T 1389/08 – Boundaries

The present decision will not at all surprise those who are familiar with the case law concerning ranges of values, but I have to say that I never really got used to it.

The appeal was filed against the decision of the Opposition Division to revoke the opposed patent. 

Having found the main request before it to lack novelty, the Board then considers the auxiliary request, claim 1 of which read:

Brazing sheet having either a two-layer structure having a core sheet made of an aluminium alloy core and on one side thereof a brazing layer of an aluminium alloy containing silicon as main alloying element and said two-layer structure is devoid of a sacrificial anode clad layer, or a three-layer structure having a core sheet made of an aluminium alloy core material and on both sides thereof a brazing layer of an aluminium alloy containing silicon as main alloying element, wherein the aluminium alloy of the core sheet has the composition (in weight %):-

Mn 0.7 to 1.4

Cu 0.8 to 1.5

Si 0.3 to 0.4

Mg < 0.03 

Fe < 0.3 

Ti < 0.15 

Cr 0.05 to 0.25 

Zr 0.05 to 0.25 

Zn < 0.25 

balance aluminium and unavoidable impurities, 

with the proviso (Cu+Mn) > 2.0,

and wherein said brazing sheet has a post-braze 0.2% yield strength of at least 50 MPa and having a corrosion life of more than 20 days in a SWAAT test without perforations in accordance with ASTM G-85.

The opponent pointed out that the subject-matter of this claim was not disclosed in the parent application as filed. The reason was that in a first step the patent application defined the Si-content as being 0.3 to 0.4 wt% by combining the lower limit disclosed for its broader definition, namely 0.3-1.5 wt%, with the preferred lower limit of 0.4 wt%. This Si-content was then in a second step combined with a proviso that (Cu+Mn) > 2.0 wt%, coupled with specific values for the other elements of the core alloy. The combination of these values was not disclosed in the originally filed earlier application.

In the following paragraphs the Board examines whether or not the subject-matter complies with A 76(1) EPC 1973:

[5.1] Claim 1 of the Auxiliary Request corresponds to Claim 1 of the parent application combined with preferred embodiments stemming, on the one hand, from dependent claims of the parent application as filed:

• Claim 8 (the two-layer structure is devoid of a sacrificial anode clad layer),
• Claim 2 (Mg < 0.03 wt%), 
• Claim 4 (Mn: 0.4 to 1.4 wt%), 
• Claim 5 (Cu: 0.8 to 1.5 wt%), 
• Claim 7 (corrosion life of more than 20 days), 

and, on the other, from preferred embodiments disclosed in the parent application as filed:

• page 7, lines 14-15 (most preferred Fe-content), 
• page 6, lines 22-24 (Si-content), 
• page 7, lines 20-21 (more preferred Cr-content), 
• page 7, lines 25-26 (more preferred Zr-content), and 
• page 7, lines 1-2 (most preferred proviso (Cu+Mn) > 2.0).

[5.2] In particular with regard to the Si-content of 0.3 to 0.4 wt% required in Claim 1, this range is based on a combination of the lower limit of the general range for Si, namely 0.3 to 1.5 wt% (Claim 1, page 4, line 27), with the more suitable minimum level for Si of 0.40 wt% (page 6, line 24). Thus the claimed Si-content derives from the limitation of the originally filed Si-content of 0.3 to 1.5 wt% by splitting it into two ranges:

• one being a “suitable” range of 0.4 to 1.50 wt%, which corresponds to the preferred range of the parent application (page 6, line 24; page 10),
• the other being the implicitly considered “less suitable” range of 0.3 to 0.4 wt%, which is claimed in present opposed patent (“divisional”).

The fact that the Si-content range of 0.3 to 0.4 wt% is considered less preferred would not prevent the skilled reader from applying “the invention” in this range. On the contrary, in the Board’s opinion the skilled reader would seriously contemplate exploiting the whole Si-range disclosed, i.e. including core alloys having a Si-content of 0.3-0.4 wt%. There is also nothing in the parent application as filed or the common general knowledge which would cause the skilled reader to exclude the possibility of working in that range.

This finding is, as pointed out by the Appellant, supported by T 1170/02 and T 956/07. Finally, the Respondent did not provide any evidence that the invention would not work in this Si-content range.

[5.3] With regard to the combination of a Si-content range of 0.3 to 0.4 wt% with preferred features stemming from dependent claims and the description, the Board considers that this combination is directly and unambiguously derivable from the originally filed parent application. The skilled reader would seriously contemplate combining the most preferred embodiments with the whole originally disclosed Si-content range, i.e. also with the range of 0.3 to 0.4 wt%. Furthermore, the majority of the examples in the patent in suit had a Si-content very close to 0.4 wt%. Thus, the combinations leading to Claim 1 do not generate “new” subject-matter.

[5.4] Claims 2 to 5 of the Auxiliary Request correspond to Claims 9 to 13 of the parent application as filed.

[5.5] In view of the above considerations the subject-matter of the Auxiliary Request is considered to fulfil the requirements of A 76 EPC 1973.

Although I am more relaxed on this topic than some of the A 123 hardliners I have come across, I have never been comfortable with the case law allowing to claim disclosed preferred lower limits as new upper limits or vice versa. According to me, this goes beyond the teaching of the application as filed. But then, let us face it : this is very ancient (T 2/81!) and clearly established case law, … and it may come in handy from time to time.

To read the whole decision, click here. The file wrapper can be found here.

R 18/10 – Last Day Action

Remember J 8/09? In this decision, which I have presented in an earlier post, the Legal Board of appeal dismissed a request for re-establishment filed by a Portuguese physician acting on his own, who had forgotten to pay a renewal fee. It is one of those cases where you can see that professional help is needed in proceedings before the EPO, and this becomes frightingly clear when looking at the way in which the petition proceedings were conducted.

The decision of the Legal Board was dated August 23, 2010 and posted on August 31, 2010. So the 2 month time limit for filing a petition (A 112a(4)) expired on November 10, 2010.

The applicant sent the following letter to the Legal Board on October 14.

The same letter was sent to the Chairman of the Administrative Council (!) on October 19.

The applicant paid the fee for the petition on the very last day, i.e. November 10. It was credited to a bank account held by the EPO on November 11.

On the same day, he sent a more formal petition for review to the EBA. It was received on November 19 and contained the following letter:

In the proceedings before the Enlarged Board (EBA), the applicant submitted that he posted his request for review on 10 November 2010, i.e. in due time because in Portugal the date of the receipt of a registered letter was considered the same as the date of posting.

Needless to say, the petition did not succeed, but at least the petitioner recovered the petition fee:

[1] Pursuant to A 112a(4) in conjunction with R 108(1) a petition for review based on the grounds of violation of right to be heard (A 113) or another fundamental procedural defect under R 104 shall be filed within two months of the notification of the contested decision. Within the same period the prescribed fee has to be paid.

[2] The calculation of periods in cases before the EPO is governed by the provisions of the EPC and not, as the petitioner seems to assume, by Rules of the national law of the Contracting States. Thus, R 131(2), last sentence, applies. This provision rules that where a procedural step is a notification, the relevant event shall be the receipt of the document notified, unless otherwise provided. According to R 126(2) in cases where notification is effected by registered letter such a letter is deemed to be delivered to the addressee on the tenth day following its posting. The decision in case J 8/09 was posted on 31 August 2010 with the consequence that regardless of the fact that actual notification occurred on 6 September 2010 the two months time limit under A 112a(4) ended pursuant to R 126(2) on 10 November 2010.

