T 2285/09 - Not Beyond Doubt

This decision also contains some interesting paragraphs on the compliance of the auxiliary requests 3 to 9 with the requirements of A 123(3). Claim 1 of those requests were drafted to overcome the A 76 objection we have seen in the preceding post. They read:

Use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water and subjecting the infusion to ultrasounds, as an antiradical for the preparation of cosmetic products for skin protection against UV rays.

[3.1] A 123(3) requires that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred. In order to decide whether or not an amendment of the patent in suit satisfies that requirement, it is necessary to compare the protection conferred by the claims before amendment, i.e. as granted, with that of the claims after amendment. In that respect, it is established Case Law that a very rigorous standard, namely that of “beyond reasonable doubt” is to be applied when checking the allowability of amendments under A 123(3) (see, for example, T 307/05 [3.3-4]), such that the slightest doubt that the scope of the patent as amended could cover embodiments not covered by the unamended patent would preclude the allowability of the amendment.

[3.2] Claim 1 of auxiliary requests 3 to 12 is directed to the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water and subjecting the infusion to ultrasounds.

Claim 1 of the patent as granted is directed to the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water.

[3.3] Thus the question to be answered is whether claim 1 of the amended auxiliary requests covers the use of an extract which was not covered by claim 1 as granted. It thus needs to be examined whether the addition of the feature of subjecting the infusion to ultrasounds may result in a different extract than that obtainable by dipping the leaves into water only.

[3.4] The difficulty associated with determining the scope of protection conferred by a feature defined in terms of a “product-by-process” lies in defining the precise contribution of each process step to the nature of the product obtained (see T 223/96 [17] and T 552/91 [5.2]).

[3.5] That ultrasounds have a technical effect on the extraction of the leaves in water is uncontested, since it is explicitly mentioned in the parent application as filed [...] that ultrasounds accelerate the extraction and that a process including the use of ultrasounds allows to obtain an extract containing 7% by weight of oleoeuropeine. In addition, it cannot be excluded that ultrasounds also have an effect on the relative amounts and type of components which are extracted, thus resulting in extracts having a different composition than those obtainable by merely dipping into water. The [patent proprietor] may thus now have extended the scope of protection to embodiments which were not covered by the claims as granted.

[3.6] For the following reasons, the Board is not convinced by the[patent proprietor’s] submissions that the amendments did not extend the protection conferred.

[3.6.1] The [patent proprietor] relied upon the experimental reports D15 and D20 [...] to show that the use of ultrasounds merely accelerated the extraction but did not result in qualitatively different compositions.

However, even if these experiments show that under specific conditions (for example, temperature and ultrasound frequency), the same type of extract, insofar as its components can be detected by HPLC 215nm UV, can be obtained by dipping the leaves into water with or without ultrasounds, these tests do not show beyond all reasonable doubt, that under any conditions encompassed by the definition given in claim 1 for the process by which the extract may be obtained, the additional step of subjecting the infusion to ultrasounds would not lead to an extract which would not be obtainable by dipping the leaves into water only.

[3.6.2] The [patent proprietor] submitted that the burden of proof lay with the [opponents] to show that the amendments did in fact extend the protection conferred.

However, it is the [patent proprietor] who amended the patent as granted who is responsible for demonstrating, beyond all reasonable doubt, that said amendment does not extend the protection conferred.

[3.6.3] The [patent proprietor] argued that claim 1 as granted, which related to the use of an extract obtainable by dipping the leaves into water included the use of an extract obtainable by additionally subjecting the infusion to ultrasounds, since the claim was open with regard to the process defining the extract, and thus did not exclude the use of an extract obtainable via additional process steps, insofar as these additional process steps did not alter the nature of the extract, as was the case when subjecting the infusion to ultrasounds.

However, at least for the reason that the additional step of subjecting the infusion to ultrasounds does indeed potentially affect the nature of the extract obtained (see point [3.5] above), this argument must be rejected.

[3.7] For these reasons, the Board concludes that claim 1 of the auxiliary requests 3 to 12 is amended in such a way that there are considerable doubts that the extent of the protection conferred has thereby not been extended. 

The Board therefore has to conclude that claim 1 of auxiliary requests 3 to 12 offends against A 123(3)  and, consequently, these requests cannot be allowed.

Should you wish to read the whole decision, just click here.

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