T 1333/07 – You Can Disprove Effects Without Experiments

[5.1] During the oral proceedings (OPs) before the Board, the [patent proprietors], after having been informed that the main request was not considered allowable, pointed out that if the reason for the rejection of the main request was the lack of evidence for a technical effect, then it regarded this finding of the Board as amounting to a fundamental violation of A 113, because the superior technical effect of the claimed screw extruder had not been challenged by the opponent on the basis of any substantive data and the existence of such an effect was challenged for the first time by the Board during the OPs without acceding to the [patent proprietors’] request to remit the case to the Opposition Division (OD) to afford the [patent proprietors] an opportunity to provide such evidence.

[5.2] The [patent proprietors’] assertion that the technical effect had never been challenged by the [opponent] is not in agreement with the facts.

[5.2.1] This point, i.e. the absence of a technical effect due to the use of multiple thread starts, was raised by the [opponent] in the Statement of Grounds of Appeal.

[5.2.2] Moreover, the Board in its preliminary opinion dated 22 July 2009 observed that it was to be discussed during the OPs, inter alia, what was the problem to be solved and whether the problem was actually solved within the whole claimed area. 

[5.2.3] The [patent proprietors] even commented on this issue in its letter of 25 March 2008 […] Finally, this issue was discussed in detail during the OPs before the Board. 

[5.3] In view of these facts, the Board can only come to the conclusion that the [patent proprietors] had sufficient opportunity to defend themselves against the attack of the [opponent] based on the absence of a technical effect of the claimed subject-matter, which it duly did before and during the OPs.

[5.4] Insofar as the [patent proprietors] relies on the lack of experimental data in the argument of the [opponent], it is noted that, according to the Boards’ case law, alleged advantages which the patent proprietor asserts, without offering sufficient evidence to support the comparison with the closest prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step (see Case Law of the Boards of Appeal of the EPO, 5th edition, 2006, I.D.4.2). Additionally the evidence on file in fact challenges the assertions of the [patent proprietors]. As to the [patent proprietors’] argument that in opposition proceedings the burden is on the Opponent to disprove any effect accepted by the granting authority, this obligation has been met, as set out above. The Board notes in this respect that in order to meet this obligation it is sufficient to establish a reasonable case, which does not necessarily require experimental evidence. In the Board’s judgment, the [opponent] has met this obligation by casting considerable doubt on the unsupported allegations of the patent in suit.

[5.5] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) states that the Statement of Grounds and the reply shall contain a party’s complete case. Amendments to a party’s case are only possible under the conditions of Article 13(1) and (3) RPBA. The request to be allowed to present new evidence in further proceedings before the OD would be contrary to Article 13(3) RPBA. Consequently, the Board refused the [patent proprietors’] request for remittal of the case to the OD for further prosecution.

To read the whole decision, please click here.

T 1333/07 – Credible Cause ?

In a recent post we have seen a decision examining the credibility that a given problem had indeed been solved. Once it is established that the problem has been solved, it remains to be demonstrated or at least made credible that the claimed features are at the origin of the effect.

[4.2.5] The Board agrees with the Respondents that the extruders used in the examples of the patent in suit show improved efficiency when compared with those of D2.

There is however no evidence that this improvement is due to the distinguishing feature of the claim, namely the number of thread starts. On the contrary the comparison between experiments 10 and 11 discussed above undisputedly question that this is the case.

[4.2.6] In addition to the results in the patent, the Respondents relied during the oral proceedings on paragraph [0007] of the specification in order to establish that an increase of performance has been achieved. According to this paragraph it was possible to dramatically increase the performance of an extruder when used in the manufacture of ice cream by:

(a) operating with a pitch angle which is outside what has been used up until now in the manufacture of ice cream,

(b) operating with screws which have more than one thread start, whereas up until now screws with only one thread start have been disclosed, and

(c) operating with extruders which are much shorter than what has been used up until now.

[4.2.7] The Board notes: that feature (a) is not a distinguishing feature of the claimed extruder; that the results in the Table of the patent question the affirmation of the Respondents that feature (b) is responsible for the increased performance of the extruder; and that feature (c) is not a feature of the subject-matter of Claim 1 of the main request.

With respect to feature (b) the Board notes furthermore that, in the absence of supporting evidence, an improved performance of an extruder having a screw with more than one thread start over an extruder with a single threaded screw is not per se credible, because given the complexity of the parameters influencing the rheological properties in an extruder, this feature by itself can in all probability not be assumed to influence the cooling performance in the desired fashion independently of other parameters.

The Board thus concludes that an improvement of the efficiency of the extruder relating to the distinguishing feature of the invention is not derivable from the patent in suit.

Reformulation of the problem and its solution

[4.3.1] In view of the above, an improvement of the energy efficiency of the extruders according to Claim 1 cannot be acknowledged as the objective technical problem underlying the invention as claimed in the main request. As a consequence, the problem has to be reformulated in a less ambitious manner, not involving such improvement. 

[4.3.2] The objective problem can thus be reformulated as the provision of further screw extruders for the manufacture of ice cream. 

[4.3.3] It is not disputed that this less ambitious problem is solved by the claimed single screw extruders having between 2 and 6 thread starts according to Claim 1 as it is an alternative design when compared to that of D2.

Obviousness

[4.4.1] The question which remains to be decided is whether this solution involves an inventive step, that is to say, if in view of the reformulated problem the claimed subject-matter is obvious or not.

[4.4.2] In the absence of an improvement of the efficiency of the extruder, the use of a screw extruder with more than one thread start is regarded by the Board as obvious for the skilled person and therefore lacking inventive step.

[4.4.3] The reason for this conclusion is that it is undisputed that multiple thread starts are well known in the design of screw extruders (see, for instance, D40). Moreover extruders with multiple thread starts have already been used in the manufacture of ice creams, for instance in Example 1 of D7.

[4.4.4] As this finding was not disputed by the Respondents, who even admitted during the oral proceedings that if the improvement of the efficiency of the extruder was not accepted, there was no inventive step in the use of a screw with multiple thread starts, no further comments are needed.

[4.5] For the reasons set out above the subject-matter of Claim 1 of the main request lacks inventive step.

Normally this less-ambitious-problem situation precedes the revocation of the patent for lack of inventive step. In the present case, however, the third auxiliary request (claiming a screw extruder with a screw having between 2 and 6 thread starts and a screw length/screw diameter ratio of between 2 and 10) was found to involve an inventive step, not because it solved a more ambitious problem, but because use of such screws was not known or suggested in the prior art.

To read the whole decision, please click here.

T 392/07 – On Juxtaposition

In the present case the examining division rejected the application, since the claimed method of identifying an integrated circuit (IC) was a juxtaposition or aggregation of features known from the prior art and did therefore not involve an inventive step. The Board comes to the same conclusion.

[3.2] The method of claim 1 differs from the identifying method disclosed in D5 in that the IC is additionally marked with a machine readable optical identification code which corresponds with the electronic identification information.

[3.3] The applicant argued that it was the objective technical problem to create a technique which enabled traceable identification of the individual IC chips through the various manufacturing process steps […]. The board understands this statement of the problem as being directed to the identification of the ICs and not to the identification of the IC chips, as the latter are not a feature of claim 1 and, in particular, since an identification mark on the IC can hardly be seen once the IC is encapsulated in its housing.

