Monday, 17 January 2011

T 1088/08 – Dangerous Percentages

The applicant appealed against the decision of the Examining Division to refuse its application. Claim 1 before the Board was drafted as follows:
1. Dietary food for use in the complementary dietary treatment of diabetes mellitus, comprising a lipid phase (Fettphase), wherein the composition in the lipid phase contains:
(a) 10 to 30% of triglycerides of octanoic and/or decanoic acid (caprylic acid; C8:0 and/or capric acid; C10:0);
(b) 20% to 60% of oleic acid;
(c) 10 to 35% of linoleic acid;
(d) 3 to 10% of α-linolenic acid.
The Board raised a clarity objection.

*** Translation from the German ***

[3.1] The appellant is to be approved in that in the present case the objection of lack of clarity was first raised by the Board of appeal. However, this way of proceeding is consistent with the principle established by G 10/93 [headnotes] according to which the board can include requirements which the ED did not take into consideration in the proceedings if there is reason to believe that such a requirement has not been met. The appellant has been given sufficient opportunities to express its opinion in regard of the objection of lack of clarity raised by the Board, as the objections had already been raised in the written proceedings in the notifications dated March 24 and July 23, 2010.

[3.2] In claim 1 the content of components (a) to (d) is given in “%”. The appellant has not contested that this indication as such leaves open whether this means percents by weight, percents by volume or mol percents.

[3.2.1] The appellant has expressed the opinion that based on the indication of grams on page 12 and in the example of the application as filed, it was clear that the percentages in claim 1 have to be percents by weight. However, as already mentioned in T 1129/97 [2.1.2], the clarity requirement enshrined in A 84, as the EPO’s boards of appeal have consistently ruled, demands that the claims be clear per se for a person skilled in the art with general knowledge of the technical field in question, without the need to refer to the description of the patent in suit. As a consequence, the appellant’s argument based on the description cannot succeed.

[3.2.2] It remains to be checked whether the skilled person, based on his general knowledge, would have understood the indication “%” in claim 1 to mean percent by weight.

In this context the appellant referred to D13 […] where it is stated that the percentages in D13 refer to weight.

D13 discloses guidelines (Leitsätze) for edible fats and oils. First it has to be stated that claim 1 does not necessarily contain edible fats or edible oils. Rather, claim 1 is very generally directed to dietary food comprising a lipid phase. Even the reference in the application as filed […] to olive, colza, canola and sunflower oil as sources for the acids of the claimed lipid phase does not imply that those oils have to be contained in a composition according to the claims.

Therefore, general knowledge that is possibly evidenced by D13 in the context of edible fats and oils cannot be taken into account for the interpretation of claim 1 that is not limited to edible fats and oils. Thus the appellant’s argument based on D13 cannot succeed.

Independently, the appellant’s argumentation is not consistent with the publication referred to as D9 in the examination proceedings, which concerns polyunsaturated fatty acids found in edible oils of maritime origin. In particular, Table 1 of this document shows unambiguously that fatty acid contents of fish and seal oils are also given in mol percents. Therefore, even if the lipid phase referred to in claim 1 were limited to edible fats and edible oils, the percentages in claim 1 would not necessarily refer to percents by weight.

The appellant has also pointed out that the skilled person would read percentages as percents by weight if the final product as claimed was a (semi)solid product such as for example margarine or fatty spread (Streichfett). Even if this argument were correct, it cannot apply to the whole extent of claim 1 because this claim is not limited to margarine or fatty spread. Thus this argument of the appellant is not persuasive either.

From the above it follows that it is not clear to the skilled person having general knowledge whether the percentages in claim 1 refer to percents by weight, percents by volume or mol percents.

However, depending on [the nature of the percentage], claim 1 covers different contents of components (a) to (d).

Thus the contents of these components in the composition of claim 1 are unclear.

The appeal was dismissed.

Should you wish to download the whole decision (in German), just click here.

To have a look at the file wrapper, click here.


Anonymous said...

Makes sense to me.

I often pester inventors about what it is they actually mean with %. Even if they say wt%, I often need to ask them "weight% of what?" which sometimes results in mutual frustration as it then appears that they don't really know themselves. Anyway, this case again clearly shows the danger of absent or vague definitions....