Saturday, 22 May 2010

Interpretative Spotlight: “added”

From time to time I shall dedicate a small bonus post to interpretative issues. Of course, these questions are strongly linked to their context and could be answered very differently in other cases. There is nothing like precedent in this domain. Nevertheless, I sometimes find it interesting to see to which conclusions the Boards come when putting claims under the microscope.

Claim 8 of the patent as granted read (in its English translation):

Process for the manufacture of a solution of dialkyl peroxydicarbonate in which the alkyl radicals contain 2 or 3 carbon atoms, characterized in that, in a first stage, a dialkyl peroxydicarbonate in which the alkyl radicals contain 2 or 3 carbon atoms is manufactured by reacting, in water, appropriate quantities of alkyl haloformate with an inorganic peroxide in the presence of an inorganic salt added (French original: ajouté) in sufficient quantity to increase the density of the aqueous reaction mixture and, in a second stage, the dialkyl peroxydicarbonate manufactured is isolated by extraction by means of a water-insoluble solvent in order to produce a solution of dialkyl peroxydicarbonate in this solvent.

The word “added” was not present in the corresponding claim of the application as filed. The opponent pointed out that this addition was a violation of A 123(2). The patent proprietor argued that by inserting this term it had limited the claim to situations where the inorganic salt was added voluntarily, in contrast to in-situ production.

Here is what the Board had to say:

[3.2] The argument of the [patent proprietor] according to which the claimed addition of inorganic salt is limited to situations where the operator voluntarily adds [the salt] but does not include addition by in-situ production is not convincing. As a matter of fact, in the absence of any specification (précision) in the claim and in the patent under consideration, this term is to be interpreted in its broadest possible meaning. It, therefore, covers all forms of adding inorganic salt that are conceivable in the context of the claimed processes.

The Board came to the conclusion that A 123(2) had not been violated, but the claim was interpreted broadly and found to lack novelty over the prior art.

To read the whole decision T 1374/06 (in French), please click here.