|European Case Law Identifier:||ECLI:EP:BA:1981:T000280.19810605|
|Date of decision:||05 June 1981|
|Case number:||T 0002/80|
|Language of proceedings:||DE|
|Download and more information:||
|Title of application:||-|
|Headnote:||The second sentence of Article 84 EPC stipulates that the claims must be clear. A claim for a mixture does not satisfy this requirement if the proportions given for its constituents do not add up to the requisite total (100% in the case of percentages) for each composition claimed.|
|Relevant legal provisions:||
|Keywords:||Claims - clarity
Summary of Facts and Submissions
I. European patent application No. 79 100 575.4 (publication No. 0 005 150) was filed on 26 February 1979 claiming priority from 10 March 1978. In a communication under Article 96(2) EPC, the EPO Examining Division allowed that the invention was essentially patentable, i.e. in particular from the point of view of novelty and inventive step. However, they criticised an incongruity in the percentages given in the main claim since, in a marginal combination, they added up to more than 100%. The applicant submitted a new version of claims 1 to 8, but did not correct the percentages criticised, since the claim stipulated that the constituent parts had to add up to 100%. The European patent application was thereupon refused by decision of the Examining Division of 19 March 1980. The decision was based on the claims 1 to 8, newly filed with the applicant's observations, of which the main claim read as follows: "(1) Self-extinguishing thermoplastic moulding compositions comprising:
1. 40-95% by weight polyamide,
2. 10-50% by weight strengtheners and/or fillers,
3. 0-5% by weight processing aids, pigments, dyestuffs and/or stabilisers, characterised in that the mouldings contain a flame-proofing combination of
4. 0.5-20% by weight alkali- and/or ammonium-polyphosphate, and
5. 0.5-20% by weight phenolaldehyde resins, in which (1) - (5) must always add up to 100%." The reason given for the refusal was that the main claim was not clear and accordingly did not comply with the requirements of Article 84 EPC.
II. On 28 April 1980, the applicant lodged an appeal, accompanied by a Statement of Grounds, against the refusal of the patent application, and paid the fee for appeal. The applicant requested that the patent be granted on the basis of the refused version of the claims. In response to a communication from the Board of Appeal, the applicant filed a new version of claims 1 to 8 together with a revised introductory description in a document dated 15 May 1981, received on 21 May. The revised main claim reads as follows: "(1) Self-extinguishing thermoplastic moulding compositions, characterised in that they contain a flame-proofing combination of alkali- and/or ammonium-phosphate with phenolaldehyde resin and are composed as follows:
1. at least 40% by weight polyamide,
2. 10-50% by weight strengtheners and/or filler, and
3. 0-5% by weight processing aid, pigment, dyestuff and/or stabiliser,
4. 0.5-20% by weight alkali- and/or ammonium-polyphosphate, and
5. 0.5-20% by weight phenol-aldehyde resin, in which (1) - (5) must always add up to 100% by weight." The applicant now requests that the contested decision be set aside and the patent be granted with the above main claim, the subsidiary claims thereto and the revised description.
Reasons for the Decision
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. The Board of Appeal agrees with the view taken by the Examining Division, in its statement of reasons for refusing the application, that claim 1 as it then stood was not clear. If the minimum proportion of constituents (2) to (5) is 11% by weight, that leaves a maximum of 89% by weight for constituent (1). In spite of this, an upper limit of 95% by weight was given for the latter constituent. This contradiction is in no way mitigated by the stipulation that all the constituents have to add up to 100% by weight. A person skilled in the art could resolve the contradiction only by reading the description. However, the claims, per se, must be free of contradiction: it must be possible to understand them without reference to the description, especially as the description is not translated into all the official languages (cf. Art. 14(7) EPC).
3. The 2nd sentence of Article 84 EPC stipulates that the claims must be clear (in French: clair; in German: deutlich). Clarity, as regards claims for a mixture, demands that the proportions given for each constituent must add up to the requisite total (100% in the case of percentages) for each composition claimed. The claims as they now stand can no longer be faulted on this point. The contradictory situation, in which the maximum proportion of constituent (1) was incompatible with the minimum proportion of constituents (2) to (5), has been eliminated. This amendment of the maximum percentage for constituent (1) is unobjectionable in respect of Article 123, paragraph 2, EPC.
4. The Board of Appeal agrees with the view, already expressed by the Examining Division, that the invention complies with the patentability requirements of the European Patent Convention, and in particular that it is new in terms of the established state of the art and involves the necessary inventive step. The invention differs from the state of the art in that a flame-proofing combination comprising alkali- and/or ammonium-phosphate with phenolaldehyde resin is used. This distinction is made clearly discernible in the main claim as it now stands. The teaching of the invention is therefore new. The invention also involves an inventive step. It could not be expected that by mixing phenol-aldehyde resin, readily flammable on its own, with polyphosphate, the result would be a highly effective combination for flame-proofing polyamide moulding compositions and mouldings. The applicant has adequately demonstrated this success in his comparative experiments. The invention must accordingly be regarded as involving an inventive step.
For these reasons, it is decided that:
1. The decision of the Examining Division of the European Patent Office of 19 March 1980 is set aside.
2. The case is remitted to the first instance with the order to grant a European patent on the basis of the following documents ...