T 477/09 – Another One Bites The Dust

Here is another textbook example of a disclaimer that does not fulfil the requirements established in G 1/03.

The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the opposed patent.

The Board found the (main) request I to lack novelty over document D1 (prior art under A 54(3)(4)), and auxiliary requests II and III not to comply with A 123(2). In what follows, the Board examines auxiliary request IV.

Claim 1 of this request read (the difference with respect to the main request is underlined):

Dental composition comprising:

(1) at least one crosslinkable and/or polymerizable silicone oligomer or polymer which is liquid at room temperature or which is heat-meltable at a temperature of less than 100°C, and which comprises:

• at least one unit of formula (FS):

in which:

• a = 0,1 or 2, R0, identical or different, represents an alkyl, cycloalkyl, aryl, vinyl, hydrogeno or alkoxy radical, preferably a C1-C6 lower alkyl,

• Z, identical or different, is an organic substituent comprising at least one reactive epoxy, and/or alkenyl ether and/or oxetane and/or dioxolane and/or carbonate functional group,

• and at least two silicon atoms.

(2) at least one aromatic hydrocarbon photosensitizer with one or more aromatic nuclei which are substituted or not, having a residual light absorption of between 200 and 500 nm,

(3) at least one dental filler present in a proportion of at least 10% by weight relative to the total weight of the composition,

(4) and an effective quantity of at least one borate-type photoinitiator, chosen from those of formula:

• in which the cationic entity of the borate is selected from: 

• the onium salts of formula (I):

                              in which formula:

• A represents an element of groups 15 to 17 such as for example: I, S, Se, P or N,
• R1 represents a carbocyclic or heterocyclic C6-C20 aryl radical, it being possible for said heterocyclic radical to contain, as heteroelements, nitrogen or sulphur,
• R2 represents R1 or a linear or branched C1-C30 alkyl or alkenyl radical; said radicals R1 and R2 being optionally substituted with a C1-C25 alkoxy, C1-C25 alkyl, nitro, chloro, bromo, cyano, carboxyl, ester or mercapto group,
• n is an integer ranging from 1 to v + 1, v being the valency of the element A,
• m is an integer ranging from 0 to v - 1 with n + m = v + 1, 

• the organometallic salts of formula (III):

                    in which formula:

• M represents a group 4 to 10 metal, in particular iron, manganese, chromium or cobalt,
• L1 represents 1 ligand bound to the metal M by π electrons, which ligand is chosen from the ligands η3-alkyl, η5-cyclopendadienyl and η7-cycloheptratrienyl and the η6-aromatic compounds chosen from the optionally substituted η6-benzene ligands and the compounds having from 2 to 4 condensed rings, each ring being capable of contributing to the valency layer of the metal M by 3 to 8 π electrons;
• L2 represents a ligand bound to the metal M by π electrons, which ligand is chosen from the ligands η7-cycloheptratrienyl and the η6-aromatic compounds chosen from the optionally substituted ligands η6-benzene and the compounds having from 2 to 4 condensed rings, each ring being capable of contributing to the valency layer of the metal M by 6 or 7 π electrons;
• L3 represents from O to 3 ligands, which are identical or different, linked to the metal M by σ electrons, which ligand(s) is (are) chosen from CO and NO2+; the total electron charge q of the complex to which L1, L2 and L3 contribute and the ionic charge of the metal M being positive and equal to 1 or 2;

• the anionic borate entity of which has the formula  

              in which:

• a and b are integers ranging, for a, from 0 to 3 and, for b, from 1 to 4 with a + b = 4,
• the symbols X represent:
• a halogen atom (chlorine, fluorine) with a = 0 to 3,
• an OH functional group with a = 0 to 2,
• the symbols R are identical or different and represent:
• a phenyl radical substituted with at least one electron-attracting group such as for example OCF3, CF3, NO2, CN, and/or with at least 2 halogen atoms (fluorine most particularly), this being when the cationic entity is an onium of an element of groups 15 to 17,
• a phenyl radical substituted with at least one element or one electron-attracting group, in particular a halogen atom (fluorine most particularly), CF3, OCF3, NO2, CN, this being when the cationic entity is an organometallic complex of an element of groups 4 to 10,
• an aryl radical containing at least two aromatic nuclei such as for example biphenyl, naphthyl, optionally substituted with at least one electron-attracting group or element, in particular a halogen atom, including fluorine in particular, OCF3, CF3, NO2, CN, regardless of the cationic entity;

and which does not comprise the compound ethyl-4-dimethylaminobenzoate.

The Board finds this disclaimer not to be allowable:

*** Translation of the French original ****

[5.1] Claim 1 has been modified by adding a negative feature or disclaimer in order to restore novelty over document D1.

[5.2] The admissibility of disclaimers and the situations in which they may be used have been discussed in decisions G 1/03 and G 2/03 of the Enlarged Board of appeal (EBA).

