Monday, 15 March 2010

T 90/07 – Unlimiting Signs

It is well known that the reference signs in claims are not to be construed as limiting the claims (R 43(7)). The present decision reminds us of the fact that this is to be taken into consideration not only when the extent of the protection is to be assessed under A 69, but also when conformity with the requirements of A 123(2)(3) is to be examined.

The set of claims labelled as “third auxiliary request” differs from the set of claims submitted with the request to dismiss the appeal of Opponent I (labelled as “first auxiliary request”) in the passage “characterized in that an isolation means selected from the group consisting of microwell structures on a back cover (903), microwell structures on a substrate (913), and a pattern of non-wetting film on a substrate (933) prevents diffusion of reagents between adjacent reaction sites and spatially isolates individual reaction sites”. [5.1]

As confirmed by the Patent Proprietors in the oral proceedings, the three isolation means described in Claim 1 should represent the embodiments of Figures 9A- 9C of the patent-in-suit. [5.2]

The wording of the inserted text of Claim 1 can be found on page 10, last line to page 11, third line of the description as originally filed. However, these lines are only a general reference to Figures 9A-9C and do not contain all the features of these embodiments. A more detailed description can be derived from the figures themselves and from the text on pages 34-36 describing these figures. [5.3]

The Board finds that the wording of Claim 1 is for instance more general than the closing mechanism described in embodiment 9A, according to which the reaction wells, bounded by barriers (903), are embossed on the cap (902) […] and the barriers are arranged in such a way as to create a space between adjacent buffer cells (passage bridging pages 34 and 35). Embodiment 9B refers in the description to a similar closing mechanism, which is described to seal the individual reaction wells. [5.4]

The insertion of the brief description of the figures according to pages 10/11 thus is not sufficient to describe the entire embodiments represented in the figures. [5.5]

Even assuming that the features relating to such a closing/seal mechanism are not closely linked to the other features of the embodiments represented in the figures and that consequently the closing mechanism may be claimed separately, the description does not contain any support for general embodiments as reported in the claims. [5.6]

Also the use of reference signs does not change this situation, since their role is merely to make the wording of the claims more understandable, but they are not to be seen as limiting. [5.7]

Since the features in question are not reflected by the wording of Claim 1, this claim extends beyond the disclosure as originally filed; the requirement of A 123(2) is not considered to be met. [5.8] 

To read the whole decision, click here.