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`Patentamt
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`
`European Patent Office
`Postbus 5818
`2280 HV Rijswijk
`NETHERLANDS
`Tel: +31 70 340 2040
`Fax: +31 70 340 3016
`
`
`Application No‘:
`
`05 744 1610
`
`Patent No.:
`
`EP-B-1 716 216
`
`Direct Decision:
`
`[3 yes K no
`
`Revocation of the European Patent (Art. 101 (2) and 101(3)(b) EPC)
`
`The Opposition Division - at the oral proceedings dated 27.03.2012 - has decided:
`
`European Patent No. EP-B- 1 716 216 is revoked.
`
`The Grounds for the decision (Form 2916) are enclosed.
`
`o4i..oA..‘lo\L
`Date
`
` 1st Examiner
`
`: e Poel, Wim
`
`
`
`Puetz, Christine
`
`2n
`Ma
`
`xaminer
`ez Marcos, V
`
`Legally qualified member
`
`EPO Form 2339 (Sheet 1) 12.07TFll
`
`Page 1 of 37
`
`Arkema Exhibit 1069
`
`Arkema Exhibit 1069
`
`Page 1 of 37
`
`

`
`Europfiisches
`
` Patentamt
`
`Eumpean
`Patent Office
`
`Office euwpéen
`des brevets
`
`European Patent Office
`Postbus 58.18 H
`2280 HV Rijswuk
`NETHERLANDS
`
`Tel: +31 70 340 2040
`Fax: +31 70 340 3016
`
`Formalities Officer
`Name: De Bock, Marjory
`orcaH
`
`+31 (0)70 340 45 00
`
`V
`
`L
`
`Hucker, Charlotte Jane
`Kilburn & Strode LLP
`20 Red Lion Street
`London
`WC1 R 4PJ
`ROYAUME—UN|
`
`7
`
`J
`
`Application No. /Patent No.
`05 744161.0 -1221 /1 716 216/
`
`Proprietor
`
`Honeywell International Inc.
`
`Ref.
`PM35824/CH
`
`Date
`13.04.2012
`
`Decision revoking the European Patent (Art. 101(2) and 101(3)(b) EPC)
`
`The Opposition Division — at the oral proceedings dated 27.03.2012 — has decided:
`
`European Patent No. EP-B- 1 716 216 is revoked.
`
`The reasons for the decision are enclosed.
`
`Possibility of appeal
`This decision is open to appeal. Attention is drawn to the attached text of Articles 106 to 108 and Rules 97 to
`98 EPC.
`
`Opposition Division:
`
`Registered letter with advice of delivery
`EPO Form 2331 12.07TR|
`
`Page 2 of 37
`
`Page 2 of 37
`
`

`
`Date 13.04.2012
`
`Sheet 2
`
`Application No.: 05 744 161.0
`
`Chairman:
`2nd Examiner:
`1st Examiner:
`
`Van der Poel, Wim
`Martinez Marcos, V
`Puetz, Christine
`
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`3 em 1‘
`
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`
`De Bock, Marjory
`Formalities Officer
`
`Tel. No.: +31 70 340-3892
`
`Branch at The Hague
`
`Enc|osure(s):
`
`16 page(s) reasons for the decision (Form 2916)
`Wording of Articles 106 — 108 and Rules 97-98 EPC (Form 2019)
`Minutes of oral proceedings
`Annex I: consolidated list of documents D1-D130
`
`Annex II: 7th auxiliary request (filed during the oral proceedings)
`
`to EPO postal service: 10.04.12
`
`Registered letter with advice of delivery
`EPO Form 2331 12.07TR|
`
`Page 3 of 37
`
`Page 3 of 37
`
`

`
`Datum
`
`Date
`Date
`
`13.04.2012
`
`Blatt
`
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`
`App|icationNo: O5 744 161.0
`Demande n°:
`
`SUMMARY OF FACTS AND SUBMISSIONS
`
`I. European patent No 1 716 216 is based upon European patent application No 05
`
`744 161.0, filed on 29-04-2005 and claiming priority of US 837525 filed on
`29-04-2004
`
`The mention of the grant of the patent has been published in European Patent Bulletin
`
`2009/47 of 18-11-2009 and as corrigendum issued in European Patent Bulletin
`
`2010/10 of 10-03-2010. Proprietor of the patent is Honeywell International Inc.
`
`101 Columbia Road, P.O. Box 2245, Morristown, NJ 07962-2245 US .