[3.4] Document D8 discloses a dense bar code, particularly useful in the identification of semiconductor wafers and/or chips in very large scale IC manufacturing processes where space on chips and wafers is at a premium.

[3.5] Documents D5 and D8 hence disclose tools for identifying ICs either electronically, as in D5, or optically, as in D8. They are concerned with the tools themselves, i.e. how the coding of the information is done in each case. When to use these tools, whether or not to use more than one tool and how to combine these tools when more than one is used, these questions are left open in these documents to the discretion of the skilled person facing a specific situation.

[3.6] The board considers that a skilled person, having the task of providing a further identification on the IC, would use the optical identifier disclosed in D8, as it is an identification method specifically designed for identifying ICs. Both identifiers, the electronic and the optical, correspond forcefully with each other, as they identify the same object. They are two pointers pointing to the same spot. Thus the functional interrelationship between both markers adduced by the appellant applicant is nothing more than the consequence of both markers identifying the same circuit. The board is unable to imagine how two identifying markers of the same object could not correspond to each other.

The problem allegedly underlying the present invention, namely traceable identification of the individual IC’s through the various manufacturing process steps, is independently solved by the electronic and the optical identifiers. They differ in that for reading the former electric contact with the IC is required, while for the latter it is not. A more appropriate formulation of the problem would be therefore allowing contactless traceable identification of the individual IC’s. To this problem an optical identification code is a straightforward solution.

[3.7] The applicant argued that the use of both identification marks provided a greater security than the prior art approaches and had thus a synergistic effect. Apart from the fact that the application does not disclose any security concerns, the board is unable to recognize how the security would be improved by providing two points of attack. In order to interpret a code the coding has to be known. This applies to the electronic and optical identifiers of the prior art as much as to the double system of the application. The board cannot recognize any added security in the claimed identification scheme, since the information encoded in each identifier is revealed when it is decoded. As in the prior art, each identifier encodes the information independently from the other, since one identifier has not to be decoded for accessing the other identifier. The [applicant’s] argument that by decoding only one of the identifiers only a part of the encoded information is revealed is true, but nothing else could have been expected, since by breaking a code only the part of a message encoded with that code is revealed.

[3.8] The appellant applicant further argued that the provision of the optical marking allowed identifying the IC even when the electronic information could no longer be accessed due to failure of the circuit. This, however, only underlines the independence of both identifiers and refutes the presence of a synergistic effect.

[3.9] In the board’s view, the identifying method of claim 1 is an aggregation of features which are in themselves known from documents D5 and D8. Although most inventions are formed by features which are in themselves known from the prior art, for a finding of non-obviousness these features would have to interact with each other to provide something that is more than the sum of the parts. Absent synergy the whole is not more than the sum of its parts, i.e. an aggregation of features, as correctly objected by the examining division. 

[3.10] The board judges, for the above reasons, that the method of claim 1 of the main request does not involve an inventive step.

This decision is interesting because it involves a concept that is not so often present in EPO decisions: the concept of juxtaposition, i.e. the aggregation of features the effect of which does not go beyond the sum of the effects of the individual features (in other words, there is no synergy between the features). This notion was very common in French case law prior to the alignment of French law with the Munich convention. Maybe this is the reason why it has some “vintage” flavour to me.

The notion of juxtaposition is not without danger, because it is of course possible to have a patentable juxtaposition of known elements, in particular if at least one of the known elements was disclosed in an A 54(3) document only (which is not the case here).

Therefore, I would say that the reasoning of the Examining Division and the Board using the short cut “juxtaposition” (thereby following the Guidelines C-IV 11.7) is incomplete. Methinks that it would have been preferable to use the traditional problem-solution approach, starting from either D5 or D8 and showing that the combination of features was obvious. The fact that the claimed device appears to be a juxtaposition of features disclosed in D5 and D8 is indeed a strong indication that the combination was obvious, but it is not as such formal proof for lack of inventive step.

To read the whole decision, click here.

R 9/09 - For Pros Only

The present petition for review was filed by the patent proprietor after its appeal against the revocation of the patent by the Opposition Division had been dismissed by the Board of appeal. During the appeal proceedings, the patent proprietor was represented by a professional representative, accompanied by Dr Illescas, its Spanish legal practitioner, who later on represented the patent proprietor before the Enlarged Board (EBA).

[1.4] Pursuant to R 106, a petition under A 112a(2)(a) to (d) is only admissible where an objection in respect of the alleged procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such an objection could not be raised during the appeal proceedings.

The present petition refers to three procedural violations :

• refusal of the request for postponement of the oral proceedings (OPs),
• admission of Dl0 as a late filed document into the proceedings,
• refusal of the request to postpone the OPs for carrying out comparative experiments with respect to D10.

It may appear that the first and third alleged violation are based on the same facts as for both violations the refusal of the postponement of the OPs is at issue. Nevertheless the EBA considers both as independent with respect to the fact that the petitioner repeated during the OPs its request for postponement in order to conduct the said tests. Accordingly, all three allegations have to be examined by the EBA in its composition according to R 109(2) (a) with respect to whether the petition is clearly inadmissible or not in view of R 106.

[1.5] The first alleged violation under A 112a refers to the petitioner’s request for postponement of the scheduled OPs with respect to its new representative appointed on 15 September 2008. It argued that this new representative needed a longer period than only one month to get familiar with the complex technical impact of the case and to discuss the case with its client in a meeting in Madrid. Refusing this request with a communication dated 24 September 2009, the Board would have violated the respondent’s right to be heard under A 113.

However, the Technical Board refused this request because serious substantive reasons for postponement of OPS pursuant to items 2.2 and 2.3 of the Notice of the Vice-President DG3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO were not given. This lack of substantive reasons results from the fact that all the arguments provided by the appellant are the consequence of the appellant’s own decision to change its representative. And indeed the representative of the petitioner did not raise objections pursuant to R 106 against the Board’s decision not to postpone the OPs. Accordingly, as far as the petition is based on this first objection, it is clearly inadmissible (R 109(2) (a) in combination with R 106 and R 108(1))

[1.6] The second alleged violation concerns the admission of D10 although it was late filed. Also in respect of this second objection the EBA has no indication that the requirements of R 106 are fulfilled. The petitioner submitted only the request to refuse Dl0 as late filed before and during the OPs. But there is no hint neither in its petition nor in the minutes nor in the contested decision that it raised during the OPs an objection under R 106 with respect to a procedural defect in the sense of A 112a(2) (c) and (d) after the Board had taken its decision to admit Dl0 into the proceedings.

The EBA has no doubts that during the OPs the petitioner made clear that it does not share the Technical Board’s view on the admission of this document. However this is not an objection in the sense of R 106. This rule requires a separate objection directed to the procedural defect. This is mandatory in order to give the Technical Board an opportunity to revise the alleged procedural defect and to reserve the petitioner’s right according to A 112a. Consequently, also as far as the petition is based on this second objection the petition is clearly inadmissible.

