In recent decision T 1378/08 (April 29, 2011, Board 3.3.05) the applicant appealed against the decision of the Examining Division (ED) to refuse its application.
Claim 1 before the Board read (in English translation):
Method for manufacturing fired sanitary ceramics using a fired body and a surface that is coated with an oleophobic and/or hydrophobic layer, wherein the body is fired in an elongate tunnel furnace, characterised in that perfluoroalkyl silanes, which have a measurable vapour pressure at high temperatures and in which spacer groups are provided between Si atoms and fluorine atoms in the molecule, the length of which is at least the length of –(CH2)2–, are damped (aufdunsten) onto the body in the furnace, in the cooling zone of the furnace when the end of the furnace is open, under atmospheric conditions, wherein the perfluoroalkyl silanes which have been brought into the cooling zone have a lower temperature than the body that passes by, and wherein the material cross-links and hardens during the cooling of the body.
In the following paragraphs the Board examines the allowability of the amendments:
*** Translation from the German ***
[1.1] The subject-matter of the only remaining method claim is based on the disclosure of the application as filed (see the published application WO 2004/026793 A1), in particular on a combination of method claims 1 (firing of the sanitary ceramics in a tunnel furnace, damping of the coating material in the cooling zone of the furnace), 4 (“when the end of the furnace is open, under atmospheric conditions”), 6 (nature of the coating material), and 8 (lower temperature of the coating material) in combination with page 5 of the description, second and last paragraphs (preferred, oleophobic and/or hydrophobic coating material according to international application PCT/DE00/02988) and page 7 of the description (lower temperature of the coating material).
Thus the disclosure of the specific coating materials to be used according to the claim is found in the application as filed in the form of a reference to international application PCT/DE00/02988 (published as document [WO 01/23101] on April 5, 2001, i.e. before the priority date of the application under consideration). Only these particular coating materials are concretely disclosed in D3 and referred to as preferred. Therefore, in the present case the conditions for incorporation of features from a reference document have clearly been complied with (see e.g. T 689/90 [2.2]). […]
What are the key decisions on incorporation by reference ?
The first decision that has explicitly allowed incorporation by reference appears to be T 6/84 (February 21, 1985, Board 3.3.1), where we read:
[2] There is no formal objection to the current version of the claims. The main claim relies for the definition of the synthetic offretite on p. 8, lines 25 to 27 of the specification. The relevant passage refers to CA-A-934 130 (D2) which, in turn, specifies (cf. Claims l, 2 and 4 on pages 19 and 20 of that document) the offretites used for the present invention as aluminosilicates having the given mole ratios for the oxides and a characteristic X-ray powder diffraction pattern.
It is the view of the Technical Board that structural features of a means for performing a chemical process which are not mentioned in the application documents themselves but in a document to which they refer may be incorporated into a patent claim if they unequivocally form part of the invention for which protection is sought. However, all the essential structural features thus disclosed which belong together must be incorporated into the claim; it is not permissible to single out a particular one of their number.
[3] As to the amendment of the main claim by incorporating certain characteristics from document D2 in order to define the offretites used for the purposes of the invention claimed in the present application, the Board is therefore of the opinion that the mere limitation to a silica/ alumina mole ratio of 5 to 10, as claimed before the ED, is insufficient. In the absence of evidence that this feature alone, together with the general term “offretite”, is a sufficient characterisation, it is necessary to recite fully the other components of the structure and the diffraction pattern figures, as they were originally disclosed and defined in document D2. Nevertheless, the further criterion also mentioned is the same document , i.e. the capability of absorbing cyclohexane at least to a specified degree, is considered unnecessary in the circumstances since this condition is assumed to be fulfilled in consequence of the essential features of the claim. […]
This was then condensed in the following headnote:
Structural features of a means for performing a chemical process (here: the catalyst “offretite”) which are not mentioned in the application documents themselves but in a document (here: a Canadian Patent specification) to which they refer may be incorporated into a patent claim if they unequivocally form part of the invention for which protection is sought. However, all the essential structural features thus disclosed which belong together must be incorporated into the claim; it is not permissible to single out a particular one of their number (here: a silica/aluminia ratio).
More information is given in the decision already cited above, T 689/90 (January 21, 1992, Board 3.4.1)
[1.2] The appeal raises a general question as to the circumstances in which it is permissible for a European patent application to include a cross-reference to another document, and as to the effect of such a cross-reference, in particular when some of the contents of the cross- referenced documents are sought to be included in the main claim of the application by way of amendment.
A basic requirement for a European patent application is set out in A 78(1)(b), namely that such an application “shall contain a description of the invention”. Prima facie, therefore, all the essential features of the invention for which protection is, or may be, sought should be included in the description as such and as originally filed. This view is reflected in the Guidelines, paragraph C-II, 4.18, where it is stated that “the patent specification should, regarding the essential features of the invention, be self-contained, i.e. capable of being understood without reference to any other document”. This statement is specifically in the context of satisfying the requirements of A 83, i.e. disclosure of the invention, however.
The above-identified paragraph of the Guidelines goes on to state the circumstances in which a cross-referenced document may be taken into account, in a situation where the document in question was not available to the public before the filing date of the application: namely, provided that a copy of the document was filed at the EPO on or before the filing date, and provided that the document was made available to the public no later than the date of publication of the application.
