T 600/07 – Dangerous Markush

Here is another example of an extremely severe application of A 123(2) by the Boards of appeal.

Claims 1 and 4 to 7 as originally filed read:

1. Detergent and cleaner additive comprising

a) 40 to 98.9% by weight of carrier material with an oil absorption capacity of at least 20 g/100 g

b) 1 to 50% by weight of one or more binders which are liquid at temperatures up to 40°C

c) 0.1 to 40% by weight of a detergent and cleaner ingredient from the group of enzymes, pH extenders, fluorescent agents, dyes, foam inhibitors, antiredeposition agents, optical brighteners, greying inhibitors, colour transfer inhibitors and corrosion inhibitors and mixtures thereof.

4. Detergent and cleaner additive according to one of claims 1 to 3, characterized in that the detergent and cleaner additives comprise one or several substances taken from the group of polyethylene glycols and polypropylene glycols, glycerol, glycerol carbonate, ethylene glycol, propylene glycol, propylene carbonate as well as perfume oils, paraffins, silicon oils and ethoxylated fat alcohols as binders which are liquid at temperatures up to 40°C.

5. Detergent and cleaner additive according to one of Claims 1 to 4, characterized in that it comprises the carrier material in amounts of from 50 to 95% by weight, preferably from 55 to 85% by weight and in particular from 60 to 80% by weight, in each case based on the additive.

6. Detergent and cleaner additive according to one of claims 1 to 5, characterized in that the binder(s) which are liquid at temperatures up to 40°C are used in amounts of from 5 to 47.5% by weight, preferably from 7.5 to 45% by weight, and in particular from 10 to 40% by weight, in each case based on the additive.

7. Detergent and cleaner additive according to one of Claims 1 to 6, characterized in that it comprises the detergent and cleaner ingredient from the group of enzymes, pH extenders, fluorescent agents, dyes, foam inhibitors, antiredeposition agents, optical brighteners, greying inhibitors, colour transfer inhibitors and corrosion inhibitors and mixtures thereof in amounts of from 1 to 15% by weight, preferably from 2 to 10% by weight and in particular from 2.5 to 5% by weight, in each case based on the additive.

Claim 1 of the main request filed by the patent proprietor read:

1. Detergent and cleaner additive comprising

a) 55 to 85% by weight of carrier material with an oil absorption capacity of at least 20 g/100 g and a particle size of less than 200 μm,

b) 10 to 40% by weight of one or more binders which are liquid at temperatures up to 40°C, taken from the group of polyethylene glycols and polypropylene glycols, glycerol, 4-hydroxymethyl-l,3-dioxolan-2-one, ethylene glycol, propylene glycol and 4-methyl-l,3-dioxolan-2-one and perfume oils,

c) 2 to 10% by weight of a detergent and cleaner ingredient from the group of enzymes, pH extenders, fluorescent agents, dyes, foam inhibitors, antiredeposition agents, optical brighteners, greying inhibitors, colour transfer inhibitors and corrosion inhibitors and mixtures thereof.

The Board comes to the conclusion that A 123(2) has not been complied with:

[1.2] In claim 1 according to the main request […] the detergent and cleaner additives now comprise 55 to 85% by weight of carrier material, 2 to 10% by weight of small component ingredients as well as 10 to 40% by weight of one or more binders which are liquid at temperatures up to 40°C, the latter being chosen from the group of polyethylene glycols and polypropylene glycols, glycerol, 4-hydroxymethyl-l,3-dioxolan-2-one, ethylene glycol, propylene glycol and 4-methyl-l,3-dioxolan-2-one as well as perfume oils.

[1.3] According to the established case law of the Boards of appeal (see also “Case Law of the Boards of appeal”, 5th edition 2006, Chapter III.A.2) it is decisive for the allowability of amendments under A 123(2) that the amendments are directly and unambiguously derivable from the application as filed.

[1.4] According to the [patent proprietor] original claim 6 discloses the range of from 10 to 40% by weight of binder as preferred range and claim 4 discloses the possibility of using one or several of the eleven substances listed therein as binder(s). Therefore claim 4 also disclosed the combinations of selected members of the list of substances, such that claim 1 resulted from the original claims alone, without there being a need to delete or add anything.

[1.5] The Board can follow this argument insofar as original claim 6 discloses the claimed range of from 10 to 40% by weight as particularly preferred variant in addition to two less preferred ranges (5 to 47.5% by weight and 7.5 to 45% by weight).

Original claim 4 also discloses that the eleven substances of said list can be used as binders in detergent and cleaner additives. However, only this single list of eleven substances is concretely disclosed […].

In contrast, the list of eight binders given in claim 1 as amended is not mentioned anywhere in the original application and it is not clear to what extent the selected eight substances are to be preferred over the three substances (paraffins, silicon oils and ethoxylated fat alcohols) that have been omitted. Therefore, the present selection of eight substances does not enjoy any priority.

Hence the [patent proprietor], when defining the subject-matter of claim 1, has selected the preferred range of from 10 to 40% by weight and combined it with a group of eight substances that has been arbitrarily extracted from the list of eleven substances. This subject-matter is encompassed by the original application but not disclosed as such therein.

The Board is of the opinion that for this reason alone the requirements of A 123(2) are not complied with because for the skilled person, in the absence of any indication, the new combination of features is not directly and unambiguously derivable from the original application.

[1.6] In addition, the two other ranges for the carrier material and for the small component are also disclosed in the original application but not as particularly preferred ranges (cf. original claims 5 and 7 and the corresponding part of the description) and never in combination with the preferred range of from 10 to 40% by weight for the binder(s).

Among the six examples originally present, which all were covered by the original combination of ranges, two (examples 3 and 5) are not encompassed by the new combination because they either have too little (0.5% by weight) or too much (13% by weight) small components. There is no indication of any preference for the remaining four examples in the original application.

[1.7] Thus for the skilled person the specific combination of more or less preferred ranges is not directly and unambiguously derivable from the original documents, and even less so in combination with the now reduced list of binders.

[1.8] Therefore, claim 1 of the main request [...] does not satisfy the requirements of A 123(2) and cannot be granted.

This decision shows that extreme caution has to be taken when combining basic, preferred and particularly preferred ranges. Moreover, it raises the question of how to interpret a Markush claim. Is a Markush claim nothing but a convenient and concise way of merging a certain number of claims into one? If so, selecting only some of the elements of the list and omitting the others should not be a problem, because (if we let aside the question of claims fees) the same objective could have been reached with drafting one claim per element. (And as far as I know, nobody has ever argued that the mere deletion of claims could violate A 123(2).) However, the present decision appears to say that things are more complicated: taking some elements from the Markush claim and leaving the others is understood as a selection, with tough consequences for the patent proprietor.

To read the whole decision (in German), please click here.