[3] With respect to the Decision of the President of the EPO dated 14 July 2007 (OJ EPO Special Edition No. 3, 2007, I.1, p. 119) concerning the application of R 133(1) on the late receipt of documents an exception is made in so far as a document is deemed to be received in due time if it was posted five days before the expiry of the relevant time limit.

[4] The question, however, whether this is the case here and the petition for review dated 19 November 2010 has to be considered filed in good time and is therefore admissible or not can be left open, since the fee for the petition for review prescribed in A 112a(4) was not paid in due time.

[5] It is acknowledged that the bank order was given by the petitioner on the last day of the period, but the money was only credited to a bank account of the EPO on 11 November 2011. Pursuant to Article 7(1) of the Rules relating to fees (RRF), when deciding whether a relevant act has been made in due time, it is to be considered that the date of payment is the date on which payment is actually received by the office and not the date the order was given. Thus, the payment effected by the petitioner is considered to be late.

[6] The EBA is aware that, according to Article 7(3)(b) RRF, a payment effected within the period in which it should have been made may be considered to be effected in good time under the condition that a surcharge of 10% on the relevant fee, but not exceeding 150 Euro, is paid. However, the petitioner has not paid any surcharge. Thus, the legal consequence is, that the petition is not deemed to have been filed (A 112a(4), Article 7(4) RRF). […]

The fee for the petition for review is reimbursed.

To read the whole decision, click here. The file wrapper can be found here.

T 1834/09 – Missing? Not Quite

Can the absence of experimental data in the priority document make the priority claim invalid? That is the question the Board had to deal with in the present case.

The applicant lodged an appeal against the decision of the Examining Division (ED) refusing its application. 

In its summons to oral proceedings, the Board expressed the view that the claimed subject-matter was not new inter alia over document D4, which was prior art under A 54(3). 

According to the applicant, document D4 was not entitled to rely on its earliest priority date for two reasons. 

First, for an invention relating to newly identified members of a protein family which was known to have a highly divergent range of biological activities, such as the TNRF superfamily to which the polypeptide of document D4 belonged, it was necessary to provide in the priority document a credible disclosure of an exploitable specific function or activity. This position was supported by decisions T 81/87 and T 77/97. The earliest priority document of document D4 failed to disclose such a function.

Second, the failure to identify a specific function or activity of a protein in a previous application in a scientifically credible manner had the consequence that it was not possible to take advantage of the priority of that application as it did not disclose the industrial applicability of the protein as required by A 57. 

Since it was not entitled to its earliest priority date, document D4 was not relevant for the novelty assessment of the claimed polypeptide. 

The Board sees things differently :

[1] Claim 1 is directed to any polypeptide characterised by having about 80% amino acid sequence identity with the native sequence Apo-2DcR polypeptide comprising amino acid residues 1 to 259 of Figure 1A as represented in SEQ ID NO:1. This sequence identity is the sole essential feature which is required for a polypeptide to fall within the scope of the claim. Claim 1 encompasses a polypeptide consisting of the sequence SEQ ID NO:1. 

[2] The ED, finding that document D4 disclosed that particular polypeptide, concluded that claim 1 was not new. D4, which is a Euro-PCT application published after the international filing date of the application at issue, claims the priority dates of 14 January 1997 and 7 August 1997. It was cited under A 54(3). 

[3] The appellant has argued that document D4 and its earliest priority document (application US 60/035,496 filed on 14 January 1997) did not describe the ‘same invention’, as a specific function of the polypeptide disclosed has been identified only in document D4. Therefore, document D4 was not entitled to claim priority from its earliest priority document. As the application at issue was entitled to its priority date of 28 June 1997, document D4 did not belong to the state of the art for the novelty assessment of the subject-matter of claim 1. 

[4] The legal standard to be applied when assessing whether a claim is entitled to a priority date pursuant to A 87(1) is given by decision G 2/98 in the answer to the point of law referred to the Enlarged Board of Appeal which reads:

“The requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim of a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge from the previous application as a whole”. 

[5] The respective descriptions of document D4 and its earliest priority document (application US 60/035,496) are very similar, insofar as the polypeptide in question (denoted “TRID” in document D4 and “TNFR-5” in the priority document) and all aspects related thereto, including its preparation and its therapeutical uses, are concerned. The descriptions differ insofar as three experimental examples (Example 4 showing the tissue distribution of TRID mRNA expression, Example 5 showing that the extracellular domain of TRID binds the cytotoxic ligand-TRAIL and blocks TRAIL-induced apoptosis, and Example 6 showing that TRID protects cells from TRAIL-induced apostosis) have been added in document D4. 

[6] The earliest priority document of document D4 teaches that the TRID/TNRF-5 polypeptide is capable of interacting with a TNF-family ligand, i.e. a potent inducer of apoptosis, a function which qualifies said polypeptide as an appropriate compound for the treatment of immune system-related disorders associated with increased apoptosis or the inhibition of apoptosis […]. 

[7] It has to be decided whether this teaching, which is not supported by experimental data, amounts to a credible disclosure rather than a pure speculation. 

[8] A significant statement in this respect can be found on page 4, lines 20 to 24, of the earliest priority document. There, it is stated that the TNFR-5 polypeptide shares sequence homology with other TNF receptors and that it shows the highest degree of sequence homology with the translation product for the human mRNA for nerve growth factor receptor, including multiple conserved cysteine rich domains. 

[9] According to a well established principle in the field of biology, an identified DNA sequence and the putative encoded protein are assigned to a known protein family or superfamily on the basis of sequence comparison - such as by degree of homology, the presence of highly conserved domains, motifs and/or signatures. Thus, once an unambiguous consensus sequence has been defined, the skilled person is prepared to accept that a peptide belongs to the family/superfamily, and performs the same or similar biological function(s) as the other members thereof, if it exhibits this consensus sequence. 

[10] The board takes the view that the sequence homology disclosed in the earliest priority document of document D4 has to be considered as being a strong and reliable indication that the TNRF-5 polypeptide is capable of interacting with a member of the TNF ligand family. This is regarded as being a clear sign that the TNRF-5 polypeptide is useful in the treatment of a number of immune system-related disorders associated with increased apoptosis or the inhibition of apoptosis and is, therefore, susceptible of industrial application. 

[11] Appellant’s argument that such prediction of a biological function or property based solely on sequence analysis and on the mere presence of a particular domain or motif in a polypeptide sequence cannot reasonably be made in case of the TNFR superfamily has not been substantiated by any sort of written evidence, and is to be considered as an unproven allegation only. 

[12] Based on the evidence on file, the board does not agree that the earliest priority document (US 60/035,496) and document D4 do not describe the ‘same invention’ in that only the latter discloses a specific function of the polypeptide in question. 

[13] The two decisions cited by the appellant in support of its position that document D4 was not entitled to its earliest priority date are not relevant for the present case as they were concerned with different technical situations. In decision T 77/97 the competent board had to decide whether claims referring to compounds not explicitly described in the priority document were entitled to the priority date, and in the case underlying decision T 81/87 the decisive question to be answered was whether the priority documents disclosed all the ‘critical’ features of the claimed invention. 

