(2) Since it maintained its view that the decision under appeal was defective in respect of the requirements of Rule 111(2) EPC, the Appellant requested that the case be remitted to the Opposition Division and that the appeal fee be reimbursed.
(3) In case the Board decided otherwise, the Appellant identified the set of claims, on which the decision under appeal had been based, as forming the basis for its Main Request (sections VIII and III, above), whereas the set of claims submitted with the SGA should form the basis for the Auxiliary Request (section X, above). For both of these requests, the Appellant requested that the case be remitted to the first instance for the examination of the question of inventive step. The Appellant additionally argued that in its opinion chapter 4.1 of the SGA provided a basis for a discussion of novelty of the Main Request.
(4) Respondent I commented on these statements of the Appellant that, if it was found that the reasoning in the decision under appeal was sufficient, the question would arise of whether the Main Request had been substantiated, at all, in the Appellant's SGA. It rather appeared to the Respondent, that the Appellant had, after its reasoning for its request that the decision under appeal be set aside for violation of Rule 111(2) EPC, had "jumped" directly to its arguments (including those in chapter 4.1 of the SGA) concerning the request which had, in the SGA, been addressed as the Main Request, but which was now the Appellant's Auxiliary Request. However, no argument was presented in the SGA, which showed that the decision under appeal had been wrong with regard to the question of novelty of the subject-matter of those claims, on which the decision under appeal had been based, and why the patent in suit should be maintained with those claims (sections VIII and III, above).
(5) After deliberation, the Board informed the parties that it intended to hear the parties on the issue of whether the decision under appeal had be reasoned in accordance with Rule 111(2) EPC and to decide on this point. If the reasoning in the decision under appeal was found in compliance with this Rule, the Board would then turn directly to the question concerning the novelty of the subject-matter according to the Auxiliary Request.
(6) Then the Appellant was given the floor for presenting its case concerning the reasoning in the decision under appeal.
(7) The Appellant reiterated its arguments already presented in its SGA (sections X (2) and X (3), above) and referred to decisions T 278/00 (OJ EPO 2003, 546), T 750/94 (OJ EPO 1998, 032) and, in particular, T 1366/05 of 18 October 2007 (not published in OJ EPO), according to which, as put by the Appellant, the decision had to contain all relevant facts in detail and also, based on these facts, a logical sequence of arguments which led the Opposition Division to its decision and also enabled the Board to examine the case and to comprehend the decision.
(8) In the present case, the Opposition Division had decided that the claimed subject-matter lacked novelty on the basis of one prior art document, ie D2, Example 6, in combination with heavily disputed additional evidences D23, D24 and D13. It would have been necessary, however, for the deciding body very critically to examine this very complex situation and to indicate in detail the reasons which would justify the decision, ie why it held that the additional documents provided reliable information concerning those features missing from D2. Thus, the data of D24 had been submitted without providing independent evidence supporting the opponents' assertions, such as eg copies from laboratory books underlying the submission of D24.
According to the Appellant, the decision under appeal itself contained, instead, nothing more than a summary of the arguments of the respective parties (dec: Reasons 6.1 to 6.3) followed in item 6.4 by the statement "Therefore the opposition division is of the opinion that D24 represents an authorization which confirms the results achieved in example 6 of D2. Therefore, taking account of the contents of D13, D23 and D24 serving as additional evidence, example 6 of D2 anticipates the subject-matter according to claim 1 ". This statement was further followed by a repetition of the features of the claimed subject-matter as defined in Claim 1, allegedly fulfilled by the resin composition of Example 6 of D2.
The Opposition Division did not, however, give any reason why it did not consider any of the reported differences between the respective data disclosed in the respective documents, such as I.V., P- and Co-contents, as addressed by the Patent Proprietor at the oral proceedings before the Opposition Division, where, in particular, the significant differences in the respective P-contents had been mentioned.
(9) In other words, the decision was given without analysis or evaluation of the asserted evidence, so that no justification for the tenor could be found in the decision under appeal. It lacked the reasoning for its decision as required according to the EPC.
(10) Respondent I replied that there were decisions containing a nicer reasoning ("schönere Begründungen") for the revocation of a patent. However, as already stated in writing, the decision identified clearly on which documents and on which further evidence the decision was based, so that the decision contained all needed by the Patent Proprietor to tackle the decision in appeal. Therefore, the Respondent saw no violation of Rule 111(2) EPC by the decision under appeal.