[1.7] The third objection relates to the refusal of the appellant’s request to postpone the scheduled OPs for carrying out comparative tests with respect to D10. The petitioner submitted that the Board hindered it from showing that the requested comparative tests would have been necessary for proving an inventive step in the light of the prior art. But also in respect of the third objection the petition is clearly inadmissible as the petitioner failed to fulfil the requirements of R 106 for the following reasons :

[1.7.1] According to the clear wording of R 106 a petition is only admissible if the objection concerning an alleged procedural defect was raised during the appeal proceedings and dismissed by the Board, except where such an objection could not be raised during the appeal proceedings. However, in the present case the petitioner did not submit in the grounds of its petition that it could not raise an objection pursuant to R 106 before the Board closed the debate in order to deliberate the issue of inventive step. Just at that point in time it should have pointed to an alleged procedural defect when the Board intended to discuss inventive step without having regard to the aspect of the requested comparative tests. An example that such an intervention was not impossible was given by the respondent who requested to take account in the protocol of the OPs that it has not been heard with regard to the question of admissibility of auxiliary requests 1 - 3 concerning amendments made therein.

[1.7.2] The petitioner claims that its representative accomplished the procedural requirement of R 106 by stating the following: The Board asked the appellant’s representative what the purpose of the comparative experiments should be. Dr Illescas then took the floor and began to explain what the purpose would be, but was interrupted by the Chairman of the Board, who stated that the discussion relating to inventive step of the proposed auxiliary request had already been decided by the Board and that, therefore, the appellant was not allowed to argue back on this particular item […] However, apart from the fact that this can hardly be qualified as an objection pursuant to R 106, according to the minutes of the OPs Dr Illescas was not the representative of the petitioner but an accompanying person. In this capacity, he could not validly make procedural declarations, such as one pursuant to R 106. […]

[2] It follows from the foregoing that in the present case the requirements of R 106 have not been met. Therefore, the petition for review has to be rejected as clearly inadmissible.

This decision makes it very clear how important it is to make an explicit objection referring to R 106 during OPs if a petition for review is to be envisaged. This requires some quick-wittedness on behalf of the representative. One may also note that the objection has to be made by the representative (or the party itself) – an objection made by an accompanying person, even if the latter is legally qualified and could represent the party, will not be accepted by the EBA.

Should you wish to download the whole decision, just click here.

T 1886/06 – Dealing With Undefined Claim Features

In a recent post I have alluded to the present decision. Here it is at last. 

Although the Board decided to dismiss the appeal against the revocation of the opposed patent, as it had found the claims to lack inventive step, it chose to comment on the objection of insufficiency of disclosure. The opponent had based its argumentation on the claim feature “non-dusting” (nichtstaubend).

What is claimed is a non-dusting, homogeneous pigment preparation comprising at least four ingredients, wherein the ingredients are present in certain ranges of amounts (Mengenbereiche). According to paragraph 42 of the opposed patent, the pigment preparation is produced by mixing and homogenising of the ingredients in a mixer. Moreover, the claims cover dry preparations obtained from these pigment preparations by concrete shaping steps and which, as the case may be, are stripped from the solvent.

If the properties “non-dusting” and “homogeneous” are indeed functional features – as pointed out by the [opponent] – i.e. the result if a composition of the four components in certain ranges of amounts, it is not surprising if not all the compositions do lead to these properties, even if it comprises the four components in amounts that fall into the indicated weight ranges. As a matter of fact, claim 1 (of all requests) does not require that all possible compositions which contain the four components in the indicated ranges of amounts result in non-dusting, homogeneous pigment preparations.

The example given by the [opponent] comprising 99 % by weight of dry pigment and the compositions chosen for its comparative trials having a low solvent and polyacrylate contents therefore are not covered by the wording of claim 1 if they do not possess the properties “non-dusting” and/or “homogeneous”. [1.4.1]

As regards the missing definition of the expression “non-dusting”, the question is whether there is a need for explanation or whether the meaning attached to the expression is not sufficient to convey a sufficient technical teaching to the skilled person whom the patent addresses. Moreover, the competent [opponent] itself has pointed out that it is not coherent with the teaching of the opposed patent if the pigment preparations dust as much as – or even more than – pure pigment powders.

The [opponent] has invoked decision T 256/87 according to which the lack of a method for determining a parameter that is unusual in the art is not prejudicial to sufficient disclosure according to A 83 if the skilled person having read the patent can carry out the invention in all its essential parts and knows when he/she is working in the prohibited domain covered by the claims. In the case underlying T 256/87 this was considered achievable via indirect empirical investigations, because of the respective general knowledge (Fachkunde).

However, the conclusion reached in T 256/87 cannot mean that – conversely – the use in the claims of an expression that is undefined under A 84 necessarily leads to the invention not being executable within the meaning of A 83 if there are no indications for a possible definition in the description or in the respective general knowledge. As a matter of fact, doubts concerning a lack of sufficiency of disclosure have to be substantiated with verifiable facts. The mere supposition that the extent of protection extends to non disclosed variants is not sufficient.

In principle the use of an undefined expression in the claims – for example, the use of a relative expression – is problematic under A 84 according to which the claims shall define the matter for which protection is sought and shall be clear and concise and be supported by the description. In opposition and opposition appeal proceedings the lack of delimitation of the protected domain by such an expression leads to taking into account a more extensive prior art, i.e. the state of the art corresponding to all the technically meaningful possibilities of interpretation of the undefined expression. In the extreme case where no concrete meaning can be ascribed to the expression, it completely loses its limitative effect with respect to the prior art to be taken into account.

The patentee cannot object to this that it is not acceptable to take into account a more extensive prior art because it is possible to give a limitative interpretation of the expression based on the description and the drawings. This possibility of interpretation which follows from A 69(1) only concerns, as can be deduced from the wording of this provision, the content of the claims that determines the extent of protection of a patent, so that a patent proprietor has to accept such a limitative interpretation of the extent of protection of its patent by an infringer against whom the patent is invoked. This means that A 69(1) can only be used for answering the question whether a competitor can know if and when it works in the prohibited domain. This, however, is only a question whether the claims have the clarity that is required for satisfying A 84.

However, the extent of protection of the claims or of the patent are not even considered in A 83. This provision only requires that the patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. [1.4.2]

[…] The Board has come to the conviction that the objection of insufficient disclosure is unfounded. The requirements of A 83 are fulfilled for all requests. [1.5] 

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

T 458/07 – Claimed Effects Can’t Be Missing

Claim 1 of the patent read:

A method for purifying a polypeptide from a composition comprising the polypeptide and a contaminant, which method comprises the following steps performed sequentially:

(a) binding the polypeptide to an ion exchange material using a loading buffer, wherein the loading buffer is at a first conductivity and pH;

(b) washing the ion exchange material with an intermediate buffer at a second conductivity and/or pH so as to elute the contaminant from the ion exchange material;

(c) washing the ion exchange material with a wash buffer which is at a third conductivity and/or pH, wherein the change in conductivity and/or pH from the intermediate buffer to the wash buffer is in an opposite direction to the change in conductivity and/or pH from the loading buffer to the intermediate buffer; and

(d) washing the ion exchange material with an elution buffer at a fourth conductivity and/or pH so as to elute the polypeptide from the ion exchange material.

[…] It has been established by case law such as represented by decision T 939/92 that everything falling within a valid claim has to be inventive, i.e. the technical effect on which acknowledgment of inventive step relies must be produced by essentially all embodiments of the claim.

