T 641/07 – Surviving In The Jungle Of Standards

Claim 1 as granted read:

Use of organic fibres having a melting point smaller than 300°C, an average length 1 greater than 1 mm and a diameter Ø not exceeding 200 μm, in an ultrahigh-performance concrete in order to improve the fire resistance of the concrete, the amount of organic fibres being such that their volume ranges between 0.1 and 3% of the volume of the concrete after curing and the concrete having a characteristic 28-day compressive strength of at least 120 MPa, a characteristic flexural strength of at least 20 MPa and a spread value in the unhardened state of at least 150 mm, these values being given for a concrete stored and maintained at 20°C, said concrete consisting of a hardened cementitious matrix wherein metal fibres are dispersed, which is obtained by mixing, with water, a composition which comprises, apart from the fibres:

(a) cement;

(b) aggregate particles having a particle size D90 not exceeding 10 mm;

(c) pozzolanic-reaction particles having an elementary size ranging between 0.1 and 100 μm;

(d) at least one dispersing agent;

and meeting the following conditions:

(1) the percentage in weight of water based on the combined weight of the cement (a) and of the particles (c) lies within the 8-24% range;

(2) the metal fibres have an average length l1 of at least 2 mm and an l1/Ø1 ratio of at least 20, Ø1 being the diameter of the fibres;

(3) the ratio, V1/V, of the volume V1 of the metal fibres to the volume V of the organic fibres is greater than 1 and the ratio, l1/l, of the length of the metal fibres to the length of the organic fibres is greater than 1;

(4) the ratio R of the average length l1 of the metal fibres to the size D90 of the aggregate particles is at least 3;

(5) the amount of metal fibres is such that their volume is less than 4% of the volume of the concrete after curing.

The request based on this claim was rejected by the Opposition Division which considered that the measurement of the spread value in the unhardened state was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The patent proprietor filed an appeal against the revocation of the patent.

The Board first establishes that the skilled person reading the patent specification is enabled to reproduce the claimed invention. It then goes on:

*** Translated from the French ***

[2.1] According to the case law of the Boards of appeal, when the definition of an invention refers to one or more parameters – such as here : the 28-day compressive strength, the flexural strength and the spread value in the unhardened state – the skilled person has to be able, not only to carry out the invention over all its claimed extent, but also to check whether said parameters are complied with when the invention is carried out (au cours de son exécution).

[2.2] Considering the two parameters that apply to the concrete after hardening, i.e. the compressive strength and the flexural strength, it has not been contested that the skilled person can check these values when the invention is carried out. In view of the fact that, moreover, the patent specification […] describes the method allowing to determine the numerical values of these parameters in a way that is presumed to be complete, the Board does not see any reason to doubt their validity.

[2.3] As far as the third and last parameter is concerned, the [opponent] has not denied that a concrete having a spread value in the unhardened state as claimed – i.e. of at least 150 mm – can be prepared. However, it firmly contested that the skilled person is enabled to check the value in the light of the pieces of information contained in the patent specification.

[2.4] The Board notes that considering the checking of this parameter, the sole information contained in the patent specification is limited to the indication that “the spread value is measured by the shock table technique (20 blows) according to the standards ASTM C320, ISO 2768-1, EN 459-2” (page 8, lines 37 and 38).

[2.5] Considering this sole indication, the [opponent] has pointed out that the ASTM C 320 standard does not correspond to any listed standard, that the ISO-2768 standard did not concern concretes but tolerances for linear and angular dimensions without individual tolerance indications, and that the EN 459-2 standard concerned measurement methods for building limes. Consequently, none of those standards described a method for measuring the spread value in the unhardened state of a fresh concrete using the shock table technique (20 blows).

[2.6] Notwithstanding the fact that none of the cited standards explicitly refers to a measurement of said spread value, the Board notes that the relevant question is not whether, when taken as such, the information provided in lines 37 and 38 of page 8 of the patent allows the skilled person to check said value, but whether this information, when associated with the global content of the patent specification, allows him to check [the value].