(11) After an interruption of the hearing in order to enable the parties and the Board to consider the decisions mentioned by the Appellant (section XIII (7), above), Respondent I accepted that T 1366/05 came closer to the present situation than the other decisions referred to by the Appellant. However, in the present case, the decision under appeal contained at least some (necessary) reference to the relevant parts in the prior art, whereas in T 1366/05 even less details had apparently been given in the decision then under appeal.
(12) The Appellant additionally commented shortly on T 750/94 (above), in which the requirements were defined which were to be fulfilled by supplementary evidence (ie what was explicitly or implicitly disclosed therein) for establishing that a certain subject-matter anticipated the claimed subject-matter.
(13) When the parties indicated that they did not wish further to comment on the issue dealt with of the preceding discussion, ie the question of sufficient reasoning of the decision under appeal, the debate was closed on the question of Rule 111(2) EPC for final deliberation of this issue.
XIV. At this point, the respective requests of the parties were as follows:
The Appellant requested that the decision under appeal be set aside and the case be remitted to the first instance and to reimburse the appeal fee (deficiency under Rule 68(2) EPC 1973/Rule 111(2) EPC) or in the alternative to remit the case to the first instance for examination of inventive step on the basis of the set of claims filed with letter dated 6 June 2005 (claims 1 to 7) or on the basis of the Auxiliary Request (called "Main Request"), claims 1 to 7, filed together with the Statement of Grounds of Appeal.
Respondent I requested that the appeal be dismissed.
Reasons for the Decision
1. The appeal is admissible.
2. Since the patent in suit was revoked for the reason of lack of novelty vis-à-vis Example 6 of D2 (all references to Example 6 herein below are to be understood as meaning this example of D2) in combination with the declarations D13, D23 and D24 (sections VIII (7) and IX (7), above), the Board has focused its investigations and considerations entirely on the reasons provided in the decision under appeal in connection with the question of novelty and the cited references dealing therewith.
2.1 Contrary to its final decision, the Opposition Division had, in its annex to the summons (item 7.4 of the annex; section IV (2), above), preliminarily indicated that the subject-matter of Claim 1 might be considered as being novel over the cited prior art (ie in view of the documents D1 to D14 referred to in the two NoOp), because none of the cited references appeared to disclose the two features (3) and (4) of Claim 1.
2.2 After having received the summons, ie with its letter dated 8 January 2007, O-02 additionally submitted D23 and D24 obviously with the intent to fill the apparent gap between the disclosure in Example 6 and the contested Claim 1 (sections VII to VII (2), above). The Board observes in this connection, that more than seven months elapsed between the issue of the summons dated 8 May 2006 and the filing of the additional evidence which appears to contain only information which could not be derived from Example 6 itself. Nor was it contained in D13, when signed on 12 August 2004, but was referred to for the first time in O-02's NoOp, item 6.17, submitted on 25 August 2004. Before this date, it had not apparently been available to the public.
2.3 In view of the objections raised by the Patent Proprietor in its reply to the two NoOp with regard to the asserted repetitions of Example 6, arguing that D13 "is not suitable for demonstrating that the polyester resin compositions disclosed in Reference E3 (= D2) have a BPE content as stipulated in claim 1 of the Opposed Patent" or that the amount of cyclic dimer would not inevitably be formed in Example 6 to an extent within the limits in Claim 1, and with regard to D2, that "it is questionable whether an experimental example of this Reference can be reliably reproduced at all." as well as that Example 6 failed to provide any clear information with regard to the contents of BPE and cyclic dimer in its product (cf. sections III (1) to III (3), and VIII (4), above), the Board observes that the validity of none of these points has been assessed by the Opposition Division in the reasons of the decision under appeal. In particular, it is stated in the description of the examples in D2 and D5, respectively, only that terephthalic acid and 1,3-propanediol, together with catalyst and optionally with cobalt acetate tetrahydrate, were "in vorgelegtes Veresterungs produkt aus einer vorangehenden gleichartigen Charge eingespeist" (D2, page 3, line 34) and "added to an esterification product from a prior similar batch" (D5, column 3, lines 66 and 67), respectively. In view of this wording, it is conspicuous to the Board that the reader is not provided with all the details necessary for carrying out a true repetition of the examples of D2 or D5. Thus, both documents are silent about the composition of the product of the "prior similar charge" and its concentration as used further as an initial charge for the next batch, ie in a given example of D2 and D5, respectively. In this connection, reference must also be made to the Appellant's argument reported in No. 6.2 of the reasons in the decision under appeal, that the burden of proof was on the opponents, which has not been commented on at all by the Opposition Division, whereas, it found it, according to the minutes, apparently important for the decision (cf. section VIII (6), above) to note that the Patent Proprietor had not been able to explain a difference in D13, ie a difference in a document which had been filed by the opponents.
