Thursday, 31 March 2011

T 120/08 – A Vacuous Expression

When drafting patent applications, it is crucial to well define parameters that are relevant for characterising the invention. Using parameters habitually used by the inventors but not necessarily understood without ambiguity by the skilled person may kill a patent, as can be seen from the present decision, which deals with an appeal against the decision of the Opposition Division (OD) to reject the oppositions.

The main claim under consideration was directed at a method of production of goods based on meat wherein olive oil was substituted to animal fat. The method included a step where the food mixture was encased “with simultaneous application of vacuum 1000 mbar”. It is this particular feature that triggered a discussion on whether the invention was sufficiently disclosed.

[3] Pursuant to A 83 the “European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. According to the jurisprudence of the boards of appeal the standard of disclosure for this requirement is that it must be possible to reproduce the invention on the basis of the original application documents without any inventive effort and undue burden, whereby the skilled person may use his common general knowledge to supplement the information contained in the application, textbooks and general technical literature forming part of the common general knowledge (see e.g. decisions T 629/05, T 206/83, T 772/89).

[4] The subject-matter of Claim 1 as granted discloses the invention as consisting in a process for the production of goods based on meat, which process is characterised by four essential process steps (a) to (d). Process step (c) provides that the mixture produced in steps (a) and (b) “goes to filling machines where it is encased with simultaneous application of vacuum 1000 mbar …”. The equivalent wording can be found in original Claim 1.

No further information on the value of the vacuum to be applied in step (c) is found in the application as filed or in the patent specification.

Hence, in the present case it has to be examined first whether a skilled person having read the application as filed would be able, on the basis of his general knowledge and without undue burden, to reliably define “vacuum 1000 mBAR” or “vacuum 1000 mbar”, as it was granted, because keeping to that parameter during the vacuum encasing step (c) is a prerequisite for carrying out the solution to the technical problem for which protection is sought in Claim 1.

“Vacuum 1000 mbar”

[5.1] For technical purposes, a vacuum is commonly defined as being present where inside a container/apparatus the (absolute) gas pressure is lower than the gas pressure outside the container/surrounding the apparatus (see e.g. D57 […]).

[5.2] A commonly used unit for indicating the gas pressure is “bar” or “millibar” (“mbar”), the latter unit being used in the patent in suit.

[5.3] A gas pressure is normally measured as an absolute pressure relative to the absolute vacuum (pressure of zero). In contrast, where the pressure is measured relative to the given surrounding pressure (“barometric pressure”) - i.e. so-called “gauge pressure” - one speaks either of an overpressure or, if the pressure is lower than the surrounding pressure, of a reduced/lower pressure or vacuum. The latter is made clear by putting “(rel)” or “-“ before the value of the vacuum, e.g. “-50 kPA” […].

[6] It is against this background that in order to be able to carry out the claimed process the person skilled in the art must and therefore would try to establish the meaning of “vacuum 1000 mbar” in Claim 1, because the patent (and the underlying application as originally filed) is silent on the meaning of that value (as well as of “vacuum 960 mbar” mentioned in the description of step (b) of the claimed process).

[6.1] Giving “vacuum 1000 mbar” its literal meaning, i.e. that of an absolute pressure, immediately leads to difficulties, even contradictions, which would prevent the skilled person from such an understanding:

An absolute pressure of 1000 mbar would be so close to that prevailing at sea level (around 1013 mbar) that it would not constitute an reduced/lower pressure (and thus a vacuum) in the larger part of the inhabited regions of the world, with the consequence that either it would be a feature of the claimed process that it had to be carried out at or close to sea level, or the performing of the invention would be geographically restricted. There is no technical reason indicated in the application or otherwise evident to the skilled person which in the given technical context could support such an understanding. Even the proprietor did not adopt such an interpretation.

[6.2] As regards the second possible understanding of “vacuum 1000mbar”, namely as a gauge pressure, here of -1000 mbar, that is a “significant” reduction of the pressure (not to, but by 1000 mbar), as Appellant I argued and the respondent’s technical expert Dr. Genigeorgis stated before the OD (point II, above), the same difficulties arise. Again, such a gauge pressure (= a reduced/lower pressure […]), by its very definition, can only be present at places with an atmospheric/barometric pressure higher than 1000 mbar (absolute), i.e. close to sea level, and there is nothing pointing to such an understanding by the person skilled in the art.

That being so, it is immaterial whether or not [opponent I] was actually able to carry out the vacuum encasing step at a pressure of -1 bar […]. Equally, it is irrelevant whether the encasing step is indeed not feasible at an absolute pressure of 13.25 mbar since the vacuum would break down because of the low boiling temperature of the water in the mixture […], or for other technical and/or cost reasons. Therefore, these issues need not be pursued further.