[14] The board concludes that the ‘same invention’ (in accordance with decision G 2/98) is described in document D4 and its earliest priority document. Therefore, document D4 is entitled to the priority date of 14 January 1997 pursuant to A 87(1) and, as such, is part of the state of the art according to A 54(3). 

[15] The sequence of the TRID polypeptide (identically contained as SEQ ID NO:2 in both document D4 and its earliest priority document) and the sequence of the Apo-2DcR polypeptide (see SEQ ID NO:1 of the application at issue) are identical. This fact is not contested by the appellant. 

[16] Therefore, a particular embodiment of claim 1 is explicitly disclosed in document D4. Thus, the subject-matter of claim 1 lacks novelty and the main request does not comply with the requirements of A 54. 

I understand that if the priority document had been merely speculative, its disclosure of the polypeptide would not have been sufficient to serve as basis for a valid priority claim. This is because the priority document has to disclose the ‘same invention’ and not merely the same subject-matter.

Should you wish to download the whole decision, click here. 

The file wrapper can be found here.

R 19/10 – Be Explicit

This petition for review concerns decision T 945/09 wherein the Board set aside the Opposition Division’s decision to reject the opposition and revoked the patent of the petitioner (see also my post on this decision). The petition is based on the grounds of A 112a(2)(c) and (d) in combination with R 104(b). The patent proprietor submitted that the Board had failed to address or to decide on a relevant request of the patentee when revoking the patent.

According to the patent proprietor, it had requested in the appeal proceedings that the Board of Appeal

“uphold the novelty of the patent in suit, on the basis, inter alia, that whatever was disclosed prior to the priority date of the patent in suit by the authors of D3, was not enabling but merely speculative and did not support the efficacy of the claimed medical use”.

However, in its decision, the Board completely failed to address or to decide on this issue. The Board thereby breached A 112a(2)(d), because it had decided on the appeal without deciding on a request relevant to that decision, contrary to R 104(b) EPC. This was also a breach of A 112a(2)(c), as it constituted a fundamental violation of the patentee’s right to be heard under A 113.

The Enlarged Board (EBA) found the petition to be admissible but not to be allowable. Here is why:

[5] With regard to the objection under A 112a(2)(d) in combination with R 104(b), the [patent proprietor] refers to its request to uphold the novelty of the patent in suit, on the basis, inter alia, that whatever was disclosed prior to the priority date of the patent in suit by the authors of D3, was not enabling but merely speculative and did not support the efficacy of the claimed medical use […]. On the other hand, according to the minutes of the oral proceedings (OPs), the [patent proprietor] had requested “that the appeal be dismissed” before the chairman of the Board of Appeal declared the debate closed […]. The question therefore arises which was the [patent proprietor’s] request relevant to the decision within the meaning of R 104(b). 

[5.1] It is true that, as submitted by the [patent proprietor], the EPC does not contain an explicit definition of the term “request”. However, according to the common practice in the proceedings before the EPO, requests are in general directed to executable legal consequences sought by the parties. The arguments provided by the parties in support of these legal consequences do not normally belong to the legally binding requests as can be concluded from A 114(1). 

[5.2] In the circumstances of the present case it is, however, not necessary to further consider this issue. As follows from the file the relevant request confirmed by the [patent proprietor] under Article 15(5) RPBA was that “the appeal be dismissed”. In view of this fact and the common practice referred to above, the Board of Appeal had no reason to assume that the [patent proprietor] requested anything else. This is all the more so as the alleged request which included supporting arguments of the [patent proprietor] was never explicitly formulated during the appeal proceedings. As a basis for it, the [patent proprietor] refers to its observations in the letter of 21 December 2009 under the heading “Insufficient Data for Establishing Disclosure” on pages 10 to 13. However, this passage contains an argumentation without any recognizable request. It is not a procedural duty of the Boards of Appeal under R 104(b) to analyse the submissions of the parties in order to identify potential requests which were not explicitly made by the parties. 

[5.3] For these reasons, the [patent proprietor’s] objections based on A 112a(2)(d) in combination with R 104(b) […] are clearly not justified. 

[6] As to the objection pursuant to A 112a(2)(c) it is to be contemplated whether the Board of Appeal fundamentally violated the right to be heard of the [patent proprietor] with regard to its argument that the results reported in document D3 did not establish an enabling prior use […]. 

[6.1] In point VII of the written decision, the Board of Appeal summarized the arguments of the [patent proprietor]. In particular, the argument of a non-enabling and therefore legally irrelevant prior use was summarized as follows:

“Not everything the authors of document D3 could have done and known before the priority date of the patent in suit had been established as a successful method. They only were beginning to try anything to help a patient in need of some therapy while suffering repeated catheter-related bloodstream infections with no explanation of their origin. Whether this action or any other accompanying administration of antibiotic or antiseptic substances led to success in treating this single - and therefore statistically irrelevant - patient was not known and at that time could not possibly be seen. Consequently, even if the information to be derived from document D3 was clearly disclosed, it was far from an established teaching capable of constituting prior use”.

From this summary it follows that the Board of Appeal had, in fact, duly taken note of the argument of the [patent proprietor] that the patent could not be found to be invalid for lack of novelty, even if a non-confidential prior public disclosure of the teaching of document D3 was assumed, since this teaching was not based on sufficient data with regard to the existence of a therapeutic effect. 

[6.2] The [patent proprietor] further submits that A 113(1) not only enshrines a party’s right to be heard before a decision is issued against it, but also guarantees its right to have the relevant grounds fully taken into account in the written decision […]. The EBA in principle agrees. However, this principle is not without any limitation as explained in decision T 1557/07 referred to by the [patent proprietor] itself: provided that the reasons given enable the parties concerned to understand whether the decision was justified or not, the deciding organ is under no obligation to address each and every argument presented by the party concerned.

[6.3] In the circumstances of the present case the EBA is satisfied that the reasons given in the decision under review enabled the parties to understand, on an objective basis, the grounds for the decision of the Board of Appeal. 

As stated in point [3.4] of the reasons, the Board of Appeal based

“its conclusions on the knowledge of the patient being clear and concise enough that he could take notice of the technique used after replacement of heparin-lock by taurolidine-lock, representing the teaching of claim 1. There was also no reason for him to treat this knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time”.

Accordingly, the Board of Appeal concluded in point 3.5 of the reasons 

“that this teaching was performed beginning from July 1995 in the full knowledge of the patient without any obligation of confidentiality and thus was publicly available before the priority date of the patent in suit”.

The decision of the Board of Appeal is therefore clearly based on the finding that what constituted the public prior use was the knowledge of the treated patient himself, as a member of the public. This argument had been introduced into the appeal proceedings by the appellant already with the statement of the grounds of appeal […] and was therefore known to the [patent proprietor].

Against this background it is apparent that it did not matter for the reasoning of the Board of Appeal whether or not the results reported in document D3 provided any clinical evidence of efficacy, as this had no bearing on the public prior use constituted by the direct knowledge of the applied technique by the treated patient, as a member of the public.

This was indicated by the Board of Appeal in point [4.4] of the reasons according to which

“the action in the Canadian hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment”.

