T 206/08 - Unexplored Fields

One of the more delicate questions for patent drafters is how many examples have to be disclosed in order for the invention to be sufficiently disclosed. Obviously, this depends on the breadth of the claimed subject-matter and on the relevant skilled person. In the mechanical realm, very often one exemplary embodiment will be enough, but in the field of chemistry more than that may be required.

The present appeal is from the decision of the Opposition Division (OD) to revoke the opposed patent.

Claim 1 of the main request before the Board (which was also the first auxiliary request before the OD) read:

1. A detergent composition comprising a protease and from 0.00018% to 0.06% pure enzyme by weight of total composition of:

(a) α-amylase characterized by having a specific activity at least 25% higher than the specific activity of Termamyl® at a temperature range of 25°C to 55°C and at a pH value in the range of 8 to 10, measured by the Phadebas® α-amylase activity assay comprising diluting said α- amylase in 50 mM Britton-Robinson buffer, adding 1 ml of this α-amylase solution to 5 ml 50 mM Britton-Robinson buffer containing one Phadebas® tablet suspended therein and measuring the absorbance at 620 nm after 10 or 15 minutes of incubation (testing time) in the range of 0.2 to 2.0 absorbance units; and/or;

(b) α-amylase according (a) comprising the amino sequence shown in SEQ ID No. 1 or an α-amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.1 and/or;

(c) α-amylase according (a) comprising the amino sequence shown in SEQ ID No.2 or an α-amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.2 and/or;

(d) α-amylase according (a) comprising the following amino sequence in the N-terminal: His-His-Asn-Gly-Thr-Asn-Gly-Thr-Met-Met-Gln- Tyr-Phe-Glu-Trp-Tyr-Leu-Pro-Asn-Asp (SEQ ID No.3) or an α-amylase being at least 80% identical with the amino acid sequence shown (SEQ ID No.3) in the N-terminal and/or;

(e) α-amylase according (a-d) wherein the α- amylase is obtained from an alkalophilic Bacillus species and/or

(f) α-amylase according to (e) wherein the amylase is obtained from any of the strains NCIB 12289, NCIB 12512, NCIB 12513 and DSM 935 and/or;

(h) Variant of a parent α-amylase, which parent α- amylase (i) has one of the amino acid sequences shown in SEQ ID No. 1 , ID No.2 or ID No.4 respectively, or (ii) displays at least 80% identity with one or more of said amino acid sequences, in which variants: (i) at least one amino acid residue of said parent α-amylase has been deleted; and/or (ii) at least one amino acid residue of said parent α-amylase has been replaced by a different amino acid residue; and/or (iii) at least one amino acid residue has been inserted relative to said parent α-amylase; said variant having an α-amylase activity and exhibiting at least one of the following properties relative to said parent α-amylase: increased thermostability, increased stability towards oxidation, reduced Ca ion dependency, increased stability and/or a-amylolytic activity at neutral to relatively high pH values, increased a-amylolytic activity at relatively high temperature and increase or decrease of the isoelectric point (pI) so as to better match the pI value for α-amylase variant to the pH of the medium.

The Board raises a sufficiency problem.

[3.1] This claim […] defines detergent compositions containing protease and a defined amount of α-amylases (AA). In particular, the claimed compositions may comprise any AA that displays a superior amylolytic activity in the PAA assay as defined in feature “(a)” (due to the option “and/or” at the end of this feature).

[3.2] According to the established jurisprudence of the Boards of Appeal the requirement for sufficient disclosure should be objected to by rendering credible that there exist serious doubts, substantiated by verifiable facts, that the disclosure provided is insufficient for carrying out the invention.

It is also established jurisprudence of the Boards of Appeal that, even though a reasonable number of trial and error experiments is permissible, there must be available adequate instructions in the specification or on the basis of common general knowledge which would lead the skilled person necessarily and directly towards success through the evaluation of initial failures or through an acceptable statistical expectation rate in the case of random experiments (see Case Law of the BoA of the EPO, 6th edition 2010, point II.A.4.2).

[3.3] In the present case, the definition of the AAs suitable for preparing the claimed detergent compositions only in terms of the superior activity to be verified as described in feature “(a)” extends the area in which the skilled person should possibly search further suitable AAs to all naturally occurring or engineered amylolytic enzymes.

On the other hand, the patent in suit just discloses (also via the reference to documents D1 and D2) only a few examples of the AAs complying with feature “(a)” all manifestly similar in their structure, in particular at the N-terminal.

Under these circumstances, the fact brought forward by the [opponents], and undisputed by the [patent proprietor], that there exist many other sorts of AAs whose structures can be completely different from those of the AAs exemplified in the patent in suit, renders evident that the person skilled in the art enters a totally unexplored field when searching for further embodiments of the claimed subject-matter among the AAs substantially different from the few exemplified in the patent in suit.

Accordingly, he cannot have any particular expectation of success when randomly attempting the PAA assay among these AAs. Alternatively, the skilled person is obliged to start a complete research program in the hope of finding any criteria (e.g. as to which other segments of amino acid sequence, in addition to those present in the sequences already specified in claim 1, are more frequently associated with the required superior enzymatic activity) for selectively limiting the group of AAs in which to search.

Hence, the Board concludes that the skilled person is very likely to face a large amount of experimental work, before being able to realize embodiments of the claimed detergent composition based on AAs substantially different from the few exemplified.

[3.4] Therefore, the Board finds that the subject-matter of claim 1 is not sufficiently disclosed and, thus, that the Appellant’s main request is not allowable in view of A 83.

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T 206/08 - Active, Passive, All The Same ?

This appeal is from the decision of the Opposition Division to revoke the opposed patent.

The Board found the main and first auxiliary requests on file to lack sufficiency of disclosure under A 83.

Claim 1 of the second auxiliary request on file read:

1. A detergent composition comprising from 0.005% to 0.1% pure enzyme by weight of total composition of a protease and from 0.00024% to 0.048% pure enzyme by weight of total composition of:

(a) an α-amylase characterized by having a specific activity at least 25% higher than the specific activity of Termamyl® at a temperature range of 25°C to 55°C and at a pH value in the range of 8 to 10, measured by the Phadebas® α- amylase activity assay comprising diluting said α-amylase in 50 mM Britton-Robinson buffer, adding 1 ml of this α-amylase solution to 5 ml 50 mM Britton-Robinson buffer containing one Phadebas® tablet suspended therein and measuring the absorbance at 620 nm after 10 or 15 minutes of incubation (testing time) in the range of 0.2 to 2.0 absorbance units; and

(b) the α-amylase according to (a) comprising the amino sequence shown in SEQ ID No. 1 or an α- amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.1 or;

(c) the α-amylase according (a) comprising the amino sequence shown in SEQ ID No.2 or an α- amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.2 or;

(d) the α-amylase according (a) comprising the following amino sequence in the N-terminal: His-His-Asn-Gly-Thr-Asn-Gly-Thr-Met-Met-Gln- Tyr-Phe-Glu-Trp-Tyr-Leu-Pro-Asn-Asp (SEQ ID No.3) or an α-amylase being at least 80% identical with the amino acid sequence shown (SEQ ID No.3) in the N-terminal

wherein the α-amylase is obtained from an alkalophilic Bacillus species and/or

is obtained from any of the strains NCIB 12289, NCIB 12512, NCIB 12513 and DSM 935.

