Wednesday, 7 July 2010

T 2013/08 – Wishful Thinking?


One of the easiest ways to fail paper A of the EQE is to write a “wish claim”. (Been there, done that. ☺) Nevertheless, in real life such claims are not uncommon and often granted. However, when a claim comes under close scrutiny during appeal proceedings, the applicant/proprietor may wish not to have written a wish claim.

Claim 1 of the main request read:

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, and in that the material of the target tube is formed of Cu, Al, Zr, Mo, W, Ti, Cr, Ni, Ta, Nb, Ag, Zn, Bi, Sn, or an alloy based on at least one of these elements or of a ceramic material.

** Translation from the German **

[1.1] The explanations made by the applicant with regard to the percentage of the degree of wetting […] appear to be acceptable. […]

The Board agrees with the Examining Division that the degree of wetting first and foremost depends on the materials used (i.e. the material of the carrier tube, the target material, the adhesive layer and the solder material) as these materials determine the thermal expansion coefficient and the tendency of these materials to form alloys with each other or the tendency of a material to oxidise under the soldering conditions. The [applicant] has argued that the wetting degree as such is independent from the materials involved […] but it has not provided any evidence for this assertion, so that the assertion cannot be accepted.

Claim 1 of all requests defines a connecting layer that “has a wetting degree of >90%”. The appellant argues that such a wetting degree is not reached in the exemplary embodiment of [document] D1.

However, D1 apparently does not teach to carry out any other process steps than the description of the present application in its description of the manufacturing of the claimed tubular targets according to claim 1.

Either the feature “has a wetting degree of >90%” defines a desideratum without there being a disclosure of the necessary process steps in the description or without claim 1 […] containing these necessary features in the form of a product-by-process claim, respectively. Otherwise the process of the prior art, e.g. according to D1, would have to obtain the same desired results when using adhesive layers using nickel and copper – which are preferred layer materials according to the present application […] – and the same Indium solder material […].

Incidentally, the wetting degree has not been determined for any of the examples 1 to 4 of the present application – which have been realized with the metals Al, Mo, Cr and Al. The present application does not describe a method for non destructively determining the wetting degree on target materials […].

If claim 1 does not define a desideratum, then one has to assume that the wetting degree depends on the material. Then claim 1 should define all possible materials for the carrier tube and the solder material to be used, as well as the optional and preferred adhesive layers, in order to fulfil the requirements of A 84. […]

Thus the wetting degree does not appear to be suitable to clearly distinguish the subject-matter of claim 1 from the subject-matter of D1.

Incidentally, we have discovered a more learned way of saying “wish claim”: just say “claim defining a desideratum”. ☺ 

Next time we shall see what happened when the applicant followed the advice of the Board and introduced certain materials into the claim.

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

3 comments:

Laurent said...

A better "wish" claim would have been :

"a tubular target which has a wetting degree above 90%, and which is novel and involves inventive step".

Or

"a tubular target which has a wetting degree above 90%, excepting tubular targets that were obvious for a person skilled in the art at the priority date of the present application".

That seems clearer and clearly patentable.

Rimbaud said...

To make clear whether the claim is a wish or not, the Board should have performed the strongly logical Monty Python's "Duck Test".
Quoted from: href=http://www.imdb.com/title/tt0071853/quotes
King Arthur: A Duck.
Sir Bedevere: ...Exactly. So, logically...
Peasant 1: If she weighed the same as a duck... she's made of wood.
Sir Bedevere: And therefore...
Peasant 2: ...A wish!

see also: href=http://www.cs.swan.ac.uk/~csneal/SystemSpec/Different.html

Oliver G. Randl said...

@Laurent: There is further room for progress. Perhaps all grounds for opposition could be addressed in the claim?

@Rimbaud: Thanks for reminding us of the great classics.