[6.4] In summary, the written decision makes it sufficiently clear that, in the opinion of the Board of Appeal, the public prior use was constituted by the knowledge of the treated patient himself, as a member of the public, so that the issue of whether the teaching of document D3 provided any clinical evidence of efficacy or satisfied the standards of a clinical study was not relevant for deciding on the novelty of the subject-matter of claim 1. Whether or not this finding is correct in substance cannot be the subject of the review proceedings (see R 2/08 [5]; R 9/08 [6.3]). In any case, the EBA is satisfied that the alleged fundamental violation of Article 113 EPC did not occur in the proceedings under review. […]

The petition for review is rejected as clearly unallowable.

To download the whole decision, click here. The file wrapper can be found here.

T 933/10 – You Have To Tell Why

Curious as it may seem to attorneys who are not based in the Bavarian capital, some Munich based colleagues seem to consider that attending oral proceedings (OPs) in The Hague rather than in Munich is unacceptable. Not long ago, we have seen case T 689/05 where Board 3.5.04 refused to remit the case to the Examining Division (ED) and pointed out that 

“the procedural violation [i.e. that the impugned decision was not reasoned with regard to the refusal of the applicant’s requests to transfer the OPs to Munich] did not affect the entire proceedings and can thus not amount to a fundamental deficiency within the meaning of Article 11 RPBA.”

The facts underlying the present case are similar. During the course of the examination proceedings the ED issued, on July 2, 2009, summons to attend, on December 8, 2009, OPs at the EPO in Rijswijk (The Hague). By letter dated 11 August 2009 the applicant submitted: 

“Our client is concentrating its patent activity in Munich and it is therefore respectfully requested to hold the OPs scheduled for December 8, 2009 in Munich instead of Rijswijk.”

In a “Brief Communication” (EPO form 2008A) dated 1 September 2009 the ED stated:

“The OPs will take place as planned in Rijswijk. It is not forseen for the ED, which is located in Rijswijk, to travel to Munich for OPs during the examination procedure.”

In a letter dated 30 November 2009 the applicant confirmed, following a telephone conversation with the primary examiner, that it would neither attend nor be represented during the OPs if they took place in The Hague. However for the case that the OPs would take place in Munich it was indicated that the applicant would be represented during the OPs.

The decision of the ED records in the final paragraph of the “Summary of Facts and Submissions”:

“In preparation for the OPs the applicant filed a reply on 11-08-2009 and 30-11-2009 and requested to hold the OPs in Munich instead of Rijswijk. The Applicant further stated that he neither will attend or be represented during the OPs if the OPs take place in The Hague.”

The first paragraph of the Reasons for the Decision read:

“The present decision is based solely on the grounds of lack of novelty (A 52 and A 54), lack of inventive step (A 56) and clarity (A 84) which was communicated to the applicant with the communication dated 05-02-2008 and the summons for OPs dated 02-07-2009. The applicant did not attend the OPs and further evidence was not provided by the applicant.[…] Refusal of the application at this stage is justified and does not violate the applicants right to be heard (A 113(1)).”

The remaining reasons of the decision dealt with the substantive aspects of the application, i.e. A 54, A 56 and A 84.

The applicant filed an appeal and requested the case to be remitted to the ED with the order to hold OPs in Munich. It also requested, as an auxiliary request, that the following question be referred to the Enlarged Board (EBA):

“Can a request by a party to conduct OPs at the EPO in Munich instead of at the branch office in The Hague be denied?”

Board 3.3.03 comes to another conclusion than Board 3.5.04 in T 689/05.

A 113 / R 111

[2] R 111(2) (corresponding to R 68(2) EPC 1973) requires that decisions of the EPO which are open to appeal shall be reasoned. By this is meant that the decision has to contain the logical chain of reasoning which led to the relevant conclusion. See for example T 292/90 [2] and T 52/90 [2] as well as the various other decisions discussed in section VI.J.5.3.4 of “Case Law of the Boards of Appeal of the EPO”, 6th edition.

It is also the established case law of the EPO that the failure to provide reasons pursuant to R 111(2) (R 68(2) EPC 1973) constitutes a substantial procedural violation justifying reimbursement of the appeal fee - see T 493/88 [7] as well as section VII.E.17.4.4 of “Case Law of the Boards of Appeal of the EPO”, 6th Edition.

[2.1] The “Brief Communication” of 1 September 2009 issued by the ED in response to the request of the Applicant to hold OPs in Munich instead of The Hague […] merely stated that it was “not forseen” for an ED which was located in Rijswijk to travel to Munich for OPs.

This statement does not do more than elaborate the physical circumstances associated with the refusal of the request.

The communication thus contains nothing that can be regarded as “reasoning” justifying the refusal of the request concerning the venue of the OPs. Nor were any legal norms, e.g. Articles or Rules of the EPC or Information or Directives issued by the Office invoked by the ED to support its conclusion. 

Accordingly this communication cannot be regarded as containing any reasons at all in support of the conclusions reached, let alone as providing a “logical chain of reasoning” justifying the conclusions. 

[2.2] Regarding the status of this communication, as held in T 1012/03 [6], there was no need to decide whether the communication issued by the division was a non-appealable interlocutory decision or only a precautionary indication to the applicant. Either way, the refusal of the request to hold OPs in Munich was the subject of and therefore appealable with the final decision.

[2.3] In the present case, however, the written final decision also contained nothing that can be regarded as providing reasons to justify the refusal of the request of the applicant to hold oral proceedings at the EPO in Munich instead of in The Hague (Rijswijk). Although this matter was referred to in the Facts and Submissions of the decision under appeal […], this is not further mentioned in the reasons for the decision. 

[2.4] Pursuant to R 111(2) the absence of any reasoning in either the communication […] or the decision […] concerning the refusal of the request regarding the venue of OPs constitutes a serious procedural violation which according to the established case law (see above) would justify reimbursement of the appeal fee. 

[2.5] Further, an argument presented by the appellant/applicant in support of this request was not dealt with in the decision under appeal:

• In its submissions to the ED (letter of 11 August 2009 […]) the Applicant gave a reason for its request to hold OPs in Munich, namely the concentration of the patent activities of the client in Munich;
• Neither in the communication issued by the division, nor in the written decision is there even a reference to this argument, let alone a logical chain of reasoning showing why this argument would have to fail […];
• On the contrary it is recalled that the first paragraph of the reasoning states […]:

“The present decision is based solely on the grounds of lack of novelty (A 52 and A 54), lack of inventive step (A 56) and clarity (A 84) which was communicated to the applicant with the communication dated 05-02-2008 and the summons for OPs dated 02-07-2009. […]”.

[2.5.1] According to the established jurisprudence of the boards of appeal, the opportunity to present comments and arguments guaranteed by A 113(1) is a fundamental principle of the examination, opposition and appeal procedures - see T 1123/04 [2.2.4].

[2.5.2] This is not just a right to present comments, but also to have these duly considered - see T 508/01 [4] which decision was also cited in the aforementioned T 1123/04.

[2.5.3] The fact that the decision under appeal failed to take account of an argument of the appellant/applicant represents a further violation of the right to be heard and consequently a further substantial procedural violation which would also justify reimbursement of the appeal fee. 

