T 1912/08 – Ouch, Those Teeth!

It may be problematic to have claim features that are defined by an object that is outside the claim. The Guidelines (C-III 4.14) have something to say on this topic:

“… It may also be allowable to define the dimensions and/or shape of a first entity in an independent claim by general reference to the dimensions and/or corresponding shape of a second entity which is not part of the claimed first entity but is related to it through use. This particularly applies where the size of the second entity is in some way standardised (for example, in the case of a mounting bracket for a vehicle number-plate, where the bracket frame and fixing elements are defined in relation to the outer shape of the number-plate). However, references to second entities which cannot be seen as subject to standardisation may also be sufficiently clear in cases where the skilled person would have little difficulty in inferring the resultant restriction of the scope of protection for the first entity (for example, in the case of a covering sheet for an agricultural round bale, where the length and breadth of the covering sheet and how it is folded are defined by reference to the bale's circumference, width and diameter, see T 455/92). It is neither necessary for such claims to contain the exact dimensions of the second entity, nor do they have to refer to a combination of the first and second entities. Specifying the length, width and/or height of the first entity without reference to the second would lead to an unwarranted restriction of the scope of protection. …”

The present decision shows a case where such a reference to the dimensions of a second entity was found not to be allowable.

Claim 1 (of the first auxiliary request) before the Examining Division (ED) read:

Root canal reamer for use in handpieces, having a reaming section with two or more cutting blades (L) with progressively increasing diameter and constant taper angle, characterized in that the length of said reaming section is such that, when said root canal reamer is inserted in the root canal until the apex, at least a part of said reaming section is effective on the apical portion of said root canal and at least a further part of the same reaming section is simultaneously effective on the coronal portion of said root canal, wherein the length (A) of the reaming section comes between 16 and 30 mm.

The ED refused this request inter alia for lack of clarity:

“… The applicant also amended the characterizing portion of claim 1 in an attempt to define the subject matter of the invention with respect to a second, unclaimed entity, namely human teeth. The length of the reaming section has been made dependent on the size of the human tooth because it is claimed that the length must be such that “said reaming section is effective on the apical portion of said root canal and at least a further part of the same reaming section is simultaneously effective on the coronal portion of said root canal”. Teeth are not considered to be standardized entities nor are they of equal size, since they Vary within the mouth of the patient from the incisors to the molars. Chipping or breaking of teeth provides for even more variability in the dimensions of teeth, as does the difference between baby teeth and adult teeth and between healthy and unhealthy teeth. It is not possible to infer clearly from this part of claim 1 what technical features, if any, can be understood and used as a way to delimit the scope of the invention. …”

The applicant filed an appeal as well as a new set of claims, claim 1 of which read:

Root canal reamer for use in handpieces, having an apical reaming portion and a coronal reaming portion with at least two cutting blades (L) and with progressively increasing diameter and constant taper angle, the cutting blades (L) covering both the apical portion and the coronal portion, wherein the whole reaming length (A) exceeds the ISO standard length of 16 mm and reaches a maximum length of 30 mm.

The Board agreed with the ED that there was a lack of clarity:

[2] The decision under appeal found that claim 1 of the first auxiliary request lacked clarity because it defined a reamer on the basis of the apical and coronal portion of the human tooth […].

The new claim 1 still defines the reamer as having an apical and a coronal portion (with at least two cutting blades covering both the apical and the coronal portion). That is the definition of the reamer is still dependent on the apical and the coronal portion of the human tooth.

The objection of the first instance of lack of clarity was correctly reasoned since it is not possible to clearly define a reamer on the basis of the human tooth, being the size of the human tooth extremely variable and depending on the age of the subject, the type of the tooth (incisive, canine, molar) and the health of the tooth itself, as clearly stated in the decision under appeal.

The appellant in its statement of grounds addresses the objection of lack of clarity with the sole sentence:

“A set of new claims is submitted, claim 1 of which defines the features of the invention in a clearer manner”.

The appellant did not bring forward any new argument or fact which could lead to a different founding on this issue.

Therefore the objection of lack of clarity raised by the first instance has to be confirmed.

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

T 1584/08 – Presumed Faithful

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse the application under consideration for lack of inventive step.

