EPO - Arkema France v/ Evonik Degussa GmbH & EMS-Patent AG
T0753/14 – 3.3.09
EPO - Board of Appeal
Arkema France v/ Evonik Degussa GmbH & EMS-Patent AG
The patentee, Arkema France, was represented by Véronique CREST, European patent attorney. The decision of the Board of Appeal is totally favorable to the patentee and maintains the patent as granted.
Two oppositions were directed against the European patent EP 2 098 365 of the company Arkema France.
The grounds of lack of novelty and lack of inventive step were raised against the claimed invention.
The invention relates to a multilayer structure comprising at least two layers:
- - a layer, referred to as the inner layer, intended to be in contact with a fluid, constituted of a composition predominantly comprising at least one polyamide and at least one organic stabilizer, and not comprising any copper, and
- - a layer, referred to as the outer layer, intended to be in contact with air, constituted of a composition predominantly comprising at least one polyamide and at least one copper-based stabilizer.
These structures are essentially used to make pipes for motor vehicles. These pipes can be used more particularly for transporting and storing fuels. Thus, the combination of these two specific layers aims to confer improved resistance to thermal aging and resistance to peroxide biofuels.
On the novelty
The novelty was challenged by one of the opponents on the basis of document, noted A1, which disclosed both an example considered as relevant by the opponent and also a description that included and described, according to the opponent, the claimed invention.
The cited example included several compounds identified by trade names. The opponent tried to prove the composition and the chemical nature of these marketed products. The decision does not reflect the harshness of the debates that took place during the oral proceedings on this evidence. The Board did not comment the probative value of these evidences cited by the opponent, as one of the claimed features was missing in the disclosure of the cited example.
As regards the description taken as a whole, the Board of Appeal found that the claimed invention was new, since it was necessary to make a multiple selection in the description of the cited document. The Board considers that the cited document, although conceptually incorporating multilayer structures according to claim 1, does not disclose them directly and unambiguously.
The second opponent cited document noted A10 as novelty destroying. This document is a patent application in the name of Arkema France, that is to say the owner of the patent under attack. The opponent specifically cited an example. Again, the examplified composition contains a compound under its trademark: "orgalloy®". This term has been used as a generic term, which covers a range of specific products.
The opponent requested a hearing of witnesses in order to specifically define the product used in this example. The patentee challenged this request, as no information could be added to a prior written disclosure.
In that decision, the Board recalls that according to settled case law, disclosure is novelty destroying, only if the technical teaching, it contains, can be reproduced. In other words, an object cannot be considered as having been made available to the public and therefore as included in the state of the art, only if the information provided to the person skilled in the art is sufficient to enable its, on the date relevant, to put into practice the technical teaching, which is the subject of the disclosure, also taking into account the general knowledge which he is supposed to possess in the matter at that date.
Thus, the Board of Appeal followed the position of the patentee that the chemical nature of the product has not been made available to the public and that this product is indeed to be considered a generic disclosure. The respondent’s hearing was therefore dismissed as it could have provided new information that had not been made available to the public by the document cited at the date of the patent.
The invention was therefore considered novel in the light of the two cited documents.
On the inventive step
As regards inventive step, the problem-solution approach was followed by the Board of Appeal. The invention resulted from a specific combination of stabilizers in the layers of the claimed structure. However, on the basis of the numerous comparative tests contained in the patent, the improvement effect obtained by the presence of specific stabilizers in the specific layers was shown. However, the additives were not presented as essential components in the cited documents. As a result, the claimed invention was very clearly inventive.