The [opponent] relies on this decision and argues that this was not so with regard to claim 1 since even the patent teaches […] that only some types of contaminants can be removed by the method, whereas others are unaffected. [95]

The claim at issue in the case underlying decision T 939/92 was directed to a class of compounds. The effect that they are stated to have and on which the inventive contribution relied, i.e. herbicidal activity, was derivable from the description, but not a feature of the claims. Thus, the compounds were not functionally restricted.

In the present case, the claims relate to a method for purification. The board interprets such a claim to mean that any of its embodiments is in fact suited to achieve that stated purpose, i.e. they are suited to achieve purification. Thus, the question of whether certain embodiments of the claim do or do not achieve the expected technical effect does not arise.

The board considers therefore, that the considerations of decision T 939/92 in the assessment of inventive step do not apply here in the context of inventive step. Rather in the present case they arise in the context of the evaluation of A 83 when considering the question of whether or not the claimed subject-matter can be carried out over the whole scope without undue burden, they therefore have been dealt with there […]. [96]

In conclusion the subject-matter of […] claim 1 […] and claims dependent thereon involves an inventive step. The requirements of A 56 are fulfilled. [97]

To read the whole decision, click here.

T 458/07 – Late Filing By Third Parties

The present decision also deals with a rather rare situation: the filing of a document by a third party during the appeal proceedings.

On admission

On 25 February 2008, i.e. during the appeal proceedings a third party filed a submission pursuant to A 115. It contained inter alia document […] D27, disclosing in Example 6 a process for the purification of erythropoietin with anion exchange chromatography. Moreover, the submission contained a table setting out the compositions of the buffers used in the process according to Example 6 as well as conductivity values determined for these buffers. [59]

Document D27 is a late-filed document. Hence, its admissibility is at the discretion of the board pursuant to A 114(2) (see also T 390/07 [headnote]). [60]

[...] The observations under A 115 were filed more than 1 1/2 years before the oral proceedings so that the parties and the board had sufficient time to consider the document. In fact, appellant I has reacted already in the written proceedings to the submission of the third party by filing amended claims and a declaration, i.e. the declaration by Dr Dowd, document D29. Also the board has studied the submissions in order to get a view of their relevance, in particular of document D27 and has notified the parties that it considers document D27 to be relevant.

None of the parties has requested that the submission of the third party, in particular document D27, be disregarded.

Thus, the board decides to admit the submission of the third party into the proceedings. [61]

On remittal

A 111(1) gives the boards of appeal the discretion either to “exercise any power within the competence of the department which was responsible for the decision appealed” or to “remit the case to that department for further prosecution”. It follows from this provision that a board is not obliged to remit a case for consideration to the first instance only because new material has been submitted which has not been considered during the first instance proceedings. [62]

This is also not derivable from the Enlarged Board of Appeal’s decision G 9/91. It is stated in point 18 of the reasons: “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits.” It is true that in the following passage the judicial and therefore less investigative nature of the appeal proceedings is highlighted in the decision G 9/91, however only to remark a contrast with the opposition proceedings which are of an administrative and therefore more investigative nature. [63]

When exercising the discretion given by A 111(1) the boards balance the public interest in procedural economy with the entitlement of the parties to fair proceedings. For the reasons given above in point 61, the board considers it appropriate to deal with document D27 itself, thus avoiding the delay in reaching a final decision which would be entailed if the case was remitted. [64]

Thus, [the patent proprietor’s] request for remittal to the first instance for consideration of document D27 is refused.

The treatment of the observation by the Board may be contrasted with the findings of T 156/84 [3.7] where it was said that A 114(2) evidently did not apply to observations by third parties under A 115(1) and that there was no provision imposing any limit on the period within which such observations have to be presented or empowering the EPO to disregard facts coming to its notice in this way, whenever they are presented. T 458/07 rather follows T 390/07: the document filed under A 115 is treated in the same way as any other late filed document. 

One might say that this is not unreasonable, because otherwise A 115 would provide the possibility of circumventing the strict rules that govern the treatment of documents filed belatedly by the parties, by asking a straw man to file the document. 

However, a party might still be tempted to use a straw man if otherwise the late filing as such might be considered abusive.

To read the whole decision, click here.

T 458/07 – No Examples Needed

Claim 1 of the patent read:

A method for purifying a polypeptide from a composition comprising the polypeptide and a contaminant, which method comprises the following steps performed sequentially:

(a) binding the polypeptide to an ion exchange material using a loading buffer, wherein the loading buffer is at a first conductivity and pH;

(b) washing the ion exchange material with an intermediate buffer at a second conductivity and/or pH so as to elute the contaminant from the ion exchange material;

(c) washing the ion exchange material with a wash buffer which is at a third conductivity and/or pH, wherein the change in conductivity and/or pH from the intermediate buffer to the wash buffer is in an opposite direction to the change in conductivity and/or pH from the loading buffer to the intermediate buffer; and

(d) washing the ion exchange material with an elution buffer at a fourth conductivity and/or pH so as to elute the polypeptide from the ion exchange material.

[… The opponent] argues that the one example in the patent is not enough for that the disclosure in the patent could be regarded as sufficient. This was the more so, since the example apparently does not correctly represent the claimed subject-matter because the conductivity of the loading buffer is not stated, an additional wash step is carried out and not all contaminants are removed. [18]

R 27(1)(e) EPC 1973 [NB: and R 42(1)(e) EPC 2000] stipulates that the description shall “describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any” (emphasis added). Thus, it follows from this rule that there is no mandatory requirement for an example under the EPC. Hence, even the absence of an appropriate example would not be a reason for denying sufficiency of disclosure. [19]

The sufficiency of disclosure with regard to claimed subject-matter is judged on the basis of the whole disclosure in a patent and not only on that given by the examples. Furthermore, the skilled person’s knowledge at the time of priority of the patent must be taken into account. [20]

[…] At the priority date of the patent ion chromatography was a well-established technique for the purification of proteins. Ion chromatography separates proteins according to their charge. The separation is based on the reversible interaction of the protein to an oppositely charged chromatography material. An anion exchange resin has a positively charged surface. A cation exchange resin has negatively charged groups.

Initially, counter ions, i.e. ions of opposite charge present in the equilibration buffer are bound to the charged immobile functional groups of the chromatography resin. When a sample is added to the column, proteins with opposite charge to the resin displace the counter ions and are absorbed onto the column. Thus, negatively charged proteins bind to the anion exchange resin and positively charged proteins bind to the cation exchange resin.

Proteins bind to the resin when the conductivity of the buffer is low. The conductivity of the buffer is strongly dependent on the salt concentration in the buffer.

Differential elution of the bound proteins can be achieved by altering the conductivity (i.e. the salt concentration) of the buffer or by altering the pH. Elution can be stepwise or in a gradient. When elution is due to a change in the conductivity, the principle is that those proteins that due to their charge are less strongly associated with the resin are displaced from the column at lower conductivities (i.e. salt concentration), while the more strongly associated proteins are eluted at higher conductivities.

