Thursday, 8 July 2010

T 2013/08 – Singling Out Prohibited

In the preceding post we saw that the main request was found to be a “wish claim” to be rejected for lack of clarity (and also for lack of inventive step). The first and second auxiliary requests shared this fate. The applicant also filed a third auxiliary request claim 1 in which it included details on the materials to be used, as suggested by the Board:

Tubular target with a cylindrical carrier tube and at least one target tube arranged on its outer surface, wherein a connecting layer is arranged between the target tube and the carrier tube, characterised in that the connecting layer is electrically conducting and has a wetting degree of >90%, in that the degree of wetting is present both on the exterior surface of the carrier tube and on the interior surface of the target tube, in that the carrier tube is made of steel or titanium, in that the connecting layer has a solder material formed of In, which is arranged directly on the carrier tube, in that the carrier tube is optionally coated with a nickel-based adhesive layer, and in that the material of the target tube is formed of Mo.

** Translation from the German **

[2] Claim 1 of the third auxiliary request is based on claims 1, 3, 6, 9, 11 and 12 and page 3, lines 7 to 8 (carrier tube “made of steel or titanium”).

[2.1] However, the deletion of all the materials except Mo from the list of possible target tube materials according to original claim 6 of the application (“Cu, Al, Zr, Mo, W, Ti, Cr, Ni, Ta, Nb, Ag, Zn, Bi, Sn, Si, or an alloy based on at least one of these elements or of a ceramic material”) is a first purposeful (gezielte) selection.

The limitation of claim 1 to a solder material according to original claim 9 is a second selection among the two disclosed possibilities (“conducting adhesive or a solder material”) and the purposeful selection of “In” among the list of solder materials of original claim 11 (“contains or is formed of In, Sn, InSn, SnBi, or other low melting solder alloys having a liquidus temperature below 300° C”) is a third selection.

Finally, the limitation of claim 1 according to which the optional nickel-based adhesive layer is provided on the carrier tube only is a fourth selection from the three possibilities named in claim 12, i.e. that “the carrier tube and/or the target tube are coated with a nickel-based adhesive layer.”

[2.2] Thus it is obvious that these four selections have resulted in a “singling out” from several lists, whereby an embodiment corresponding to a combination of features has been created in an artificial way, which embodiment as such has no basis in the application as filed (see T 894/05 [1.4], T 555/04 [6.2.2], T 801/02 [2.2.1-2.2.2], T 994/97 [3], T 942/98 [2.1,2.4]).

[2.3] On the other hand, when departing from the second exemplary embodiment of the application, according to which a steel carrier tube was provided with a Ni intermediate layer and then soldered to a Mo tube the interior surface of which has also been provided with a Ni layer, by means of In solder material, i.e. where a Ni adhesive layer is provided on the carrier tube and on the target tube, there has been an intermediate generalisation concerning the carrier tube material titanium while at the same time omitting the second Ni adhesive layer provided on the target tube and rendering optional the first Ni adhesive layer on the carrier tube, respectively. This has no basis in the application documents as filed either. […]

[2.4] The [applicant] has argued that although there is no explicit basis for omitting the second Ni adhesive layer during the manufacture of a tubular target according to the second exemplary embodiment, the skilled person would have seen an implicit disclosure of this omission of the Ni layer.

This argument cannot be accepted because according to the Board there is no implicit general disclosure in the original documents which would make the skilled person realize, unambiguously and doubtlessly, that when the target tube is made of molybdenum the second nickel-based adhesive layer on the target tube can be omitted and that the first nickel-based adhesive layer does not necessarily have to be provided on the carrier tube, respectively. In particular, when considering the second exemplary embodiment, wherein a molybdenum tube is used […], the skilled person is taught the contrary.

[2.5] It follows from what has been said that claim 1 of the third auxiliary request does not comply with the requirements of A 123(2). As a consequence, this request cannot be granted.