`
`II. On 27.01.2010 notice of opposition was received from Arkema France
`
`(O1).Further submissions were made on 26.2.2010 and on 18.8.2010. The patent was
`
`opposed in its entirety on the grounds of insufficiency, added subject matter, lack of
`
`novelty and lack of inventive step pursuant to Articles 100(a), (b) and (c) read in
`
`conjunction with Articles 83, 123(2), 54(1) and (2), and 56 EPC. Furthermore the
`
`validity of the priority was questioned.
`
`On 22.06.2010 notice of opposition was also received from Daikin Industries, Ltd.
`
`(02). The patent was opposed in its entirety on the grounds of insufficiency, lack of
`
`novelty and lack of inventive step pursuant to Articles 100(a), (b) and (c) read in
`
`conjunction with Articles 83, 54(1) and (2), and 56 EPC.
`
`On 5.08.2010 notice of opposition was received from Asahi Glass Company Limited
`
`(03) The patent was opposed in its entirety on the grounds of added subject matter,
`
`lack of novelty and lack of inventive step pursuant to Articles 100(a) and (c) read in
`
`conjunction with Articles 123(2), 54(1) and (2), and 56 EPC. Furthermore the validity
`
`of the priority was questioned.
`
`On 7.08.2010 notice of opposition was received from Daimler AG (04). The patent
`
`was opposed in its entirety on the grounds of insufficiency, lack of novelty and lack of
`
`inventive step pursuant to Articles 100(a) and (b) read in conjunction with Articles 83,
`
`54(1) and (2), and 56 EPC.
`
`On 10.08.2010 notice of opposition was received from ACEA European Automobile
`
`Manufacturers Association (05). The patent was opposed in its entirety on the
`
`grounds of insufficiency, added subject matter, lack of novelty and lack of inventive
`
`step pursuant to Articles 100(a), (b) and (c) read in conjunction with Articles 83, 123
`
`(2), 54(1) and (2), and 56 EPC. Furthermore the validity of the priority was questioned.
`
`EPO Form 2916 O1.91TR|
`
`Page 4 of 37
`
`Page 4 of 37
`
`

`
`Datum
`
`Date
`Date
`
`13.04.2012
`
`Blatt
`
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`
`App|icationNo: O5 744 161.0
`Demande n°:
`
`On 11.08.2010 notice of opposition was received from Wallinger, Michael (06). The
`
`patent was opposed in its entirety on the grounds of insufficiency, added subject
`
`matter, lack of novelty and lack of inventive step pursuant to Articles 100(a), (b) and
`
`(c) read in conjunction with Articles 83, 123(2), 54(1) and (2), and 56 EPC.
`
`Furthermore the validity of the priority was questioned.
`
`On 10.08.2010 notice of opposition was received from Bayerische Motoren Werke
`
`Aktiengesellschaft (07). The patent was opposed in its entirety on the grounds of
`
`added subject matter, lack of novelty and lack of inventive step pursuant to Articles
`
`100(a) and (c) read in conjunction with Articles 123(2), 54(1) and (2), and 56 EPC.
`
`Furthermore the validity of the priority was questioned.
`
`On 16.08.2010 notice of opposition was received from Mexichem Amanco Holdings
`
`S.A. de C.V. (08). The patent was opposed in its entirety on the grounds of
`
`insufficiency, added subject matter, lack of novelty and lack of inventive step pursuant
`
`to Articles 100(a), (b) and (c) read in conjunction with Articles 83, 123(2), 54(1) and
`
`(2), and 56 EPC. Furthermore the validity of the priority was questioned.
`
`On 16.08.2010 notice of opposition was received from Solvay Fluor GmbH (O9).The
`
`patent was opposed in its entirety on the grounds of insufficiency, added subject
`
`matter, lack of novelty and lack of inventive step pursuant to Articles 100(a), (b) and
`
`(c) read in conjunction with Articles 83, 123(2), 54(1) and (2), and 56 EPC.
`
`Furthermore the validity of the priority was questioned.
`
`01-09 requested revocation of the patent and if such a request could not be met oral
`
`proceedings pursuant to article 116 EPC.
`
`Ill. The following evidence has been submitted within the opposition period:
`
`On 27.1.2010 O1 filed documents D1,D1a,D2-D12, on 26.2.2010 documents D13 and
`D14 and on 18.8.2010 documents D15 and D16.
`
`On 22.6.2010 02 filed documents D1,D1a,D11,D17-D20,D20a,D21-D30.
`
`On 5.8.2010 03 filed documents D1,D1a,D11,D31,D31a,D32,D32a.
