Thursday, 22 April 2010

T 549/08 – Impossible Combination

If in a patent as granted one of the dependent claims cannot be combined in a meaningful way with the main claim, is this a matter of clarity ? Or rather of insufficiency ?

Claims 1 and 5 as granted read as follows:

1. A multi-layered moulding material [1] forming a preformed prepreg adapted for use in multiple layers, said multi-layered moulding material comprising a layer [2] of resin material, characterised in that the layer of resin material comprises a first fibrous layer [4] conjoined to the upper surface thereof and a second fibrous layer [3] conjoined to the lower surface thereof by contacting the resin layer and the respective fibrous layers, whereby the outer surfaces of the moulding material are free from resin and dry to touch to allow entrapped air to pass out of said multi-layered moulding material during processing of the material.

This claim is not extremely clear, to say the least. The numerical references are absent from the claim as granted.

5. A multi-layer moulding material according to any one of claims 1 to 4, characterised in that a tackifier and/or a binder is applied to one or both outer surfaces of at least one fibrous layer.

During the oral proceedings, the Board raised an insufficiency issue that had not been raised by the opponents. According to the Board, claims 1 and 5 cannot be combined in a meaningful manner.

[5.1.3] The Board concludes that the invention according to claim 1 […] fulfils the requirements of A 83.

[5.2] In the particular realisation of the invention according to claim 5 of the main request and the (first) alternative request, which is dependent on claim 1, a tackifier and/or a binder is applied to one or both outer surfaces of the at least one fibrous layer.

[5.2.1] The question which has to be answered in the context of A 83 is therefore the following: how can the skilled person putting into practice the invention as claimed by the subject-matter of claim 5 manufacture a multi-layered moulding material which has simultaneously both outer surfaces of the fibrous layers free from resin and dry to touch and enable the evacuation of entrapped air from the multi-layered moulding material during its processing. The Board remarks that this is technically not possible. Consequently essential features of the claimed invention, structural and functional, cannot be put into practice. 

[5.2.2] The Board disagrees with the patent proprietor, who argued that the objection of the board boiled down to a clarity objection - which is not a ground of opposition.

To the Board’s understanding the dependency of claim 5 on claim 1 does not simply introduce an inconsistency or contradiction in respect of the structural properties on the surface(s) of the fibrous layers – “free from resin” and “dry to touch”. On the contrary this dependency introduces a more severe defect since besides the essential structural features the skilled person is not also able to realize the functional feature of the air evacuation during processing of the multi-layered moulding material. 

[5.2.3] Under these circumstances the Board considers that the invention according to claim 5 […] does not meet the requirements of A 83. 

The Board apparently considers that the presence of a tackifier and/or binder is irreconcilable with air evacuation. It explicitly excludes the understanding (which would also be mine) that the real problem is that it is contradictory to have a surface to which a tackifier is applied and which is “dry to touch”.

Be that as it may, the Board concludes that this difficulty induces not a mere lack of clarity but a lack of sufficiency of disclosure which is a valid ground for opposition.

The patent proprietor then deleted claim 5 and had the patent granted.

To read the whole decision, click here

NB: This decision has also been commented by Laurent Teyssèdre on his blog. He points out that one outcome of this decision is that a dependent claim can be insufficiently disclosed although the main claim is not.


Anonymous said...

One might also argue that a claim that is (technically) contradictory has an empty scope, so that the requirement that the skilled person can make substantially all embodiments falling within its scope is automatically complied with.

Unless Art. 83 requires that the skilled person can make at least one embodiment. Probably not an unreasonable requirement, also given R. 42(1)(e).