Disclaimers are a very dangerous way of overcoming patentability objections, as the present case shows once more. The appeal is against the decision of the Opposition Division (OD) to maintain the patent in amended form.
Claim 1 of the main request on file read:
A process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon separation rectification column that produces an oxygen stream and an argon stream from a vapour feed stream consisting essentially of oxygen and argon and wherein an argon rich liquid inventory is returned to the column after an interruption of flow of said feed stream into the argon-separation column,characterised in that during an interruption of flow of said feed stream into the argon-separation column, argon-rich liquid inventory in said column is recirculated, prior to and during re-startup of said column, to a separation section of said column that is above the location of withdrawal of said inventory;excluding processes in which said liquid inventory is collected from the sump of the argon-separation column or, when the system has two argon-separation columns, jointly from the sumps of each argon-separation column of the system and is recirculated through the or each of the columns.
The opponent pointed out that the disclaimer was drafted too broadly.
[2.1] [Document] D1 constitutes prior art under A 54(3) for all of the contracting states DE, FR & GB for which the patent has been nationalised […].
This document […] describes: a process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon-separation distillation column […] that produces an oxygen stream and an argon stream from a feed stream […] consisting essentially of oxygen and argon and wherein an argon rich liquid inventory […] is returned […] to the column […] after an interruption of flow of said feed stream into the argon-separation column, wherein during an interruption of flow of said feed stream […] into the argon-separation column […], argon-rich liquid inventory […] in said column is recirculated, prior to and during re-startup of said column, to a separation section of said column that is above the location of withdrawal of said inventory.
[2.2] Thus, apart from the disclaimer, the subject-matter of claim 1 is known from D1. Since D1 is prior art under A 54(3) it is permissible to restore novelty by using a disclaimer (see G 1/93 [2.1]). However, the disclaimer should not remove more than is necessary to achieve this (see G 1/93 [headnote 2.2]).
[2.3] The disclaimer added to claim 1 reads: “excluding processes in which said liquid inventory is collected from the sump of the argon-separation column or, when the system has two argon-separation columns, jointly from the sumps of each argon-separation column of the system and is recirculated through the or each of the columns.”
The board agrees with the [patent proprietor] that the disclaimer is split into two parts. The first part refers to a single argon column configuration as shown in figures 3 and 4 of D1. The second part refers to a system having two argon-separation columns as shown in figure 5 of D1. Furthermore, the [opponent] has explicitly confirmed this interpretation in writing […].
[2.4] The disclaimer also does not remove any more than is necessary to restore novelty with respect to D1 since it is based on the embodiments disclosed in figures 3,4 and 5 of D1.
[2.5] The board agrees with the [patent proprietor’s] view that the system in D8 comprises a denitrogenisation column as opposed to an argon-separation column as required by claim 1.
[3.1] The [opponent] has also presented several lines of argument to show that, despite the addition of the disclaimer, the subject-matter of claim 1 is still not new with respect to D1. The board does not find any of these arguments convincing. […]
[4.1] As regards D10, this document shows that liquid from the sump of the argon-separation column always contributes to the re-circulated liquid inventory. Figure 4 of this document discloses: a process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon-separation rectification column […] that produces an oxygen stream and an argon stream from a feed stream […] consisting essentially of oxygen and argon and wherein an argon rich liquid inventory from trough […] and the sump is returned […] to the column […] after an interruption of flow of said feed stream […] into the argonseparation column, wherein during an interruption of flow of said feed stream […] into the argon-separation column […], argon-rich liquid inventory in said column is recirculated […] prior to re-startup of said column, to a separation section […] of said column that is above the location of withdrawal of said inventory.
[4.2] Thus, disclaimer apart, the only contentious feature is whether liquid is also re-circulated to the column “during re-startup of said column”.
[4.3] In order to assess this it is necessary to define the term “re-startup”. According to the description of the contested patent […], “the re-startup process is over when the column reaches its steady state conditions” and […] the sidearm column “approaches steady state conditions” during the startup process. A process interruption is defined […] as being something which causes the vapour stream […]to be reduced or cease flowing altogether.
Thus, the patent refers to three distinct phases: steady state, process interruption and restartup. In the event of an interruption and subsequent re-startup, the system would therefore pass through the following cycle: steady state conditions, interruption, re-startup and finally back to steady state. Accordingly, the re-startup phase is all of the period between the end of interruption and reattainment of the steady state. In view of this, the board considers that the re-startup phase commences as soon as the process interruption is terminated by re-establishing flow in the vapour feed line to the argon column.
