T 862/08 – Let Lexicographers Be Warned

[5.1] Document D6 is concerned with laser-glazing of a binary eutectic Fe83B17 alloy. This process comprises remelting at least in part the surface of the material through a laser-glazing pass to produce a track of an amorphous structure […]. This first laser-glazing pass complies with the step (1) of the claimed method.

The second laser-beam pass according to the known process overlaps part of the first laser-glazed pass so that the overlapping zone is re-crystallized at least in part because of heat affecting. As a consequence thereof, ultra-fine precipitations of primary crystals are formed in the heat affected zone (HAZ) which satisfies claimed step (2) of devitrifying at least a portion of the metallic glass to a nanocrystalline grain size […].

The [patent proprietor’s] argument that document D6 did not disclose explicitly the formation of nanocrystalline grain sized material cannot be followed for the following reasons.

Firstly, the term “nanocrystalline” as such is open to interpretation in that it does not clearly define a specific range for the grain size. The patent itself explains that the nanocrystalline grains can be “in the order of 10^–9 m” […], or “below 1 μm” […]. Hence, the term “nanocrystalline” fails to permit a clear distinction from the “ultra-fine precipitations of primary crystals” identified in the HAZ according to document D6.

The appellant referred to the definition of “nanocrystalline” which was accepted as being below 100 nanometres in the professional community, as confirmed by statements of Mr Jeffrey E. Shield and Dr Kureti of the University of Karlsruhe (D21). Since however the patent specification itself gives the above mentioned meaning of the term “nanocrystalline”, the statements of Mr Shield and Dr Kureti cannot lead to a different explanation of this term.

However, the appellant’ argument that document D6 is concerned with a binary eutectic Fe83B17 alloy which neither comprises carbon nor a metal of the group of elements specified in claim 1 is agreed with. The subject mater of claim 1 of the main request is therefore novel.

To read the whole decision, click here.

NB : This decision is also commented on Le blog du droit européen.

A related post can be found here.