The opponents argued that the expression “obtained from” did not comply with the requirements of A 123(2). The Board does not agree:

[5.1] In the [opponents’] opinion the wording “obtained from”, present twice in the final part of claim 1 of the second auxiliary request (for specifying the microorganisms from which the α-amylases (AAs) must be obtained […]), is not supported in the patent application as originally filed, because the meaning of this wording is possibly technically encompassed but not directly and unambiguously disclosed by the passages in the original description that define the AAs of the invention as “obtainable from” the relevant microorganisms. Nor would the expression “produced by” present in the […] originally filed description […] correspond to “obtained from”.

The Board notes that the [opponents] have provided no supporting evidence for the allegation that the expressions “produced by” and “obtained from” would be generally acknowledged to possess clearly distinct meanings.

It appears instead to the Board that the expression “produced by” is used in the referred passage […]

“In the context of the present invention, the term “obtainable from” is intended not only to indicate an amylase produced by a Bacillus strain but also an amylase encoded by a DNA sequence isolated from such a Bacillus strain and produced in an host organism transformed with said DNA sequence.”

to express substantially the same meaning normally given to “obtained from”, i.e. just to indicate that the enzyme has been synthesized by the specified microorganism(s).

Hence the Board concludes that the wording “obtained from” introduced in claim 1 does not violate A 123(2) already because it corresponds to the expression “produced by” of the above-cited passage of the original patent application.

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T 917/07 – Ticking Is Not Enough

One of the trickier questions concerning the grounds for opposition is whether by raising – and, as the case may be, substantiating - the ground of inventive step an opponent also implicitly raises the ground of novelty, and vice versa.

In G 7/95 [headnote], the Enlarged Board (EBA) has made it clear that

“In a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1) and A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.”

I am not aware of an EBA decision dealing with the converse situation where the patent had been opposed on the ground of novelty only and where the ground of lack of inventive step had been raised only during the appeal proceedings. However, the same reasoning should hold true, and this is indeed the conclusion of T 928/93 [3].

Of course, the normal precautionary reaction of opponents would be to raise both grounds, even if at the time of filing one had only arguments for one of them. Therefore, the Boards have spent some thought on what to do with unsubstantiated grounds.

T 131/01 has pointed out that

“In a case where a patent has been opposed under A 100(a) on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant to R 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee.”

Does this also hold true for the converse situation, where the grounds of lack of novelty and lack of inventive step have been raised but where only the lack of inventive step has been substantiated? That is the question dealt with in the present decision.

*** Translated from the German ***

[3] On form 2300.1, which can be used for filing an opposition, the box “lack of novelty” had been ticked, but the lack of novelty was not discussed in the notice of opposition, nor in the subsequent opposition proceedings. According to the established case law of the Boards of appeal (see, for instance, T 105/94) a ground for opposition that has not been substantiated is deemed not to have been raised.

According to decision G 10/91 [18] of the EBA, in order for a new ground of opposition to be examined in appeal proceedings, the patent proprietor has to give its approval to the introduction of a this new ground.

In the present case the [patent proprietor] has refused its approval, so that the ground of lack of novelty cannot be admitted in the appeal proceedings.

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T 1795/07 – Acting As If

From time to time there are errors in decisions to grant a patent. The normal remedy is to request correction under R 140, which states:

“In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.”

Such a correction may take place during opposition proceedings (you might remember that there is a pending referral to the EBA on that topic : G 1/10), but apparently this is not the only way to overcome an error in a decision to grant. The present decision shows that the Opposition Division (OD) and the Board of appeals may act as if the correction had been carried out.

Claim 1 as granted read:

1. A detergent composition containing

(a) a water-soluble builder; and

(b) an enzyme

wherein a means is provided for delaying the release to a wash solution of said enzyme relative to the release of said water-soluble builder such that in the T50 test method herein described the time to achieve a concentration that is 50% of the ultimate concentration of said water-soluble builder is less than 60 seconds and the time to achieve a concentration that is 50% of the ultimate concentration of said enzyme is more than 50 seconds, wherein the means comprise a coating which delays the release of the enzyme and also comprise one or more of (1) a coating on the builder which accelerates release of the builder and (2) selection of the particle size of the builder to less than 1200 µm and an average particle size of 1100 to 500 µm.

The published claim differs from its originally granted version (the “Druckexemplar” prepared by the Examining Division (ED)) in that the expression “50 seconds” of the published claim was instead “90 seconds” in the originally granted version.

In its response to the notice of opposition, the patent proprietor requested, inter alia, the correction of the error of transcription:

This issue resurfaced before the Board of appeal, after the OD had revoked the patent:

[1.1] It is apparent that claim 1 of the published version of the patent in suit contains an error of transcription in respect of the version originally approved by the patent proprietor and that the ED has decided to grant. This error was already mentioned during the opposition proceedings and the decision under appeal is manifestly based on the originally granted version of this claim.

Accordingly, also the following decision is reasoned as if the wording of granted claim 1 would not contain such evident transcription error and, thus, would define the minimum T50 of the enzyme as “more than 90 seconds” (rather than “more than 50 seconds”).

I wonder what the legal basis for “acting as if” might be. Where does this discretion come from?

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T 1329/07 – Beyond Established Science

This appeal is against the refusal of an application by the Examining Division (ED), on the ground of insufficiency of disclosure (A 83).

Claim 1 of the main request on file read:

Apparatus for interrogating a sample that exhibits molecular rotation, the apparatus comprising: a container adapted for receiving said sample, said container having both magnetic and electromagnetic shielding, an adjustable Gaussian noise injector for injecting Gaussian noise into the sample, with the sample in said container, and for adjusting the level of the injected Gaussian noise such that a low- frequency electromagnetic emission at the sample is enhanced, a detector for detecting an electromagnetic time-domain signal composed of the enhanced low-frequency electromagnetic emission of the sample and the injected Gaussian noise, a storage device for storing said time-domain signal and a second time-domain signal separately detected from the same or a similar sample, and an electronic computer which is adapted to receive the stored signals from the storage device, and to process the detected time-domain signal to generate an output that includes information relating to low-frequency signal components that are characteristic of the sample.

