T 714/07 – Examples Are Presumed To Be Embodiments

The examples of [document] D1 as such do not indicate that the polyisobutene dispersants have functionalities of “greater than 1.3” as required in present claim 1. The examples are, however, considered to be preferred embodiments of the disclosure of a patent application. Therefore, the person skilled in the art will expect that they meet the requirements of the preferred embodiments set out in the description.

Paragraph [0091] of document D1 mentions that the minimum number of succinic groups for each equivalent weight of polyalkenyl substituent group is 1.3 while all the preferred ranges require it to exceed 1.3.

The person skilled in the art thus will conclude that example A-24 discloses that the dispersant of example A-26 has a functionality of 1.56 or less while exceeding 1.3, so that example A-26 anticipates the subject-matter of claim 1. [3.6]

Therefore, document D1 discloses all the features of present claim 1 in combination and deprives the subject-matter of this claim of novelty. [3.7] 

To read the whole decision, click here.

T 1160/07 – Skilled People Ask Experts

One way of “raising the bar” with regard to inventive step is to make the skilled person competent in more than one field of the prior art. There have been several decisions, especially in the biotech sector, where the skilled person was considered to be a skilled team. A similar way of achieving the same effect is to have the skilled person consult one or more experts. 

The present decision is an example of the latter approach. The Board provides a rather confused (and confusing) discussion of who the skilled person is, taking into account different stages of a manufacturing process.

[…] It has been disputed who in the present case is to be considered the person skilled in the art. [7.1]

It is common ground that in the development or design of plastic parts such as shaving razor handles according to the patent in suit or chisel handles according to D10, the product design aspect is important, determining the shape and the structure of the specific part.

In this respect the Board endorses the opinion of the [patent proprietor] insofar as that the product design is primarily the task of product designers, which are familiar with the characteristics of the specific part to be designed and that due to differences in these specific characteristics, e.g. based on the intended use of such a product, the product designer designing shaving razor handles and the product designer designing chisel handles need not necessarily be one and the same person.

It is further undisputed that considering the development of parts of the kind concerned on a time scale, the product designer is active from the very beginning of the development or design of such a product. In this respect the Board further considers the opinion of the [patent proprietor] to be correct that already during the design phase of a specific part attention will be paid to the method, at present the molding method, by which this product will eventually be manufactured.

However, the Board finds that towards the end of the product design phase the manufacturing of such a part, although a matter of concern already earlier on, comes more and more into focus and then remains the predominant issue. [7.2]

Claim 1 concerns solely the manufacture of shaving razor handles as the specific part concerned. This applies correspondingly with respect to D10 which discloses a method for manufacturing chisel handles.

Concerning the knowledge required with respect to the manufacturing aspect it can be left open to what extent the product designer is aware of the possibilities, advantages and constraints underlying the molding methods concerned, since in view of the Board, irrespective of his/her own knowledge, the product designer in the end will consult an expert in the technology of molding small plastic parts, a field of technology encompassing not only shaving razor handles according to claim 1, but also chisel handles according to D10 or, as discussed during the oral proceedings, toothbrushes according to D2/D6. [7.3]

The person skilled in the art for assessing inventive step of the presently claimed method thus can be considered as being a product designer specialized in the specific part to be manufactured who, if not forming a team with an expert in the technology of molding of small plastic parts, will at least consult such an expert.

In either case it is the knowledge of the expert in the technology of molding small parts which is determinative for the choice of the appropriate manufacturing method. [7.4]

To read the whole decision, click here.

T 1160/07 – Convergence, Moderately

In a recent post I have presented decision T 565/07 (and T 240/04) where auxiliary requests were refused because they were not converging. The present decision shows that not all the Boards apply so strict a standard.

[…] With letter dated 15 May 2009 the [patent proprietor] has (re)filed the auxiliary requests as indicated above.

The [opponent] objected to the admission of these requests mainly for the reason that the independent claims in subsequent requests were not progressively limiting the subject-matter in a convergent manner but instead defined subject-matters which went in different directions, resulting in a non-converging debate. [3.1]

Firstly, the Board notes that the requests numbered 1, 2, 2.1, 3 and 3.1 have already been filed in the opposition proceedings with letter dated 2 April 2007 and have been refiled in reply to the appeal with letter of 3 March 2008, thus are not new to the [opponent]. [3.2]

The Board assumes the [opponent’s] reference to the necessity of having a converging debate when auxiliary requests are filed relates to the present Board’s decision T 47/03 applying such a principle, as previously elaborated in T 1126/97.

The present case has the above-mentioned auxiliary requests 1, 2, 2.1, 3 and 3.1 relating principally to the further embodiments of the shaving razor handle.

Auxiliary request 4 relates to the further embodiment of the shaving razor handle with certain parts of the inner core being thinner than the outer portion, as well as of the first mold cavity having a gate.