There is much to be said on the present application of A 123(2) by the Boards, and we will come back on this subject in several forthcoming posts. The present decision is not spectacular but it demonstrates the tendency of the Boards to consider that choices among alternatives in claims and the resulting “singling out” can result in violations of A 123(2). It is not because you provide alternatives in a claim that you have provided possible fallback positions. Obviously, this will have an impact on how patents are to be drafted, but we will deal with this question later.

If you wish to read the whole decision (in German), you may find it here.


Anonymous said...

as an american practitioner now beginning my epa training, i greatly appreciate this blog.

"It is not because you provide alternatives in a claim that you have provided possible fallback positions."

It is my understanding that you are saying poorly drafted dependent claims may fail as fallback positions.

Laurent said...

It seems that even without alternatives in the claims, the mere combination of 2 claims can sometimes infringe Art 123(2) EPC.

See for example T972/04 :

The only way is now to specifically disclose all the possible combinations... and to add pages and pages of description (and to pay taxes above 35 pages).

Oliver said...

@Anonymous: It depends on what you call "poor drafting". As you certainly know, having many claims is very expensive in Europe, so providing alternatives (A or B) in claims was a handy way to prepare fallback positions. Under the new paradigm, to avoid problems (except perhaps the one mentioned by Laurent) you would have to have a dependent claim for A and another for B. So if having "ors" in claims is poor drafting, then yes, poorly drafted claims may fail as fallback positions.

Anonymous said...

If it is not allowable to select from (multiple) "and/or" lists, then I don't see why it would be allowable to select from a series of dependent claims, each claim referring back to any one of the previous claims. (See this example in an old comment of mine.)

I also don't see why it would be allowable to add features A and B taken from the description to an independent claim, if the description merely states that an embodiment "may have feature A" and "may have feature B", without explicitly disclosing that it may have both together.

I'm not really expecting that EDs, ODs and BoAs will soon start to reject these common practices, but a coherent approach to Art. 123(2) seems to require it, at least in the light of decisions like this one.

funes said...

@Anonymous: the test for allowance of amendments is not whether the description describes the combination "explicitly disclosing that it may have both together", but rather whether the skilled person would directly and unambiguously derive the combination of both features from the original description, taking into account matter which is implicit to a person skilled in the art (T194/84).

I cannot see why the skilled person would not directly and unambiguously derive from a single "and/or" list that one or more of these feature can be incorporated in isolation to the invention (that is the significance of an "and/or", or am I missing something?).

Regarding combinations of multiple lists, I tend to agree with the present BoA. It is difficult to argue how the skilled person would unambiguously derive such subject-matter.


Anonymous said...

I so often write "not clearly and unambiguously derivable" in official communications that I almost wish I had a special key on the keyboard for inserting that phrase... Sometimes I cynically think to myself that it would be so much simpler to simply grant patents with blatant instances of added subject-matter and squarely standing with both feet in the 123(2)/123(3) trap, but these remain only thoughts, as a flawed patent is still intimidating and costly for the public. So I keep on writing these objections, which in the end are also a service to the applicants, even though they'll never acknowledge this.

Anonymous said...

I agree with T 194/84, but the logic of T 2013/08 implies that a list of items/features does not implicitly disclose a combination of two selections from the list. If there is no implicit disclosure, only an explicit disclosure of the combination elsewhere in the description will do. (Ok, an implicit disclosure of the combination elsewhere in the description will do as well. My point is that the list itself is not sufficient.)

In my 2nd paragraph I'm thinking of the following "list":

[description of an embodiment corresponding to claim 1]
The embodiment may have [feature A].
The embodiemnt may have [feature B].
The embodiment may have [feature J].

On the basis of the above "description", is it allowable to amend claim 1 to comprise both features A and B? Following decisions like T 2013/08 and T 1374/07 I say no, since the amendment involves two selections from the list A, B, C, ..., J.

(Note that T 1374/07 considers the case of two selections from the same list.)