Friday, 30 April 2010

T 2017/07 – Extending Limitation


This decision presents an intriguing case: the Board found that what may appear to be a limitation of the claim under consideration in reality lead to an extension of the scope or protection conferred by the claim.

The granted patent had the following claim 1:

1. A hair dye composition which comprises (A) an acid dye and (B) an alkylene carbonate having 3-5 carbon atoms in total, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate having 3-5 carbon atoms in total is 0.5-50 % by weight and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol.

The Opposition Division maintained the patent in amended form. New Claim 1 read:

1. A hair dye composition which comprises (A) an acid dye and (B) alkylene carbonate having 3-5 carbon atoms, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate is 0.5-50 % by weight, the alkylene carbonate being propylene carbonate, and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol.

Here is what the Board had to say:

[2.2.1] A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is characterized by the feature which requires the presence of the component within that range, as well as by the implicit proviso which excludes the presence of that component in an amount outside of that range.

Consequently, the amount of that component present in the composition must not exceed the upper limit of the numerical range indicated. Ignoring that proviso defining the composition would deprive the indication of an upper limit of sense. The above proviso does not have an impact on the scope of the subject-matter claimed as long as the amount required by the numerical range is present in the composition.

[2.2.2] An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of no longer requiring the presence within that numerical range of those chemical compounds no longer encompassed by the restricted definition of that component and, thus, of limiting the scope of this implicit proviso.

[2.2.3] A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. Thus, in a claim directed to an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (A 123(3)).

[2.3.1] Claim 1 as granted is directed to a hair dye composition requiring inter alia a content of from 0.5 to 50 % by weight of alkylene carbonate having 3-5 carbon atoms. Thus, the content of the alkylene carbonate having 3-5 carbon atoms in the composition according to the claim as granted must not exceed 50% by weight, which finding has never been contested by the [patent proprietor].

Hence, a composition according to claim 1 as granted is subject to the implicit proviso that it contains at most 50% by weight of ethylene, propylene and/or butylene carbonate, i.e. an alkylene carbonate having form 3 to 5 carbon atoms.

[2.4] Claim 1 as amended is directed to a hair dye composition “wherein the content of the alkylene carbonate is 0.5-50% by weight, the alkylene carbonate being propylene carbonate”. The fresh feature in that claim now requires that the content of propylene carbonate to be present in the composition should be in the range of 0.5 to 50% by weight, and no longer defines the content of alkylene carbonate having 3 to 5 carbon atoms in the claimed composition. Thus, claim 1 as amended no longer requires that the composition contains at most 50% by weight of alkylene carbonate having 3 to 5 carbon atoms, since the definition of the composition in claim 1 is “open” due to the characterization by the term “comprising”.

Therefore, the composition of claim 1 as amended may comprise in addition to an acid dye and propylene carbonate components including other alkylene carbonates having 3 to 5 carbon atoms, i.e. ethylene carbonate and/or butylene carbonate, in any amount with the consequence that the granted upper limit of 50% by weight of alkylene carbonate having 3 to 5 carbon atoms may be exceeded.

[2.5] Thus, claim 1 as amended encompasses compositions having a content of more than 50% by weight of alkylene carbonate having 3 to 5 carbon atoms, which embodiment was excluded from the compositions according to granted claim 1.

[2.6] The [patent proprietor] argued that the composition of claim 1 excluded the presence of any other alkylene carbonate having 3 to 5 carbon atoms, i.e. ethylene and butylene carbonate, on account of two independent definitions, which required on the one hand that the content of alkylene carbonate be in the range of 0.5 to 50% by weight and on the other that the alkylene carbonate be, at the same time, propylene carbonate. However, by arguing so, the [patent proprietor] gives two different meanings to the same term, which is the alkylene carbonate having 3 to 5 carbon atoms. When this feature defines its chemical structure, the alkylene carbonate, in the view of the [patent proprietor] takes the exclusive meaning of propylene carbonate, but in the definition of its content in the composition, the same term covers any alkylene carbonate having 3 to 5 carbon atoms, not exclusively propylene carbonate. Giving two different readings for the same term in claim 1, just as they match the [patent proprietor’s] needs, is arbitrary. Such an interpretation of the claim goes against any sensible reading, since the meaning of a term in a claim may not be changed depending on the reader’s whim, and thus cannot be accepted by the Board.

[2.7] Nor can the finding that claim 1 as amended encompasses compositions having a content of more than 50% by weight of alkylene carbonate having 3 to 5 carbon atoms be rebutted on the basis of the description adapted to the claims filed on 19 October 2007, which would allegedly prohibit any alkylene carbonate having 3 to 5 carbon atoms other than propylene carbonate be present in the claimed composition.