Auxiliary requests 6 and 7 relate to the further embodiment of the shaving razor handle’s inner core having a through hole and injecting the outer portion via the through hole.

Auxiliary request 8 combines the embodiments of auxiliary requests 4 and 6. [3.3]

In view of the above, the [opponent] could have a point with respect to auxiliary requests 4, 6, 7 and 8. However, the present case differs from the above cited cases in that these requests were filed with letter of 15 May 2009, i.e. more than two months before the oral proceedings (OPs) (T 49/03 [sic] concerned requests filed just one month before the OPs; in T 1126/97 the requests were filed at the OPs). They further concern features which could easily be understood and dealt with without adjournment of the OPs (Article 13(3) RPBA). [3.4]

Therefore, if you intend to rely on auxiliary requests that do not converge, be sure to file them as early as possible, and well before the OPs.

To read the whole decision, click here. 

T 1160/07 – Wrongful Exercise Of Discretion

The Opposition Division (OD) has exercised its discretion to not admit the pieces of evidence D8 - D11 considering as criteria whether the late filing amounts to an abuse of procedure and whether these documents are of prima facie relevance. [2.4]

The Board agrees with the respondent that if the way in which the department of first instance has exercised its discretion is challenged in an appeal, it is not the function of the Board of Appeal to put itself in the place of that department and consider how it would have exercised its discretion itself. A Board should only overrule the way in which the discretion was exercised if it concludes that it was done according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. [2.5]

In exercising its discretion to not admit documents filed after expiry of the period for opposition an OD has to take into account the relevant facts and circumstances of the case. The question of abuse of proceedings has been addressed correctly by the OD. Others circumstances and facts which should be considered are e.g. whether the documents in question are relied upon in direct response to the communication annexed to the summons for oral proceedings and whether they are prima facie relevant. [2.6]

Concerning the first aspect mentioned above the impugned decision is, however, silent. In the minutes of the oral proceedings (OPs) before the OD it is indicated “regarding the matter of the late filing of documents D8 to D11, the opponent explained essentially that this was in reaction to the provisional opinion set out by the opposition division in its annex to the invitation to the OPs”. Since concerning this circumstantial aspect the impugned decision is totally silent and the minutes only repeat the argument of the [opponent], i.e. no conclusion on this issue is given by the OD, the Board can only conclude that this aspect was not considered in the end.

It is not appropriate to express on the one hand a preliminary opinion in the annex to the summons sent by virtue of R 71a EPC 1973, as required by the Guidelines for Examination (E-III, 6), setting a time limit for filing any submissions expiring 19 March 2007 and on the other and not to admit such submissions and their supporting evidence filed 14 March 2007, i.e. before the set date, without reflecting on the question whether they were a reaction to the OD’s opinion (see in this respect also T 281/00 [2.4]). [2.6.1]

Concerning the second aspect, namely the prima facie relevance, the Board notes that according to the impugned decision the chisel handle according to D10 has a circular symmetry around its central axis, resulting in the conclusion that D10 cannot be considered as an appropriate starting point with respect to a method relating to the production of a shaving razor handle. In this respect the Board is of the opinion that by relying on this aspect of the known chisel handle emphasis has been placed on a feature which, however, lacks any correspondence with the subject-matters of claims 1 of all requests then on file, which neither comprise a corresponding feature defining any cross-sectional shape of the shaving razor handle nor do they imply lack of symmetry of this handle.

Consequently the OD has examined the prima facie relevance of document D10 in a manifestly wrong manner, by considering facts which are irrelevant in this connection. [2.6.2]

Thus, for the reasons given above, the OD has exercised its discretion with respect to the non-admittance of document D10 without taking into account the right principles (point 2.6.1) as well as according to wrong principles (point 2.6.2). For the above reasons D10 is to be considered as forming part of the opposition - and thus appeal - proceedings. [2.7] 

To read the whole decision, click here.

T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings

I owe the knowledge of this decision to Laurent Teyssèdre, who has discussed it on his blog (in French).

After having been summoned to oral proceedings (OPs), the applicant filed a new main request and first and second auxiliary requests. In his letter, he requested consequently that a patent be granted on the basis of one of those requests. [III]

On 27 November 2007, the Examinig Division (ED) sent an e-mail to the applicant with the following content: “Dear Mr. White, the ED has discussed the three new requests filed with letter of Nov.5. (I.) These requests are not admitted into the proceedings, pursuant to R 86(3), because they introduce substantial obscurities (A 84). […] (IV.) If no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based.” [IV]

The applicant did not attend the OPs. At the OPs, the application was refused on the basis of the claims which had been objected to in an annex to the summons to OPs. [V]