[4.4] D10 […] states “Lorsque la vanne est fermée, on poursuit le redémarrage comme décrit plus haut” which indicates that the re-startup phase of D10 is “continued” rather than “effected”. [… I]t is indicated that the condenser is started (“on démarre le condenseur”), and only then is a progressive closing of the valve undertaken (“on referme progressivement la vanne”). In order for the condenser to function vapour must be flowing through the feed stream […]. Thus, the valve […] is still open and allowing argon-rich liquid to be recycled to the upper part of the distillation section […] when the condenser starts working and vapour starts flowing through line […].
[4.5] The progressive closing of the valve […] is accompanied by a progressive opening of the valve […] in order to direct an increasing flow of liquid to the low-pressure column 5, thereby maintaining the liquid level N2 in the sump of column 2 constant […].
[4.6] The [patent proprietor’s] argument that the supplemental return in Figure 4 is only to reduce the level of liquid in the column from the stoppage level N3 above the vapour feed from the main air separation system to a level N2 below that feed in order to permit re-startup of the column is not entirely correct.
[4.7] The process according to D10 comprises a pre-startup stage whereby the liquid level in the sump is reduced from N3 to just below the distributor plate to free up the mouth of the vapour feed line […], allowing vapour to be fed into the column and the condenser to be restarted. The point at which the vapour feed into the column in D10 is resumed corresponds to the beginning of the re-startup phase in the contested patent as outlined above.
[4.8] However, since both valves […] are closed and opened “progressively”, in the manner described above, after the condenser has been restarted by terminating the interruption of the vapour supply through line 27, it must also be that liquid is re-circulated to the column at least during part of the re-startup phase of said column.
[4.9] The notion of a progressive reduction in recirculated liquid inventory is also mentioned in the contested patent […] where it is stated that
“Moreover, as the sidearm column advances from being shut-down to its normal operating conditions, the amount of liquid inventory being recirculated is progressively reduced.”
[4.10] Consequently, the only difference between the subject-matter of claim 1 and that of the process according to figure 4 of D10 lies in the disclaimer. Therefore this feature alone establishes novelty.
[4.11] In this case, since D10 is prior art under A 54(2), it is also inevitably relevant for the question of inventive step.
[4.12] However, according to G 1/03 [headnote 2.3]:
“A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to A 123(2).”
[4.13] Thus, with respect to D10, the disclaimer does not meet the provisions of A 123(2) and claim 1 of the main request is not allowable.
The Board remitted the case to the OD for further prosecution on the basis of the auxiliary requests.
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8 comments:
I am surprised they did not at least mention that D10 is not an "accidental anticipation". It is the only criteria to check before assessing a disclaimer is admitted or not vs a 54(2) document, ac to G1/03. Of course, here, D10 seems not to be an accidental anticipation.
I have real problems with the way this case has been decided. The disclaimer wrt D1 met the requirements set out in G 1/03 so the granted claim did not offend against A123(2). Can then the citation of D10 justify an objection under A100(c) in opposition proceedings? It´s hard to see the logic, let alone the fairness, in that approach. If the diclaimer is now seen to add subject-matter what can the patentees do? They can't delete it because that would go against A123(3), so they're in "conflict" territory. Wouldn't it make more sense to ignore the disclaimer and simply establish lack of novelty wrt to D10?
Now I am not a practitioner of disclaimers, because in mechanics you hardly ever need them. But as I understand things, you cannot use disclaimers any more, even for A 54(3) prior art, because there will always also be (non accidental) A 54(2) prior art in view of which the disclaimer will be "relevant" for the assessment of inventive step. If this reasoning is followed, I do not see how you could use disclaimers any more.
We definitely need more light on what "relevant" means in this context. G 1/03 is a little light on this topic.
As I understand it, a disclaimer being relevant for inventive step means that the claim without the disclaimer lacks inventive step, but the claim with the disclaimer is inventive.
So if there is prior art taking away inventive step for the claim without the disclaimer, then:
- either the claim with the disclaimer also lacks inventive step,
- or the claim with the disclaimer is inventive in which case the disclaimer is relevant and infringes Art. 123(2).
In either case the claim is not allowable.
It seems the Board in T 761/08 takes a bit of a shortcut, since it did not examine whether the disclaimer made the claim inventive over D10. The Board's approach is more economic and still leads to the correct outcome, but seems not fully in line with G 1/03. Unless my understanding of G 1/03 is less than perfect ;-).