The discussion was centred around document D2, an article on the ISO/IEC MPEG-2 standard, published in the Journal of the Audio Engineering Society. Based on D2 as closest prior art, the Board found the invention to lack inventive step.

It then dealt with the applicant’s allegation that the ED had committed a substantial procedural violation. According to the applicant, the ED did not present evidence to support its argument that the standard did not require calculation of the number of sign bits each time the code length was calculated for an unsigned codebook, beyond stating that D2 does not disclose this feature. Since document D2 was merely a summary of the standard, it was not valid to draw any conclusion from the absence of any relevant teaching in that document. In this respect, the appellant referred to the T 578/06 [21] (also discussed on this blog).

Here is the Board’s answer:

[4.1] The appellant has argued that in reaching its conclusion that, contrary to what is stated in the summary of the prior art in the present application, the ISO/IEC 13818-7 standard does not require that the number of sign bits be calculated and added to the code length individually in each operation of the code length calculation section, the ED made a substantial procedural violation.

This argument is based on the appellant’s contention that, since the document D2 represents only a summary of the standard, this summary giving no details of the codebook selection procedure, and since the application clearly taught that the standard did contain such a requirement, the burden of proof lay on the division to establish that such a requirement was not present in the full standard. In this context he referred to the decision T 578/06 [21], which indicates that the burden of proof for an allegation lies with the person raising that allegation.

[4.1.1] The board observes in this context that the prior art described in the application which is at issue is specified in the application as being the MPEG2-AAC standard defined in ISO/IEC 13818-7. The board notes moreover that the document D2 is a description of the main features of that standard (as stated for instance in the abstract of that document), which appears to have been written by a group of authors who were involved in the preparation of the standard. Furthermore, document D2 appears to constitute provisions of the standard itself (i.e. of document D4, which is the first edition of ISO/IEC 13818-7, see in particular page 3, section 2 “Normative references”, which refers to D2). As such, the board considers that the document D2 represented a reasonable basis to use for a prima facie assessment of whether the prior art acknowledgement in the application was correct, and that the objection raised by the ED in this respect cannot therefore be considered as being “mere opinion”, without proof, as argued by the appellant. As a consequence, the board considers that when the division raised this objection, they did so in a manner which met the established criteria for burden of proof (i.e. those referred to in the decision cited by the appellant).

[4.1.2] Moreover, the board considers that, given the nature of the document D2 as described above, arguments based on that document should be assumed to be correct unless it could be demonstrated that the teaching of D2 was inconsistent with the standard (i.e. document D4) itself. By raising this objection in the annex to the summons to oral proceedings (OPs), the ED gave the appellant (then applicant) the opportunity to demonstrate such an inconsistency. This he attempted to do by presenting arguments based on the document R1, which is understood to comprise excerpts from a later version of the standard. From the minutes of the OPs before the ED, it is apparent that those arguments were discussed in detail at those OPs. In section II. 4 of the decision under appeal the ED presented detailed reasons, based on that discussion, as to why they were not convinced by those arguments.

[4.1.3] For the reasons indicated in the previous two paragraphs, the board concludes that the manner in which the ED addressed the contradiction between D2 and the summary of the prior art in the present application did not involve any procedural violation.

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

The file wrapper can be found here.

T 1930/07 – A Call For Courtesy

The applicant filed an appeal against the decision of the Examining Division to refuse the application under consideration.

The appellant did not respond in any way to the summons to oral proceedings (OPs). When the registrar of the board contacted the appellant’s representative by telephone shortly before the OPs, no definite answer was received to the question whether the representative would attend.

[3] The board notes that a professional representative has a duty to inform the EPO as soon as possible of a party’s intention not to be represented at OPs (cf. e.g. T 653/91 [8] and T 1485/06 [2.8]). Article 6 of the code of conduct of members of the European Patent Institute (epi), of which the representative is obligatorily a member, stipulates that the members are required to act courteously in their dealings with the EPO. The epi Council also issued the explicit recommendation that

“if a party to an appeal decides that it will not attend a scheduled OPs, the representative of the party should, as soon as possible … before the OPs … inform the board of the party’s non-attendance” (epi Information 4/2009, pp. 133-134).