A 84

[2.1.1] Claim 1 defines an apparatus for interrogating a sample that exhibits molecular rotation. According to the claim, an adjustable Gaussian noise generator is employed to enhance a low-frequency electromagnetic emission at the sample, the term “enhance” implying that the sample is (steadily) emitting a low-frequency radiation. Thus the sample has the following properties:

i) it exhibits molecular rotation; and

ii) it emits low-frequency electromagnetic radiation.

[2.1.2] It is noted that the appellant in its Grounds of Appeal argued that the patent application takes the existence of low-frequency emission of a sample as a fact. Apparently, apart from the requirement that the sample exhibits molecular rotation, no further conditions for this phenomenon to occur are required, at least the patent application does not disclose such conditions. Rather the sample may be in gaseous, liquid or even solid form other than a solid metal […]; and the sample is enclosed in a container having both magnetic and electromagnetic shielding […], implying that, without the noise applied, the sample is not exposed to an external electromagnetic or magnetic field.

[2.1.3] In its Communication of 4 May 2009 the Board explained that, while the effect of a moving or rotating dipole in an external magnetic field producing electromagnetic radiation is known from the field of electrodynamics, a phenomenon of a sample spontaneously emitting electromagnetic radiation is unknown in established electromagnetic theory. In particular the established theory of electrodynamics does not leave room for a spontaneous emission of low-frequency radiation by a sample that exhibits (i.e. that is able to undergo) molecular rotation, unless the molecule actually moves/rotates in an external magnetic field.

[2.1.4] Therefore the Board finds that the expression “such that a low-frequency electromagnetic emission at the sample is enhanced” is obscure for which reason the claim does not meet the requirements of A 84.

A 83

[2.2.1] In its decision, the ED reasoned that, according to the known theories on molecular spectroscopy as documented in textbooks, for identifying rotational or vibrational levels in molecules, electromagnetic waves having wavelengths in the infrared part of the electromagnetic spectrum are needed and that electromagnetic waves in the frequency range lower or equal to 50KHz (“low-frequency”) would not be able to cause a detectable effect in such molecules. The Board concurs with this position in that, at least according to well-established theory, applying such a low-frequency signal to a sample that exhibits molecular rotation does not lead to any measurable effect. Therefore, in attempting to reproduce the claimed apparatus and method for interrogating a sample, the skilled person could not rely on the established theory on molecular spectroscopy for predicting any result.

[2.2.2] In the Grounds of Appeal […] it is argued that “sample-molecules emit low-frequency signals” which emission is […] already present, even without the application of a Gaussian noise signal.

The established theory of electrodynamics does not leave room for a spontaneous emission of low-frequency radiation by a “sample that exhibits” (i.e. that is able to undergo) molecular rotation, unless the molecule actually moves/rotates in an external magnetic field […]. Therefore, even if the purported effect that the so-called “sample-source emission” would be present, the skilled person in attempting to reproduce the claimed apparatus and method could not use the theory of electrodynamics for predicting any result.

[2.2.3] [… T]he appellant argues that

“the fact that the underlying physical mechanisms … are not exactly understood in the art can not be regarded as prejudicial for the patentability of the present invention”.

The Board concurs with this argument insofar as the EPC does not exclude the patenting of “revolutionary” inventions. However, as explained in decision T 541/96 [6.2], the provisions of A 83 require that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person and that, in particular

“if the invention seems, at least at first, to offend against the generally accepted laws of physics and established theories, the disclosure should be detailed enough to prove to a skilled person conversant with mainstream science and technology that the invention is indeed feasible (i.e. susceptible of industrial application). This implies, inter alia, the provision of all the data which the skilled person would need to carry out the claimed invention, since such a person, not being able to derive such data from any generally accepted theory, cannot be expected to implement the teaching of the invention just by trial and error”.

Contrary to the opinion of the appellant, that this decision is “vague” in defining the level or reference for a disclosure to be sufficient, the Board finds that the requirements summarised in decision T 541/96 [6.2] are quite unambiguous.

The Board also notes that these criteria have also been applied in other more recent decisions, see T 1785/06 [3.4.3] and see the Case law of the Boards of Appeal, 6th edition 2010, Section II.A.7.

[2.2.4] Concerning the present patent application it is observed that:

i) An interrogation of a sample exhibiting molecular rotation using low-frequency electromagnetic waves for identifying or detecting sample properties is, according to the theory of molecular spectroscopy, not possible, therefore the skilled person is not able to derive any data from this theory;

ii) Classical electrodynamics does not describe or explain “electromagnetic sample-source emissions”, at least not without the simultaneous presence of magnetic fields and moving charges; hence, this theory cannot be used by the skilled person to predict or verify the proper conditions for reproducing the claimed apparatus and/or method in a successful way;
iii) This implies that, for a successful reproduction of the apparatus, method and the results in Figures 11 - 15, the skilled person would have to rely entirely on the original application documents, because the general accepted theory of electromagnetic waves and spectroscopy are of no use to him.

[2.2.5] In this respect in the Board’s opinion the skilled person, if studying the present disclosure, is left with a number of questions, because details, necessary for its successful reproducing, are lacking:

i) [… T]he sample may be temperature controlled to a preset or selected temperature. However, with respect to the Examples […] no temperatures are disclosed; the appellant has referred to paragraph [0122] which discloses that the sample is “typically a liquid sample” from which the appellant concludes that it should be recorded at liquid phase temperature. However in the same sentence it is disclosed that the sample “… may be gaseous or solid or semi-solid as well, as long as at least one component of the sample has one or more rotational degrees of freedom”. Therefore this passage does not allow one to draw a conclusion concerning the temperatures applied.

ii) The Examples also do not disclose values of the applied magnetic field at the Helmholtz coils. In this respect the statement […] that “noise is applied and adjusted until the noise is 30 to 35 decibels above the molecular electromagnetic emissions sought to be detected” is of no assistance since, as explained before, the skilled person familiar with the field of electrodynamics and molecular spectroscopy cannot obtain any information about the expected level of “molecular electromagnetic emissions” from the established theories;

iii) Finally, although Figures 11 - 15 show “spectral plots” in dependence of frequency, and “data” are listed in Tables 1 to 3, the skilled person does not have information to relate such data to a deterministic model which would enable him to reproduce the claimed “interrogation of a sample that exhibits molecular rotation” in a predictable way.

It therefore appears that the skilled person, while not being able to derive from the description the teaching necessary for reproducing the claimed apparatus from established scientific theories because the purported conditions are in apparent contradiction with these theories, is also not presented with all the data to implement the invention without undue experimentation.

[2.2.6] [… T]he appellant has argued that in its opinion the patent application disclosed all the required data so that the apparatus and method can be reproduced by the skilled person, as was illustrated by the declarations of Dr. Herr and Mr. Fugal.