As Oliver says, disclaimers are uncommon in mechanics, so I expect the deciding mechanical board in this case had as little experience of them as he has! I wonder what the outcome would have been if a chemical board had been involved ...
The two alternative cases referred to Myshkin are in fact not equivalent. If the board establishes lack of inventive step of the claim with disclaimer then the patentee can amend by further restriction. But if the board says the claim is bad for added subject-matter because of the disclaimer then the poor patentee will have to try to get rid of it somehow ...
As I understand it, a disclaimer being relevant for inventive step means that the claim without the disclaimer lacks inventive step, but the claim with the disclaimer is inventive.
I don't think this reasoning is correct for undisclosed disclaimers. Key issue in this decision (I have to admit I only looked at the summary by Oliver) seems that the board found that D10 takes away novelty of the claim except for the disclaimer part. In such a situation, the Board applies G1/03 and finds that D10 is Article 54(2) prior art and is not an accidental anticipation (this is apparently not said explicitly). Then, applying G1/03 the claim offends Article 123(2).
(A non-disclosed disclaimer may only be introduced and only be allowed for restoring novelty. In this case D10 is in the same technical field as the the claimed invention AND it is prior art under Article 54(2). Thus, in view of D10 the disclaimer becomes relevant for assessment of inventive step.)
Now, for disclosed disclaimers the reasoning may be different and you may be correct. A disclosed disclaimer can never offend against Article 123(2), obviously because it is disclosed. In such a case the disclaimer may add an inventive step to the invention.
@Anonymous:
"The two alternative cases referred to Myshkin are in fact not equivalent. If the board establishes lack of inventive step of the claim with disclaimer then the patentee can amend by further restriction. But if the board says the claim is bad for added subject-matter because of the disclaimer then the poor patentee will have to try to get rid of it somehow ..."
I suppose the Board in T 761/08 would have allowed the claim if it was further restricted with inventive (and disclosed) features, since that would have rendered the disclaimer again irrelevant for inventive step (in my understanding). The normal rules of A. 123(2) including the Art. 123(2)/(3)-trap do not really apply here.
@EQE Tools:
I was only thinking of undisclosed disclaimers, but on second thoughts I realise that my definition of "relevant" is needlessly complicating matters.
A better definition might be: a disclaimer is "relevant" for inventive step if and only if the claim without the disclaimer lacks inventive step (where lack of novelty over non-accidental A. 54(2) prior art is a special case of lack of inventive step).
With this definition the approach taken in T 761/08 is correct, and Oliver's criticism does not apply.
However, reading point 2.6.5 of G 1/03 does give me the impression that the Enlarged Board was thinking of my first definition. An undisclosed disclaimer intended to restore novelty over accidental or A. 54(3) prior art infringes A. 123(2) if it has effects which go beyond this purpose. If the claim without the disclaimer lacks inventive step, and it still lacks inventive step with the disclaimer, I don't see that the disclaimer has an effect going beyond its purpose. But again, whether one uses the first or second definition does not matter for the final outcome. (Of course in T 761/08 one might say that the disclaimer had the effect of restoring novelty over non-accidental A. 54(2) prior art, and that this effect goes beyond the purpose of the disclaimer.)
"A disclosed disclaimer can never offend against Article 123(2), obviously because it is disclosed."
Well, we have G 2/10 pending now ;-). I agree though that a disclosed disclaimer, i.e. disclosed in the application as excluding subject-matter, never offends against A. 123(2).
First of all I have to admit that I hav just looked in Oliver's summary.
I would say that the disclaimer was introduced to restore novelty in view of D1, which a 54(3) document. However, there is another document, D10, which is 54(2), and, consequently, relevant for both novelty and inventive step. As already pointed Myshkin, the undisclosed disclaimer should not be taken into consideration for inventive step, and the "full" claim, without considering the undisclosed disclaimer, must be inventive.
The guidelines says regarding undisclosed disclaimer (C-VI 5.3.11):
However, an undisclosed disclaimer is NOT allowable if:
(i) it is made in order to exclude non-working embodiments or remedy insufficient disclosure;
(ii) it makes a technical contribution.
An undisclosed disclaimer is, in particular, not allowable in the following
situations:
(i) the limitation is relevant for assessing inventive step;
(ii) the disclaimer, which would otherwise be allowable on the basis of a conflicting application alone (Art. 54(3)), renders the invention novel or inventive over a separate prior art document under Art. 54(2), which is a not accidental anticipation of the claimed invention;
(iii) the disclaimer based on a conflicting application removes also a deficiency under Art. 83;
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