The board considers it discourteous of the representative in the present case not even to have informed the board in time for the start of the OPs that he would not attend.

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

The file wrapper can be found here.

NB: Other recent decisions on courtesy can be found here and here.

T 578/08 – Not Automatic

This decision, to which my previous post was dedicated, also has an interesting paragraph on the admissibility of two late filed documents, D5 and D6.

*** Translation of the French original ***

[3.1] In its decision G 7/93, the Enlarged Board of appeal (EBA) has explained, as regards the exercise of the discretionary powers by the Examining Division (ED) within the framework of R 86(3) EPC 1973 that

“… it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles …, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.”

These general principles set forth by the EBA apply to all reviews of decisions resulting from the exercise of the discretionary powers of the preceding instance.

[3.2] As regards the admission of documents filed belatedly during the opposition proceedings, the established case law has determined that the crucial criterion for decision is whether [the document] is prima facie relevant. This is a discretionary decision of the Opposition Division (OD), which decides on a sovereign basis (souverainement) whether [a document] is relevant or not.

In the present case, the criterion of prima facie relevance, which has been laid down by the case law, is the criterion used by the OD for discarding documents D5 and D6. Therefore, the OD has not used unreasonable criteria.

The assessment of the OD is not manifestly erroneous either, because the substantial teaching of document D5 concerns efficient control of water removal in a process for extracorporeal blood purification that allows to maintain an appropriate volume of blood in the body of the patient. This document does not deal with calculating recirculation. Therefore, there is good reason to think that this document is not prima facie more relevant than other documents in the opposition proceedings which disclose means for determining the recirculation of blood. Thus the OD has not applied the criterion of prima facie relevance in an unreasonable way.

Consequently, the discretionary decision of the OD to discard document D5 does not result from the use of an erroneous criterion of assessment or from un unreasonable way of exercising its discretionary power. It follows that the Board has no reason and is not entitled to set aside this decision.

[3.3] The [opponent] asserts that document D5 has been filed in due time before the oral proceedings (OPs) and does not raise any technical difficulties, so that neither the OD nor the [patent proprietor] had difficulties in understanding the document or the objections that had been formulated on this basis. Therefore, the document should have been introduced into the proceedings.

The Board cannot share this opinion. Even if the examination of document D5 did not raise any particular difficulties, this does not change the fact that the OD has the discretionary power not to admit new documents into the proceedings if it considers that their prima facie relevance is not such that it would change the decision. The reason for this way of proceeding is that it allows to combine procedural economy and then duty of maintaining patents only if they are valid.

[3.4] The same reasoning holds for document D6 because the OD also concluded that it was prima facie not relevant.

For the same reasons as provided above, the Board considers that it should not question the discretionary decision of the OD.

Furthermore, during the appeal proceedings, document D6 has only been used together with document D5, which has been used as starting point in an argument concerning lack of inventive step. Consequently, the absence of D5 from the appeal proceedings necessarily has to lead to this argument being held invalid. It is for this reason also that D6 alone should not be admitted into the proceedings, because no reasoning based on D6 alone has been submitted during the appeal proceedings.

As D6 is cited in the application underlying the opposed patent, the [opponent] considers that it automatically has to be part of the proceedings, in application of decision T 536/88.

The Board does not share this opinion. According to this decision,

“a document indicated in the European patent as the closest or important prior art for the purposes of elucidating the technical problem set out in the description nevertheless forms part of the opposition or opposition appeal proceedings even if not expressly cited within the opposition period.”

In the present case, D6 is cited only among other documents that illustrate the state of the art before the invention and, more particularly, a technology that is different from that of the invention, which consists in injecting a complementary substance into the circuit so that the recirculation can be determined. Therefore, the Board considers that this document is neither the closest prior art nor a document that is particularly relevant for the purposes of elucidating the technical problem.

[3.5] Moreover, the [opponent] considers that the OD would have had to examine the combination of D5 and D6 on the ground of inventive step and that, had it done so, it would have concluded that there was a prima facie lack of inventive step.

