EPO - Arkema France v/ Evonik Degussa GmbH
T0577/12 - 3.3.03
EPO - Board of Appeal
Arkema France v/ Evonik Degussa GmbH
The patentee Arkema France was represented by Véronique CREST, European patent attorney. The decision of the Board of Appeal is favorable to the patentee and maintains the patent as granted.
The opposition was directed against European patent EP 1 342 754 on the grounds of lack of novelty and inventive step. In the decision, the Opposition Division rejected the opposition, decision against which the opponent lodged an appeal.
The invention relates to the use of a composition comprising at least one specific polyamide, at least one plasticizer, at least one specific elastomer as a sealing layer in a flexible hose containing oil or gas, this flexible hose being used in the exploitation of oil or gas deposits under the sea (offshore).
The main objective of the invention relates to the use of specific compositions for offshore applications, the composition has a better resistance to aging under the effect of moisture transported products, aging causing a decrease in mechanical properties such as elongation at break and tensile strength.
In this procedure, the closest state of the art consists of a document which differs from the closest state of the art by the plasticizer content in the polyamide composition. Indeed, the patent claims a plasticizer content of 4 to 10% by weight, while the examples of the document considered the closest state of the art, disclose a plasticizer content of between 13 and 14%.
The technical problem to be solved defined in the patent is the provision of a new composition based on polyamide, which shows better resistance to aging. However, this improvement has not been demonstrated by comparative examples. As a result, the Board of Appeal formulates the technical problem as an alternative.
Thus, the patentee has succeeded in convincing the Board of Appeal that this alternative was not obvious in the light of the cited prior art. Thus, the documents cited in the procedure do not report specific technical effect related to plasticizer content or the documents suggest an increase in the plasticizer content of the material presented. Thus, none of the cited documents suggest decreasing the plasticizer content in the composition to improve resistance to aging by chemical degradation.
New arguments presented on the day of the oral proceedings
In view of this situation, the opponent, on the day of the oral proceedings, considered other documents as the closest state of the art.
Considering D1 as the closest state of the art, the Board of Appeal recalled the provisions of Article 13 (1) RPCR on the Board’s assessment of amendments made after the filing of the appeal brief. Document D1 was not clearly identified as the closest state of the art in the appeal brief.
In addition, the opponent had filed arguments based on document D1 two weeks before the date of the oral proceedings. However, the Board considered these arguments are late filed and considered that D1 is not relevant as the closest state of the art. As a result, this new line of argumentation is not allowed in the procedure according to the provisions of articles 13 (1) and 13 (3) of the RPCR.
Regarding D4, it was considered irrelevant as the closest state of the art. As a result, this new argument made on the day of the proceedings was not admitted into the proceedings under the provisions of Articles 13 (1) and 13 (3) of the RPCR.
The Board therefore came to the conclusion that the claimed invention was inventive.
Objection under Rule 106 EPC
The opponent finally raised an objection under Rule 106 EPC. The reasoning of this objection was that new elements had been presented on the day of the oral proceedings by the Board of Appeal, in particular on the lack of the sealing function in document D1. Moreover, the opponent considered that the Board did not allow him to modify his argument and to use D4, having been mentioned several times by the parties in the proceedings. This situation disadvantaged the opponent, who was facing an unpredictable situation.
Thus, the opponent is of the view that the fact that he was unable to take a position on all aspects of the issue of inventive step is a fundamental violation of Article 113 EPC.
The Board of Appeal responds to this objection under Rule 106 in detail and concludes that no fundamental violation of Article 113 EPC occurred, especially concerning the function of the sealing layer of document D10. The Board of Appeal also considers that the arguments of each of the parties were heard and that the difference in plasticizer content was essential in the reasoning of inventive step.
Finally, the argumentation on document D4 occurs only on the day of the oral proceedings. As a result, this argument being late, its admission is subject to Articles 13 (1) and 13 (3) of the RPCR. Thus, the parties were heard on the relevance of the choice of document D4 as the closest state of the art and its lateness. As a result, the objection under Rule 106 EPC was rejected.
Following this decision, the opponent did not file a petition for review of this decision. This decision is therefore final.