[2.6] Summarising, the decision under appeal suffers from two substantial procedural violations […]:

• No reasons were given for the refusal of the request of the applicant to hold OPs in Munich instead of The Hague, which is contrary to R 111;
• There is no evidence that an argument presented by the Applicant in support of this request was taken into account by the division in reaching its decision, i.e. the applicant had de facto been denied the right to be heard, which is contrary to A 113(1).

[3] Since each of these violations justifies in the Board's view referral back to the first instance and reimbursement of the appeal fee, it would be premature for the Board further to assess the probative value of the appellant/applicant's other arguments, for instance those based on T 1012/03　with respect to the seat of the Office. 

For these reasons it is decided that: 

1. The decision under appeal is set aside.

2. The case is remitted to the first instance for further prosecution.

3. Reimbursement of the appeal fee is ordered.

Please note that the Board did not order (as requested by the applicant) that OPs be held in Munich. I guess it does not even have the power to issue such an order.

Although formally justified, I do not find the remittal helpful. It is just a waste of time because the OD may be expected to decide as it did before, except that it will provide some reasons why the OPs are not held in Munich (which should not be too difficult). I much prefer the approach chosen in T 689/05.

To read the whole decision, click here. The file wrapper can be found here.

NB: T 689/05 is now also discussed on Le blog du droit européen des brevets.

T 189/06 – Nine Not One

Readers familiar with the case law of the Boards of appeal know that Boards are reluctant to change the dates of oral proceedings (OPs) once the summons have been sent. But what about the hour of beginning – is it possible to have afternoon proceedings?

In the present case, the appellant requested OPs on an auxiliary basis and that any OPs be held as close to 1.00 pm as possible in order to reduce its costs.

[16] The request to start the OPs as close as possible to 1.00 pm could not be granted for the following reasons:

Scheduling OPs to start at 1.00 pm can only be accepted in certain exceptional cases. In general this creates a risk that the OPs are not finished at a reasonable time and thus have to be adjourned.

In the present case five sets of claims (main request and four auxiliary requests) were submitted with the grounds of appeal and five prior-art documents (D1 to D5) might have had to be discussed during the OPs. The present case thus appeared inappropriate for making an exception.

The OPs therefore started at the usual time of 9.00 am.

To read the whole decision, click here.

The file wrapper can be found here.

T 1744/08 – Wrong Base

The present decision deals with the refusal of a patent application. The Examining Division (ED) found the claims on file to lack inventive step.

Claim 1 reads as follows:

A process for preparing submicron sized particles of a pharmaceutically active compound comprising the steps of:

• providing a multiphase system having an organic phase and an aqueous phase, the organic phase containing a pharmaceutically active compound dissolved in a water immiscible solvent; and
• sonicating the multiphase system to evaporate a portion of the water immiscible solvent of the organic phase to cause precipitation of particles of the pharmaceutically active compound having an average effective particle size of less than 2 μm in the aqueous phase and wherein the sonicating step is effective to remove nearly all the water immiscible solvent in the system.

The decision contains an interesting statement on inventive step and sufficiency of disclosure:

[2] The refusal of the main request and of all auxiliary requests was based on the conclusion that there was no evidence in the original application that the sonicating step was able to remove nearly all the water immiscible solvent in the system. The ED concluded therefrom that there was lack of inventive step […]. If, however, the sonicating step is not able to remove nearly all the water immiscible solvent in the system, then the process as a whole cannot be carried out, as the said solvent removal step is an essential part of the process as claimed. As a consequence, the refusal is factually based on insufficiency of disclosure (A 83) rather than lack of inventive step (A 56).

When I first read this, I thought the Board had got it wrong. Absence of evidence for the technical effect should concern inventive step (as it is not established that a problem is indeed solved) rather than sufficiency of disclosure (which corresponds to the requirement that the skilled person has to be able to carry out the invention, which may be possible irrespective of whether there is evidence for the alleged effect).

Nevertheless, there are some exceptions to this reasoning. In a recent post, we have seen that claims directed at further therapeutic applications contain the latter as functional features, so that if no evidence for the therapeutic effect is given, one of the features is not described, and an A 83 objection appears to be justified.

The present case shows yet another exception. After some thinking, I believe the reasoning of the Board to be correct because the effect has been incorporated into the claim. In such a case, the skilled person trying to carry out the claimed subject-matter does not know how to get there, and an A 83 objection seems appropriate.

Having said this, I think the situation would be different if the effect had been asserted in the application – without there being any evidence that it was indeed obtained – but was not a feature of any of the claims. Then, as far as I can see, an A 56 objection would be more appropriate than an A 83 objection.

To read the whole decision, click here.

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

T 1162/07 – Carrying One’s Burden

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty over document D3.

Claim 1 of the main request before the Board read:

Use of metal complexes of an azo compound which conforms to the formula (I) or to one of its tautomeric structures

where

R and R’ are independently OH, NH2, NH-CN, acylamino or arylamino and

R1 and R1’ are independently -OH or -NH2,

and which hosts at least one guest compound, the metal complexes corresponding to the mono-, di-, tri- and tetra-anions of the azo compounds of the formula (1) with the metals Li, Cs, Mg, Cd, Co, Al, Cr, Sn, Pb, particularly preferably Na, K, Ca, Sr, Ba, Zn, Fe, Ni, Cu, Mn and La, as a pigment in colour filters for liquid-crystal displays.

The Board examines the novelty of this claim with respect to D3:

*** Translated from the German ***

[3.1] Document D3 is a Japanese patent application filed on November 11, 1997 and claiming a priority of April 28, 1997. It was published on January 22, 1999. it discloses the use of “BABYPLAST Yellow 5GN 01” as “C.I. Pigment Yellow 150” for the manufacture of LCD colour filters […].

[3.2] The annexes to document D8 provide evidence for the following facts: A fax from Bayer AG to Bayer Ltd. in Tokyo, sent on March 15, 1999, refers to the delivery of 600 kg of “BABYPLAST Yellow 5GN1 01” of batch FA 320 016. According to the English translation of the fax of the “East Japan Division of Yamamoto Trading Co. Ltd.”, sent on July 22, 1999, 100 grams of this batch (FA 320 016) were shipped by Bayer (Osaka) to the [opponent].

According to document D9, “BABYPLAST Yellow 5GN1 01” of batch FA 320 016 was analysed and the pigment fraction was identified as a melamine coordination compound of azobarituric acid 1:1 Nickel complex […].

[3.3] In opposition appeal proceedings, the parties to the proceedings carry the separate burdens of proof of any fact they allege (see T 270/90 [2.1]). If one party has submitted convincing evidence for facts it alleges then it has discharged its burden of proof. The evidence provided does not necessarily have to prove these facts with absolute certainty in order to be convincing; evidence showing high probability is sufficient. If a party has discharged its burden of proof, then the adverse party, which tries to invalidate the facts that have been established convincingly by submitting adverse arguments bears the burden of proof for those arguments (see T 109/91 [2.10], T 239/92 [2.4.2-3], T 525/90 [4]).

[3.4] The facts described above in paragraphs [3.1] and [3.2] were not contested by the parties, and the Board having thoroughly examined them, does not contest them either.