[2.2.7] These arguments are not found to be conclusive by the Board: as explained in the Board’s Communication of 2 February 2010, it understands from the declaration of Dr. Herr that he was not involved in the generation and collection of the data, and had only been involved in the data processing.

[2.2.8] The data discussed in the context of the declaration of Mr. Fugal cannot convince the Board, because apparently these data have been collected at the premises of the appellant, presumably employing the apparatus of the appellant. Therefore the collection of these data is not comparable with the position in which the skilled person finds himself if, starting from scratch and only having at his disposal the original patent application and his background in the technical field of physics, tries to reproduce the apparatus and method as originally disclosed. This in particular because, on the one hand, he understands that a sample exhibiting molecular rotation and emitting low-frequency radiation is the basis of the disclosure but, on the other hand, he is not in a position to provide such a sample with the desired behaviour, at least not starting from established physics theories. This implies that in the original patent application there is essential information missing. […]

[2.2.10] For these reasons the main request is not allowable.

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T 491/08 - Insufficient

The appeal concerns the refusal of an application by the Examining Division (ED).

Claim 1 of the main request on file read:

Use of
(1) a nucleic acid vaccine and
(2) a recombinant NYVAC or ALVAC pox virus vaccine encoding one or more of the same antigens encoded by the nucleic acid vaccine

in the preparation of a first and second medicament respectively to potentiate a CD8+ response to human immunodeficiency virus-1 (HIV-1) epitopes in a human, wherein the nucleic acid and recombinant pox virus vaccines are capable of entering the cells of the human and intracellularly producing HIV-specific peptides that are presented on the cell’s MHC class I molecules in an amount sufficient to stimulate a CD8+ response, and further, wherein administration of the first and second medicaments potentiates an immune response compared to administration of either the nucleic acid or the recombinant pox virus by itself.

[1] Under the EPC 1973 a patent for a further medical application could, pursuant to case law established by decision G 5/83, be granted for a claim directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application (“Swiss-type claim”).

[2] Claim 1 of the main request, which like claim 1 of all other of Appellants’ requests is drafted in the so-called Swiss-type format, relates to the use of a nucleic acid vaccine and of a recombinant NYVAC or ALVAC pox virus vaccine for the preparation of a first and second medicament respectively. The two vaccines which encode one or more of the same antigens potentiate the CD8+ response to HIV-1 epitopes in a human.

[3] The application […] contains two examples.

Example 1 describes the administration of DNA priming vaccines in combination with NYVAC-SIVgag-pol-env to Rhesus macaques. The Board has no reason to doubt that the macaque/SIV system is an animal model for human/HIV. The study design included 24 animals which were divided into three groups. Group A was vaccinated with a nonrecombinant NYVAC virus, group B was vaccinated with NYVAC-SIVgag-pol-env and the animals of group C were vaccinated with DNA plasmids constructs expressing the gag and env proteins of SIV239, followed by vaccination with NYVAC-SIVgag-pol-env. The exact inoculation protocol is shown in figure 1. Groups A and B received four vaccinations (at weeks 0, 4, 24 and 52), group C was primed with DNA-SIVgag-env in weeks 0, 4 and 12 and boosted with NYVAC-SIVgag-pol-env in weeks 24 and 52. The results are presented in figures 2 to 8 and discussed on pages 19 to 22. The animals of group C showed a tenfold higher lymphoproliferative response to p27 Gag and Env than the group B animals, they responded to more SIV groups and the responses were higher and their virological outcome was ameliorated after challenge with pathological SIV.

[4] Page 22, lines 5 to 6, at the end of example 1 reads:

“ALVAC-based vaccine are similarly analyzed demonstrating that they also potentiate the immune response when used in conjunction with DNA vaccines.”

Example 2 mentions “a vaccine regimen of a DNA priming vaccine followed by inoculation with a vaccine such as NYVAC or ALVAC”, for humans at risk for HIV infection or for HIV infected patients. The DNA priming vaccine, of which multiple inoculations are typically administered, is said to express the HIV-1 gag,pro,tat,nef,rev and env genes. The patient, subsequently, is injected with a vaccine comprising about 108 pfu of a recombinant pox virus, e.g. NYVAC, expressing HIV-1 gag,pro,tat,nef, rev and env epitopes. The combination of these two vaccines is said to provide “a protective immune response in uninfected patients and a therapeutic effect in those individuals already infected with HIV-1”.

[5] The only experimental data disclosed in the application refer to the animal model used in example 1 with the specific study design described therein, i.e. use of defined antigens and of a specific viral vector and inoculation following a precisely defined administration protocol. The application discloses no data for any other animal model study with a different experimental design, nor for any test carried out with humans.

[6] Where a therapeutic application is claimed in the form allowed by the Enlarged Board of Appeal in its decision G 5/83, i.e. in the form of the use of a substance or composition for the manufacture of a medicament for a defined therapeutic application, attaining the claimed therapeutic effect is a functional technical feature of the claim (see G 2/88 and G 6/88 [headnote III;9]. As a consequence, under A 83, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application.

Taking into account the intrinsic difficulties for a compound to be officially certified as a drug (many years of experimental tests and high developmental costs), the patent system does not require an absolute proof that the compound is approved as a drug before it may be claimed as such. However, it is required that the patent application provides some information in the form of, for example, experimental tests, to the effect that the claimed compound, administered as stated in the claims, has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the application per se. Once this evidence is available from the patent application, then post-published evidence may be taken into account, but only to back up the findings in the patent application in relation to the use of the ingredient as a pharmaceutical, and not in itself to establish sufficiency of disclosure (cf. T 609/02 [9]).

[7] In the present case, the application provides experimental data concerning the results of one specific example only, namely the animal model of claim 1. The example is carried out by following a study design wherein the antigens, the viral vector and the inoculation protocol are clearly defined (see point [3] above). In contrast to this, the subject-matter of claim 1 of Appellants’ main request refers to the use of two compounds for the preparation of a first and second vaccine medicament respectively, wherein neither the antigens encoded by said compounds (“one or more of the same antigens”), nor the viral vector (“a recombinant NYVAC or ALVAC pox virus”) are defined as in example 1. No inoculation protocol is mentioned in claim 1.

[8] Consequently, the patent application itself does provide any information that the generically described compounds according to claim 1, when administered to a human by whatever inoculation protocol, have a direct effect on a metabolic mechanism specifically involved in HIV-1 infection.

Following the rationale of decision T 609/02 it has to be examined if such a mechanism, which could form an acceptable basis for generic claim 1, is known from the prior art.

[9] Document D1 discloses studies with mice and macaques evaluating a consecutive immunization strategy involving priming with DNA and boosting with rFPV vaccines encoding common HIV-1 antigens. The exact study design, including construction of plasmids and recombinant poxviruses as well as immunization protocols, is given on pages 10181 to 10182 (“Materials and Methods”).