2.4 In such circumstances, namely having regard to the points addressed by the Patent Proprietor who became the losing party, a number of questions should have, in the Board's view, been answered in the decision, namely those of whether
- the identity of the polymer composition as disclosed in Example 6 in relation to all its relevant features had been established, ie those necessary for assessing novelty of the subject-matter of the contested Claim 1;
- all these relevant features had been made available to the public from the disclosure of Example 6 itself; or
- it had been shown that the features not mentioned at all in Example 6 were the inevitable result of the repetition of the sequence of process steps as explicitly described in Example 6, ie a true repetition of the example without omitting or modifying or adding any process features; or
- it would, in the Opposition Division's opinion, be sufficient for an opponent, when reworking an example of the prior art, to fall back as far as possible on the specific details disclosed in that example and automatically to fill in any gaps in accordance with the normal skills of the person skilled in the art, thereby avoiding any inappropriate way (section V (1), above), to prove the identity of the products on the basis of the repetition of an example (by the way, what has to be considered as being "inappropriate" in the context of those arguments of O-01?);
- an example of D2 could reliably be reproduced at all (see section III (1) and the first paragraph of section 2.3, all as above);
- the experiments reported in D3, D13 and D24 and the declaration D23, respectively, gave a direct and unambiguous answer to the above questions;
- an assessment of the results of these additional experiments, if necessary, on the basis of the balance of probabilities would be the appropriate yardstick for deciding on novelty of the claimed subject-matter, or whether the identity of the polymer composition as made available to the public before the effective date of the patent in suit, would have to be proved "up to the hilt" (cf. T 750/94, reasons 4; cf. section XIII (7), above);
- the party having, according to established jurisprudence, to bear the burden of proof in opposition proceedings has discharged this burden.
3. However, as shown in sections IX (2) to IX (7), above, the reasoning in the decision under appeal summarises apparently only the oral contributions of the parties at the oral proceedings (Nos. 6.1 to 6.3), followed by paragraph 6.4, wherein the Opposition Division stated its conclusions, and by paragraphs 6.5 and 7, containing the decisions of the Opposition Division.
3.1 In No. 6.1, the arguments of the opponents are displayed in a way, which the Board is, in view of the inconsistencies and contradictions therein, even unable to follow. Thus, reference is made therein to experimental data "as provided in cited documents D18 (?) and D24". D18 concerns, according to the list on page 2 of the decision under appeal, EP-A-0 437 333. No experimental data disclosed therein has been referred to before. The next sentence in No. 6.1 reads: "Especially, the opponents pointed out, that documents D23 and D24 must be regarded as being lately filed and therefore not relevant for the proceedings." In other words, the opponents themselves after having submitted the documents in question denied their relevance, and they came apparently to the same conclusion as the Patent Proprietor with regard to D3 and D13 (cf. sections III (1) and III (2), above).
The paragraph furthermore contains the following statement: "However, the exact content of phosphorous compounds depends strongly on the post-processing treatment of a specific sample, i.e., any additional annealing and/or drying steps as carried out after sample preparation, which dependency in view of the opponents is an obvious explanation for the observed deviations in certain analytical results, i.e., different phosphorous contents. Furthermore, as concerns the analysis of the samples as specified in the document D24 especially, those deviations correspond to common measurement errors depending on the exact measurement method as concretely used in a special case."