However, it was disputed

• on one hand, whether, when novelty is examined, the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 or the pigment on sale on its date of publication (for which D9 provided a chemical analysis) was to be taken into account;
• on the other hand, whether, as submitted by the [patent proprietor] the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 was not a melamine coordination compound of azobarituric acid 1:1 Nickel complex.

[3.4.1] As far as the second disputed question is concerned, it has to be determined who carries the burden of proof for the alleged fact. In order to do so, it first has to be ascertained whether the [opponent] has discharged its burden of proof concerning the lack of novelty of the claimed subject-matter in view of document D3. As the facts mentioned under [3.1] and [3.2] have not been contested, the evidence provided by the [opponent] can only be considered to be insufficient if the fact asserted by the [patent proprietor] is probable.

[3.4.2] The [patent proprietor] suggested that the “BABYPLAST Yellow 5GN 01” product used in document D3 did not contain any melamine. It based this argumentation

• on one hand, on the supposition that the composition of products sold under a trade name, such as PERSIL®, often changes, and
• on the other hand, on documents D24 and D26 to D28 showing that the recipe of “BABYPLAST Yellow 5GN 01” had indeed been modified by the addition of melamine.

The trade name PERSIL is used for selling detergents, i.e. products that are destined to end users. “BABYPLAST Yellow 5GN 01”, however, is a pigment preparation, i.e. a product that is delivered to processing companies which use this product for manufacturing coloured intermediate or end products. During the processing steps, the pigment can come in contact with a great variety of components and devices and has to be compatible with them under the chosen processing conditions. Therefore, a change of the recipe of such a pigment preparation can have effects not only regarding the end product - as is the case for PERSIL® - but may also lead to perturbations of the processing. As a consequence, the manufacturer of “BABYPLAST Yellow 5GN 01” has committed itself to comprehensively inform and consult its customers in writing before any change of the specification of the product at constant quality […]

(See the English translation of the annex to document D10:

(highlighting added)

Therefore, each modification of the recipe of “BABYPLAST Yellow 5GN 01” implied great effort. As a consequence, it has to be assumed that such modifications cannot have been commonplace (die Regel). Thus the Board cannot follow the argument of the [patent proprietor] according to which the composition of trade names such as “BABYPLAST Yellow 5GN 01” was subject to frequent change. Therefore, the Board comes to the conclusion that the [opponent] has discharged its burden of proof to provide evidence for the lack of novelty of the subject-matter of the claims in view of document D3.

[3.4.3] Consequently, the [patent proprietor] carries the burden of proof for its assertion that the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 was not a melamine coordination compound of azobarituric acid 1:1 Nickel complex.

As far as apportionment of the burden of proof is concerned, it is not relevant whether the [patent proprietor] had easier access to the corresponding evidence than the [opponent]. Therefore, the argument of the [patent proprietor] according to which it was independent from the then manufacturer of “BABYPLAST Yellow 5GN 01” and was not able to provide further evidence, is not relevant.

[3.4.4] As a consequence, it has to be examined whether, as pointed out by the [patent proprietor], the recipe of “BABYPLAST Yellow 5GN 01” had indeed been modified by the addition of melamine between the priority date of document D3 and the priority date of the opposed patent. The [patent proprietor] relied on documents D24 and D26 to D28.

Documents D24 and D26 disclose “C.I. Pigment Yellow 150” to be a nickel complex of the formula

[…] Document D27 discloses in its example 2 the production of such a complex. However, these disclosures do not exclude that the commercial product “BABYPLAST Yellow 5GN 01” also contained additional embedded melamine.

Document D28 informs on a modification of the manufacturing process of “BABYPLAST® Gelb 5GN 01” which made the product “clearly more green, brilliant and transparent”. However, this document does not disclose whether this process modification involved a change of the starting materials, let alone whether it concerned the addition of melamine to the reaction mixture.

Therefore, the arguments and the evidence provided by the [patent proprietor] cannot substantiated that the “BABYPLAST® Gelb 5GN 01” product available on the priority date of document D3 did not contain melamine as clathrate (Einschlussverbindung).

Consequently, one has to assume that the pigment “BABYPLAST Yellow 5GN 01” that was on sale on the priority date of document D3 also was a melamine coordination compound of azobarituric acid 1:1 Nickel complex.

Therefore, the disputed question mentioned first under [3.4] above is not relevant for the present decision. However, the Board wishes to add that according to the established case law of the Boards of appeal as far as the extent of disclosure of a document that is part of the state of the art within the meaning of A 54(2) is concerned, it is the date of publication that is decisive (T 205/91 [4, last paragraph]).

[3.5] As a consequence, the subject-matter of claim 1 of the main request is not novel. The Board can only consider requests as a whole and, therefore, has to reject the main request.

To read the whole decision (in German), click here.

The file wrapper can be found here.

T 1027/08 – Measuring Well-being

The present decision deals with the refusal of an application by the Examining Division (ED).

Claim 1 before the Board read (my translation from the German) :

Device for therapeutically influencing at least parts of a living being by means of an irradiation device for irradiating [the living being] with electromagnetic waves, consisting in

a high frequency oscillator stage for generating a high frequency wave train, wherein the high frequency oscillator stage generates a frequency that can be tuned in the range from 130 MHz to 170 MHz;

a low frequency oscillator stage, which generates a tuneable modulation frequency;

a modulation unit, to which the high frequency oscillator stage and the low frequency oscillator stage output are fed, so that a modulated wave train is generated; and

a final amplifier, to which an transmitting antenna can be connected in the emitting range of which tissue to be treated or a person can be positioned,

characterised in that the frequency of the low frequency oscillator stage(4) can be tuned in a frequency range from 0.5 to 40 Hz,

in that the device for influencing (1) further comprises a device for acoustic irradiation (Beschallung) (13) for simultaneously and additionally acoustically influencing [the living being], by means of which a low frequency that can be generated in a low frequency oscillator stage (4), amplified by an amplifier (16) and tuned in frequency, can be fed to an loud speaker (17) acting as an acoustic source and can be radiated as an acoustic signal to the tissue to be treated or a person (12), respectively,

in that the frequency of this acoustic signal corresponds to a low frequency modulation frequency that is tuned in a frequency range from 0.5 to 40 Hz, or an integer multiple thereof, up to 3000 Hz at most, and

in that the low frequency oscillator stage (4) of the irradiation device (2) is also used as low frequency stage having a downstream frequency multiplier for multiplying by an integer, for the acoustic irradiation device (13), so that the electromagnetic modulation frequency and the acoustic signal frequency are automatically coupled.

(Click to enlarge)

In the following paragraphs the Board examines the presence of an inventive step:

*** Translated from the German ***

[2.2.1] Starting from D1, the problem indicated in the application […] consists in the development of the known irradiation device in order to increase the therapeutic influence, and in particular the physical well-being. This problem may appear to be reasonable at first sight, but it raises the question of how the increase of the therapeutic influence can be objectively proven.

The [applicant] is of the opinion that the essential advantage of the invention lies in the fact that an increased therapeutic effect is obtained with respect to irradiation according to D1 by providing an additional acoustic irradiation as claimed. This was to be explained by the synchronisation of acoustic and electromagnetic waves that simultaneously acted on a living being, which was the outcome of coupling the irradiation device and the acoustic irradiation device as claimed.

