The patent relates to multimodal polyethylene polymers and process preparing said polymer.
Brief outline of the procedure
The MR and AR1-36 filed in reply to the opposition were considering lacking clarity. AR 37 had no problem with Art 84 or Art 123(2), but lacked N over D6=WO 2007/042216, not mentioned in the ISR established by the EPO.
The patent was thus revoked and the proprietor appealed this decision.
The proprietor requested maintenance on the basis of a MR and AR 1-7.
The operative MR was identical to AR 37 dealt with in the decision under appeal.
The board did not discuss the lack of N found by the OD, but considered that claim 1 of the MR was infringing Art 123(2). The same applied to AR 1-7.
The revocation was thus confirmed, but for other reasons than those brought forward by the OD.
The case is interesting in view of the objections under Art 123(2) brought forward by the board.
The claims as filed
Dependent claims 3, related to a polyethylene as in claim 1 or 2,
Dependent claims 6, 7, 12, 15 and 19 all related to a polyethylene as claimed in any preceding claim.
Claim 1 of the MR
Compared with claim 1 as filed, claim 1 of the MR comprised 6 added features (a) to (f). Those added features corresponded to the subject matter as such of dependent claims 3, 6, 7, 12, 15 and 19 as filed.
It remained undisputed that dependent claims 3, 6, 7, 12, 15 and 19 as filed could provide a basis for each of the six individual amendments made.
The opponents’ position
The opponent considered that the specific combination of features of claim 1 of the MR could only be arrived at after performing multiple selections within the ambit of the application as filed, for which no valid support was given in the application as filed.
The proprietor’s position
To the contrary, the proprietor followed the line taken by the OD and considered that the subject-matter of claim 1 amounted to the combination of original independent claim 1 with each of dependent claims 3, 6, 7, 12, 15 and 19.
The proprietor argued that considering the multiple dependency of the original set of claims (each dependent claims 2 to 23 was indeed dependent on any of the preceding claims), each combination of these claims was explicitly disclosed.
Also, the amendments made were all directed to limit the definition of components (i) to (iii): The fact that these components were already specified in claim 1 of the application as filed showed to the skilled person that they were important for the invention.
The proprietor further argued that the specific combination of features now being specified in claim 1 of the MR was derivable from several passages of the application as filed.
The board’s position
The board considered that although dependent claims may under certain circumstances be seen as pointers to amendments made, this is not always mandatorily the case.
In the case of multiple amendments being made, as is the case here for claim 1, the question has to be posed whether the specific combination of features now being defined in said claim 1 emerges from the application as filed, whereby the description is not to be viewed as a reservoir from which features pertaining to separate embodiments can be freely combined in order to artificially create a certain embodiment.
The present board endorsed the view of the deciding Board in case T 3142/19, Reasons 6.4 and 6.5, briefly commented in the present blog that whether or not this is the case depends on the specifics of the case, in particular on the level of complexity caused by the optional features.
In the present case, the amendments made are based on 6 dependent claims among a total of 22 claims that were all dependent on the preceding claims – among others, claim 1 – as originally filed.
Furthermore, the application as filed was drafted in such a manner that it contains a very high number of preferred, more preferred and most preferred embodiments for many – if not all – of these optional features, the subject-matter now defined in claim 1 can only be arrived at by combining specific passages related to some preferred embodiments of the application as filed, while other also preferred embodiments were disregarded.
The board held that it may have to be taken into account that an excessive number of optional features may have an impact on the assessment of compliance with Art123(2), in that, in a forest of optional features, a singled-out individual combination may not be directly and unambiguously derivable by the skilled person.
In the absence of any pointers to the specific combination of features made, the subject-matter now being claimed cannot be held to emerge from the application as filed.
Whilst the board agreed that some features of claim 1 could be found in the description as filed, the board opined that the passages quoted by the proprietor were very general and did not specifically hint at the specific combination of amendments that was made, in particular regarding the levels of comonomers and molecular weight (in absolute and relative terms) of the higher molecular weight polyethylene components (ii) and (iii).
The Board was further satisfied that, in view of the generic nature of each of the passages relied upon by the proprietor during the OP before the board, also the combination of these passages of the application as filed did not allow to conclude that there is any pointer in the application as filed to the specific combination of original claims 3, 6, 7, 12, 15 and 19.
By making at filing, dependents claims dependent on any preceding claims, it does not mean that the specific combination resulting from bringing the subject-matter, as such or of various dependent claims, into a single independent claim, has been originally disclosed.
It is only if this combination of features is defined as such in the application as filed, that the claimed combination of features can be considered directly and unambiguously disclosed in the application as filed.
The board also reminded that the description is not to be viewed as a reservoir from which features pertaining to separate embodiments can be freely combined in order to artificially create a certain embodiment. The notion of a reservoir not combinable at will is for instance exemplified in T 1334/09, Reasons 3.3.1, T 296/96, Reasons 3.1, T 776/16, Reasons 3 or T 1251/19, Reasons 2.4.
In a forest of optional features, a singled-out individual combination may not be directly and unambiguously derivable by the skilled person. In other words there should be a pointer to the specific combination of trees in this forest.
Making at filing, all dependent claims dependent on any preceding claim, boils actually down to define at the beginning or at the end of the actual description that all features/embodiments disclosed may be combined in any way. This is by no way sufficient to avoid infringing Art 123(2). It actually needs a pointer to any specific combination which might later be claimed.
It is relatively rare that a revocation is confirmed but for other reasons as those brought forward by an OD.
This case is however one more of the 50%+ of decisions of an OD set aside in published decisions of the boards.