[5.3] The disclaimer of auxiliary request IV is intended to excise from the claimed subject-matter any dental composition according to the claims of the impugned patent containing EDAB. It is undisputed that this disclaimer has no support in the application as filed. However, an amendment to a claim by the introduction of a disclaimer may not be refused under A 123(2) for this reason alone (see G 1/03 [headnote 1]).

[5.4] The EBA has, therefore, established that a disclaimer was allowable in order to restore novelty by delimiting a claim against state of the art under A 54(3) and (4) (see G 1/03 [headnote 2.1, first line]). As has already been said, D1 complies with this requirement.

[5.5] Decision G 1/03 also gives two conditions to be observed when drafting disclaimers. On the one hand, “a claim containing a disclaimer must meet the requirements of clarity and conciseness of A 84” (see G 1/03 [headnote 2.4] and [3]). On the other hand, “a disclaimer should not remove more than is necessary […] to restore novelty […]” (see G 1/03 [headnote 2.2] and [3]).

[5.5.1] The second paragraph of G 1/03 [3] states

“However, the only justification for the disclaimer is to exclude a novelty-destroying disclosure […]. The necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily. Therefore, the disclaimer should not remove more than is necessary to restore novelty […].”

These passages, therefore, establish that the two conditions set out in headnotes 2.2 and 2.4 of G 1/03 have the same value. Consequently, it is not possible to consider that the patent proprietor has any room for manoeuvre when drafting the disclaimer and, as a consequence, when defining its scope: in order to satisfy the requirements established by G 1/03, a disclaimer must not excise more than is needed for restoring novelty.

[5.5.2] It has been established before that examples 14 and 16 of D1 destroyed the novelty of claim 1 of the patent under consideration.

[5.5.3] The [opponent] has submitted that the novelty of claim 1 was destroyed by the disclosure in D1 of other compounds that may be used as an alternative to EDAB, e.g. in paragraph [0025]. However, only a dental composition comprising the specific combination of compounds (1) to (4) as defined in claim 1 of the impugned patent can destroy the novelty of said claim 1.

The [opponent] has not identified the passages of D1 which, apart from examples 14 and 16, disclosed such a combination.

However, the features of claim 1 are disclosed in the following passages of D1:

• a silicone according to feature (1) of the impugned patent has to be chosen among the set of compounds according to D1 containing epoxy groups and/or oxetane groups, as defined in claims 8 to 10 and paragraphs [0017] to [0019], respectively. It has to be noted that only a minority of those compounds comprises at least one (FS) unit and at least two silicon atoms, according to feature (1);
• a compound according to feature (2) of claim 1 of the impugned patent has to be chosen among all the [aromatic amines] defined in claims 1 and 5 to 7 or in paragraphs [0024] and [0025] of D1;
• a dental filler according to feature (3) of claim 1 of the impugned patent must be used whereas such a filler is optional in D1 and, when it is present, it can be used in a proportion of less than 10% by weight relative to the total weight of the composition (cf. claim 1);
• a diaryliodonium according to feature (4) of claim 1 of the impugned patent has to be chosen among a great number of compounds defined in claim 3 or in paragraphs [0012] to [0015] of D1.

Therefore, although all the features (1) to (4) of claim 1 of the impugned patent are disclosed as such in the claims and/or the description of D1, their specific combination is not disclosed directly and unambiguously.

Nor does D1 disclose, directly and unambiguously, to replace the EDAB in examples 14 and 16 of D1 by an appropriate compound chosen among those disclosed, e.g. in paragraph [0025] of D1.

As a consequence, the claims and/or the description of D1 do not disclose an embodiment that would destroy the novelty of claim 1 of the impugned patent.

Therefore, only examples 14 and 16 of D1 destroy the novelty of claim 1 of the impugned patent and can, as a consequence, be disclaimed.

[5.5.4] In particular, examples 14 and 16 of D1 are limited to:

• a compound of particular silicones wherein only compound [1,3,5,7-tetrakis(2,1-ethandiyl-3,4-epoxycyclohexyl)-1,3,5,7-tetramethylcyclotetrasiloxane] corresponds to the definition of compound (1) of present claim 1;
• one single specific dental filler (quartz) as compound (3);
• one single specific photoinitiator, (4-methylphenyl)(4-isopropylphenyl) iodoniumtetrakis (pentafluorophenyl) borate, as compound (4) of claim 1;
• compositions mandatorily comprising campherquinone.

However, the disclaimer introduced by the [patent proprietor] is not limited to such compositions and also excises compositions comprising

• any silicone according to compound (1);
• any dental filler (3);
• any photoinitiator (4), in particular photoinitiators the cationic entity of which is an organometallic salt of formula (III), which are not disclosed in D1.

It also excises compositions that do not contain campherquinone from the subject-matter of claim 1.

[5.5.5] It is manifest that the scope of the disclaimer is much broader than the novelty-destructive disclosure of D1. Therefore, the requirement laid down in G 1/03 [headnote 2.2] and [3] is not complied with and the disclaimer if auxiliary request IV is not admissible.

As a consequence, auxiliary request IV is dismissed.

To download the whole decision (in French), click here.

The file wrapper can be found here.