Document D4 demonstrates the immunogenicity of primeboost vaccination against retroviral antigens in rhesus macaques who were given consecutive inocula of DNA and modified vaccinia virus Ankara (MVA) encoding SIVgag sequences as multiepitope constructs (see abstract). High levels of CTL’s specific for the used epitope were elicited in the animals. The exact study design is indicated on pages 7525 to 7526).

Document D5 discloses that a particular sequence of subunit immunizations with pre-erythrocytic antigens of Plasmodium berghei, consisting of single dose priming with plasmid DNA followed by a single boost with recombinant MVA expressing the same antigen, induced unprecedented complete protection against P. berghei sporozite challenge in two strains of mice (abstract). The study shows that the protection, among others, depends on the specific vaccinia virus strain used […].

[10] Thus, all these relevant prior art documents, referring to prime-boost vaccination using a nucleic acid vaccine and a recombinant viral vector conditions, disclose a defined study design including number and kind of used antigens, construction and nature of used DNA plasmids and recombinant viral vectors and the precise inoculation protocol. Nothing in their disclosure can be interpreted as permitting data obtained by studies with a defined experimental set-up to be extrapolated to other studies with different or generically defined parameters.

[11] The Appellants argued that the disclosure in post published document D16 should be taken into account, showing that the therapeutic effect of claim 1, potentiation of a CD8+ response to HIV-1 in humans, is indeed achieved by the claimed vaccines.

Document D16, published almost eight years after the priority date of the present patent application, reports phase I trials evaluating the safety and immunogenicity of a prime-boost regimen comprising recombinant DNA and the poxvirus vector NYVAC, both expressing a common immunogen consisting of Env, Gag, Pol, and Nef polypeptide domain from HIV-1clade C isolate, CN54. 40 volunteers were randomized to receive DNA C or nothing on day 0 and at week 4, followed by NYVAC C at weeks 20 and 24. The primary immunogenicity endpoints were measured at weeks 26 and 28 by the quantification of T cell responses […].

The Board notes that, not only does document D16 report trials following a defined and specific study design (definition of immunogens and vectors plus a precise inoculation protocol), but also that this study design differs considerably from the study design of the animal model trial in example 1 and the, rather hypothetical, experiment in example 2 of the patent application.

According to decision T 609/02, the disclosure in post-published document D16 might only be taken into account for the question of sufficiency of disclosure if it was used to backup the findings in the patent application and not to establish sufficiency of disclosure on its own (see point [6] above). However, document D16, just like the disclosure in the patent application per se, does not allow any conclusion to be drawn on the medical applicability of the vaccines according to claim 1, which are only generically described and for which no inoculation protocol is indicated.

[12] The Board holds that a presumption exists that, in general, a patent application relates to an invention which is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The weight of arguments and evidence required to rebut this presumption depends on its strength. A strong presumption requires more substantial arguments and evidence than a weak one. If, as in the present case, a patent application does not contain detailed information of how to put the invention into practice; this requires less substantial arguments and evidence. Serious doubts whether the skilled person can carry out the invention as claimed, e.g. in the form of comprehensible and plausible arguments, are sufficient (see for instance decision T 63/06 [3.3.1]).

In the light of the disclosure of the present application and considering the disclosure in the prior art and in post-published documents, the Board does not agree that the objection under A 83, lack of sufficient disclosure, is based on hypothetical plausibility considerations only and not, as required by decision T 19/90, on serious doubts, substantiated by verifiable facts.

As a consequence, the Board decides that the application does not disclose the invention according to claim 1 of the main request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, as required by A 83.

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T 195/09 – Dangers Of Mono & Poly

The present decision deals with appeals of all parties against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 as granted read:

1. A method for washing soiled dishes through a series of sequential cycles comprising a penultimate rinse cycle and a final rinse cycle, the method comprising charging a mechanical dishwashing composition comprising:

(A) an anti-scaling polymer formed from

• 50-99% by weight of the polymer of an olefinically unsaturated carboxylic monomer;
• 1 to 50% of at least one monomer unit selected from the group consisting of copolymerizable sulfonate polymers, copolymerizable nonionic monomers and mixtures thereof;

(B) 0.1 to 99.9% of a vehicle releasing the anti- scaling polymer into the penultimate and final rinse cycle of a dishwashing sequence, characterised in that the dosage of the anti-scaling polymer is such that the weight ratio of the level of dosed antiscalant in the penultimate rinse cycle to that in the final rinse cycle is from about 1:10 to about 10:1.

The OD found that the original documents of the application did not contain any support for the use of an anti-scaling polymer formed from copolymerizable sulfonated polymers. It therefore found claim 1 as granted not to comply with A 123(2). As a matter of fact, the application as filed referred to copolymerizable sulfonated monomers; the reference to polymers had been introduced via a claim amendment filed in response to a communication under A 96(2). (Does this ring a bell? Trap ahead!)

As regards claim 1 according to then pending first and second auxiliary requests - wherein the wording “copolymerizable sulfonated polymers” contained in claim 1 as granted had been amended into “copolymerizable sulfonated monomers” - the OD found that this amendment could not be considered to be an obvious correction of an error since it was not immediately evident that the reference to copolymerizable sulfonated polymers was erroneous. However, by considering that claim 7 as granted and the overall description of the patent in suit related extensively to anti-scaling polymers formed from copolymerizable sulfonated monomers, the protection of the granted patent had to be understood as including both types of anti-scaling polymers formed from copolymerizable sulfonated polymers or copolymerizable sulfonated monomers; therefore, claim 1 according to the first and second auxiliary requests did not contravene the requirements of A 123(3).

Main request (patent as granted)

A 123(2)

[1.1.1] Claim 1 as granted relates to a method for automatic dishwashing wherein the used machine dishwashing composition contains the anti-scaling polymer (A) and 0.1 to 99.9% by weight of a vehicle (B) capable of releasing such an anti-scaling polymer during the last two rinse cycles.

Moreover, the anti-scaling polymer (A) is formed from (i.e. consists of) 50 to 99.9% by weight of olefinically unsaturated carboxylic monomers and 0.1 to 50% by weight of copolymerizable sulfonated polymers, nonionic monomers or mixtures thereof.

It is undisputed that the original documents of the application do not disclose copolymerizable sulfonate polymers as possible monomers of the anti-scaling polymer (A).

[1.1.2] As found in the decision under appeal, it was common general knowledge that so-called macromonomers or macromers, i.e. oligomers or polymers with a polymerizable end group, can be used as monomers in the preparation of copolymers […].