At the priority date the skilled person was also aware of a wide variety of combinations of constituents to be used for the chromatography buffers and that the type of resin and the buffers used depended on a given protein. Thus, the skilled person knew that fine-tuning of the chromatography process was necessary for each protein-contaminant-situation, but that this could be achieved on the basis of the well-known physicochemical principles on which ion-chromatography relies. [21]

Some of the above-mentioned knowledge about ion chromatography is summarized in paragraph [0005] of the patent in suit. The skilled person also learns from this paragraph that the claimed ion chromatography method is meant as an improvement of the “standard” way of conducting ion chromatography […], i.e. where separation of contaminant and protein are achieved by progressive increase of the salt concentration in the buffer. Moreover, the skilled person would recognize in view of the claims stating that the contaminant is eluted before the desired protein […], that the claimed method is an improvement of such ion chromatography situations where the contaminant elutes before the protein. [22]

Given all this knowledge, in the board’s view, the skilled person would not have any difficulty in performing the claimed method on the basis of the disclosure in the patent and this would even be so if the example would not reflect the claimed method. [23]

The board notes however in passing that it considers the example to describe a situation falling under the method of claim 1.

• In particular, the conductivity of the loading buffer is indicated in Table 1.

• As regards the additional wash step included in the example the board considers that its presence in the example and absence in the claim could only give rise to an objection pursuant to A 83, if this step was an essential feature of the invention. If this was so, the issue would rather have to be dealt with under A 84 than under A 83.

• Finally, the failure to demonstrate in the example the removal of all contaminants is in the board’s view also no reason for considering that the example does not reflect the invention as claimed.

Firstly, the claims expressly relate to “purifying a polypeptide from a composition comprising the polypeptide and a contaminant and to the elution of “the contaminant” ([…] emphasis added). Thus, removal of all impurities is not required by the claim.

Secondly, in view of the general principles on which ion chromatography is based […] and given the differing charges of the variants it would not even be expected by the skilled person that it would be possible to remove all impurities by a single round of chromatography. [24]

I shall come back on this decision tomorrow.

To read the whole decision, click here.

T 759/08 – Known Things Can’t Surprise

[…] Documents D4 to D10 cited against the patent have been filed after expiration of the time limit for filing an opposition.

According to A 114(2), the EPO may disregard such evidence. It is in its discretion to introduce late filed documents cited against the patent into the opposition or appeal proceedings or to refuse them. However, according to the established case law, such documents are to be taken into account if they are prima facie relevant because they are very likely to be prejudicial to maintaining the European patent. Moreover, it is in the discretion of a Board of appeal to introduce relevant documents into the proceedings of its own motion. However, this does not establish the entitlement [to introduce] documents that have been cited against the patent during the examination proceedings or which have been filed belatedly during the opposition or opposition appeal proceedings. [2.1]

In the present case the parties have discussed arguments concerning the common knowledge of the relevant skilled person. In order to provide evidence for this commonly known technical knowledge the manuals D4 and D5 have been filed during the opposition proceedings and manual D10 was referred to in the appeal proceedings.

According to the definition of the Boards of appeal the content of encyclopaedias, manuals and dictionaries normally represents the common general knowledge (see Case Law of the BA of the EPO, 5th edition 2006, I.C.1.5, page [48]). Manuals D4, D5 and D10 were cited as evidence for generally known effects of alloy elements in Al-alloys on their properties (D4), the composition of known standard Al-alloys (D10) or their application and product forms according to DIN EN 573-4 (D5). Therefore they represent the general knowledge of the person skilled in the art of Al-alloys. As a rule, the general knowledge cannot be considered as a complicated or surprising fact because it is sufficiently known to the skilled person. The introduction of the cited documents cannot be considered to be abusive, even it they have been filed after the expiration of the time limit for filing an opposition, i.e. belatedly, because they only confirm a fact that is commonly known to the skilled person.

Therefore, documents D4, D5 and D10 are taken into account. [2.2] 

I find this decision useful because it clearly states that the late introduction of evidence for common general knowledge should in principle always be possible.

Another minor remark: The Boards tend to refuse late filing of documents and/or amendments when the late filing would come as a surprise to the other parties and/or the Board itself. In the present decision there is an almost imperceptible shift towards the skilled person: the argument appears to be that the skilled person could not be surprised by the documents because they reflect the common knowledge of the skilled person. This may be true but it should not be forgotten that the skilled person is a legal fiction: it is as difficult to surprise the skilled person as it is to shake its hand. Neither the parties nor the members of the Board qualify as skilled persons within the meaning of the provisions of the EPC. Therefore, the introduction of a document could come as a surprise to them even though the skilled person would not be surprised.

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

T 727/07 – Jurisprudential Potpourri

This decision contains several bits and pieces which as such perhaps would not justify a post but which, nevertheless, are not without interest.

First, there is an interesting statement on procedural economy.

The opponent wished to introduce documents R17 and R18 which it considered very relevant. The opponent also pointed out that they should be admitted for reasons of procedural economy. If the documents were not admitted into the appeal proceedings, it would be necessary to file national invalidation proceedings based on these documents, which would result in long and costly proceedings.

The Board does not agree:

The Board concedes that documents R17 and R18 do not present any particular difficulty and that the question of their admissibility depends essentially on the benefit in terms of procedural economy resulting from their admission. This is an aspect that has to be assessed in view of the relevance of these documents. Considering this, the Board is of the opinion that the notion of procedural economy is to be assessed in relation to the appeal proceedings pending before the Boards of appeal of the EPO. It cannot take into account the possibility of subsequent proceedings which the parties could instigate before other jurisdictions. If it were pushed to its limits, the argument of the [opponent] would have the consequence of depriving article 13(1) RPBA of many of its effects in respect of appellants-opponents. [2.2] 

Secondly, the opponent pointed out that the late filing of the documents was due to a change of the professional representative at a late stage of the appeal proceedings. Again, the Board is not willing to accept the argument:

The Board notes that a change of the professional representative could not possibly justify late filing of documents. It follows from article 12(2) RPBA that the statement of grounds of appeal has to set out all the legal means relied on by the appellant. Therefore, a change of the professional representative could not possibly allow to depart from the requirements that are to be applied at the time of filing the appeal. [2.5] 

Third, the decision has an interesting paragraph on claim interpretation.

Claim 1 of all requests concerned an “Integrated circuit device incorporated into a smart card (carte à puce)”. The opponent pointed out that the concept of a smart card was very general and that it covered the memory cards disclosed in R17 and R18.

Once again, the Board is not persuaded.

Paragraph [0012] as amended during the opposition phase explains that “Smart cards are standard portable memory objects operating by contact and which are defined in particular by standards ISO 78-10 and 78-16 the content of which is incorporated by reference into the present disclosure of the invention.” Even if the reference to the standards in paragraph [0012] is not recalled in the independent claim, the Board finds that: (i) the paragraph contains a definition of the concept of ‘smart card’, and (ii) this definition is intended to apply to the document as a whole. Therefore, the Board considers that the skilled person reading the application would have understood the term ‘smart card’ according to this meaning. As the present Board has already pointed out (T 1281/06 [2]; T 1271/05 [4.3]) the claim should be interpreted in the light of this definition. [2.3]

[…] As the memory cards disclosed in R17 and R18 do not comply with the standards mentioned above, they cannot be considered as smart cards within the meaning of the contested patent. Also, the circuits disclosed in these documents cannot be considered as integrated circuit devices in the sense of a structural unit integrated into a smart card.

As a consequence, neither R17 nor R18 are sufficiently relevant to be admitted into the proceedings. [2.4] 

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

T 911/06 – Numbers In Disorder

In the present decision the Board faces a legal dilemma: is it possible to ignore the order of the requests filed by the patentee ? The question arose because the patentee had filed several requests and only the fourth auxiliary request consisted in maintaining the patent as granted.