The [patent proprietor’s] interpretation of claim 1 in the light of the description adapted to the claims is inconsistent with the fact that the very same adapted description still comprise the compositions of examples 2 and 5 as falling within the invention, which compositions comprise, in addition to propylene carbonate, also ethylene carbonate, thus disclosing that the compositions claimed may comprise alkylene carbonates other than propylene carbonate.

Moreover, paragraph [0006] of the description, which addresses the hair dye composition comprising a component (B) being an alkylene carbonate having 3 to 5 carbon atoms in total, wherein the content of the alkylene carbonate having 3 to 5 carbon atoms in total is 0.5 to 50% by weight, has been modified to further stipulate that “the alkylene carbonate is propylene carbonate” in order to be in line with claim 1 of the main request; and particularly paragraph [0010] has been amended to read “the component (B) used in the present invention is propylene carbonate.” These two adapted paragraphs make plain that the composition as amended comprises 0.5 to 50% by weight of propylene carbonate as component (B). Contrary to the [patent proprietor’s] allegation, they do not stipulate that the composition does not contain alkylene carbonates other than propylene carbonate.

Irrespective of the fact that the adapted description does not support the [patent proprietor’s] allegation, the Board observes furthermore that an interpretation of claim 1 in the light of the description would amount to a reference to A 69(1), the first sentence thereof, however, stipulating that the extent of protection conferred by a European patent shall be determined by the terms of the claims. While it is true that A 69(1) second sentence states that the description and drawings shall be used to interpret the claims, this does not make it legitimate to read into the claim features appearing only in the description and then relying on such features to provide additional requirements. This would not be to interpret claims but to rewrite them, thereby depriving the claims of their intended function (see T 881/01 [2.1]; T 1208/97 [4]). 

[2.8] Furthermore the [patent proprietor’s] interpretation that propylene carbonate is the sole alkylene carbonate having three to five carbon atoms to be present in the composition has no basis in the application as filed. Hence, the [patent proprietor’s] argument that no alkylene carbonate other than propylene carbonate is present in the claimed composition is not based on a sensible interpretation of claim 1 and, thus, fails for that reason as well. […]

[2.9] Hence, the Board comes to the conclusion that the presence of ethylene and/or butylene carbonate is not excluded from the composition of claim 1 of the main request.

[2.10] Accordingly, the amendment carried out in claim 1 which results in including compositions having a content of more than 50% of alkylene carbonate having 3 to 5 carbon atoms has the effect to broaden the scope of protection of that claim vis-à-vis to that of claim 1 as granted with the consequence that claim 1 of the main request has been amended in such a way as to extend the protection conferred by the granted patent (A 123(3)). Hence, this request must be rejected.

In an earlier post I have discussed the remedies against an extension of the scope of the patent in limitation proceedings. An anonymous reader wondered how a limitation could possibly extend the scope of protection. If the Board has it right, the present case provides an example of such a limitation. If I had been an Examiner dealing with a request for limitation based on the amendment discussed here, I guess I would not have realized that the amendment violates A 123(3).

NB: To my best knowledge, EQETools has been the first to report this decision.

To read the whole decision, click here.

5 comments:

Anonymous said...

In the present case, the amendment to the claim that the alkylene carbonate was only propylene carbonate removed the composition limits for the two other alkylene carbonates originally claimed. In the original claim each alkylene carbonate with 3 - 5 carbon atoms could not exceed 50 weight%. The amended claim left open how much of the two alkylene carbonates other than propylene carbonate was present.

This amendment hence was not a "limitation" although it may have looked so at first glance :-))

What can be retained from this example is that not every addition of a feature to a claim is a real limitation...

I still maintain that per definition a limitation cannot extend the scope of a claim . If it does, then it is not a limitation.

Oliver G. Randl said...

I totally agree. I would perhaps add that the "limitation" still looks like a real one even at second glance. You really have to stare at it for some time to see the problem.

Anonymous said...

It's an amendment that should not be allowed in a limitation procedure, but is quite likely to slip through. Both the OD and the opponent failed to spot it.

Btw, are there any Board decisions on refusals of limitation requests yet? (Or is it known whether any such appeal is pending?)

Jamie M. - www.patentattorneyindex.com said...

Yes, it takes some starring. Does anyone know if national courts in Europe have adopted the above approach for arguing extended subject-matter?

oliver said...

All I can say is that I have never seen this approach in French case law, and I do not expect to see it in the near future.