- Claim 1 is directed to a powder defined by chemical features (composition) and properties features such as a particle size distribution, a bulk density, and an angle of repose.
- “ The [opponent] also argued lack of novelty of granted claim 1 over the alleged public prior uses based on a sale of the product SOLEF®PVDF 1010/1001 by Solvay to SGL ACOTECH GmbH in 2003”
- “Furthermore, the angle of repose determined in the experimental report submitted by the appellant is a property dependent on the structure of the powder, but does not constitute per se a structural definition thereof. The Enlarged Board specified in point 3 of the reasons for the opinion G 1/92 (supra) that a commercially available product per se does not implicitly disclose anything beyond its composition or internal structure. Extrinsic characteristics, which are only revealed when the product is exposed to interaction with specifically chosen outside conditions, e.g., reactants or the like, in order to provide a particular effect or result or to discover potential results or capabilities, therefore point beyond the product per se as they are dependent on deliberate choices being made. This is the case for the angle of repose which therefore cannot be considered to have been known at the date of sale of the products whose public prior use is invoked by the appellant.”
- I'm not sure if I agree with this reasoning. If the powder of the public prior use inherently had the property, specifying that property in a product claim should not provide novelty in my view (with an exception of course for second medical use claims).
II. The European patent was granted on the basis of 15 claims, claim 1 reading as follows:
"1. Polyvinylidene fluoride resin powder for melt molding having such powder characteristics (a) to (c) that
(a) the resin powder exhibits, as determined by a dry sieving method in accordance with JIS K 0069, such particle size distribution characteristics that
i) an average particle diameter indicated by a 50% cumulative value (D50) in a particle size cumulative distribution is 80 to 250 µm,
ii) a proportion of resin powder having a particle diameter of at most 45 µm is at most 3.0% by weight,
iii) a proportion of resin powder having a particle diameter of at least 355 µm is at most 5.0% by weight, and
iv) a value [(D80 - D20)/D50] obtained by dividing a particle diameter breadth (D80 - D20) represented by a difference between a 80% cumulative value (D80) and a 20% cumulative value (D20) in the particle size cumulative distribution by the 50% cumulative value (D50) is at most 0.8,
(b) a bulk density is 0.40 to 0.70 g/cm3 as determined by a measuring method for Bulk Specific Gravity in accordance with JIS K 6721-3.3, and
(c) an angle of repose is at most 35° as determined by a measuring method described in the specification in which a bulk specific gravity measuring device prescribed in JIS K 6721 is used."
Novelty over the alleged public prior uses
9. The appellant also argued lack of novelty of granted claim 1 over the alleged public prior uses based on a sale of the product SOLEF®PVDF 1010/1001 by Solvay to SGL ACOTECH GmbH in 2003 and on a sale of the product SOLEF®PVDF 1015/1001 by Solvay to PCI Membrane Systems Ltd in October 1993. The respondent did not challenge the finding of the opposition division in points 4.3.3 and 4.4.2 of the reasons for the contested decision that these sales took place before the priority date of the patent at issue. The Board has no reason to take a different view. The respondent, however, argues concerning the sale of SOLEF®PVDF 1010/1001 in 2003 that it is highly questionable whether the long storage time of a sample of the product manufactured in 2002, the analysis of said sample only being made in 2012, had no influence on the properties measured, especially on the angle of repose. In respect of the sale of SOLEF®PVDF 1015/1001 in 1993 the respondent also argues that the experimental data provided with E9 and E10 concern products manufactured in 2002 and are not relevant to determine the nature of the product sold in 1993. Moreover, the respondent argues in view of the rationale of opinion G 1/92 of the Enlarged Board of Appeal (OJ EPO 1993, 277) that the products SOLEF®PVDF 1010/1001 and SOLEF®PVDF 1015/1001 could not have been made available to the public, since it had not been shown that those products could be reproduced without undue burden by the skilled person.
source http://justpatentlaw.blogspot.com/2020/04/t-166616-angle-of-repose.html