`
`On 7.8.2010 04 filed documents D1,D1a,D11,D17,D18,D33.
`
`On 10.8.2010 05 filed documents D1,D1a,D3,D9-D12,D17,D22,D34-D44.
`
`On 11.8.2010 O6 filed documents D1,D1a,D3,D9-D12,D17,D22,D34-D44.
`
`On 10.8.2010 07 filed documents D1,D1a,D5,D10,D45-D49.
`
`On 16.8.2010 O8 filed documents D1,D1a,D3,D9,D10,D13,D15,D34,D50-D55,D55a,
`D56
`
`On 16.8.2010 09 filed documents D1,D1a,D5,D7,D9,D10,D26,D34,D35,D43
`
`EPO Form 2916 O1.91TR|
`
`Page 5 of 37
`
`Page 5 of 37
`
`

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`Datum
`
`Date
`Date
`
`13.04.2012
`
`Blatt
`
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr:
`
`App|icationNo: O5 744 161.0
`Demande n°:
`
`IV. On 30.7.2010 (received on 2.8.2010) the Proprietor (P) filed a request for the
`correction of the inventor.
`
`V. On 20.12.2010 (received on 20.12.2010) P responded to the opposition of 01 by
`
`filing arguments and documents D13,D57-D64,D64a,D65-D70,D71,D71a,D72-
`
`D78,D78a, D79-D83. P pointed out that an infringement case between P and O1 is
`
`pending at the Dusseldorf Regional court. P requested rejection of the opposition of
`
`O1 and to maintain the patent as granted but if such a request could not be met oral
`
`proceedings pursuant to article 116 EPC.
`
`VI. On 3.3.2011 (received 3.3.2011) 08 requested acceleration of the opposition
`
`procedure.
`
`VII. On 7.4.2011 (received 7.4.2011) P requested a two months extension to the
`
`term for response to the 9 Notices of opposition and that the request for acceleration
`
`of the opposition proceedings made by 08 should be refused.
`
`Vlll. On 19.4.2011 (received 19.4.2011) 08 again requested acceleration of the
`
`opposition procedure.
`
`IX. On 19.5.2011 (received 19.5.2011) P requested that the request for acceleration
`
`of the opposition proceedings made by 08 should be refused. P pointed out that the
`
`decision of Dusseldorf Regional Court was rendered on 19.4.2011 and that P, as
`
`losing party, has waived his right to appeal the judgement of the Court. The Decision
`
`of the Dusseldorf Regional Court and the waiver were filed.
`
`X. On 16.6.2011 (received 16.6.2011) P requested a two months extension to the
`
`term for response to the 9 Notices of opposition and that the request for acceleration
`
`of the opposition proceedings made by 08 should be refused.
`
`XI. On 3.8.2011 (received 3.8.2011) P responded to the opposition of 01-09 by
`
`filing arguments and documents D84-D97,D98,D98a,D99,D99a as well as a set of
`
`claims 1-9 as auxiliary request . P requested rejection of the oppositions of 01-09 and
`
`to maintain the patent as granted but if such a request could not be met oral
`
`EPO Form 2916 O1.91TR|
`
`Page 6 of 37
`
`Page 6 of 37
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`

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`Datum
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`Date
`Date
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`13.04.2012
`
`Blatt
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`Sheet
`Feuille
`
`4
`
`Anmelde-Nr:
`
`App|icationNo: O5 744 161.0
`Demande n°:
`
`proceedings pursuant to article 116 EPC. As auxiliary request maintenance of the
`
`patent based on the set of claims 1-9 of the auxiliary request as filed was requested.
`
`Furthermore the request for acceleration of the opposition proceedings made by 08
`should be refused. As annex a consolidated list of the documents D1-D99a in the
`
`proceedings was provided.
`
`XII. On 4.8.2011 (received 4.8.2011) O5 requested acceleration of the opposition
`
`procedure.
`
`Xlll. On 7.10.2011 a brief communication was issued by the opposition division to
`
`inform all parties that the requests for acceleration of the opposition proceedings were
`
`not accepted, but the next procedural step, however, could be expected in due
`course.
