Saturday, 5 June 2010

Interpretative Spotlight : “desired”

Claim 1 of the main request read:

1. A printed document of value having at least one authenticity feature in the form of a luminescent substance based on a host lattice doped with at least one rare earth metal which absorbs and is excitable substantially in the visible region of the spectrum and is transparent in at least parts of the IR spectral region, whereby the rare earth metal is holmium and the luminescent substance is present in the volume of the document of value in a concentration such that the desired properties (gewünschte Eigenschaften) of the document of value are only just not impaired.

The Board comes to the conclusion that this claim lacks clarity:

** Translation from the German **

[2.2] The wording of a patent claim has to be clear so that it is possible to examine whether an object is inside the extent of protection of the claim or not.

Claim 1 of the main request […] contains the following wording: “such that the desired properties of the document of value are only just not impaired.” In order to verify whether a document of value reproduces this feature, it is necessary to know whether its “desired properties” are impaired. This presupposes knowledge of what are the desired properties of the document are. There is no definition of these properties in the claim itself. The expression “desired properties” is found in paragraphs [0010] and [0040] of the description of the impugned patent. However, there is no explanation of what is meant.

A skilled person having to assess any document of value among the great number listed in paragraph [0016] of the impugned patent, is not able to ascertain in each and every case which properties were desired by the manufacturer of the respective object. Even if the person carrying out the assessment knew in a particular case, he could not know, when comparing two objects, whether the conformity or the difference concerning one property were desired or not.

Therefore, the wording: “such that the desired properties of the document of value are only just not impaired” is so unclear that it cannot unambiguously characterize the document of value.

[2.3] In [parallel] case T 1312/07 the [patent proprietor] had explained that “desired properties” designated the respective product specification. Even if this interpretation were to be followed, the expression would have to be considered as unclear. It cannot be excluded that product specifications change for various reasons over the period of manufacture of the product. This could entail that an object that did not comply with a specification does so at a later moment in time, or vice versa. In such cases it would not be clear which of the properties are the “desired” properties. There are no indications in the impugned patent that the specification that is valid at the moment of manufacture is decisive. However, a patent claim has to be clear on its own. It follows that the above mentioned interpretation presupposes that the claim, or at least the description, mentions a specification, which the impugned patent does not.

Thus even the interpretation put forward in case T 1312/07, i.e. that the desired properties of a document of value were to be understood as the product specifications of the product of value, cannot lead to a clear claim. […]

[2.5] Thus claim 1 of the main request […] worded in a clear manner and, therefore, does not comply with the requirements of A 84.

To read the whole decision T 1313/07, please click here.