[2.7] When answering this question, it first has to be said that the skilled is the concrete specialist and it is clear that he is aware of the standards that apply to the domain under consideration.

This is why – in agreement with decisions T 171/84, T 226/85 and T 203/83 (sic), which state that the skilled person is able to recognise that there is an error in the specification and rectify it using his knowledge – the Board has no doubt to conclude in the present, case where the error is simply due to the inversion of two figures, that the skilled person is able to identify without any difficulty the error of transcription in the reference to standard “ASTM C 320” and rectify it to read “ASTM C230”, without any undue effort being needed for this rectification.

[2.8] The [opponent] has pointed out that regardless of the above mentioned error in the reference to standard “ASTM C320”, the skilled person would nevertheless have been dissuaded from using “corrected” standard ASTM C 230 because this standard (see document D12) does not describe the measurement of the spread value in the unhardened state of fresh concrete by the shock table technique (20 blows) but rather provides a “flow table” allowing to evaluate the consistency of mortars based on hydraulic cements. The [opponent] added that the terms “flow” and “spread” and “mortar” and “concrete”, respectively, were not synonyms and that D12 does not describe 12 blows, as in the patent, but 25 drops.

The Board cannot follow these arguments because the opposed patent describes that the ultra high performance concretes “conventionally have a spread value of at least 150 mm, […] the spread value being measured by the shock table technique, a standardized technique used in general for mortars” (emphasis by the Board). Thus the skilled person reading the patent specification would receive the information that a technique belonging to the domain or mortars – and not concretes – is to be used for determining the spread value under consideration. As far as the terms “flow” and “spread” are concerned, it is true that they are not interchangeable in the absolute. However, as the ASTM C230 standard aims at measuring the consistency of mortars and as the term “spread” is used in the same context for concretes in the patent, the skilled person would easily recognize the term “flow” to be a synonym for “spread”. The fact that the patent indicates a number of blows that differs with respect to the ASTM C230 standard does not make it incompatible with the latter, because the indication of a number of blows that differs from the number given in said standard makes it abundantly clear that the standard is not to be followed literally but has to be carried out in a different way, in particular by applying a number of blows that is different from the number given in the standard. Anyhow, as explained hereafter (paragraph [3.2]), if the skilled person had any doubt as to how many blows were to be applied, he would only have to repeat one of the examples of the patent and to check whether the spread value obtained corresponds to 20 blows or a different number of blows.

[2.9] The [opponent] has also pointed out that the skilled person reading the patent specification would also be dissuaded from using the other standard cited, i.e. standard EN 459-2, because it concerns building limes and does not describe how a shock table (20 blows) is to be used. It rather describes how to use a jolting flow table (15 blows) in order to measure the diameter of flow of a lime mortar.

The Board does not share this opinion. It cannot be denied that that the shock table measuring technique is different from the jolting table technique – as can be seen from the existence of a specific standard for measuring the spread of fresh concrete by the shock table technique, i.e. standard EN 12350-5 (D5) – but it is clear for the skilled person that the latter standard is not used in the patent because it requires a truncated cone diameter that is much greater (200 mm) than the spread values illustrated by the examples (at least 150 mm).

The Board is of the opinion that the reader of the opposed patent would not be dissuaded from consulting standard EN 459-2, for the same reasons as those mentioned above under point [2.8], and more particularly because the patent mentions that “the spread measurement uses a technique related to mortars” […] Yet it is a mortar that is used in the “flow” value measurement according to EN 459-2. […]

[2.10] Based on these arguments, the Board comes to the conclusion that the work to be supplied by the skilled person in order to determine that it is the devices for measuring the flow diameter of mortars disclosed in the standards ASTM C230 and EN 459-2 which are used for measuring concrete spread values according to the impugned patent, does not amount to an undue burden. As far as standard ISO 2768-1 is concerned, it (as well as standard ASTM C230) being cited in standard EN 459-2 […], the skilled person would have easily recognized that its citation in the patent was related to measurement tolerances for the devices used in the two other standards and not to measurements of the spread values of the concrete.