Quite apart from the fact that such an argument would be expected to be part of the Facts and Submissions rather than the Reasons, it is conspicuous to the Board that the situation referred to, namely the noticeable variation in the results of the Opponent's experimental measurements (the means of which not being mentioned) would normally be considered a circumstance favouring the Patent Proprietor, rather than justify the cursory presentation as a self-evident point in favour of the Opponent, as it appears in the decision under appeal. A reasoning as to why these common measurement errors should be of no negative consequence for the opponents case is completely absent.
3.2 The Appellant pointed out (section X (2), above), that the decision under appeal failed to contain the reasoning, ie those arguments/observations of the Opposition Division in a logical sequence, which would justify the order. The Board shares this view, because the only "link" between the above presentation of the respective arguments of the parties and the conclusions of the Opposition Division in Nos. 6.5 and 7 of the Reasons, is formed by the word "Therefore" used as the respectively first word in each of the first two sentences in paragraph 6.4. However, the use of this word does, in the Board's view, directly and unambiguously demonstrate that there is a gap between the presentation of the parties' arguments in paragraphs 6.1 to 6.3 and the subsequent conclusions of the Opposition Division in paragraph 6.4. In each of the above two sentences, "Therefore" is followed by an allegation for which the Board is unable to find in the decision under appeal any basis or justification (ie no answer to any of the questions addressed in the preceding sections, eg in section 2.4, above). Thus, the second sentence contains only the allegation that, when taking account of the contents of D13, D23 and D24 serving as additional evidence, Example 6 would anticipate the subject-matter of Claim 1 of the new Main Request (in the version of 6 June 2005).
3.3 As brought forward by the Appellant (section X (3), above), the third sentence in this paragraph recites nearly identically the wording of [Claim 1], and it is simply stated therein, that Example 6 would relate to the subject-matter according to this definition. This allegation is directly followed by the allegedly consequent finding that the subject-matter claimed in the Main Request underlying the decision under appeal would not be novel, and that this request was not, therefore, allowable.
3.4 Having already taken this decision concerning the substance of the case, the Opposition Division took then, in the subsequent paragraph 6.5, three further decisions, ie it decided that the "laterfiled" documents D23 and D24 had been correctly filed under the provisions of Rule 71a EPC 1973 (now Rule 115 EPC) and were highly relevant for the proceedings in view of the provisions of Article 114(2) EPC 1973 and, furthermore, that the opposed patent did not fulfil the requirements of Article 54 EPC over the disclosure of prior art document D2, especially its Example 6, in view of the documents D13, D23 and D24 serving as additional evidence.
Apart from the wrong sequence of decisions, the passage does not contain any explanation as to why these additional documents would be highly relevant for the (further) proceedings.
3.5 In paragraph 7 of the Reasons, the Opposition Division confirmed its previous decisions by the statement that the patent in suit was revoked in its entirety for lack of novelty.
4. The above detailed recall of the particulars of the decision under appeal of the Opposition Division makes it clear that the decision contains nothing which could be regarded as a reasoning. Instead the Board is left to speculate on the reasons, why the Opposition Division came to its final decision to revoke the patent in suit for lack of novelty. The Board has found that the situation resembles the circumstances as laid down in Headnote II of T 278/00 (above): "II. The board must be in a position to assess on the basis of the reasoning given in the decision under appeal whether the conclusion drawn by the first instance was justified or not. This requirement is not satisfied when the Board is unable to decide which of the various inconsistent findings indicated in and justifying the decision under appeal is correct and which is false."
Likewise, Reasons 3 of the decision T 1366/05 (above) can be referred to: "According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of Rule 68(2) EPC a decision must contain, in logical sequence, those arguments which justify its tenor. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is of course to enable the Appellant and, in case of an appeal, also the Board of Appeal to examine whether the decision could be considered to be justified or not (see T 278/00, OJ EPO, 2003, 546)."
5. In view of the above deficiencies of the decision under appeal the reasons for the revocation of the patent in suit are opaque as the Board is left in the dark as to how the first instance came to its negative conclusions in respect of the subject-matter claimed. Therefore, the Board has come to the conclusion that the decision under appeal does not meet the requirements of Rule 111(2) EPC. This failure amounts to a substantial procedural violation requiring the decision under appeal to be set aside and the case to be remitted to the first instance. The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of that substantial procedural violation to reimburse the appeal fee in the present case (Rule 103(1)(a) EPC).
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance for further prosecution.
3. The appeal fee is to be reimbursed.