From time to time I dedicate a post to a decision which as such is not major in any way but which contains several interesting bits and pieces.
The present decision has something to teach us on an unexpected effect of how documents are cited in an application:
[3.1] Document D6 was first cited during the oral proceedings (OPs) before the opposition division (OD) and was not admitted into the proceedings.
[3.2] The Appellant was of the opinion that this document already formed part of the proceedings as it is cited in the patent in suit (see T 541/98). In T 541/98 [2.1], a document - a reference to which was inserted into the description on request of the examining division and which was considered to represent the closest prior art - was deemed to form part of the opposition proceedings.
In contrast to this, document D6 is cited as one of seven documents in the application as filed in a way that it is not clear whether it might be the closest prior art. The present situation being different from that of [T 541/98], the Board sees no reason to assume that document D6 already formed part of the proceedings.
[3.3] Hence, it was within the discretion of the Board to decide whether or not to admit document D6 to the proceedings (see Article 12(4) RPBA).
One of the possible criteria which might be taken into account when exercising this discretion is the relevance of the document. The patent in suit relates “to compositions useful as surgical hand preparations and antimicrobial hand lotions.” […] Whereas neither of the documents D1 to D5 share this objective with the patent in suit, document D6 does […]. Hence, document D6 is more relevant than the documents previously cited.
Therefore, the Board admitted it into the proceedings.
There is also an interesting statement on clarity:
The requirement of clarity of the claims cannot be subsumed under any ground for opposition (see Article 100 EPC). In opposition appeal proceedings a lack of clarity thus may only prejudice the maintenance of the patent if it is caused by amendments with respect to the claims as granted, namely if such amendments render the claims less clear.
[5.1] The claims as granted specify the method for measuring the viscosity only by a temperature of 23°C. The present claims give further details as to the type of viscometer to be used and to the method of measurement. The Appellant criticised that these details were not clear [because the viscosity could not be measured in a reliable and unambiguous way according to the method now incorporated into the claims]. Whether this is true or not is not relevant since they further specify the method of measurement, thus rendering the claims clearer than the ones as granted. […]
[5.3] Hence, the amendments made in the claims after grant do not render the claims unclear.
Unsurprisingly, the viscosity issue also surfaced in the discussion of sufficiency of disclosure (A 100 (b)):
[6.2] The method for measuring the viscosity is specified in paragraphs [0099] and [0100] of the patent in suit […]. It determines the temperature (23°C), the viscometer (Brookfield LVDV-I+ equipped with a certain heliopath), the spindles to be used […] and the moment at which the viscosity is to be determined (“as the highest relatively stable reading achieved on the first path the spindle traversed using the heliopath adapter”).
The Appellant has shown in the test report (D9) that the viscosities of thickened hydroalcoholic compositions can be determined by this method […]. Although the individual viscometer readings vary to some extent (see the first table on page 6) the decrease of the average values with time is small (see table 1 on page 5; 0.5% decrease for sample V and 2.9% decrease for sample W from 5 to 360 seconds). Hence, the viscosity was determined according to the method disclosed in the patent in suit with acceptable accuracy by Mr Gehm, the author of document D9 who is an expert in the field of rheology. This fact does not exclude that the person skilled in the art may have less expertise in measuring viscosity than Mr Gehm and may not be able to determine the viscosity of the claimed composition with an acceptable accuracy. This, however, was not shown by the Appellant.
[6.3] Hence, no grounds under A 100(b) prejudice the maintenance of the patent.
To read the whole decision, click here.
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