[…] In deciding on the basis of the set of claims filed [before the summons to OPs], the ED decided on the basis of a set of claims which was no longer agreed by the applicant because new requests had been filed with letter of 5 November 2007. From this letter, it could be clearly and unambiguously derived that the new main and auxiliary requests were meant to replace the claims filed before. This follows from the fact that the applicant requested in his letter that a patent be granted on the basis of one of the newly filed requests. Hence, deciding on the basis of the old set of claims contravenes directly A 113(2), where it is stated that the EPO shall examine, and decide upon, the EP application only in the text submitted to it, or agreed, by the applicant. [2.1]

By an e-mail of 27 November 2007, the applicant was informed that the three newly filed requests were not admitted into the proceedings, because they introduced substantial obscurities. The applicant was not given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had to gather from the e-mail that it was no longer possible to convince the ED. This follows from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division to prepare a discussion in the forthcoming OPs but as a decision which could not be overturned. In the e-mail, it is clearly expressed that “if no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based”, i.e., that the requests filed on 5 November 2007 were no longer under consideration. This contravenes A 113 (1) where is laid down that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. [2]

As contravening A 113(1) and (2) constitutes a substantive procedural violation, the Board remits the case to the department of first instance for further prosecution (Article 11 RPBA). [3]

Moreover, it is questionable whether an e-mail can constitute a communication under A 96(2) EPC 1973 to file observations within a period to be fixed by the ED. However, as the case has to be remitted for the above mentioned reasons alone, this point has not to be decided in the present case. [4] 

I like the understatement: “It is questionable ...”

To read the whole decision, click here.

T 546/07 – You Have To See Things In Context

The opposed patent concerns ski bindings for alpine touring, comprising a ski boot support 10 having a front support part 20 on which a front jaw 50 is mounted, and a rear support part 40 on which a heel jaw 80 is mounted, both jaws being shaped to hold a ski boot. The front support part 20 is articulated so that it can pivot about a first axis 1 with respect to a base part 3 fixed to the ski. The rear support part 40 is articulated pivotal about a second pivot axis substantially parallel to the first pivot axis (and identical with the first pivot axis in the embodiment of Fig. 1):

Publication E4 was acknowledged to be the closest prior art. 

The opponent filed an appeal after the opposition had been rejected. It argued that document E4 disclosed embodiments covered by claim 1, taking into account the common general knowledge of the skilled person. In particular, the toe clamp (reference 29 in Fig. 1 of E4) could be considered to be the front jaw. The opponent pointed out that E4 disclosed (col. 3, lines 3-9) that the toe clamp could be positioned in the pivot axis of the support. Moreover, E4 explicitly disclosed (col. 2, lines 42-45) that any holding device allowing to shift the boot while holding it could be used, such as for example front jaws of known bindings for cross-country skiing. Therefore the skilled person would have envisaged to use the “Diamir” binding known from document B19. By replacing the toe clamp of E4 with the front jaw of this binding, a binding according to claim 1 was obtained.

[…] Claim 1 differs from E4 in that the rear support part (reference 12 in E4) is articulated pivotal about a second pivot axis substantially parallel to the first pivot axis (reference 8 in E4). [2.2]

The statements of the appellant concerning the disclosure of document E4 do not invalidate this finding. [2.3]

On the one hand, the toe clamp 29 cannot be considered to be a front support part within the meaning of Claim 1. As a matter of fact, the front support part is part of the ski boot support and has to support the boot. In this it differs from the toe clamp 29, which only has a holding function. It is designed to hinder the boot from detaching upwards and from displacing laterally, respectively. [2.3.1]

On the other hand, the document E4 does not teach, neither explicitly nor implicitly, that any holding device, and in particular the front jaw “Diamir” known from B19, can be used as front jaw.

The Board considers that the skilled person reading a document does not construe individual parts of the disclosure (einzelne Offenbarungsstellen) in isolation but rather in the context of the document as a whole (T 312/94 [2.1]; T 860/06 [1.1.3]).

In the present case, the binding for alpine touring disclosed in E4 aims at a solution to the problem of reducing the lifting effort (Hubarbeit) of the skier. See column 1, lines 37-41.

[“It is the object of the invention to improve a binding for alpine touring of the kind presented above such that the lifting effort when practising alpine touring is reduced even more. Moreover, in many applications the use of a return spring is to be avoided.”]

However, in column 1, lines 28-32 it is disclosed that when bindings for alpine touring having a front releasing boot sole support (vorderer auslösender Sohlenhalter) are used, it is not possible to reduce the lifting effort.

[“Bindings for alpine touring having a front releasing boot sole support necessitated an even greater distance between the boot toes and the pivot axis in order to reach a pivot angle of 90°. Here the lifting effort was still much greater.”]