This argument fails because it does not take into account the reasoning of the first instance. The OD has concluded from its analysis that D6 did not disclose that the pump is driven in such a way as to generate a momentary variation of the blood concentration by filtering plasmatic water […]. Therefore, the OD has indirectly answered in the negative the question raised by the [opponent] because D6, which does not disclose one of the essential features of claim 1, cannot suggest the invention.

[3.6] It follows that documents D5 and D6 are not admitted into the appeal proceedings.

[3.7] As the [opponent’s] objections regarding the inventive step of the claimed subject-matter were based exclusively on these documents, the objections are unfounded (sans objet) and the appeal has to be dismissed.

To download the whole decision (in French), click here.

The file wrapper can be found here.

T 578/08 – Because It’s There

The opponent appealed against the decision of the Opposition Division to reject his opposition.

All the claims of the Italian priority application were directed to a method for determining the recirculation value of a suspension. For instance, claim 1 as filed read:

1. Metodo di determinazione del valore del ricircolo di una sospensione comprendente un solvente ed almeno un soluto, fluente in un circuito primario, e sottoposto a trattamenti di filtraggio ed ultrafiltrazione in un circuito secondario comprendente una linea di ingresso di prelevamento della sospensione dal circuito primario, un filtro includente una membrana semipermeabile, ed una linea di uscita di reimmissione della sospensione nel circuito primario, il ricircolo di detta sospensione avvenendo in detto circuito primario tra detta linea di uscita e detta linea di ingresso, caratterizzato dal fatto di comprendere le fasi di:

• comandare una variazione di flusso di ultrafiltrazione in detto circuito secondario in modo tale da modificare la concentrazione di detto soluto in detta linea di uscita;
• immettere la sospensione a concentrazione modificata in detto circuito primario; e
• determinare il valore (AR) del ricircolo di detta sospensione in base ad una variazione di concentrazione del soluto indotta in detta linea di ingresso.

which can be translated as follows:

Method for determining the recirculation value of a suspension comprising a solvent and at least a solute, flowing in a primary circuit, and subjected to filtering and ultrafiltration treatments in a secondary circuit comprising an inlet line for withdrawing the suspension from the primary circuit, a filter including a semi-permeable membrane and an outlet line for re-injecting the suspension into the primary circuit, the recirculation of said suspension occurring in said primary circuit between said outlet line and said inlet line, characterized in that it comprises the steps of:

• driving a variation of the ultrafiltration flow in said secondary circuit so as to modify the concentration of said solute in said outlet line;
• injecting the suspension with modified concentration into said primary circuit; and
• determining the value (AR) of the recirculation of said suspension based upon a variation of the solute concentration induced in said inlet line.

The patent as granted only claimed a blood treatment system. Claim 1 read:

1. Blood treatment system comprising:

• a blood treatment apparatus (12) with semipermeable membrane;
• an arterial line, intended to interconnect a vascular access (1 1) of a patient with an inlet of the treatment apparatus (12);
• a venous line (14) intended to interconnect an outlet of the treatment apparatus (12) with the vascular access (11);
• means for inducing plasma fluid filtration through the membrane of the treatment apparatus (12); 
• means for determining a parameter signifying the blood concentration and are arranged on the arterial line (13); 

characterized in that it includes computation and control means for:

driving the means for inducing plasma fluid filtration in such a way as to generate a momentary variation of the blood concentration in the treatment apparatus (12) by momentarily reducing or increasing the proportion of blood plasma fluid circulating in the membrane apparatus,

storing values of the parameter signifying the blood concentration, and

calculating the blood recirculation on the basis of the values which the parameter takes in response to a determined drive programme of the means for inducing a blood concentration.

Among other things, the opponent claimed that the priority claim was not valid.

In what follows, the Board deals with this question.

*** Translation of the French original ***

[2] In what follows, the Board refers to the French translation (filed by the [patent proprietor] on June 10, 1998) and the English translation (filed by the [opponent] on September 9, 2005).

[2.1] It is not necessary to recall that in its opinion G 2/98, the Enlarged Board of appeal has explained that a claim may benefit from the priority of a former application 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.

It is undisputed by the parties that the description and the drawings of the previous application and of the patent as granted are almost identical. However, the patent as granted only comprises device claims whereas the previous application only comprises method claims.

