EP 3 074 227 B1 relates to a multilayer composite body.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
The opponent’s point of view
The opponent argued that claim 1 describes a (meth)acrylate copolymer, whereas § [0017] and [0056] of the description mention polymethyl methacrylate (PMMA), i.e. a homopolymer, as a (meth)acrylate copolymer. In the opponent’s view, this contradiction led to a problem of sufficiency.
The opponent argued further that, the features relating to the coefficient of linear expansion were not sufficiently dislosed due to the use of the term “approximately” and the lack of any indication of direction or temperature.
In this context, the opponent cited the example of ‘an energy storage device with virtually infinite storage capacity’. In its opinion, the term “virtually” is unclear in itself, but there is also a lack of sufficiency, as ‘it is well known that […] no such energy storage device exists’.
The opponent also argued that the absence of any indication of a temperature at which the coefficient of linear expansion ought to be measured, sufficiency was not given.
The opponent further argued that it was not possible to determine the quantity of polyurethane (PUR)-based reactive hot melt adhesive based on the finished product.
The board’s decision
For the board, claim 1 clearly discloses a (meth)acrylate copolymer and not a homopolymer. This is a clear and unambiguous statement for a skilled person.
A possible discrepancy with the information in the description cannot lead to a lack of sufficiency. At best, this is a question of clarity. A skilled person is able to find suitable (meth)acrylate copolymers.
The features of claim 1 introduced by “approximately” with regard to the coefficient of linear expansion lead, at most, to a lack of precision in the specified value range. However, these features have a restrictive character in claim 1 and are not meaningless, as argued by the opponent.
The opponent was unable to demonstrate that a skilled person would be unable to measure the coefficients of linear expansion specified in claim 1. The opponent alleged a lack of sufficiency without providing any experimental evidence to support this allegation.
It is true that the coefficient of linear expansion varies in the extrusion direction. measured according to ISO 11359, and the coefficient of linear expansion orthogonal to the extrusion direction, measured according to ISO 11359, are different.
This is also apparent from the description of the patent, cf. § [0049] and [0060]. However, this does not mean that the invention cannot be carried out due to different coefficients of linear expansion in the extrusion direction and orthogonally thereto. Rather, the corresponding value varies slightly depending on whether the coefficient of linear expansion is measured in the direction of extrusion or orthogonally to the direction of extrusion. In the opinion of the board, this is at most a question of clarity, but not of sufficiency.
The board shared the OD’s assessment that, in the absence of a specific temperature, it must be assumed that this measurement is to be carried out at room temperature. The board was not convinced by the opponent’s argument that it is equally likely that the temperature during the manufacture of the composite body could be meant, let alone that this could be detrimental to sufficiency. A skilled person is capable of finding a suitable temperature range for the measurement and carrying out the measurement.
This is clearly the case with regard to the amount of reactive hot melt adhesive in claim 1, as claim 1 already contains the corresponding instruction. The question of whether and how this amount can be determined in the finished product is irrelevant, as what matters is whether a skilled person can carry out, i.e. manufacture, the claimed object, which is the case here.
Comments
While on certain aspects, the board can be followed, some assumptions of the board are quite hazardous.
The board can be followed when it comes to the absence of any experimental data. In this respect, the opponent has not fulfilled its onus of proof.
As far as the use of “approximately” is concerned, it can be interpreted in that the coefficients of linear expansion are measured/calculated with the usual precision in the domain. No problem either.
When it comes to the temperature, strong doubts are permitted. Not only the notion of room temperature can vary, for some it is 20°C for others it can be 25°C. As the product is the result of an extrusion, it could well be that the cooling rate plays a role.
The same applies to the norm mentioned, i.e. ISO 11359. Not only the norm has various parts, but part 2, which appears to be applicable here, has different dates of issuance/versions.
It has to be noted that the norm mentioned in the independent claim are defined without the date of issuance. A norm/standard can vary with time, and it is thus of utmost importance to determine carefully which possible version/date of issuance of a norm is to be considered and when it was published, see T 783/05.
As the version or date of the norm cannot be added to the original disclosure without infringing Art 123(2), see T 881/02, I would rather consider that the absence of the issuance date of a norm in a claim represents a lack of sufficiency.
The necessity to indicate the version of a norm is to be found in the Guidelines G-IV, 7.6, last paragraph, and T 1902/21, commented in the present blog.
Further norms are mentioned in the description, all without any date of issuance: ISO 75-2/A, ISO 294-4, ISO 1133, DIN EN 15186 as well as DIN 68861, Part 1.
It is too easy for a board to transform a problem of sufficiency in a problem of clarity. Under G 3/14, the problem can then easily be vacated, but reasonable doubts are permitted regarding this way of dealing with what is actually a problem of sufficiency.
Let’s put it this way: the proprietor had the luck to find a very comprehensive board.
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