Patent EP 3 116 979 B1 relates to a method of lubricating an internal combustion engine equipped with a centrifugal oil mist separator with a specific lubrication composition.
Brief outline of the case
The patent was maintained according to AR1 and the opponent appealed.
AR1 consisted of the claims as granted with the deletion of claim 10 which infringed Art 123(2).
The board held that claim 1 of the MR=as maintained lacked IS over D8=US 2003/0024512, whereby no effect could be demonstrated over D8. By routine measures, the skilled person arrived at the subject-matter of claim 1.
For AR 1-12, the proprietor merely argued that the scope of the claims had been limited and that this contributed to IS. The board considered that this general submission was not substantiated in more detail and AR1-12 had thus the same fate as the MR in appeal.
AR 13 related to the “Use of a lubricant composition
- (i) for lubricating an internal combustion engine equipped with a centrifugal oil mist separator,
- (ii) for reducing filter plugging and deposits in the centrifugal OMS.”
The board held that claim 1 of AR 13 was unclear and at the same time lacked sufficiency. The same objections applied to AR14-19.
The patent was thus revoked.
The board’s decision on AR 13
The lack of clarity
The set of claims as granted did not contain a use claim, nor does it recite purpose (ii).
Therefore, insofar as claim 1 relates to the use of a lubricant composition for reducing filter plugging and deposits in the centrifugal OMS, it is open to an assessment of clarity under Art 84 with reference to G 3/14; OJ EPO 2015, A102.
Claim 1 does not mention any reference point, in terms of e.g. a specific lubricant composition, against which it is to be determined whether the composition defined in claim 1 fulfils purpose (ii).
Hence, it is not possible to ascertain whether or not that purpose is actually achieved, i.e. whether or not a specific use actually falls within the subject-matter of claim 1. Claim 1 therefore lacked clarity within the meaning of Art 84.
The lack of sufficiency
The opponent argued, and the proprietor confirmed this when asked by the board, that the problems associated with the use of a centrifugal OMS, i.e. filter plugging and deposits, are caused by the lubricant composition from claim 1 as a whole.
For the board, this lead to a logical contradiction.
How can a lubricant composition be used to reduce problems that are caused by its use in the first place? proprietor did not provide any information on how the skilled person could resolve this contradiction, e.g. which compounds they should add to the lubricant composition in order to still achieve the desired objective, i.e. reducing filter plugging and deposits in the centrifugal OMS.
For this reason, the invention defined in claim 1 is insufficiently disclosed within the meaning of Art 83.
Comments
Combined lack of clarity and sufficiency
It is a rare occurrence that a claim is unclear and at the same time is insufficient disclosed. In the present case, there was an inherent contradiction within the claim which could not be resolved with the originally filed documents.
Lack of IS for AR1-12
Simply arguing that the scope of AR 1-12 has been limited and that this contributed to IS was not accepted by the board. A similar argumentation has been used by the proprietor in T 558/20, commented on this blog.
On the procedure
D8=US 2003/0024512 was one of the three category A documents cited on the ISR established by the EPO. In view of the conclusion of the board, the patent should not have been granted by the ED. On top of this, claim 10 as granted infringed Art 123(2). Another reason not to grant.
The decision of the OD has been set aside by the board, as contrary to the OD’s view, a technical effect has not actually been demonstrated. Therefore, there was no reason to give the proprietor the benefit of the doubt that the problem set out in the patent has actually been solved in respect of D8 over the whole scope of claim 1.
The OD’s decision is one of the 60+% of decisions of ODs set aside by a board in 2024. https://www.epo.org/en/boards-of-appeal/decisions/t211944eu1
Comments
Leave a comment