`
`XIV. With the communication of 4.11.2011 the parties were summoned to attend
`
`oral proceedings on 27.3.2012-29.3.2012. The communication attached to the
`
`summons comprised a preliminary opinion on Articles 100(c),100(b) and 100(a) EPC
`
`and the validity of the priority. The opposition division considered that claim 1
`
`contravened the requirements of Article 123(2) EPC. It was further indicated that the
`
`arguments put forward by the opponents to support insufficiency of disclosure were
`
`not convincing. In view of D5 and D34, respectively, the claims of the contested patent
`
`did not appear to be entitled to the priority. Documents D15 and D35 were regarded
`
`as anticipating the subject—matter of claims of the contested patent, whereas
`
`documents D1,D9-D12,D17 and D18 were not deemed to be relevant for the
`
`evaluation of novelty. Furthermore, D1, common knowledge/practise (Use of
`
`HFC-134a in automobile air conditioning systems) (supported by D24-27,D20) or D11
`
`were presented as candidates as closest prior art for the inventive step discussion.
`
`Finally, it was pointed out that the allowability under Article 123(2) EPC as well as
`
`novelty and inventive step of the auxiliary request will have to be discussed at the oral
`
`proceedings.
`
`XV. On 16.2.2012 (received on 16.2.2012) 07 responded to the summons by
`
`submitting further arguments against novelty and inventive step of the main request
`
`and the auxiliary request. Furthermore the validity of the priority was questioned.
`
`On 27.2.2012 (received on 27.2.2012) 09 responded to the summons by submitting
`
`arguments in view of the main request and the auxiliary request. Further arguments
`
`were provided on the grounds of insufficiency, added subject matter, lack of novelty
`
`EPO Form 2916 O1.91TR|
`
`Page 7 of 37
`
`Page 7 of 37
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`

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`Datum
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`Date
`Date
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`13.04.2012
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`Blatt
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`Sheet
`Feuille
`
`5
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`Anmelde-Nr:
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`App|icationNo: O5 744 161.0
`Demande n°:
`
`and lack of inventive step pursuant to Articles 100(a), (b) and (c) read in conjunction
`
`with Articles 83, 123(2), 54(1) and (2), and 56 EPC. Furthermore the validity of the
`
`priority was questioned.
`
`On 27.2.2012 (received on 27.2.2012) 02 responded to the summons by submitting
`
`arguments in view of the main request and the auxiliary request. Further arguments
`
`were provided on the grounds of insufficiency, added subject matter, lack of novelty
`
`and lack of inventive step pursuant to Articles 100(a), (b) and (c) read in conjunction
`
`with Articles 83, 123(2), 54(1) and (2), and 56 EPC. Furthermore the validity of the
`
`priority was questioned.
`
`On 27.2.2012 (received on 27.2.2012) 05 and 06 responded to the summons by
`
`submitting arguments in view of the main request and the auxiliary request. Further
`
`arguments were provided on the grounds of insufficiency, added subject matter, lack
`
`of novelty and lack of inventive step pursuant to Articles 100(a), (b) and (c) read in
`
`conjunction with Articles 83, 123(2), 54(1) and (2), and 56 EPC. Furthermore the
`
`validity of the priority was questioned.
`
`On 27.2.2012 (received on 27.2.2012) 01 responded to the summons by submitting
`
`arguments . Further arguments were provided on the grounds of insufficiency, added
`
`subject matter, lack of novelty and lack of inventive step pursuant to Articles 100(a),
`
`(b) and (c) read in conjunction with Articles 83, 123(2), 54(1) and (2), and 56 EPC.
`
`Furthermore the validity of the priority was questioned and 01 requested the
`
`enlargement of the opposition division under Article 19(2) EPC by a legally qualified
`
`member in view of the assignment of the priority right and the admissibility of
`disclaimers.
`
`On 27.2.2012 (received on 27.2.2012) 08 responded to the summons by submitting
`
`arguments in view of the main request and the auxiliary request. Further arguments
`
`were provided on the grounds of insufficiency, added subject matter and lack of
`
`inventive step pursuant to Articles 100(a), (b) and (c) read in conjunction with Articles
`
`83, 123(2) and 56 EPC. Furthermore the validity of the priority was questioned.
`
`XVI. The following further evidence has been submitted by the opponents in
`
`response to the summons:
`
`On 27.2.2012 O1 filed documents D14,D105-D115
`
`On 27.2.2012 O2 filed document D116
`
`On 27.2.2012 05 and O6 filed documents D114,D117-D121
`
`On 27.2.2012 O8 filed documents D122-D125
`
`EPO Form 2916 O1.91TR|
`
`Page 8 of 37
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`Page 8 of 37
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`Datum
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`Date
`Date
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`13.04.2012
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`Blatt
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`Sheet
`Feuille
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`6
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`Anmelde-Nr:
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`App|icationNo: O5 744 161.0
`Demande n°:
`
`XVII. On 27.2.2012 (received on 27.2.2012) P responded to the summons by filing
`
`arguments and documents D70a,D78a,D100-D104 as well as auxiliary requests 1-16 .