Therefore, the skilled person, in reading claim 1, would not have considered the wording of this claim, requiring inter alia the use of sulfonate polymers as comonomers of the anti-scaling polymer (A), to be manifestly incorrect and would have interpreted the claim as it stands, i.e. as relating also to the use of anti-scaling polymers (A) formed by copolymerizing sulfonated polymers with olefinically unsaturated carboxylic acids.

Since these polymers are not disclosed in the documents of the application as originally filed, the Board concludes that claim 1 as granted does not comply with the requirements of A 123(2).

This was not contested by the patent proprietor.

Auxiliary request (patent as maintained by the OD)

A 123(3)

[2.1.1] Claim 1 of the set of claims according to the auxiliary request differs from claim 1 as granted inter alia insofar as the wording “copolymerizable sulfonated polymers” contained in claim 1 as granted has been amended into “copolymerizable sulfonated monomers”.

Therefore, this claim extends to methods in which the used composition comprises as anti-scaling polymers (A) those formed from olefinically unsaturated carboxylic monomers and copolymerizable sulfonated monomers, which polymers were not encompassed by the definition of the anti-scaling polymers (A) of granted claim 1.

Moreover, the remaining claims are all dependent on claim 1. Therefore, claim 1 represents the broadest scope of the patent in suit according to the auxiliary request.

[2.1.2] According to A 69(1), the extent of protection conferred by a European patent shall be determined by the claims, which shall be interpreted by using the description and the drawings, if available.

In the patent proprietor’s view, by considering that the description of the patent in suit does not mention copolymerizable sulfonated polymers and relates instead extensively to copolymerizable sulfonated monomers, claim 1 as granted would have been interpreted by the skilled person to relate not only to the use of anti-scaling polymers (A) formed from copolymerizable sulfonated polymers but also to the use of anti-scaling polymers (A) formed from copolymerizable sulfonated monomers. This interpretation would be supported by the wording of granted claim 7 relating to specific sulfonated monomers.

However, in the Board’s view, the fact that the description relates extensively to copolymerizable sulfonated monomers and not to copolymerizable sulfonated polymers amounts only to a discrepancy between granted claim 1 and the description but, in the absence of any specific indication in the description, it cannot be considered to be a teaching that the wording “copolymerizable sulfonated polymers” in claim 1 should be interpreted as having a broader meaning than what would be understood by the skilled person.

Moreover, even though the granted claim 7, which is dependent on claim 1, lists specific sulfonated monomers, the skilled person would interpret this dependent claim only as relating to the anti-scaling polymers (A) of claim 1 containing additionally such specific sulfonated monomers.

Therefore, as explained in point [1.1.2] above, claim 1 as granted would have been understood by the skilled person as it stands, i.e. as relating also to the use of anti-scaling polymers (A) which are formed from olefinically unsaturated carboxylic monomers and copolymerizable sulfonated polymers, which anti-scaling polymers (A) do not include polymers formed solely from olefinically unsaturated carboxylic monomers and generic sulfonated monomers as encompassed by claim 1 according to the auxiliary request.

[2.1.3] The patent proprietor submitted also that, by considering the description, the skilled person would have understood that the granted claim 1 referred erroneously to copolymerizable sulfonated polymers instead of copolymerizable sulfonated monomers and that the amended claim 1 according to the auxiliary request, by reporting the truly intended technical features of the invention, would not extend the scope of the granted patent.

However, as explained in points [1.1.2] and [2.1.2] above, claim 1 as granted would have been understood by the skilled person as it stands. Therefore, also this argument of the patent proprietor cannot justify the allowability under A 123(3) of the auxiliary request.

[2.1.4] The Board remarks also that the decisions G 3/89 and G 11/91, cited by the patent proprietor during oral proceedings, regard only the allowability of a request for correction of an error and the relationship between R 88 EPC 1973 and A 123(2). Therefore, these decisions cannot apply to the present case wherein it has to be decided on the allowability of the amended patent under A 123(3).

[2.1.5] The patent proprietor referred also to the decision T 108/91, in which it was decided that an inaccurate technical statement in a granted claim, which statement is evidently inconsistent with the totality of the disclosure of the patent and would contravene the requirements of A 123(2), can be replaced with an accurate statement of the technical features involved without infringing A 123(3) (see headnote and points [2.2] and [2.3]).

However, the Board remarks that this decision is older than the decision G 1/93 of the Enlarged Board of Appeal of the EPO, which ruled on a similar point of law.

In particular, it was decided in G 1/93 (headnote 1 and point [13]), that if a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of A 123(2) and which also limits the scope of protection conferred by the patent (for example, an inaccurate technical statement inconsistent with the totality of the disclosure of the patent), such a patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under A 100(c) prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by A 123(3). Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating A 123(3), i.e. for replacing the unallowable technical feature limiting the scope of protection conferred by the patent as granted with another technical feature which restricts the scope of the granted patent.

Therefore, according to G 1/93, it is not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim. In this respect decision T 108/91 has been clearly overruled by G 1/93.

Moreover, the conclusions of the decision G 1/93 are also applicable to the present case wherein the technical feature “anti-scaling polymer (A) formed from copolymerizable sulfonated polymers” limiting the scope of the granted patent and being unallowable under A 123(2), was replaced by the technical feature “anti-scaling polymer (A) formed from copolymerizable sulfonated monomers” which does not restrict the scope of the granted patent but extends its scope to subject-matter not encompassed by the granted claims.

[2.1.6] Therefore, the Board concludes that the patent according to the auxiliary request contravenes the requirements of A 123(3). […]

The patent is revoked.

Unfortunately, in Epoland some traps are inescapable. Perhaps a future revision of the EPC might find inspiration in a special remedy available to Monopoly players:

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NB: The blog du droit européen des brevets has also published a post on this topic, here.

T 892/08 – Arbitrary Selection, Again

The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke its patent.

Claim 1 on file read:

A detergent granule or tablet comprising an anionic surfactant system which comprises an anionic sulphate surfactant and an anionic suphonate surfactant and other detergent active ingredients, the granule or tablet comprising at least a first and a second particulate component and optionally a binding agent, characterised in that the ratio of anionic sulphate surfactant to anionic sulphonate surfactant in the particulate components and, when present, in the binding agent, is less than 1:4 or more than 4:1, or even less than 1:5 or more than 5:1; and in that the first particulate component comprises an anionic sulphonate surfactant and a waterinsoluble builder material, wherein the ratio of the anionic sulphonate surfactant to the waterinsoluble builder material in the component is less than 1:6 or more than 6:1; and in that the second particulate component comprises an anionic sulphate surfactant and an inorganic salt, wherein either (a) the ratio of the anionic sulphate surfactant to the inorganic salt in the component is less than 1:5 or more than 5:1; or (b) the detergent granule or tablet comprises a polymeric builder material, provided that when the polymeric builder material is present in a particulate component or binding agent comprising an anionic sulphate or even any anionic surfactant, the ratio of the anionic surfactant or anionic sulphate surfactant to polymeric builder material is less than 1:4 or more than 3:1.

