Wednesday, 26 January 2011

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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