`
`P requested rejection of the oppositions of 01-09 and to maintain the patent as
`
`granted but if such a request could not be met, maintenance in amended form.
`
`XVIII. On 13.3.2012 (received on 13.3.2012) O5 and 06 submitted arguments in
`
`view of the admissibility and patentability of auxiliary requests 1-16 and submitted
`documents D128-D130.
`
`XIX.
`
`On 14.3.2012 (received on 14.3.2012) 01 again requested the enlargement of
`
`the opposition division by a legally qualified member in view of the assignment of the
`
`priority right and the admissibility of eventual disclaimers. Furthermore arguments
`
`against the presence of an inventive step were raised and documents D126 and D127
`were submitted.
`
`XX.
`
`On 21.3.2012 (received on 21.3.2012) P provided as annex an updated
`
`consolidated list of all the documents D1-D130 in the proceedings.
`
`XXI. With fax of 26.3.2012 O4 informed the division that he would not attend the
`
`oral proceedings.
`
`XXII.
`
`On 27.3.2012 oral proceedings were held in the presence of P and 01-
`
`03,05,07-09. During the oral proceedings P filed a new auxiliary request 7 to replace
`
`the 7th auxiliary request filed on 27.2.2012. Furthermore auxiliary requests 8-11 were
`
`withdrawn and auxiliary request 12-16 became the auxiliary requests 8-12.
`
`XXIII.
`
`It was decided to revoke the patent under Article 101 (2) and 101(3)(b)EPC.
`
`XXIV.
`
`A copy of the claims of the 7th auxiliary request
`
`is annexed to this decision
`
`(Annex II).
`
`XXV.
`
`A consolidated list of all documents D1-D130 (filed by opponents and
`
`proprietor) is annexed to the decision as Annex I.
`
`REASONS FOR THE DECISION
`
`1
`
`Admissibility of the opposition
`
`The oppositions are admissible because they meet all the requirements of
`
`Articles 99(1) and 100 EPC and Rules 3(1) and 76(1)(2) EPC. It is noted that
`
`admissibility of the oppositions was not contested.
`
`EPO Form 2916 O1.91TR|
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`Page 9 of 37
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`Page 9 of 37
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`Date
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`13.04.2012
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`7
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`Anmelde-Nr:
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`App|icationNo: O5 744 161.0
`Demande n°:
`
`2
`
`Enlargement of opposition division by legally qualified member
`
`01 had requested on several occasions to enlarge the Opposition Division
`
`under Article 19(2) EPC. The legal department was contacted for detailed
`
`legal consultation on the issues of "transfer of the right to priority", "right to
`
`priority" and "a||owabi|ity of disclaimers". It was concluded that such a detailed
`
`consultation beforehand would allow the non-enlarged opposition division to
`
`deal with these issues. Furthermore the focus of the case is not on legal
`
`issues, but on technical issues. The opposition Division decided against an
`
`enlargement of the division by a legally qualified member (Article 19(2) EPC).
`
`3
`
`Admissibility of late filed requests 1-16
`
`Auxiliary requests 1-16 submitted by P and received on 27.2.2012 are
`
`admitted into the procedure by the opposition division because they are seen
`
`as bona fide attempts to overcome different objections raised in the
`
`communication attached to the summons to attend oral proceedings, even
`
`though they were presented at a late stage (Article 114(2) EPC, Rule 116(1)
`
`EPC). In view of the legal issue concerned because of the presence of
`
`disclaimers it is noted that a disclaimer is already present in claim 1 of
`
`auxiliary request 1 as filed on 3.8.2011. The opponents were therefore not
`
`confronted with this legal issue at a late stage of the procedure but were
`
`already aware of it at least 6 months prior to the date of the oral proceedings.
`
`4
`
`Admissibility of late filed documents D100-D130:
`
`The admissibility of these documents was not discussed. The parties were
`
`informed that should it be necessary the prima facie relevancy of specific
`
`documents would be evaluated, if and when they would be used by one of the
`
`parties. These documents were not referred to during the oral proceedings.
`
`5
`
`5.1
`
`ARTICLE 100C AND ARTICLE 123(2) EPC-ADDED SUBJECT-MATTER
`
`Main request:
`
`Claim 1 of the main request has the following wording:
`
`"Use as a refrigerant of a composition comprising tetrafluoropropene
`
`(HFO-1234) in an automobile air conditioning system."