[…] The Board is faced with the problem of deciding in which order the various requests should be addressed. [3]

The Board is aware of an ex parte appeal case (T 1058/04 [1.1]) in which the Board considered it appropriate to treat the [applicant’s] requests in their numerical order and refused a request to modify their order. [3.1]

According to the decision of the Enlarged Board G 9/91 [18], “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits”. The purpose of the appeal procedure is thus to give a decision upon the correctness of a decision of a department of first instance. Similar considerations as to the purpose of the appeal procedure are derivable from R 99(2) which specifies “In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”. According to the principles governing the admissibility of appeals, there is no justification for examining first a main request containing new claims amended during the appeal procedure, before examining the correctness of the decision refusing the patent as granted when, as in the present case, the correctness of that decision is still contested in a lower-ranking auxiliary request. [3.2]

The Board is mindful of the fact that the appeal procedure is to be considered as a judicial procedure and that general principles of court procedure, such as the principle of party disposition (see G 8/91 [11.1]), apply to the appeals. This principle was also applied in the decision G 2/91 [8], which held that “Any party to first-instance proceedings who is adversely affected by a decision has the right to file an appeal with his own request and submissions and his own statement of grounds and thus to determine the further course of the proceedings”. In the present case, applying this principle to the order of the requests of the appellant proprietor might be inconsistent with the purpose of the appeal procedure inter partes as expressed in the decision G 9/91. Moreover, examining new requests in appeal, when the appellant proprietor also requests examination of the correctness of the first instance decision as a lower-ranking request, would effectively reduce the appeal procedure to a simple continuation of the first instance proceedings, although it is apparent from the general logic of the EPC, that the appeal proceedings are wholly separate and independent from the proceedings at first instance. [3.3]

In accordance with A 113(2), the EPO shall examine, and decide upon, the EP only in the text submitted to it, or agreed, by the proprietor of the patent. It has been established in Legal Advice N° 15/05 (rev.2) [1.4 and 2.3] as well as in several decisions of the Boards that in the case of main and auxiliary requests from the applicant or proprietor in first instance examination and opposition proceedings, the EPO is bound to the order of these requests (see e.g. T 488/94, T 169/96 and T 345/98). However, this principle does not necessarily apply to second instance proceedings before the Boards of Appeal. In view of the foregoing, the Board considers that it is in line with the purpose of the appeal to firstly examine whether the department of first instance correctly assessed the substance of the requests presented to it, and thereafter to examine any other requests filed by the proprietor during the appeal procedure. [3.4]

If the Board were to follow the generally established approach of merely considering the requests of the appellant proprietor in sequence, it is foreseeable that this could lead to a situation in which the Board, finding that a higher-ranking request (i.e. one of the main or first to third auxiliary requests) is not unallowable, would decide to grant or remit that higher-order request, without having considered the findings of the opposition division (OD) in respect of the patent as granted, i.e. without having considered the matter underlying the proprietor’s appeal. This does not appear to be consistent with the spirit of the appeal procedure under the EPC. Moreover, it could deprive the opponent and third parties of their right to have firstly a decision on the findings of the OD for reasons of legal security. [3.5]

The amendments made by the proprietor to his requests […] result inter alia in a new order of his requests which is neither consistent with the logic of the EPC, nor compatible with the purpose of the appeal procedure in the EPO. The proprietor did not attend the oral proceedings (OPs), and so could not be informed of the deficiencies in the presented order of his requests. Following Article 15(3) of the rules of procedure of the Boards of Appeal (RPBA), “The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.” However, Article 13(1) RPBA gives a Board some discretion when considering any amendment to a party’s case after the grounds of appeal or reply have been filed. The discretion shall be exercised in view of inter alia the current state of the proceedings and the need for procedural economy. In view of the foregoing, the Board has decided to consider the requests of the appellant proprietor in the order which is compatible with the general logic of the EPC and the purpose of the appeal procedure. [3.6]

When, as in the present case, it is clear from the statement of grounds of appeal that the appellant proprietor contests a decision that the patent cannot be maintained as granted, and when the appellant proprietor finally requests the maintenance of the patent as granted as an auxiliary request which is subordinate to a main or auxiliary request for maintenance of the patent in a new amended form that was filed during the appeal, the correctness of the decision refusing the maintenance of the patent as granted has to be examined first, before examining the new amended claims. [3.7]

In the decision G 2/91, the Enlarged Board further held that “A person who is entitled to appeal cannot be deprived of this right because someone else has already filed an appeal before him”. The course of the appeal proceedings should thus not deprive the appellant opponent of the right to have his own request and submissions treated in an equitable manner and to so determine the course of the proceedings. [3.8]

In the present case, however, merely following the order of the requests presented by the proprietor could deprive the opponent of the right to have his appeal examined before a possible remittal, because the subject of the opponent’s appeal, namely the amended form of the patent as maintained by the OD, is presented by the proprietor only as a second auxiliary request. This would not be equitable. [3.9]

Nevertheless, as long as it has not been decided whether the patent can be maintained as granted, the decision to grant a patent in the amended form appealed by the opponent depends on the outcome of the appeal against the decision to refuse the maintenance of the patent as granted. Moreover, the proprietor is the owner of a legal title that was contested by the opponent, in whose favour the OD decided. This decision was challenged by the proprietor, who can then expect to have his challenge considered with the highest priority. Accordingly, in accordance with the principle of economy of procedure, the Board decides to treat the requests of the appellant opponent, insofar as they concern the maintenance of the patent by the OD, after having decided whether the patent as granted could be maintained unamended. [3.10]

Since in the present case it is clear from the statement of grounds of appeal that the appellant opponent contests a decision maintaining the patent in a particular amended form, and since, in the appellant proprietor’s final requests, the maintenance of the patent in that particular amended form is the subject of an auxiliary request that is subordinate to one or more requests for maintenance of the patent in some other amended form, the Board decides, after examining the correctness of the decision refusing the maintenance of the patent as granted, to examine the correctness of the decision maintaining the patent in the particular amended form that was the subject of the appealed decision before examining, and deciding upon, the patent in any other amended form finally requested. [3.11]

Whew!

To read the whole decision, click here.

T 662/07 – Incredible Detergents

When there is no clear-cut evidence that a technical problem has been solved, the credibility that the problem has indeed been solved becomes crucial for the assessment of inventive step. In the present case, the Board comes to the conclusion that the problem has not been credibly solved and reformulates a less ambitious problem.

[…] During the oral proceedings, both parties have used document D3 as basis for the assessment of inventive step. The Board has no reason not to follow this choice. [2.1.1]

Document D3 discloses multiphase detergent tablets made of compacted particulate washing composition for washing laundry in a washing machine […] comprising surfactant(s), builder(s), disintegration auxiliary based on cellulose, and optionally further washing composition constituents, and which can consist of at least two phases, i.e. of different layers […]. It is possible for the different layers to have different solution rates, which may entail properties that are advantageous for the application of the tablets. […]

D3 does not disclose the feature according to which the surfactant content of the individual phases varies by no more than 1.5 % by weight, as well as the use of the tablets in domestic washing machines. [2.1.2]

According to the explanations of the [patent proprietor], the examples of the contested patent show that the claimed subject-matter solves, with respect to the prior art known from D3, the technical problem mentioned in paragraph 7 of the contested patent, i.e. the problem of providing detergent tablets which have a high hardness and high disintegration and solution rates in all phases. There was no indication in the available prior art that this technical problem can be solved if the surfactant content varies by no more than 1.5 % by weight between the phases. [2.1.3]

However, the Board does not find this argument persuasive because there is no indication in the examples that this technical problem is actually solved by the above mentioned distinguishing features, i.e. the use in domestic washing machines and the relatively low admissible variation of the surfactant content.

