EP 2 820 060 A1 is a Euro-PCT application originally published as WO 2013/127732. It relates 2K polyurethane systems with phase separation.
Brief outline of the case
The application was refused and the applicant appealed.
The characterising part of claim1 of the MR reads:
- the crosslinked composition has a glass transition temperature Tg above 60°C, measured with DSC, DIN 11357, and
- at temperatures between -10°C and +70°C the modulus of elasticity of the crosslinked composition is greater than 1000 MPa, measured according to DIN ISO 527.
The case was remitted to the ED for further prosecution.
The ED’s decision
The ED decided that the respective claims 1 of the MR, AR 4 and 5 did not fulfil the requirements of Art 84, since the respective claims 1 did not contain “all essential” technical features, in order to achieve a glass transition temperature (Tg) of more than 60°C for the crosslinked composition. This was one of the two features distinguishing the claimed invention from the prior art.
The ED essentially found that the composition 700T described in Table 3 of prior art D16 fulfils all the structural features of claim 1 of the MR, but does not result in a crosslinked composition with a Tg above 60 °C.
The ED also decided that the remaining AR were lacking N over various pieces of prior art.
The board’s decision
The objection of lack of “essential features” raised by the ED can only be understood as meaning that claim 1 of the MR lacks “essential features” within the meaning of the case law. The board referred to the CLBA, 10th edition, 2022, II.A.3.2, II.A.5.1 and II.A.5.2 and to the Guidelines for Examination F-IV, 4.5.
An analysis of the decisions cited in these parts of the CLBA shows that the term “essential features” is not given a uniform meaning in case law. This is due not only to the application of different legal bases for such a requirement (clarity of the claim or support by the description), but also to the criteria by which the absence of “essential features” is to be assessed.
This inconsistency in the case law regarding the requirement to indicate all “essential features” is illustrated by the analysis of the case law in decision T 56/21 in the context of the question whether Art 84 and R 43 provide a legal basis for a mandatory adaptation of the description to claims whose subject-matter is more narrowly defined (Reasons 61, 63 and 68).
While there is a consensus in the case law that the “essential features” test involves a formal aspect in view of the requirement that the claims must be supported by the description, i.e. it provides whether what is defined in the claims is also to be found in the description. Many of the decisions cited in Part II.A.5.1 of the CLBA also take substantive aspects into account when examining this requirement of the EPC.
The examination of these further aspects goes back in part to decision T 409/91.
Reasons 3.5 in T 409/91 makes it clear that substantive law aspects must be taken into account in the question of support by the description.
According to T 409/91, a claim may be supported by the description to the extent that it corresponds to it, but still cover subject-matter which is not sufficiently disclosed within the meaning of Art 83 because it cannot be carried out without unreasonable effort and vice versa. This view was followed in T 939/92, Reasons 2.2.2.
The features necessary for solving the technical problem in question must therefore be included in the claim. In proceedings before the ED, it often happens that relevant documents are cited, with the result that the core of a claimed invention has to be amended and thus the corresponding problem statement also appears in an amended form. In such cases, new essential features often have to be added to the claim in order to clearly characterise the solution and to distinguish the invention from the prior art.
The refusal of the independent claim by the ED for lack of essential features with reference to Art 84 is not based on a lack of formal support of claim 1 by the description, but obviously on an insufficient disclosure of its subject-matter within the meaning of Art 83.
For the Board, such an objection on the basis of Art 84 is not tenable in the light of the purpose of R 43 and recent case law.
Taking into account the title of R 43 and that this rule defines the form and content of the claims, it is not clear to the board why the wording of the first part of R 43(3), according to which the independent claims reflect the essential features of the invention, should define requirements which go beyond the form and content of the claims, in contrast to all other provisions of R 43.
For the board, the essential features of the invention under R 43(3) are those which the applicant considers essential for the patent protection sought and not those which the ED considers sufficient to fulfil substantive requirements.
The possibility of rejecting claims which cannot withstand substantive examination because they are unreasonably broad on the same grounds under Art 84 is also not in line with the “travaux préparatoires” to the EPC 1973 and EPC 2000, from which it is derivable that the question of “essential features” is rather formal and not substantive.
In view of the meaning to be given to the term “essential features” in R 43(3), namely the features which the applicant considers essential for his patent protection, and the indication in recent case law, referring to the “travaux préparatoires” to the EPC 1973, cf. T 1020/03, Reasons 10, and EPC 2000, G 3/14, Reasons 70, that the breadth of the claim does not provide a basis for an objection under Art 84 in respect of substantive considerations, the board concluded that the ED’s rejection of the MR on the grounds, with reference to Art 84, that its claim 1 does not contain all the “essential features” relating to achieving a glass transition temperature Tg of more than 60°C for the cross-linked composition was unconvincing.
Comments
On page 11 of the original description, it is stated that through the selection of the components, the composition according to the invention must have a glass temperature Tg of more than 60°C, measured by MSC according to DIN 11357. In another embodiment the Tg is from 100 to 130°C.
it is further stated that, with the compositions according to the invention, it is insured that at temperatures between -10°C and +70°C, the E-Module is higher than 1000 MPA, in analogy with DIN EN ISO 527. Furthermore, according to the applicant himself, the degree of cross-linking has a direct influence on the Tg.
What the ED queried, is that the selection of the components does not indicate which components and degree of cross-linking are needed in order to achieve a Tg of more than 60°C. The missing “essential feature” was thus not the Tg, but the conditions by which the Tg can be achieved.
As only the Tg was mentioned in the claim it also possible to consider that the claim defines a result to be achieved, here a Tg of more than 60°C.
According to the Guidelines F-IV, 4.5.1 “a lack of essential features in the independent claim(s) is therefore to be dealt with under the clarity and support requirements”, whereby Art 84 and R 43(1+3) are mentioned expressis verbis.
If one considers the Tg as a result to be achieved, the Guidelines F-IV, 4.10 applies. In this section only Art 84 is mentioned.
The ED thus acted in accordance with the Guidelines.
The ED never denied that the Tg was an “essential feature”, what the ED denied is that the “essential” means allowing to achieve this result were not disclosed. Those “essential” means are manifestly part of a substantive appreciation of the invention and cannot be considered as a mere formal requirement under R 43(3). There is no mention of R 43(3) in the ED’s decision.
The considerations of the present board when dealing with Art 84 and R 43, and the case law cited, might be interesting, but are not really relevant in the present case. R 43 deals indeed with formal aspects, but Art 84, be it under clarity or support, represents not merely a formal, but much more a substantial aspect.
The board’s considerations are a nice play with legal concepts, but it cannot be denied that the features allowing to reach the Tg, i.e. the “essential features”, were absent in the claim and in the disclosure. Knowing the LQM in the present case, it is no surprise that T 56/21 was quoted.
The glass temperature Tg and the E-Module can as well be considered as effects. If this is the case, the absence of disclosure of at least one composition and degree of crosslinking allowing to obtain the required Tg and E-Module can well be considered as a lack of sufficiency under G 1/03, Reasons 2.5.2, 3d paragraph, or T 2001/12.
In the present case, a combined objection under Art 84 and Art 83 could have preferably been raised.
Norms can have different versions
It is however to be noted that all the norms mentioned in the independent claim are defined without their version. A norm/standard can vary with time, and it is thus of utmost importance to determine carefully which possible version of a norm is to be considered and when it was published, see T 783/05.
As the version 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 version of a norm in a claim relates to 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.
T 602/24
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