Although in those circumstances the Guidelines indicate that a cross-referenced document may be “taken into account”, implicitly for the purpose of satisfying the requirements of A 83, the Guidelines are silent as to the effect of such a cross-referenced document in the context of A 123(2).
[1.3] The information which was supplied by the [applicant] in his observations dated 15 January 1992 has satisfied the Board that on the basis of originally disclosed bibliographic data document D1 could have been unambiguously identified on or after the publication date of the application, and that the requirements for taking this document into account which are set out in the above-identified paragraph of the Guidelines were fulfilled. This was made clear to the [applicant] at the beginning of the oral proceedings.
[1.4] The question remains, however, as to whether features which were only disclosed in the cross-referenced document D1 can be incorporated into the main claim of the application after filing. In this connection, the question to be considered under A 123(2) is whether the amended application “contains subject-matter which extends beyond the content of the application as filed”. In considering this question, it is relevant that under A 93 “the description, the claims and any drawings as filed” of every European patent application are published at an early date after filing of the application. Thus, after such publication, the skilled reader should be able to know, by reading the published application, the extent of the subject-matter which is within “the content of the application as filed”, and thus the extent of the subject-matter for which protection is or may be sought.
In the Board’s view, in normal circumstances a reader of a published European patent application is entitled to expect that the “description of the invention” which it must contain pursuant to A 78(1)(b) will itself identify all the features of the described invention for which protection is or may be sought. It is only under particular conditions that features which have not been included in the description of the invention as originally filed but which are only described in another document which is identified in the description as originally filed can subsequently be introduced by way of amendment into the claims of the application as essential features of the invention for which protection is sought. Prima facie, such features are not within “the content of the application as filed”, which for the purpose of A 123(2) is constituted by the description of the invention, the claims, and any drawings, in accordance with A 78(1). If this were not the case, the content of an application containing in its description numerous references to other documents, whether other patent specifications or handbooks for example, would become almost limitless; especially if such documents themselves contain references to other documents, and so on.
[2.1] The only previous decision of a Board of Appeal of which the Board is aware in which features which had not been included in the description of the invention in the application as originally filed, but which were included in another document which was referred to in the description, were subsequently allowed to be introduced into the main claim of the application, is decision T 6/84, which was relied upon by the [applicant] in the present case […]. In that case, the originally filed Claim 1 had the following wording:
“1. A process for catalytic dewaxing a waxy hydrocarbon oil which comprises contacting said oil with a catalyst at dewaxing conditions, characterised in that the catalyst is synthetic offretite.”
The text in the original description […] which identified the features disclosed by reference was worded:
“Synthetic offretite is a well-defined zeolite, with a known X-ray diffraction pattern and a proposed crystal structure … The synthetic offretite useful in the present invention and its method of preparation are disclosed in Canadian patent 934130 …”.
It is thus clear that the catalyst “synthetic offretite” referred to in the characterising portion of the main claim as originally filed was an identified material, and that further characterising parameters of such material, as well as its method of preparation, were stated in the description of the invention as originally filed to be set out in the cross-referenced Canadian patent.
The further characterising parameters of such synthetic offretite which were incorporated from the Canadian patent into the main claim were the mole ratio of the oxides contained in synthetic offretite and the X-ray powder diffraction pattern with defined Bragg angles and intensities. Such parameters were already implicitly present in the main claim, and simply defined in greater detail the synthetic offretite which was already an essential feature of the invention as described and claimed in the application as originally filed.
Having regard to the above facts of the case with which Decision T 6/84 was concerned, it is clear that the further characterising parameters of synthetic offretite (namely the mole ratio of oxides and the X-ray powder diffraction pattern) which were included in the main claim by way of amendment were indeed features which unequivocally formed part of the invention for which protection was already sought; because the use of synthetic offretite as a catalyst was already the only characterising feature in the claim as originally filed, and the features which were added to that claim simply defined such synthetic offretite better.
Thus the facts of the case with which Decision T 6/84 was concerned are very different from the facts of the present case. Furthermore, in the Board’s view, the principles which are set out in the headnote to that decision cannot properly be applied to the facts of the present case, either so as to help the present [applicant], or at all.
[2.2] Nevertheless, having regard partly to what is set out in the headnote to decision T 6/84, in the Board’s view, when determining whether features which are not mentioned in the description of the invention but only in a cross-referenced document may be incorporated into a claim of a European patent application, it is necessary to consider whether the description of the invention as filed leaves no doubt to a skilled reader:
(a) that protection is or may be sought for features which are only disclosed in the reference document;
(b) that the features which are only disclosed in the reference document contribute to achieving the technical aim of the invention and are thus comprised in the solution of the technical problem underlying the invention which is the subject of the application;
(c) that the features which are only disclosed in the reference document implicitly clearly belong to the description of the invention contained in the application (A 78(1)(b)) and thus to the content of the application as filed (A 123(2)); and
(d) that such features are precisely defined and identifiable within the total technical information within the reference document.
If the above particular conditions are satisfied, in the Board’s view it is permissible for the features which are only disclosed in the reference document to be introduced into the claims of the application without contravening A 123(2) because such features are then properly to be considered as within “the content of the application as filed”.
The Board then found these conditions not to be satisfied by the claim under consideration.
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