[6.3] According to the proprietor’s position the true meaning of the term “vacuum 1000 mbar” as understood by the skilled person is, however, yet another one, namely the standard atmospheric pressure of 1013.25 mbar minus 1000 mbar = 13.25 mbar below the surrounding atmospheric pressure at a given place, i.e. a weak vacuum of 13,25 mbar gauge pressure.

[6.3.1] This interpretation was accepted by the OD, but without any substantiated reasoning, in fact nothing more than because “[t]his interpretation had been confirmed by the patent proprietor” […]. In respect of this crucial issue the decision under appeal thus suffers from a deficiency under R 111(2), first requirement.

[6.3.2] Documents A and B filed in response to the communication which the board had issued in preparation of the OPs and in which it gave also a preliminary view on that issue (A 100 (b)) do not support the respondent’s position […]. This is also true for document C according to which the term “Vacuum” describes the state of a fluid in a volume at a pressure below the atmospheric pressure at normal conditions, and the range between 1000 and 1 hPa (= mbar) is called “Grobvakuum” (weak vacuum). It is clear from the values indicated for the further ranges (strong, high, ultrahigh, … vacuum), that all these values are absolute values unrelated to the surrounding pressure, not gauge pressures related to the surrounding atmospheric pressure. Therefore, also from this document it cannot be derived that a “vacuum 1000 mbar” means an reduced/lower pressure (“mild vacuum” as the respondent put it) of (exactly) 13.25 mbar in relation to any surrounding pressure.

[6.3.3] Beyond this, the [patent proprietor] has not put forward any technical argumentation for his contention that the skilled person reading the specification and the claims of the patent in suit would unambiguously interpret the term “vacuum 1000 mbar” as referring to a weak vacuum of 13.25 mbar below the surrounding atmospheric pressure, a view which was not even shared by all of the respondent’s own experts […]. In particular, the respondent has not shown anything in the patent documents or in the common general knowledge from which the skilled person would conclude that the solution of the problem underlying the invention is conditional upon such a weak/”mild” vacuum.

[6.3.4] Rather, this is questionable in view of the resulting wide range of the absolute pressure at the encasing step of the claimed process, depending on the geographical location/altitude of the meat processing plant. It is furthermore questionable whether a skilled person intending to remove oxygen in order to avoid oxidation according to paragraph [0020] of the patent in suit would consider it appropriate to reduce the air pressure only marginally by 13.25 mbar.

[6.3.5] The respondent furthermore relied on the fact that [opponent I] in its own patent documents D and E used the analogous terms “vacuum 940 mbar” and “vacuum 940 to 980 mbar”. However, apart from the assertions by one of the opponents’ experts that the experiments relating to these documents had been carried out at gauge pressures in the range of 940 to 980 mbar, i.e. in a strong vacuum, an undefined term used in a patent document does not become meaningful to the person skilled in the art simply by the use in patent documents of a competitor (here opponent I), in particular where, as in the present case, it is strongly disputed that the terms in question have the same meaning in the document(s) of each side.

[6.3.6] The respondent’s eventual contention that a “vacuum 1000 mbar” at the encasing step is not essential for carrying of the claimed process is not convincing, quite the contrary. It is because of a deliberate choice by the respondent as the then applicant that the term in question appears in the application as originally filed and the specification of the patent in suit. In general, as pointed out in decision T 815/07, the purpose of a parameter contained in a claim is to define an essential feature of the invention. Its significance is that the presence of this technical feature contributes to the solution of the technical problem underlying the invention. So, if this contention was true, the use of the critical term in the patent in suit would in addition be misleading.

[7] From the above it follows that a skilled person is at a loss when trying to perform the “application of vacuum 1000 mbar” at the encasing step of the process claimed in either of the respondent’s main and auxiliary request. Therefore, neither of these requests is allowable due to non-compliance with Article 83 EPC, a provision whose purpose is to ensure a fair and complete disclosure of the subject-matter for which protection is sought. […]

The patent is revoked.

NB: The revocation was announced at the end of the OPs. Subsequently, the patent proprietor requested an amendment of the minutes. The Board having refused this request, the proprietor “respectfully insist[ed]” on its request, which it considered decisive in view of a petition for review. This triggered another noteworthy statement by the Board:

[2] As regards the respondent’s request for amendment of the minutes, i.e. actually for a more detailed version of the minutes of the OPs, the board is bound by the decision to reject this request communicated to the parties on 19 November 2010 and can no longer change it itself. Thus, this board is no longer empowered to assess whether the minutes as they stand and/or the refusal to amend them according to the respondent's suggestions constituted a violation of any of the parties’ rights. The possibility to correct a decision under R 140 is limited to linguistic errors, errors of transcription and obvious mistakes. The respondent did not rely on any such error or mistake and the board too is not aware of any such deficiency of the decision to reject the requested amendment.

To read the whole decision, click here.

The file wrapper can be found here.