The Board finds the claim to be novel but to lack inventive step:

[1.6] The Board notes the undisputable fact that, as extensively discussed by the [opponent] already in its written reply to the grounds of appeal, the examples in document D5 and D7 disclose non-homogeneous detergent granules made from multi-component particulates whose ingredients are present at the same or at about the same amount ratios as those defined in claim 1 under consideration.

Hence, the Board finds that the skilled person, starting from the prior art of example 1 of document D4, and aiming at alternative ways to put into practice the technical teaching of this citation (i.e. to avoid intimate mixing of sulphate and sulphonate) would arrive at the subject-matter of present claim 1 without exercising any inventive ingenuity, by just arbitrarily selecting among the other particulate streams that have already been used for producing nonhomogeneous detergent granules in which sulphate and sulphonate are present in distinct phases within the granules, the multi-component particulates used in the examples of document D5, or of document D7 or slight modifications thereof.

[1.7] The [patent proprietor] has also argued that, in case the Board found that the objective technical problem solved consisted in the provision of an alternative, the claimed invention was still inventive over document D4 because this latter gives no motivation to the skilled person to include water-insoluble builder materials and inorganic salts into the surfactant ingredients in the manner required by claim 1; therefore, while the skilled person could make such a selection it was unfounded to state that he would. It referred to the Case Law of the Boards of Appeal such as T 2/83, T 9/84 and T 7/86 that would substantiate that even if a skilled man could (rather than would) make a selection, this did not render that selection obvious.

The Board finds that the cited Case Law (whereby the decision indicated as “T 9/84” appears to be that of case T 90/84) only addresses situations in which the skilled person is expecting some improvement or advantage by means of the selection (see T 2/83 [7]; T 90/84 [9] and T 7/86 [6.6]).

Therefore, these decisions are not applicable to the present case relating to the provision of an alternative only. The Board considers instead relevant in the present case the established Case Law that, when the technical problem is simply that of providing a further composition of matter or a further method, i.e. simply that of providing an alternative to the prior art, any feature or combination of features already conventional for that sort of composition of matter or method represents an equally suggested or obvious solution to the posed problem.

Indeed, the Boards have repeatedly established that the simple act of arbitrarily selecting one among equally obvious alternative variations is deprived of any inventive character (see e.g. T 939/92 [2.5.3] or T 311/95 [2.5.7]).

Hence, even if the skilled person “could” also have taken into consideration other conventional modifications of the prior art, the existence of such other obvious solutions does not render inventive the one leading to the presently claimed subject-matter.

[1.8] Thus, the Board concludes that the subject-matter of claim 1 of the sole request of the [patent proprietor] does not involve an inventive step vis-à-vis the prior art.

Hence, this request is found not allowable in view of A 56.

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T 314/06 – Let Not Man Put Asunder …

… what the application hath joined together. This is, in a nutshell, what the present decision has to say on the subject of a divisional application which had been refused by the Examining Division (ED) on the ground of a violation of A 76(1), second sentence, EPC 1973. It also contains the correction of a surprising faux pas of the ED and a noteworthy statement on a broad statement intended to create a basis for specific combinations of the disclosed features.

NB: All references to EPC articles refer to the EPC 1973.

[4] According to A 76(1), second sentence, a European divisional application 

“may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed”. […]

[5] According to the established jurisprudence of the boards of appeal it is a necessary and sufficient condition for a divisional application to comply with A 76(1), second sentence, that anything disclosed in the divisional application must be directly and unambiguously derivable from what is disclosed in the earlier application as filed (see G 1/06 [order]).

[6] In the present decision according to the state of the file, the ED argued that in order to comply with A 76(1), second sentence, the claims of a divisional application should be derivable from the claims of the earlier application, not merely from the description of the earlier application as filed. The ED based its reasoning in particular on considerations regarding the legal security of third parties.

[7] The board does not agree with the ED’s interpretation of A 76(1), second sentence, EPC 1973. The Enlarged Board of Appeal (EBA) explained in decision G 1/06 [5.3;9.2] why the legal security of third parties is sufficiently protected when A 76(1), second sentence, is interpreted as referring to the whole technical content of the earlier application as filed, rather than only to the claimed subject-matter of the earlier application as filed.

[8] Hence the relevant question in the present case is not, as argued by the ED, whether the subject-matter of claims 1 and 4 of the present application could be derived from the claims of the earlier application as filed, but, as argued by the appellant, whether the subject-matter of claims 1 and 4 was directly and unambiguously derivable from the whole technical content of the earlier application as filed.

Disclosure of the earlier application as filed

[9.1] Disclosure of the claims Independent claim 1 of the earlier application as filed reads as follows:

“A method for calibrating a printing device, comprising the steps of:

- printing by said printing device a first wedge (10, 11, 12, 13);

- printing by said printing device a second wedge (10, 11, 12, 13), different from said first wedge (10, 11, 12, 13);

- determining for at least one patch (21) of said first wedge (10, 11, 12, 13) a first magnitude of a first quantity, wherein said first quantity is selected from the group of a psychophysical quantity and a psychovisual quantity;

- using said first magnitude in calibrating said printing device; characterised in that the method further comprises the steps of: - determining for at least one patch of said second wedge (10, 11, 12, 13) a second magnitude of a second quantity, wherein said second quantity is different from said first quantity;

- using said second magnitude in calibrating said printing device.”

Independent claim 9 of the earlier application as filed is directed at a system having features essentially corresponding to the steps of the above method of claim 1.

Hence both independent claims 1 and 9 of the earlier application relate to a calibration using a first quantity selected from the group of a psychophysical quantity and a psychovisual quantity, and a second quantity different from said first quantity.

The features of the method of claim 1 according to the present divisional application are found only in claim 7, dependent on claim 1, of the earlier application as filed.

Accordingly, it can be concluded from the above that the claims of the earlier application disclose the features of claim 1 of the present divisional application only in combination with the features of claim 1 of earlier application, i.e. as a further refinement of the invention claimed in claim 1 of the earlier application.

The above conclusion is not disputed by the appellant.

However, the disclosure of the remaining parts of the earlier application as filed, i.e. the description and drawings, must also be considered.

Disclosure of the description and drawings of the earlier application as filed

“Objects of the Invention” section

[9.2] The section of the description entitled “Objects of the invention” […] defines the objects of the invention as follows:

- to provide a calibration method and a system therefor that take into account changes of characteristics of the printing system;

- to provide a calibration method and a system therefor that are robust with respect to printer instability.

