EP 3 296 372 B1 relates to a solvent-based coating composition.
Brief outline of the case
The OD decided that claim 1 as granted was lacking N over D1=WO 2015/082553, not mentioned in the ESR.
AR1and AR2 lacked IS over D1. The patent was maintained according to AR3.
Both the proprietor and the opponent appealed.
The proprietor objected to the filing by the opponents, when entering appeal, of A045 to A054, as being too late.
The board held that claim 1 as maintained lacked IS over D1 and A051=J.V. Koleske et al., “Additives Guide”, Mai 2006, Seiten 94, 106, 108 bis 110, 112 bis 114, representing CGK, and as well not mentioned on the ESR.
A051 was filed by the opponents when entering appeal and was admitted by the board.
As claim 1 as granted and of AR4-6 were also lacking IS over the same combination, the patent was revoked.
The board’s decision
Admissibility of late filed documents
From the case history, it appears that the patent proprietor did not assert a technical effect of organically modified phyllosilicates until two months before the OP before the OD. The patent proprietor did not even address opponent 1’s argument concerning the disclosure of “Bentone clay” in D2 until the OP.
In such circumstances, the opponents could not be expected to submit suitable documents in response to the patent proprietor’s new submissions before or during the OP.
In particular, it would be contrary to the requirement of fairness to allow the proprietor to submit a substantiated statement on a set of claims and a related attack by the opponent only towards the end of the opposition proceedings, which lasted more than one and a half years, and at the same time to require the opponent to respond to this within the two months available until the oral proceedings.
Against this background, the statement of grounds of appeal constituted the first possible opportunity for the opponents to support the above argument concerning the introduction of organically modified phyllosilicates in claim 1 by means of evidence A045 to A054 in accordance with the present AR 3 considered allowable by the OD.
The Board therefore decided to admit evidence A045 to A054 into the proceedings, taking into account the requirements of Art 12(4+6) RPBA.
Lack of IS
The board discussed first AR3=as maintained.
The board disagreed with the argumentation of the proprietor that claim 1 involved IS.
The board held that, if the OTP merely consists in providing an alternative, no indication or incentive in the direction of the claimed solution is required.
It was sufficient that the skilled person would have considered the claimed solution to be a reasonable alternative to the coating composition of the closest prior art. The board referred to T 1968/08, Reasons, 5.5; T 12/07, Reasons, 4.1.6 and T 1045/12, Reasons, 4.7.7.
The Board agreed with the opponents that D1 discloses, that the coating compositions according to the invention may comprise further additives, and that suitable additives for the coating compositions according to the invention can be found in A051, to which D1 explicitly refers.
A051 is a guide to additives in coating compositions and discloses that rheology modifiers are used as additives in coating compositions. Specific organically modified phyllosilicates to be used in coating compounds are listed on page 110 of A051 in conjunction with their respective properties.
For this reason, the skilled person dealing with the technical problem would consider the use of an additional skin prevention agent in addition to methyl ethyl ketoxime as well as a rheology modifier in the form of organically modified layered silicates in the coating composition according to Example 7 of D1 to be a reasonable alternative. This would lead the skilled person skilled to the subject-matter of claim 1 according to auxiliary request 3 without any IS.
The fact that A051 discloses a plurality of additives of the most diverse nature is irrelevant, since this plurality merely represents equally obvious solutions to the technical problem posed. The arbitrary selection of one of these obvious solutions cannot contribute to an IS.
Hence claim 1 as maintained was lacking IS.
Comments
No need for a pointer in case of the OTP is an alternative
It is established case law that in order to combine documents for assessing IS, there is no need for a pointer from one document to another, see for instance T 1246/21, commented on this blog.
The present decision confirms that no pointer is needed towards a specific document if the OTP consists in presenting an alternative, that is when there is no effect achieved by the claim features over the CPA.
Admissibility of late filed documents
The present board did not merely dismissed the late filed documents A045 to A054 under Art 12(4+6) RPBA, but rightly considered that it was the proprietor, by filing on the last day of the time limit under R 116(2) arguments never brought forward previously, led the opponents to file further documents when entering appeal.
Filing a submission on the last day of the time limit under R 116(1) should not silence the other party. It should have the opportunity to reply.
Some boards consider that when a party files a submission on the late day of the time limit under R 116(1), and the other party does not request the possibility to review the submission or postponement of the OP, the right to be heard of the other party has not been violated. See for instance, in the case of experimental data, T 2036/22, commented in this blog, or T 449/21, also commented in this blog.
The right to be heard should not be made conditional on a possible review of a late submission or to a request for postponement. Whatever some boards may think, by not allowing to review such a late submission, the right to be heard of the other party has been violated. But it avoids a long discussion in appeal, or a remittal, so that the production/productivity objectives are easier to achieve.
The present board acted exemplarily in stating that, be it only out of fairness, the late filed documents had to be admitted, in order to reply to the late submission of the proprietor.
Common general knowledge
When looking at decisions of the boards, it appears regularly that the search report established by the EPO does not contain any reference to common general knowledge. This should however not be the case. Documents representative of common general knowledge should be contained in the search files.
On the procedure
In the present case, neither D1 nor A051 were mentioned in the search report. In view of the outcome of the appeal procedure, the patent should never have been granted in the first place. D1 is a PCT application filed at the EPO and classified in C07D 167/08 which is identical to one of the classification units of the patent.
T 1729/22
https://www.epo.org/de/boards-of-appeal/decisions/t221729du1
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