The [applicant] further submitted that effects obtained with devices for therapeutically influencing could, as a matter of principle (grundsätzlich), not be measured with technical means. Therefore, it was difficult to formulate a technical problem in this domain, although the subject-matter of the claim was a technical device.

In this context it was pointed out that the ED’s requirement to provide convincing evidence for the effect obtained was inappropriate (unangebracht). As a matter of fact, none of the other patent offices dealing with the present application had requested [such evidence], nor had the EPO in the proceedings that had let to the grant of a patent on the basis of D1.

In the present case, the alleged effect of increasing the therapeutic influence, in particular of the physical well-being, with respect to D1, has not been proven or at least made credible. The explanation of the [applicant] according to which the effect was related to a “synchronisation” of the emitted radiation and acoustic waves, which synchronisation was not defined in more detail, is not convincing, because one can assume that, unless specific measures are taken, normal synchronisation obtained by means of a common low frequency stage will be lost as a consequence of phase shifts in the irradiation device and in the acoustic irradiation device. Moreover, there is no plausible hint that there is a causal relationship between the claimed subject-matter and the problem according to the application. Therefore, it cannot be excluded that a possible subjectively improved well-being is based on a sort of placebo effect.

The Board is well aware of the difficulty mentioned by the [applicant] to objectively prove therapeutic effects. However, it is the applicant’s duty to prove or at least make credible the alleged effect of the claimed subject-matter, with respect to the closest prior art, over the whole claimed domain, e.g. by providing appropriate (sachgerecht) and reproducible comparative trials which are as objective as possible.

According to the case law of the Boards of appeal, alleged effects to which the applicant merely refers with respect to the closest prior art, for which there is not sufficient evidence, cannot be taken into consideration in determining the problem underlying the invention and, therefore, in assessing inventive step (Case Law of the Boards of appeal of the EPO, 6th edition, 2010, I.D.4.2). There is no reason to deviate from this case law, which is based on the understandable principle that a solution that is claimed to be non obvious can only justify the grant of a patent if it is indeed obtained (Singer/Stauder, EPÜ, 5th edition, A 56, marginal number 42).

Therefore the problem exposed in the application cannot be deemed to have been solved and has to be modified (Singer/Stauder, EPÜ, 5th edition, A 56, marginal number 46).

Starting from D1 as closest prior art the problem underlying the present invention is seen in extending the usability of the known irradiation device such that other forms of therapy than irradiation can be carried out.

You will not be surprised to hear that, based on this alternative problem, the invention was found not to comply with the requirements of A 56. The appeal was dismissed.

To read the whole decision (in German), click here. 

The file wrapper can be found here.

T 1547/08 – With A Little Help From My Friends

Although Boards have to be strictly impartial in inter partes proceedings, they may sometimes provide some help to parties in ex parte proceedings. This appears to have happened in the present case where an applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application because the invention was insufficiently disclosed.

Claim 1 on file before the Board read:

A device (12) for regenerating the phase of an optical signal (Se) carrying an information encoded by modulating the phase of said signal, the device comprising:
an optical modulation converter (14;42) for converting the signal carrying the information encoded by phase modulation into at least one secondary signal (S’1, S’2) carrying said information encoded by amplitude modulation;
at least one optical amplitude regeneration module (16;44) for regenerating the amplitude of the secondary signal; and
an optical modulation converter (18;14;42) for converting the regenerated secondary signal into a signal (Ss) carrying the information encoded by phase modulation.

There was a telephone interview with the rapporteur of the Board (again something that is not likely in inter partes proceedings, see T 263/07), who, inter alia, drew the applicant’s attention to documents A1 and A2, which appeared to confirm its arguments in support of sufficiency of disclosure.

*** Translated from the French ***

[2.2] In its decision the ED, although it did not cast doubt on the fact that the technical means disclosed in the application were sufficient for carrying out the [steps of converting the signal carrying the information into a secondary signal, regenerating the amplitude of the secondary signal and concerting the regenerated secondary signal into the signal Ss] individually, considered that neither the sequence of steps mentioned nor the assembly of technical means carrying out the different steps were capable of obtaining the claimed effect, i.e. regenerating the phase of an optical signal carrying an information encoded by modulating the phase. In particular, the ED pointed out that the embodiments proposed in the description did not allow to suppress, even partially, the phase noise of the optical signal, for the following reasons:

as there was noise in the original signal Se, each of both complementary intermediary signals S’1 and S’2 contain amplitude noise and also a phase noise having a spectral density corresponding to the spectral density of the original signal;

the amplitude regeneration module, which was implemented e.g. as an saturable absorber, only had the role of suppressing the intermediary signal having an amplitude close to zero – thus the complementary intermediary signal having a high amplitude would be transmitted without phase modification; and

therefore, the regeneration module allowed to regenerate the amplitude but this amplitude regeneration had no effect on the phase of the optical signals and the output signal Ss would still carry the phase noise of the original signal.

[2.3] The applicant submitted that the device suppressed the phase noise stemming from the low levels (issu des niveaux bas) of the output signal by neutralizing the power of the intermediate signals at low levels (sur les niveaux bas) by eliminating their fluctuation amplitude close to the low levels.

Having studied the questions raised by the ED and the arguments submitted by the [applicant], the Board considers that even though the doubts expressed by the ED are not unfounded on a technical level, the arguments presented by the [applicant] make it credible that the claimed effect can indeed be obtained, at least (as stated in the application […]) to a certain degree.

As a matter of fact, it is undisputed that the low amplitude component of the intermediary signals issued by the first optical modulation converter is eliminated by the amplitude regeneration module. As this eliminated component itself carries phase noise stemming from the phase noise of the original signal and as the signal that is reconstructed from the high power component and issued by the second modulation converter does not contain any contribution of the eliminated component, the Board is of the opinion that one may expect that the reconstructed signal carries phase noise that is reduced with respect to the phase noise of the same signal that is reconstructed without suppressing said intermediary low amplitude component, as can be seen from the constellation diagrams of the intermediary signals on the input and the output of the regeneration module that are shown in the statement of grounds of appeal. Moreover, as pointed out by the [applicant] in its argumentation, any action of the amplitude regeneration module on the amplitude fluctuations of the high power component could only amplify or at least maintain the mentioned effect.

Incidentally, this conclusion is confirmed by the documents known to the Board and brought to the attention of the [applicant], i.e. documents A1 and A2. Each of these documents discloses a device for treating a modulated signal of the DPSK (“differential phase-shift keying”) type, which is the type considered in the application […], the devices being of the same type as the claimed device and using saturable absorbers of the type used in the embodiments disclosed in the application […]. These documents show in detail that the phase nose of the signal issued by the devices is partially eliminated […]. They have been published after the filing date of the application but nevertheless constitute proof (see e.g. decision T 1264/04 [5-7]) for the [applicant’s] assertions according to which the means disclosed in the application and available at the date of filing of the application are capable of reducing or partially eliminating the phase noise of the optical signal encoded by phase modulation.

Thus the device that is claimed and disclosed in the application allows to obtain the claimed effect of regenerating, at least to some extent, the phase of an optical signal carrying information encoded by modulating the phase of the signal.