When reading document E4 the skilled person would, therefore, learn that the goal could not be reached with such a binding for alpine touring. Therefore, he/she would not interpret the expression “holding device” (Haltevorrichtung) in column 2, lines 42-53 to encompass a releasing holding device such as the “Diamir” front jaw of B19, but only front jaws without security function. [2.3.2]

Therefore, E4 does not disclose all the features of claim 1 and is not novelty-destructive for the claimed subject-matter. [2.4]

To read the whole decision (in German), click here.

T 500/07 - What Makes A Transfer A Transfer

These days I come across quite a lot of decisions on transfers of opponent status. Here is one of them, where the Board had to get into Delaware state law.

The patent was opposed by the Engelhard Corporation. [II]

During the oral proceedings before the Opposition Division (OD), the opponent informed that it had been renamed in BASF Catalyst LLC. [V]

When assessing the question whether the Engelhard Corporation in whose name the opposition was filed and the BASF Catalysts LLC represented in the proceedings before the OD correspond to the same legal personality, the document entitled “Certificate of Conversion to Limited Liability Company of Engelhard Corporation to BASF Catalysts LLC” has to be considered.

Under point 6 it is stipulated: “When the Corporation has been converted to a Delaware limited liability company pursuant to Section 18-214 of the Delaware Limited Liability Company Act and to Section 266 of the General Corporation Law of the State of Delaware, the limited liability company will, for all purposes of the laws of the State of Delaware, be the same entity as the converting Corporation. For all purposes of the laws of the State of Delaware, the rights, privileges, powers and interest in property of the converting Corporation, as well as the debts, liabilities and duties of the Corporation, will not as a consequence of the conversion, be transferred to the Delaware limited liability company; the converting Corporation will not wind up its affairs or pay its liabilities and distribute its assets, the conversion will not constitute a dissolution of the Corporation, and the conversion will constitute a continuation of the existence of the converting Corporation in the form of a Delaware limited liability company.”

[There are no doubts on the authenticity of the document,] all the more as the provision of section 18-214 (f) of the Delaware Limited Liability Company Act reads: “When any conversion shall have become effective under this section, for all purposes of the laws of the State of Delaware, all of the rights, privileges and powers of the other entity that has converted, and all property, real, personal and mixed, and all debts due to such other entity, as well as all other things and causes of action belonging to such other entity, shall remain vested in the domestic limited liability company to which such other entity has converted and shall be the property of such domestic limited liability company, and the title to any real property vested by deed or otherwise in such other entity shall not revert or be in any way impaired by reason of this chapter; but all rights of creditors and all liens upon any property of such other entity shall be preserved unimpaired, and all debts, liabilities and duties of the other entity that has converted shall remain attached to the domestic limited liability company to which such other entity has converted, and may be enforced against it to the same extent as if said debts, liabilities and duties had originally been incurred or contracted by it in its capacity as a domestic limited liability company. The rights, privileges, powers and interests in property of the other entity, as well as the debts, liabilities and duties of the other entity, shall not be deemed, as a consequence of the conversion, to have been transferred to the domestic limited liability company to which such other entity has converted for any purpose of the laws of the State of Delaware.”

Therefore one has to act on the assumption that the transformation from the corporate structure ‘corporation’ to a ‘limited liability company’ preserves the legal identity precisely because there is no transfer of assets (Vermögenswerte) (“shall not be deemed … to have been transferred”) and all assets and liabilities (Aktiva und Passiva) remain unchanged with the company (“shall remain vested in the domestic limited liability company”). [2.1.1]

[…] R 20 EPC 1973 is not applicable as there has not been any transfer of rights; the company acting as opponent has always remained the same. It has only changed its name. Therefore, there could not have been any transfer of the opponent status. […]

G 2/04 deals with the transfer of the opponent status; it cannot contribute to the assessment of the present case precisely because the opponent status has not been transferred.

T 413/02 and T 478/99 are not relevant for the same reason.

In decision T 870/92 [2.1], the Board explains : “What is relevant for the admissibility of the opposition is that the real identity of the opponent is clear at the time of filing of the opposition. Considering the circumstances of the case, one cannot interpret the additional indication of the business division (Geschäftsbereich) to be an indication of the name of another company than the company of the opponent. The evidence submitted in the appeal proceedings show that even before the foundation of the Schiess Kopp Werkzeugmaschinen GmbH there was a Schiess Aktiengesellschaft (with a division “Schiess Kopp”) and that, therefore, the indication “Schiess Aktiengesellschaft, Bereich Schiess-Kopp” could only designate the Schiess Aktiengesellschaft. The latter was entitled to file an opposition against the contested patent (A 99(1), first sentence, EPC).”

This decision cannot support the view of the patentee as in the present case the identity of the opponent at the time of filing of the opposition is undisputed. [2.1.2] 

To read the whole decision (in German), click here.