First of all it has to be noted that the feature concerning the use of the detergent tablets in particular in domestic washing machines apparently does not contribute to the solution of the said technical problem. Such a contribution was not invoked by the [patent proprietor] and is not disclosed in the contested patent. Neither do the examples show that they have been carried out in a domestic washing machine, let alone that this would lead to a special effect.

Therefore, the use of the detergent tablets in a domestic washing machine is only an option that is independent from the said technical problem and which the skilled person exercises in case of need.

Apart from that, there are three sets (examples 1, 2, and 3), each comprising one example according to the invention and a comparative example, from which one can allegedly derive that detergent tablets of particularly high hardness and disintegration rate are obtained as a result of the small variation of the surfactant content of the phases by no more than 1.5 % by weight. Within these exemplary sets, the comparative example differs from the example according to the invention not only, as expected, by the differing surfactant content in the phases but also by different contents of other constituents. In examples 1 to 3 the content of different constituents was varied in order to compensate for the varying surfactant content.

However, these examples are not comparable with each other because different surfactant granulates have also been used in the three sets of examples. Therefore, the argument of the [patent proprietor] according to which the examples show that the differing contents of further constituents are not relevant, is not persuasive. [2.1.4]

Therefore, it is not credible that the claimed detergent tablets have high hardness and disintegration rates in all phases in comparison to the tablets disclosed in prior art D3.

However, it is credible that the detergent tablets defined in claim 1 have practically the same hardness and an identical disintegration profile in all phases, with respect to the tablets disclosed in document D3, which is presented as an essential requirement for multiphase detergent tablets in paragraph 4 of the contested patent. As a matter of fact, according to claim 1, all phases of the detergent tablet can have a practically identical composition and can differ from each other only by say a different coloration.

Therefore, the problem that is actually solved with respect to prior art D3 may be seen in providing a detergent tablet that has practically the same hardness and an identical disintegration profile in all phases. [2.1.5]

As so often, this the preamble to a revocation for lack of inventive step. 

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

T 354/08 – Enablement Questioned

Questioning the enablement of a potentially novelty destroying document appears to be relatively common in the field of chemistry, but – to my best knowledge – it is rare in the mechanical domain. The present decision deals with a case where the patent proprietor argued (unsuccessfully) that the prior art device could not work and, therefore, was not novelty destroying. 

[…] D4, figures 2 and 3 […] discloses a telescopic lifting column in which telescoping movement is transmitted via a screw and nut drive train.

Referring to figure 2, at the top of each stage is a geared nut 27, which is driven (from motor 40) to rotate with respect to its screw 26 secured to the top of the next stage via a rotatably seated screw gear 28. D4 now proposes a second parallel drive train which transmits rotation simultaneously to all stages. This further drive train includes, for each stage, a geared bushing 32 meshing with the nut 27 of that stage, which imparts rotation to a splined shaft 30 with integral shaft gear 31 seated at the top of the next stage. The shaft gear 31 meshes with the screw gear 31 also seated there, which in turn meshes with the bushing and geared nut for the following stage. The lowermost nut and bushing are driven by a motor 40 under the control of appropriate control means with an implicit control panel […].

In the alternative embodiment figure 3, the screws are realized coaxially and each bear screw gears 27b, 27c that double as nut for the next stage. Likewise, the splined shafts 30a, 30b, have a common axis, each having a shaft gear 32b, 32c which also acts as bushing gear for the next stage […]. [2.1]

The [patent proprietor] does not dispute that all features of claim 1 - in particular the central feature of the spindle nut being driven to rotate - are derivable from either embodiment. However, he contends that these embodiments cannot be realized, so that D4 is not enabling and must be disregarded as prior art. [2.2]

Initially, […] the contention was that the rotation of the nut 27 by motor 40 and that of the corresponding spindle or screw 26 via bushing 34, shaft 30, shaft gear 31 and screw gear 28 contradict each other. [The contention] concludes: “For axial displacement of the spindle, it should be fixed in a non-rotating manner”. [2.3]

It is correctly observed that both spindle (or screw) 26 and its nut are rotated. From the figure it is clear that if, say, nut 27 is rotated clockwise, bushing 39, and with it shaft 30 and shaft gear 31 will be rotated counter-clockwise, imparting clockwise rotation to screw gear 28 and shaft 26. This is also expressly stated in D4 itself (“..rotations of the nuts 27 and screws 26 ...”; “... rotations of the motor transmitted both to all the screws and all the nuts ...”). [2.3.1]

However, simultaneous movement of nut and screw is by no means contradictory. For translational movement of the screw to take place there must be relative rotation of the nut with respect to the screw. Screw and nut must thus rotate by different amounts or angles to produce any screwing action. This is what is meant when D4 […] states that “this variant [the embodiment of figure 3] functions in roughly the same way as the previous variant [that of figure 2], due to rotations of the motor transmitted both to all the screws and all the nuts and with different angles between the screws and nuts in order to produce a screwing and a translation of the modules” (emphasis added by the Board). The different angles are realized by setting appropriate gear ratios, as again expressly stated […] “As the rotations of the nuts 27 and the screws 26 are all imposed by gear tooth ratios, the translations of the screws and therefore the tubes are also subject to this condition [i.e. the gear tooth ratio]” (emphasis again added). [2.3.2]

[…] In as far as this would not already be clear to the skilled person from simple mechanics, D4 thus specifically teaches him to rotate both nut and screw, but by different angles, to produce the desired movement. This is achieved by appropriate gear ratios, specifically gear reduction. The particular gear ratio, however, will depend on the particular requirements and can be determined by routine design procedure. The Board does not doubt that this teaching is sound and feasible. [2.3.3]

[…] The Board concludes that D4 provides the skilled person with sufficient information to successfully reproduce its teaching. It thus constitutes valid prior art for assessing novelty. As the Board has no reason to depart from the appealed decision’s finding of lack of novelty, that finding is upheld. [2.5] 

To read the whole decision, click here.

T 897/09 – How Not To Substantiate An Appeal

The present decision is a sad example of how a notice of appeal should not be written. It was the applicant himself who defended his application (the professional representatives had withdrawn, for reasons unknown).

The notice of appeal was handwritten and very short; it read:

The Board sent the appellant a communication stating that the appeal was likely to be rejected as inadmissible and giving him the opportunity to present arguments. The appellant did not reply but sent the following letter of complaint to the “Head of the Patent Office” [unfortunately not available on RegisterPlus]:

Dear Sir.

I am greatly disappointed with the communication from the board of appeal; which seem biased as I dismissed the poor work of [the former professional representative] on the grounds of discrimination of me as a Danish citizen. I hope that this is not the case for the patent office and must insist on unbiased evaluation of the patents.