[2.11] The experimental report D19 filed together with the notice of appeal summarizes the spread value measurements carried out on a concrete that is close to the concrete of example 4 of the patent, using both the flow table described in standard ASTM C230 and the flow table described in standard EN 459-2.

The [opponent] has contested the results of D19 by pointing out that there were major differences between the concrete composition according to example 4 of the revoked patent and the composition according to D19, in particular as far as the diameter of the metallic fibres (D19 : diameter: 175 μm ; example 4 of the patent: 200 μm) and the mixer (patent : Eirich RV02 type mixer, having “high turbulence with high turbulence and rotation of the vessel” […]; D19 : Rayneri type mixer, which, according to the [opponent] is a “much simpler” mixer).

The Board does not contest that the differences may have an influence on the measured spread value but notes that the concrete formulation according to D19 – although slightly different from that of example 4 of the patent – complies with the subject-matter which claims 1 and 16 intend to protect. Moreover, as the [opponent] has not provided any tangible evidence for its objections raised against document D19, the Board does not see any particular reason to doubt the validity of the results that are summarized in this experimental report. As the spread values measured with the flow tables described in both standards are substantially identical (212.5 mm / 212 mm), the Board accepts D19 as proof that both measurements methods mentioned in the contested patent lead to the same results.

The argument of the [opponent] according to which the concrete sample of D19 has undergone 15 blows – instead of the 20 blows mentioned in the patent – is not accepted by the Board because the [patent proprietor] has explained during the oral proceedings that the values that have led the [opponent] to calculate 15 blows were due to a transcription error of the operator. As there was no proof to the contrary, the [patent proprietor’s] argument is accepted.

Nor does the Board follow the argument according to which the cone used for measuring the spread value did not comply with European standard NF EN 459-2 (D13FR) because despite the mention that said cone had to be manufactured from a metal that could resist the corrosive action of the mortar (stainless steel, brass), the Board accepts the technical explanation provided by the [patent proprietor] according to which the duration of the contact between the aluminium mould and the concrete is so short that the influence on the measurement, if any, is tiny. […]

[3.1] Taking into account the above, the only question that remains to be answered is whether, when the above parameter is measured, the skilled person is able to identify the number of blows (or shocks) to be undergone by the device used for measuring the spread value in the unhardened state of a fresh concrete, i.e. one of the flow tables described in standards ASTM C230 or NF EN 459-2.

In order to answer this question, the Board first of all points out once again that – as mentioned above – the examples of the contested patent can be reproduced and that the skilled person is enabled to reproduce them simply by reading the patent specification.

In this context, the skilled person will only have to: first, prepare a concrete according to the claimed invention, by reproducing one of the examples of the contested patent, and secondly, to check whether the spread value of the concrete prepared corresponds to a measurement carried out by applying 20 blows to said measurement device – as mentioned in […] the patent specification – or, alternatively, whether said value corresponds to a measurement carried out by applying 15 or 25 blows to the same device, such as indicated in standards NF EN 459-2 and ASTM C230 cited above.

In the present case the Board is of the opinion, very much as in a similar case having led to decision T 485/00 [1.6] that such a checking procedure – where, in order to identify the measuring method for a parameter, the skilled person only has to reproduce one of the examples of the patent and to compare the value obtained for said parameter to the value specifically described in the patent – cannot reasonably be considered to be an undue effort.

From the above the Board concludes that the instructions provided in the patent are sufficient for the skilled person to check the spread value in the unhardened state of a fresh concrete.

The case was then remitted to the first instance for further processing.

Should you wish to read the whole decision (in French), just click here.

NB: This decision has also been discussed on Laurent Teyssèdre’s blog just yesterday. 

For more decisions on standards and sufficiency, just click here or here.