T 1274/07 – A Letter Can Matter

Claim 1 of the patent as granted read (in English translation)

Tablet with two end faces and a circumferential face, characterized in that the mutually opposite end faces of the tablet

a) are on the whole non-planar and are arranged at least approximately parallel to one another, and

b) are provided with a score on each of the top and bottom sides, the scores lying in the centre of the tablet parallel to and above one another,

and characterized in that the tablet is provided at the edges, on the top and/or bottom side, with two crescent-shaped phases (Phasen) in each case.

The Opposition Division (OD) decided to revoke the patent for lack of sufficiency.

It refused the request of the patent proprietor to correct the claim by replacing the word “phase” (Phase) by “chamfer” (Fase). According to the OD, the expression was sufficiently explained in the patent and, therefore, there was no “obvious error”.

Claims 1 and 2 of the main request before the Board read:

1. Tablet with two end faces and a circumferential face, characterized in that the mutually opposite end faces of the tablet

a) are on the whole non-planar and are arranged at least approximately parallel to one another, and

b) are provided with a score on each of the top and bottom sides, the scores lying in the centre of the tablet parallel to and above one another,

and characterized in that the tablet is provided at the edges, on the top and/or bottom side, with two crescent-shaped chamfers (Fasen) in each case.

2. Tablet according to Claim 1, characterized in that the halves of the tablet divided by the core form an angle of 130 to 177°.

The Board did not followf the OD:

*** Translated from the German ***

[2] The term “phase” does not make any sense in claim 2 (sic) as originally filed, inter alia because phases as known from the theory of oscillations, such as current phases, or from thermodynamics, such as liquid phases […], do not fit into the context. Also, the shape of illumination of a celestial body, such as a phase of the moon, only leads to a tautology when used with the adjective “crescent-shaped” (halbmondförmig) and, when understood as a “crescent-shaped phase of the moon”, in combination with the rest of the sentence, does not provide a representation of what the tablet should indeed have on the top and/or bottom side. The description […] provides the definition “(= facet (Facette), slant (Schräge))”, which only fits to “chamfer”, which simply indicates a typo. Moreover, the expression “crescent-shaped facet” (halbmondförmige Facette) […] can be easily understood in this way.

Furthermore, the reference to a “chamfer” of the tablet is also clear from the explanation following the definition “(= facet, slant)”, i.e. “so that the load which the ram can apply when pressing the tablet is increased”, which is generally known for tablet manufacture.

Moreover, the criteria, according to which a correction is not needed for understanding the patent and the need for correction had not been recognized “immediately” (sofort) in a temporal sense are not found in the EPC as criteria for the interpretation of R 139.

The Board then discussed the admissibility of the requests and pursued by discussing sufficiency of disclosure of the main request:

[4.2] The “non-planar” form of the tablet surface can already be derived from the existence of chamfers. To this extent, this feature is clearly present in chamfered tablets and the description of further possible embodiments is not relevant as a feature of the claim for the assessment of patentability or for the assessment of sufficiency of disclosure.

[4.3] The manufacture of tablets having approximately parallel surfaces completing the circumferential face is also commonly known. The feature should allow to distinguish [the claimed subject-matter] from spheres or polyhedral shapes derived from spheres, which have no such circumferential face.

The question of whether it is possible to measure an angle that is formed by “the halves of the tablet divided by the score when the end faces are non-planar is not relevant because the teaching of claim 1 can be carried out over its breadth, in view of the feature that the end faces are parallel.

[4.4] In the patent as granted, after the “crescent-shaped phase” has been corrected to read “crescent-shaped chamfer”, it has the following characteristics (Ausprägungen), depending on whether claim 1, the description together with its figures, or a synopsis of all the elements is considered:

• The wording of claim 1, understood literally, would describe round or oblong tablets which are chamfered at one or both end faces in such a way that two semi-circular surfaces are formed.
• In the case of oval tablets one is led to imagine surfaces that are delimited by a straight line and by an ellipsoidal arc.
• As polygons can be derived from a circle by reducing the number of the – initially infinite – number of vertices , the “crescent-shaped chamfers” would be planar formations (Flächengebilde) that are delimited by a straight line and a circular arc that is more or less segmented, depending on the number of vertices. In the case of quadrangular tablets this would be half a square if one edge is chamfered or a triangle of two edges are chamfered at the corner.
• If one adopts the interpretation that “crescent-shaped” means “sickle-shaped”, which is possible and not uncommon in everyday German, then the boundary lines of the chamfers (Abfasungen), which are represented in a planar manner, are the same as those described above, with the exception that they are delimited by a circular arc of an ellipsoid rather than by a straight line. Moreover, the two chamfers per surface then do not have to be in contact with each other but can be provided on opposing edges of the chamfered tablet, without there being any direct contact.
• As the expression “crescent-shaped” appears to allow for a great number of abstractions, a normal chamfer extending around the upper edge of a flat cylindrical tablet, at first with constant width, could also be seen as “two crescent-shaped phases”, in particular if the magnitude of the chamfer varies to some extent at two positions. Then the overall shape, when looked upon from above, would look like two adjacent rings delimited by equidistant or not equidistant circular arcs, possibly with varying diameter.

 

It follows from the synopsis with the description that the wording of claim 1 not only allows for those design options but assumes them to be self-evident. For instance, among other things, polygonal tablets are considered (“for example, rectangular and square, respectively” […]). Moreover, tablets with a chamfer 5 are represented and described (see figures 2, 3, and 4 and their discussion […]), which provides support for the perception of adjacent circular arcs.

Under these circumstances it has to be stated that the adjective “crescent-shaped” in claim 1 covers such a great variety of design options that practically any chamfer provided on a tablet which possesses the other claim features can be understood to be crescent-shaped.

Therefore, on the one hand, the teaching of this claim is sufficiently disclosed (A 100 b). On the other hand, this feature has practically no delimiting meaning with respect to common chafers on tablets belonging to the prior art.

[…] The impugned decision is set aside.

The request for correction is granted.

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

Should you wish to read the whole decision (in German), just click here.

The file wrapper can be found here.