However, it is already clear from the wording of the method claim 1 of the previous application that there have to be structural device components because the suspension referred to in this claim has to flow in a primary circuit and be subjected to filtering and ultrafiltration treatments in a secondary circuit comprising an inlet line for withdrawing the suspension from the primary circuit, a filter including a semi-permeable membrane and an outlet line for re-injecting the suspension into the primary circuit.

Moreover, the wording of claim 1 of the method claim of the previous application requires

• driving a variation of the ultrafiltration flow in said secondary circuit so as to modify the concentration in said solute in said outlet line;
• injecting the suspension with modified concentration into said primary circuit; and
• determining the value of the recirculation of said suspension based upon a variation of the solute concentration induced in said inlet line.

It goes without saying for the skilled person that the method steps can only be carried out if there are appropriate technical – and, therefore, structural – means allowing to perform the claimed functions. Therefore, the claims, and in particular claim 1 of the previous application, implicitly disclose appropriate general means allowing to perform the claimed functions. For instance, driving a variation of the ultrafiltration flow in the secondary circuit so as to modify the concentration of the solute in the outlet line, requires appropriate technical means for driving the variation of the ultrafiltration flow. Therfore, for the skilled person, these general technical means are implicitly disclosed by the disclosure of the process step that requires them. The same holds true for the other technical means allowing to carry out the other claimed method steps.

Thus the Board is of the opinion that for the skilled person, the structural means of the device claimed in claim 1 of the patent as granted are already disclosed by the features of method claim 1 of the previous application, either explicitly, where the claim mentions structural features, or implicitly, where it mentions functional features. Moreover, the previous application mentions several times that the method that is claimed and disclosed is performed automatically, which implies the presence of corresponding technical means.

As the assessment of the validity of the priority is not limited to a comparison of the claims of the patent and the claims of the previous application, see A 88(4), the skilled person can indeed refer to the description for completing his understanding of the claim.

Thus 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. Thus the priority is validly claimed; the requirements of A 87 and A 88 have been complied with.

[2.2] The [opponent] considers that the subject-matter of claim 1 as granted is an undisclosed generalisation of the specific device disclosed in the previous application.

As it has explained above, the Board is of the opinion that the most general disclosure of the invention given in the priority document is defined by claim 1 and that, taking into account the teaching of the this document as a whole, [this disclosure] discloses the general technical means allowing to carry out the claimed method. Whether the device disclosed in the previous application is more specific than the one claimed in the patent as granted, or not, is not relevant.

Normally the case law requires the EPO to apply the same standard (“directly and unambiguously”) when examining whether A 123(2) and A 87 have been complied with. I may be wrong, but I have the impression that the present decision is not as strict as what we usually see in A 123(2) assessments.

To download the whole decision (in French), click here.

The file wrapper can be found here.

T 1479/08 – Wrong Lane

Some time ago, I have dedicated a post to decision T 176/84, which had made some important remarks on which technical fields were to be taken into account when assessing whether an invention involved an inventive step.

The present decision gives an example of how this teaching is applied.

The Opposition Division had rejected the oppositions and one of the opponents had filed an appeal.

Claim 1 as granted concerned a lane-following system for facilitating steering of a vehicle by tracking a lane of a roadway. Some of the prior art cited by the opponent (documents E3 and E6) were not in the technical field of lane control. The opponent cited T 176/84 to support its view that the skilled person would nevertheless consult these documents. Will the Board follow this reasoning?

The Board first determined E1 to be the closest prior art. It then pursued:

[3.1] Starting out from E1 as the most relevant prior art, the system according to claim 1 specifies the operation of the controller as being to evaluate the “manner” […] in which detection of the presence of lane marking has failed and to hold control of steering inoperable for a predetermined time period in response to the evaluation result.

The characterizing features solve the technical problem of steering control being intermittently switched on and off due to intermittent detection of the lane marking […].

E1 in combination with E2

[3.2] For the sake of argument the board assumes that the skilled person, starting out from document E1, would find it obvious to apply the teaching of E2. E2 relates to a lane following system for assisting a driver steering a vehicle. The system detects a line marking by means of three light detectors detecting light reflected from the lane marking. A line marking is judged as being present only after it has been continuously detected for a predetermined period, which for a given vehicle speed corresponds to a set driving distance. When lane marking is detected over more than this set distance, steering control is resumed […]. The predetermined period is applied in response to each change of detection of the lane marking from being absent to being present.