They did not review the accompany letter from October 2008 that contained the argumentation for allowing the patent and should be reviewed together with the final changes submitted in March 2009. Their evaluation was wrong because non of the methods can be used alone and if they were they would give erroneous results. This is the reason why we have identified several mechanisms of bacterial resistance and why a lot of people have died in vain as antibiotics have been used in combination to induce cancerous growth with metastasis if broad spectrum antibiotics are used and encapsulated cancers if penicillins are used.

Furthermore the experts seem very unfamiliar with the terminology used in bacteriology and antibiotic susceptibility in general hence the comment that we did not mention bacterial growth or antibiotic susceptibility. I called it organism growth as it covered viral and fungal growth as well as bacterial growth and bacteriocidal and bacteriostatic actions are standard terms for antibiotic susceptibility testing of compounds alone or in combination and refers to whether they kill the bacteria or just inhibits growth. The people evaluating the patent seem to have no experience in evaluating either instrument specifications or bacteriology which may explain the extraordinary difficulty in their understanding of the subject and their totally irrelevant comments.

The board only commented on a handwritten follow note and did not bother to review the altered claims that clearly distinguish the patent 05256971.2 from other methods and specifically to the cited passage in D1;

I.e. claim 1,2 and 9 addition: Using a micro calorimeter with a baseline stability of 0.2 uW and a sensitivity of O.2 uW

Claim 8 addition;

Using a micro calorimeter with a baseline stability of O.2 uW and a sensitivity of 0.2 uW is able to detect heat changes of 25 nanocalories per second

I demand a re-evaluation by an expert in instrument development and bacteriology

Here is what the Board had to say on this appeal:

While the appellant’s letter to the “Head of the Patent Office” makes no attempt to answer the Board’s communication or to deal in any other manner with the question of the admissibility of the appeal, the Board has decided to consider it and to issue this decision rather than just treat the patent application as deemed to be withdrawn as would be possible in the absence of a reply to the communication, as indeed the appellant was warned both in the communication itself […] and in the EPO form 3346 under cover of which it was sent. There are two reasons for doing this. First, although the appellant’s letter [to the Head of the EPO] does not make any substantive response to the Board’s communication, it does at least indicate that the appellant has not lost interest in its patent application. Accordingly, although the salient facts are slightly different, the position is comparable with that described in T 1382/04 [1] and the Board has the power to issue a decision on the appeal. Second, this decision will hopefully ensure that the appellant (which is no longer represented professionally and is apparently unfamiliar with European patent proceedings) understands that, by virtue of this decision dismissing the appeal, the decision of the Examining Division (ED) to refuse the patent application becomes final and therefore no purpose would be served by payment of the unpaid part of the fifth renewal fee. [1]

The appellant complied with the time limits for filing the notice of appeal and written statement of grounds of appeal and paying the appeal fee (see A 108). However, the appeal is inadmissible as regards the requirement of substantiation. A 108, third sentence, provides that, within four months of the notification of the decision in question, an appellant must file a statement setting out the grounds of appeal. [2]

[…] R 99(2) requires an appellant to indicate in its statement of grounds the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. Additionally, Article 12(2) of the Rules of Procedure of the Boards of Appeal requires that a statement of grounds of appeal shall contain a party’s complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Similarly, the case-law of the Boards of Appeal has consistently considered it to be incumbent on an appellant to file, by the end of the four month time limit, a statement of grounds which (either in itself or together with the notice of appeal) presents the Board with the appellant’s case why it considers the decision under appeal to be wrong. [3]

[…] Having compared the contents of the notice of appeal and the statement of grounds of appeal with the content of the decision under appeal, the Board cannot ascertain from the notice or grounds of appeal any substantive arguments or reasons why the appellant disagrees with the reasons for rejecting its patent application or, apart from some unexplained amendments to the claims, how it proposes to overcome those objections.

In particular the Board notes the following.

(a) The appellant does not say why the Examining Division’s view that the method claim 1 is anticipated by D1 was wrong, let alone take issue with its analysis demonstrating that all the features of claim 1 are to be found in D1. […]

(c) The grounds of appeal say “Hereby the amendments to the claims as specified in your letter of 16.1.2009” but give no further information. The words “as specified in your letter of 16.1.2009” (i.e. the decision under appeal) are of no assistance at all - they simply direct the reader to the decision without any indication how the amendments relate to the objections therein. The later statement in the grounds of appeal that the claims have been amended to contain “the issues corrected raised on page 2-3 of your letter” adds nothing since those pages contain all the substantive reasoning of the decision under appeal. It then says the claims have also been amended to contain “specifications for the microcalorimeter used in the application”; that could be a reference to the ED’s observation […] that none of the features assumed by the applicant to differentiate its invention from the methods of D1 could be found in claim 1, but without more that can at best only be surmised. The Board notes that claim 9 has apparently been amended but there is no explanation at all as to how that may overcome the ED’s objections. Indeed, there is no reference to, let alone explanation of, any one amendment at all.

(d) As regards the ED’s objection under A 123(2), the notice of appeal and the grounds of appeal say respectively that the relevant material is or has already been withdrawn but no further information is given and no amended text has been filed.

(e) After referring to the unexplained amendments to the claims, the grounds of appeal state that the added specifications have not been achieved by anybody else in the world and that this gives the appellant the ability to diagnose and treat diseases faster and more effectively than previously. However, in the absence of any reference to the decision under appeal or to prior art cited therein, these are no more than mere assertions which do not make any case against the decision.

(f) There is no other statement whatsoever which can be read as argument against the reasons set out in the decision under appeal. The notice of appeal says “We will include the relevant subject-matter in claim 1 and explain why the microcalorimeter D1 would not be suitable.” However, no indication is given of what that relevant subject-matter in claim 1 is - if it is meant to indicate the amendments, then as already indicated they are not explained at all. The Board can find no explanation as to why the microcalorimeter of D1 would not be suitable. [4]

The Board’s communication quite specifically stated that it was confined to the issue of admissibility of the appeal and was intended to give the appellant an opportunity to present arguments on that issue. Unfortunately, the appellant’s letter [to the Head of the EPO] is not only not addressed to the Board but also shows no attempt to explain how the notice of appeal and grounds of appeal contain a sufficiently ascertainable case.

The appellant’s complaints that the Board is biased and not expert in its evaluation of the case is irrelevant since no evaluation of the substance has yet taken place in the appeal proceedings and cannot take place unless or until the admissibility of the appeal has been established. [5]

[…] Taken as a whole, the appellant’s letter [to the Head of the EPO] shows that it expected the Board to piece together its case from a number of documents including earlier correspondence and versions of claims. That however is exactly the exercise the Board is not required to undertake because the appellant is required to substantiate its case adequately in its grounds of appeal.

In the circumstances, the only possible conclusion is that the appeal is unsubstantiated and therefore does not comply with A 108, R 99(2) and Article 12(2) RPBA. Accordingly the appeal is inadmissible. [7]

I am not sure that it would have been possible to save this particular application by filing an appeal, but one thing is sure: that it is not wise to file an appeal without the help of a trained professional. Things that may work out elsewhere, such as whining, boasting and complaining with the hierarchy, have little chances of constituting an admissible appeal.

NB: Parallel case T 950/09 has been discussed by Laurent Teyssèdre on his blog.

To read the whole decision, please click here.