`
`EPO Form 2916 O1.91TR|
`
`Page 10 of 37
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`Page 10 of 37
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`Date
`Date
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`13.04.2012
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`Blatt
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`Sheet
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`8
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`Anmelde-Nr:
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`App|icationNo: O5 744 161.0
`Demande n°:
`
`5.1.1
`
`The Opponents stated that the subject—matter of claim 1 of the contested
`
`patent is not directly and unambiguously disclosed in the application as
`
`originally filed. The only basis for an automobile air conditioning system in the
`
`description of the application would appear to be on page 12, line 9 where
`
`one would have to make a selection from a list in order to choose said specific
`
`use. Additionally one would have to choose the claimed composition from at
`
`least four different preferred embodiments (pages 6 and 7 of description).
`
`Furthermore it was pointed out that whereas HFO—1234 is mentioned in the
`
`general part of the description (pages 7 and 9), the part of the description
`
`relating specifically to heat transfer compositions (pages 10-12) makes
`
`reference only to compositions including compounds of formula (I), (II) or
`
`HFO-1234ze in an amount of at least 50 % by weight. To assume that
`
`HFO—1234 is an intermediate that is implicitly also disclosed for use in heat
`
`transfer would be unallowable. One could even get the impression that leaving
`
`out HFO—1234 in the part of the description dealing with heat transfer has
`
`been done on purpose, since parts of the description dealing with blowing
`
`agents (pages 12-14), propellant and aerosol composition (pages 14-16),
`
`cleaning methods (page 20) and sterilization methods (pages 22-24) refer
`
`specifically to HFO—1234. It was also pointed out that HFO—1234 can not be
`
`seen in a descending line from compounds of formula II, wherein Y=CF3
`
`(page 6, last 6 lines from the bottom) since document D46 shows that
`
`HFO-1234yc does not contain such CF3-group. Furthermore it was objected
`
`that claim 1 of the contested patent makes reference to a refrigerant and not
`
`to a heat transfer composition. It was also contested if the second paragraph
`
`on page 12 could actually serve as a basis for a use of a composition in an
`
`automobile air conditioning system, since said paragraph would clearly state
`
`that the compositions are "adaptable for use in connection with automotive air
`
`conditioning systems.."A skilled person would understand that in order to be
`
`suitable for the intended use the composition would have to be adapted to
`
`provide a composition which can be used in connection with an automobile air
`
`conditioning system. Furthermore it was pointed out that also a combination of
`
`claims and description would not be possible, since in view of a combination
`
`of claims 3 and 1 of the application as originally filed claim 1 of the contested
`
`patent would lack the reference to GWP of not greater than about 1000. Said
`
`deletion alone would already constitute added subject—matter. Furthermore
`
`there would be no pointer present to combine claim 3 with the disclosure on
`
`page 12, second paragraph. Additionally the deletion of a sentence on page 7,
`
`lines 18-23, an amendment made during examination to adapt the description
`
`to the claims, was seen as violating Article 123(2) EPC.
`
`EPO Form 2916 O1.91TR|
`
`Page 11 of 37
`
`Page 11 of 37
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`

`
`Datum
`
`Date
`Date
`
`13.04.2012
`
`Blatt
`
`Sheet
`Feuille
`
`9
`
`Anmelde-Nr:
`
`App|icationNo: O5 744 161.0
`Demande n°:
`
`5.1.2
`
`The Proprietor was of the opinion that the subject-matter of claim 1 of the
`
`contested patent was directly and unambiguously derivable from the
`
`description alone or from a combination of the description and the claims of
`
`the application as originally filed. The description should not be evaluated in
`
`isolation from the claims and there would be a clear teaching that HFO-1234
`
`as a class is a preferred embodiment. Already the general part of the
`
`application as originally filed would provide a basis for the refrigeration
`
`systems and also the teaching that compositions including compounds of
`
`formula (I), (II) or more specifically HFO-1234 as preferred classes. The
`
`reference to HFO-1234 made on page 9, lines 8-12 would not imply only a
`
`link to a particular use. So also the use in heat transfer compositions is
`
`included. On page 10, second paragraph under the heading heat transfer
`
`compositions it is mentioned what is generally preferred but the remainder of
`
`the application has to be taken into account. The amount of 50 % by weight is
`therefore not essential and also the GWP value is not an essential feature.