[2.4] On the basis of what has been said, the Board comes to the conclusion that the reasons given by the ED for refusing the application are not convincing and that the application discloses the claimed invention in a manner sufficiently clear and complete for it to be carried out on the filing date by a person skilled in the art, as required by A 83.

Should you wish to read the whole decision (in French), please click here.

The file wrapper can be found here.

T 2225/09 – Classy Stuff

This decision deals with the refusal of an application by the Examining Division (ED).

Claim 1 as filed read (my translation from the German) :

Separation device for cleaning a gas flow, in particular for cleaning crank case gases, comprising a mother cyclone (10) and a daughter cyclone (13),

• wherein the mother cyclone (10) has an inlet for the gas to be cleaned, a segregation chamber (12) and an outlet (23),
• wherein the daughter cyclone (13) is provided in the segregation chamber (12) of the mother cyclone (10),
• wherein the daughter cyclone has an inlet opening (15) which communicates with the segregation chamber (12) of the mother cyclone (10), and
• wherein the daughter cyclone (13) has a separating chamber (14), an outlet opening (16) for the cleaned gas and a discharge opening (17),characterised in that
• at least three daughter cyclones (13) are provided in the segregation chamber (12) of the mother cyclone (10), wherein the daughter cyclones (13) are connected in parallel and all daughter cyclones can be streamed at the same time, and wherein the outlet openings (16) run into a common outlet (26).

Claim 1 of the main request before the Board read :

Crank-case gas cleaning segregation device for cleaning a gas flow, comprising a mother cyclone (10) and a daughter cyclone (13),

• wherein the mother cyclone (10) has an inlet for the gas to be cleaned, a segregation chamber (12) and an outlet (23),
• wherein the daughter cyclone (13) is provided in the segregation chamber (12) of the mother cyclone (10),
• wherein the daughter cyclone has an inlet opening (15) which communicates with the segregation chamber (12) of the mother cyclone (10), and
• wherein the daughter cyclone (13) has a separating chamber (14), an outlet opening (16) for the cleaned gas and a discharge opening (17), characterised in that
  
• at least three daughter cyclones (13) are provided in the segregation chamber (12) of the mother cyclone (10), wherein the daughter cyclones (13) are connected in parallel and all daughter cyclones can be streamed at the same time, and wherein the outlet openings (16) run into a common outlet (26).

The applicant pointed out that claim 1 differed from the segregation device known from document D1 by

(a) the mother cyclone with its features according to claim 1, and

(b) the designation of the claimed device as a “crank-case cleaning segregation device”.

The Board does not agree:

*** Translated from the German ***

[1.1] As the [applicant] has not contested that the remaining features of the subject-matter of claim 1 are known from D1, the assessment of novelty depends on whether the skilled person can find the features (a) and (b), which the [applicant] considers to be distinguishing, in D1.

The Board then shows that D1 discloses a mother cyclone as claimed and continues:

[1.3] As far as feature (b) is concerned:

[1.3.1] As has been shown in paragraphs [1.1] and [1.2], all remaining structural and functional features of claim 1 are known from D1. It remains to be decided whether the sole designation of the subject-matter of claim 1 as “crank-case gas cleaning segregation device for cleaning a gas flow” […] defines subject-matter that is different from the segregation device known from D1.

[1.3.2] The [applicant] argued that as the segregation device claimed in claim 1 was directed to the cleaning of gases […] generated in a crank case, claim 1 concerned a device which was exclusively suitable for segregating liquids from gases and, therefore, could not be anticipated by the device from D1 which concerned the segregation of solid particles.

The Board cannot endorse this argument, for the following reasons:

[1.3.3] The application itself […] indicates that the device according to the invention can be used for cleaning any fluid comprising components of different specific weight. For instance, it is possible to segregate liquids of particles from gases, such as mixtures of air and water, mixtures of air and dust in the intake air of combustion engines or mixtures of air and oil from crank cases of a combustion engine.

This means that the device defined in the claims as filed was structurally suitable for use in both fields of application. Claim 1 under consideration does not add any further structural features which would make the device suitable for segregating liquids from gases only.

The [applicant] has not provided evidence for its assertion that the purpose of use given in claim 1 implicitly meant that the device was of small dimension or made from plastic. As far as the dimensions are concerned, the claim can cover not only crank cases for automotive engines but also relatively big combustion engines such as ship engines (it being noted that the application under consideration does not contain any indications of dimension for the device). The material from which the segregation device is made is not relevant because it is not even mentioned in claim 1.

Therefore, the indication of the field of application does not include any further technical features which could distinguish [the claimed device] from the device according to D1.

[1.3.4] The question that remains to be answered is whether the device according to D1 is not suitable for the purpose given in claim 1, or if it would have to be modified in order to fulfil this purpose, respectively (see “Case Law of the Boards of appeal, 6th edition, 2010, chapter I.C.5.3.3).

D1 discloses a segregation device made of steel that is suitable for segregating solid particles from hot gases having temperatures of between 600° and 800°C […]. As the segregation device known from D1 has all the structural and functional features of the device of claim 1 […], it also has to be suitable of segregating liquids such as oil particles from crank case gases, in accordance with the indications given in the application […]. D1 does not contain any hint that the device disclosed therein would not be suitable for segregating liquids from gases (e.g. at lower temperatures).

Also the dimension of the device according to D1 is not decisive for a possible use for crank case gases because, as mentioned above, claim 1 does not contain any indication concerning the dimensions.

[1.3.5] The [applicant] has also submitted that the fact that oil removal from a hot gas flow in crank cases was mentioned as indication of purpose in the IPC classification of class F01M 13/04, i.e. as “having means for purifying air before leaving crankcase, e.g. removing oil” was additional proof for the fact that the new definition of the subject-matter of claim 1 as “crank-case gas cleaning segregation device for cleaning a gas flow” […] defined subject-matter different from the device known from D1, which was suitable for the segregation of solid particles from a hot flow of air in Fluid Catalytic Cracking processes.

However, this argument could only be successful if this class was the sole class applicable. As a matter of fact, both the present application and D1, when they were classified according to the IPC by the EPO, have been classified in groups B04 5/26 (multiple arrangement of cyclones for series flow) and B04C 5/28 (multiple arrangement of cyclones for parallel flow). Thus both concern devices that are similar from a technical point of view, i.e. segregation devices for cleaning gases, irrespective of what (solid or liquid particles) is segregated from which gas.

This is also corroborated by the second paragraph on page 2 of the application […] according to which the device according to the invention is suitable for segregating both liquids and solid particles from gases generated in any type of device.

Incidentally, it is noted that the German application (DE 102004006834 A1) the priority of which is claimed by the present application has been classified also in the higher-ranking class B04C 5/24 by the DPMA.

Board of appeal decision T 542/00, which the [applicant] has cited in this context, concerns the consideration of the purpose given in the claim when the closest prior art is to be determined in the assessment of inventive step and, therefore, does not find application when the novelty of the subject-matter of claim 1 under consideration is to be assessed.

Decision T 312/94, also cited by [the applicant], is not relevant either because in the present case the Board has indeed construed document D1 in the context of the contents of the document as a whole, as required by this decision.

[1.4] It follows from all this that the subject-matter of claim is anticipated by the segregation device known from D1. Therefore, the requirements of A 54 are not fulfilled.

To read the whole decision (in German), click here. 

The file wrapper can be found here.