The patent relates to a process for the post-treatment of a zeolitic material
Brief outline of the case
The opposition division concluded that:
– the MR and AR 2 and 10 at that time (current MR and AR2 and 4, respectively) were lacking N
– AR 16 and 31 (current AR 6 and 11, respectively) were lacking IS.
All the requests were found to fulfil the requirements of Art 123(2).
The patent was revoked and the proprietor appealed the decision.
The board confirmed the revocation, but for a totally different reason: infringement of Art 123(2).
The proprietor also requested that questions were referred to the EBA. This request was rejected.
The proprietor filed objections under R 106 which were dismissed.
The proprietor’s position
Claim 1 of the MR was based on claims 1, 4, 9, 11, 13 and 17 as originally filed. Neither the number of possible combinations nor the selection of features with varying degrees of preference should play a role in the assessment of Art 123(2).
The rationale of T 2273/10 did not apply since it related to a case with preferred or non-preferred alternatives.
The inventive examples of the application as originally filed were a pointer to the combination of features of claim 1 and since the new combination of features was not associated with an undisclosed technical contribution, and because of T 1621/16, it had to be concluded that the requirements of Art 123(2) were met.
In the event that none of the requests met the requirements of Art 123(2), this would be inconsistent with T 1621/16.
The opponent’s position
Claim 1 of the MR=as granted was the result of a multiple selection from lists of some length. The examples were not a sufficient pointer to this specific combination. Hence, the requirements of Art 123(2) were not fulfilled.
The board’s position
T 2273/10 only distinguished between preferred or non-preferred features and had been superseded by T 1621/16, which sought to harmonise the approach with regard to lists of converging alternatives.
Claim 1 as originally filed in combination with the dependent claims and the general part of the description covers a large number of possibilities relating to:
- the nature of the zeolitic material
- numerous steps of the post-treatment process and sequences of those steps
- numerous operating parameters to be respected during the process steps
Furthermore, many features of claim 1 of the MR are claimed in varying degrees of preference in the dependent claims and/or in the general part of the description.
The board noted first that the proprietor has not indicated a single passage of the original application that discloses – in combination – the features of claim 1 of the MR.
Claim 1 is the result of a multiple selection of a very specific combination of features from different dependent claims as originally filed. These selections are made from among numerous possibilities and different degrees of preference.
In addition and by contrast, none of the options of dependent claims 2, 3, 5 to 8, 10, 12, 14 to 16 and 18 as originally filed have been inserted into claim 1.
In view of the sheer number of possibilities, the subject-matter of claim 1 at issue is not directly and unambiguously derivable from the dependent claims, even when the general part of the description is taken into account.
The board acknowledged that the inventive examples fall under claim 1 of the MR.
However, these examples are not sufficient as a pointer to the specific selection defined in claim 1 since they fall under the most preferred options of the various parameters and ranges.
Claim 1 thus corresponds to a multiple selection from a large number of lists and possibilities without a specific pointer.
While the core of the invention, e.g. as illustrated by the inventive examples, may have remained the same, the boundaries of the subject-matter to be protected have changed in a way that is not directly and unambiguously derivable from the application as originally filed, in particular in view of the large number of selections made.
No diverging case law
Contrary to the appellant’s opinion, there is no diverging case law in this regard either.
The conclusions are in line with T 389/13, Reasons 3, which also dealt with a case where several parameters had been inserted into claim 1 and concluded that the requirements of Art 123(2) EPC were not met.
The findings are also in line with T 2273/10. Reasons 2, which concluded that a selection of preferred and particularly preferred alternatives from several lists without a pointer to that specific combination violated Art 123(2). Reasons 2.9 must not be read in isolation; it refers to the preceding paragraphs as indicated by the first words of the passage.
According to Reasons 1.4 and 1.7.2 of T 1621/16, lists of converging alternatives are lists of options ranked from the least to the most preferred, where each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list. Lists of non-converging alternatives, by contrast, are lists of mutually exclusive or partially overlapping elements.
Reasons 1.7.3 of T 1621/16, states that “at least” two conditions have to be met for Article 123(2) EPC in the case of multiple selections from lists of converging alternatives.
- Firstly, the application as originally filed has to include a pointer to the combination of features resulting from the multiple selection.
- Secondly, the subject-matter resulting from the multiple selections must not be associated with an undisclosed technical contribution.
This means that amendments go in more independent directions, thus increasing the number of “degrees of freedom”, and the number of possible selections and combinations of features is significantly higher than in T 1621/16.
The same objections apply to all AR.
The mere fact that inventive examples fall under a claim, does not mean that the claim abides by the requirements of Art 123(2).
in the present case, there was no pointer towards the claimed solution. This is a minimum requirement when carrying out a selection between a plurality of possibilities.
It has to be shown that all features of a claim are disclosed in combination in the originally filed documents. The mere fact that the proprietor has not indicated a single passage of the original application that discloses – in combination – the features of claim 1 is quite revealing.
On the procedure
Claim 1 (process claim) of the MR in opposition was considered new over D1, but not infringing Art 123(2). Claim 19 (product claim) of the MR in opposition was lacking N over D1=Microporous and Mesoporous Materials 60(2003), 251-262, which was not in mentioned in the ISR established by the EPO.
The patent was revoked for lack of N or IS. The board confirmed the revocation, but for totally different reasons, i.e. infringement of Art 123(2).
The present case is thus one of the 50+% of decisions set aside by a board of appeal in 2023.