`
`The description in its own right would make available the subject-matter of
`
`claim 1 of the contested patent since no selection at all has to be made for
`
`HFO-1234 and with regard to page 12, second paragraph the only selection of
`
`a list has to be made as the use in an automobile air conditioning system is
`
`concerned. The contested expression on page 12, second paragraph
`
`"ada,Qz‘able for use in connection with " has to be interpreted as being a
`
`synonym for "workable in, suitable in, usable with". No changes would have to
`
`be made to the compositions, they are suitable for the intended use. The
`
`deletion of a sentence on page 7, lines 18-23, an amendment made during
`
`examination to adapt the description, was merely made to avoid an Article 84
`
`EPC objection.
`
`5_1_3
`
`The Opposition Division notes that as far as the tetrafluoropropenes
`
`(HFO-1234) in general are concerned they are mentioned twice on page 7
`
`and once on page 9, line 8 in the part "detailed description of preferred
`
`embodiments the compositions". In the part relating to heat transfer
`
`(Summary: page 5, lines 3-15 and "Heat transfer compositions": page 10, line
`
`6 - page 12, line 12) reference is made to compositions comprising either
`
`compounds of formula (I), formula (II) or HFO-1234ze in an amount of at least
`
`50 wt.-%. On page 10, line 14-20 compositions comprising trans-HFO-1234ze
`or a combination of cis-HFO-1234ze and trans- HFO1234ze are indicated as
`
`preferred heat transfer compositions. Although it is true that the HFO-1234 is
`
`presented in the general part of the description as a preferred embodiment, it
`
`is also true that HFO-1234 is not the only preferred embodiment presented
`
`and the skilled person would have to select the HFO-1234 from a list
`
`consisting of 4 preferred embodiments. In this respect the opposition division
`
`EPO Form 2916 O1.91TR|
`
`Page 12 of 37
`
`Page 12 of 37
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`

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`Datum
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`Date
`Date
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`13.04.2012
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`Blatt
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`Sheet
`Feuille
`
`10
`
`Anmelde-Nr:
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`App|icationNo: O5 744 161.0
`Demande n°:
`
`is of the opinion that D46 shows that HFO-1234 can not be seen in a
`
`descending line from compounds of formula II, wherein Y=CF3 (page 6, last 6
`
`lines from the bottom) since document D46 shows that HFO-1234yc does not
`
`contain such CF3-group. HFO-1234 is therefore not a narrower embodiment
`
`of compounds of formula II. Reference to HFO-1234 is also made in claims 3
`
`and 7 either depending directly or indirectly on the heat transfer composition
`
`of claim 1. Although one could consider that a combination of the claims could
`
`serve as a basis for a heat transfer composition comprising at least one
`
`HFO-1234 is presented, such a composition should also have a GWP of not
`
`greater than about 1000. Said GWP is not present in claim 1 of the contested
`
`patent.
`
`Reference to an automobile air conditioning system is only made twice in the
`
`patent application as originally filed (page 12, line 9 and claim 40 (dependent
`
`on claim 36)). The second paragraph on page 6 reads (emphasis added):
`
`"The present methods, systems and compositions are thus adaptable for use
`
`in connection with automotive air conditioning systems and devices,
`
`commercial refrigeration systems and devices, chillers, residential
`
`refrigerators and and freezers, general air conditioning systems, heat pumps,
`and the like
`
`In view of this paragraph the skilled person would have to select the specific
`
`use from a list. As far as the expression ''adaptable for use in connection with"
`
`is concerned the Opposition Division adopts the position of the opponents.
`
`One has to be differentiate between ''adaptable'' and "adapted". The use of
`
`"adaptab|e" implies that the composition indeed has to be adapted in order to
`be suitable for the intended use.
`
`Claim 40 of the patent application as originally filed
`
`"40. The method of claim 36 wherein said contacting step comprises
`
`circulating said composition in an automobile air conditioning system".
`
`is dependent on claim 36
`
`" 36. A method of transferring heat to or from a fluid or body comprising
`
`contacting the fluid or body with a composition comprising a fluoroalkene of
`Formula I:
`
`XCFzRs.z (/)
`
`where X is a C2 or a C3 unsaturated, substituted or unsubstituted, alkyl radical,
`
`each R is independently Cl, F, Br, I or H and 2 is 1 to 3, said composition
`
`having a Global Warming Potential (G WP) of not greater than 1000".
`
`EPO Form 2916 O1.91TR|
`
`Page 13 of 37
`
`Page 13 of 37
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`

`
`Datum
`
`Date
`Date
`
`13.04.2012
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`Blatt
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`Sheet
`Feuille
`
`11
`
`Anmelde-Nr:
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`App|icationNo: O5 744 161.0
`Demande n°:
`
`Also claims 38 and 39
`
`"38. The method according to claim 36 wherein said fluoroalkene of Formula I
`
`comprises HFO-1234yf.