“Summary of the Invention” section

The section entitled “Summary of the invention” […] starts […] by stating that

“The above mentioned objects are realised by a method and a system in accordance with the present invention as claimed in the independent claims. The dependent claims set out preferred embodiments”.

In the remainder of the “Summary of the invention” section […] except paragraph [0045] discussed in the next paragraph below, the invention is presented as relating to a calibration method or system using a first quantity selected from the group of a psychophysical quantity and a psychovisual quantity, and a second quantity different from said first quantity, i.e. as relating to subject-matter corresponding to the method of claim 1 and to the system of claim 9 of the earlier application as filed. Importantly, the “Summary of the invention” section does not disclose any of the main features of dependent claim 7 of the earlier application as filed, i.e. the mapping of a first value for printing a 100% patch to a second smaller value.

In other words, the “Summary of the invention” section, paragraph [0045] excepted, consistently presents the invention as being what is claimed in independent claims 1 and 9, and does not present the features of claim 7 of the earlier application as filed as an independent invention.

There is however also paragraph [0045] in the “Summary of the invention” section which reads:

“As will become apparent from the following description and drawings, some of the disclosed embodiments do not require all the features of the invention as claimed in the independent claims; some of these disclosed embodiments may be the subject of a divisional application of the present patent application.”

Paragraph [0045], however, does not indicate which features of the invention are not required and for which embodiments. It is thus left open whether or not the expression “some of the disclosed embodiments” was meant to include the third embodiment. The board considers that the broad statement of paragraph [0045] does not by itself render any specific combination of features from the disclosed embodiments directly and unambiguously derivable as a separate invention.

“Detailed Description of the Invention” section

This section […] discloses four embodiments of the invention. The embodiment comprising the features in claim 1 of the present divisional application and in claim 7 of the earlier application as filed is the third embodiment.

The description of the third embodiment in […] the earlier application as filed does not contain any statement making it unambiguously clear that the third embodiment was meant to be more than just an embodiment of the invention.

The third embodiment is also mentioned in [a passage] where it is stated that the mapping of a first value for printing a 100% patch to a second smaller value, which is specific to the third embodiment, could preferably be applied as a first step before carrying out, as a second step, a calibration method according to claim 1 of the earlier application as filed. However, whereas the first step is described as optional […], there is, by way of contrast, no indication in these two paragraphs that the second step might be optional. [Two other paragraphs] which also mention the third embodiment, do not provide such an indication either.

Thus, summarising, the disclosure of the description and drawings is consistent with the disclosure of the claims of the earlier application as filed in presenting the subject-matter of claim 1 of the present divisional application, not as a separate invention, but as features which must be taken in combination with the features of claim 1 of the earlier application as filed. Thus the subject-matter of present claim 1 is not directly and unambiguously derivable from the earlier application.

The [applicant’s] arguments

[10] The appellant’s arguments have been summarised and listed as (a) to (g) […].

NB : Most of these arguments have already been dealt with above or are not really relevant to the case. Argument (g) is more interesting:

(g) In a similar situation in decision T 211/95 [4.3.3;4.4], the board held that it was clear to the person skilled in the art that the earlier application contained two different teachings, the two teachings each pertaining to a different problem, and realised by different, independent technical features. Thus, the claimed invention of the earlier application solved a first problem ([4.1]) and the claimed invention of the divisional application solved a second problem ([4.2]), different from the first one. The two teachings were technically unconnected and could each be claimed separately. The skilled person would clearly see that the set of features according to the subject-matter claimed in the parent application was not essential to the subject-matter claimed in the divisional application.

In the present case, the invention of claim 1 of the present divisional application solves the problem of […] “a printing device that is not stable due to the fact that the maximum amount of marking particles, that the device applies to the receiving substrate, changes over time for one or more colorants”, whereas the invention of claim 1 of the earlier application pertains to a calibration method that incorporates characteristics of the human visual system and wherein the quantities that are used to calibrate the different colorants of the printing device are optimally chosen […]. Hence the two inventions in the earlier application are based on two unconnected teachings and solved by different, independent technical features. For the reasons underlying T 211/95, the two inventions should be allowed to be claimed separately.

Regarding argument (g), based on decision T 211/95, the present board reaffirms that the necessary and sufficient condition established by the case law of the boards of appeal, in particular by the EBA (see, for instance, G 1/06 [order]), for deciding whether a divisional application meets the requirement of A 76(1), second sentence, is that anything disclosed in the divisional application must be directly and unambiguously derivable from what is disclosed in the earlier application as filed. This strict criterion is the same as is applied for determining whether a claimed subject-matter is novel with respect to a prior art disclosure.

In decision T 211/95, the board reached the conclusion that the earlier application as filed contained two separate inventions, even though only one of them was claimed. In order to reach this conclusion, the board took into account the whole disclosure of the earlier application as filed, including the problems and teachings of the two inventions, and came to the conclusion that the two inventions were technically unconnected and could be claimed separately. 

The present board understands the board’s reasoning in T 211/95 as being that the requirement of A 76(1), second sentence, was complied with because it was implicit from the whole disclosure of the earlier application as filed that there were two separate inventions which could be claimed separately. This is apparent from the repeated reference in T 211/95 to the “technical teachings” (“technische Lehren”) contained in the earlier application, which were considered as pertaining to different problems and independent technical features for the solution of the problems.

In other words, the board in T 211/95, based on the different facts of that case, held that the whole disclosure of the earlier application as filed contained at least implicitly two separate inventions.

In the present case, the board explained […] why the whole disclosure of the earlier application as filed does not present the subject-matter of claim 1 of the present divisional application as a separate invention.

Moreover, the technical teachings in the present case, taking particular account of underlying problems and the direct and unambiguous disclosure of inventions solving these problems, do not change the board’s conclusion for the following reasons.

The third embodiment deals with cases where the maximum amount of marking particles changes over time for one or more colorants […]. The earlier application […] explains that a calibration method using densities and dot gain does not work in this case. By contrast, the calibration method of the third embodiment is said to compensate for this effect […]. The board understands this to mean that the changes over time are compensated by the calibration method of the invention including the maximum amount (100 % patch), whereas the mapping as now claimed is merely a possible solution to the setting of the 100 % patch which is applied to the calibration curve in the beginning (the standard state) before any changes occur which are then compensated by the calibration method of the invention. This has the effect that, for a specific change (chroma decreasing over time), even the 100 % patch may be compensated by the calibration method of the invention (by increasing the amount of colorants beyond the setting in the beginning), and printing of the 100 % patch remains stable […]. This understanding is confirmed by the last nine words of claim 7 of the earlier application (“when said printing device comes fresh from the factory”).

Conclusion

[11 For the above reasons, the board concludes that the present divisional application does not meet the requirement of A 76(1), second sentence.

Hence, the appealed decision cannot be set aside. […]

The appeal is dismissed.

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