`
`39. The method of claim 36 wherein said fluoroalkene of Formula I comprises
`HFO-1234ze
`
`are dependent on claim 36.
`
`There is no direct link between claims 38 or 39 with claim 40. There is also no
`
`link between claim 40 and HFO—1234 in general.
`
`In conclusion, the opposition division is of the opinion that neither the
`
`description nor the claims alone, nor a combination of description and claims
`
`directly and unambiguously discloses the subject—matter of claim 1 of the
`
`contested patent. The skilled person has to choose from 2 lists in order to
`
`arrive at the combination of HFO—1234 and an automobile air conditioning
`
`system. There are no pointers in the application as originally filed that would
`
`lead directly and unambiguously to the claimed combination. In view of the
`
`description it is even contested that a use in an automobile air conditioning
`
`system is disclosed at all because the composition needs to be adapted. In
`
`view of the claims the lack of reference to GWP of not greater than 1000 in
`
`itself already constitutes added subject—matter. Therefore, the Opposition
`
`Division is of the opinion that the subject—matter of claim 1 of the contested
`
`patent violates Article 123(2) because it relates to a novel combination not
`
`supported by the patent application as originally filed.
`
`5.2
`
`Auxiliary requests 1-5
`
`On request of P the auxiliary requests 1-5 were not discussed during the oral
`
`proceedings. These requests do not fulfil the requirements of Article 123(2)
`
`EPC for the same reasons as indicated above for the main request since
`
`these requests have a claim 1 directed to the same combination of HFO—1234
`
`and an automobile air conditioning system. The presence of the disclaimers in
`
`these auxiliary requests 1-5 does not change this issue.
`
`5_3
`
`Auxiliary request 6
`
`Claim 1 of the 6th auxiliary request has the following wording:
`
`"Use as a refrigerant of a composition comprising tetrafluoropropene
`
`(HFO—1234) in an automobile air conditioning system, wherein the
`
`composition has a Global Warming Potential (G WP) of not greater than 1000. "
`EPO Form 2916 O1.91TR|
`
`Page 14 of 37
`
`Page 14 of 37
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`

`
`Datum
`
`Date
`Date
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`13.04.2012
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`Blatt
`
`Sheet
`Feuille
`
`12
`
`Anmelde-Nr:
`
`App|icationNo: O5 744 161.0
`Demande n°:
`
`5.3.1
`
`The Opponents argued that the introduction of a specific GWP value would
`
`not solve the problems as indicated under point 5.1.1. In fact if there were no
`
`link between HFO-1234 and an automobile air conditioning system there
`
`would also be no link for the combination of a composition comprising
`
`HFO-1234 with specific GWP and an automobile air conditioning system in
`
`the application as originally filed, since the GWP value is dealt with in the
`
`general part of the description (page 8, last paragraph) without link to a heat
`
`transfer composition.
`
`5.3.2
`
`The Proprietor was of the opinion that a combination of claims 1 + 3 or claims
`
`1 + 2 + 7 in combination with the second paragraph on page 12 would directly
`
`and unambiguously disclose the subject—matter of claim 1 of the 6th auxiliary
`
`request. The GWP was discussed in the general part of the description, but it
`
`has to be seen as general teaching linked to every application, and therefore
`
`also to heat transfer compositions. The introduction of the specific GWP into
`
`claim 1 of the 6th auxiliary request was made in order to align it with claim 1
`
`of the application as originally filed. With respect to the expression ''adaptable
`
`for use in connection with" it was once more stated that the compositions are
`
`workable, no adaptation would therefore be necessary. There would be also
`
`no information in the claims (e.g. claim 40) that adaptation is necessary.
`
`5_3_3
`
`The Opposition Division is of the opinion that based on claims 1 and 3 of the
`
`application as originally filed there is a disclosure of a heat transfer
`
`composition comprising HFO-1234 in general having a GWP of not greater
`
`than about 1000. However, there is no direct link between claims 1+3 and
`
`claim 40 that could be a basis for a combination to arrive at the claimed
`
`subject—matter of claim 1 of the 6th auxiliary request. Furthermore, as far as
`
`the disclosure on page 12, second paragraph of the application as originally
`
`filed is concerned the expression ''adaptable for use in connection with" the
`
`Opposition Division is of the opinion that one has to differen