Thus, starting out from E1 as the closest prior art, the person skilled in the art would be led by E2 to resume steering control with a delay each time the detection of the line marking changes from being absent to being present. The skilled person would however not be led by E2 to evaluate, by considering the history of lane marking detection, the manner of failure of detection of the presence of the lane marking as a criterion for deciding on whether or not steering control should be resumed with a delay.

Thus, the system according to claim 1 is not rendered obvious to the skilled person having regard to the combination of E1 and E2.

E3 and E6: Closely related technical fields?

[3.3.1] With reference to T 176/84 the [opponent] argued that the skilled person would also consider prior art in the adjacent technical fields of E3 and E6.

At point [5.3.1] of the reasons of T 176/84 it is stated:

“While it is indeed perfectly reasonable to expect a person skilled in the art if need be, i.e. in the absence of useful suggestions in the relevant field as to how a given problem might be solved, to look for suitable parallels in neighbouring fields, the question of what is a neighbouring field is one of fact and the solution depends, in the opinion of the Board, on whether the fields are so closely related that the person skilled in the art seeking a solution to a given problem would take into account developments in the neighbouring field.”

Thus, the board has to decide whether the skilled person would take into account E3 and E6 when seeking a solution for the problem as stated at point [3.1] above.

E6

[3.3.2] E6 is an extract from a technical book relating to target tracking by means of radar. Chapter 1.3.4 relates to the initiation and confirmation of a tentative track in airborne radar systems. It is suggested that a tentative new track is only confirmed when the associated object has been observed M times within N observation scans. Thus, E6 relates to the specific problem of track confirmation in the field of radar systems, which is somewhat remote to the field of steering control. 

Moreover, the issue addressed in E6 is deciding when a tentatively observed track can be confirmed as a real track. In the contested patent confirmation of the presence or absence of a lane marking is not an issue since the lane marking has already been confirmed as being either present or absent. 

The board is therefore of the view that E6 would not be considered by the skilled person since it relates to a different technical field and moreover to a different issue.

E3

[3.3.3] E3 relates to a system for automatically switching the lights of a vehicle on and off depending on the ambient light level. When the ambient light level rapidly changes the system controls the lights so as to remain switched on for an additional delay CFE each time the level changes from dark to light. Thus, E3 is in the technical field of lighting control for a vehicle, which is different from steering control.

Although the methodology in E3 for judging when the light should be kept on or off dependent on the ambient light level appears to be similar to that for switching on and off the steering control in the patent (compare figure 2 of E3 with figure 4 of the patent specification) …

Fig. 2 of E3

Fig. 4 of the opposed patent

… the board is not convinced that the skilled person would, without the benefit of hindsight, have been led by E3 to the system as claimed in claim 1 of the patent. In the board’s view the skilled person would first have to recognize that the methodology in E3 could be generalized for the purpose of avoiding control hunting in a field other than lighting control. Subsequently, the skilled person would be required to identify the presence of the lane marking in the lane control system as the appropriate input parameter the evaluation of which could reasonably serve to decide whether or not the controller should be held inoperable for a delay time in response to the evaluation result. The board is of the view that the skilled person would not have carried out these steps without the benefit of hindsight. Thus, the skilled person would not be led by E3, either alone or in combination with E1, to the system as claimed in claim 1 of the patent.

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

The file wrapper can be found here.

T 1969/08 – Obscure Matter

The applicant appealed against the refusal of its application by the Examining Division (ED). It filed one single request together with the statement of grounds of appeal.

A summons to oral proceedings (OPs) to be held on June 7, 2011, was issued on February 23, 2011.

On May 6, 2011, the applicant filed a new request that was to replace the request on file. The applicant deleted a feature the Board had objected to under A 84 and introduced another feature from the description.

The Board found this request not to be admissible:

[3] By letter of 6 May 2011, i.e. after the summons for OPs, the appellant filed a new request comprising claims 1 to 4 which replaced the previously filed request (see letter of 6 May 2011, page 1, first paragraph and page 4, point 3 “It is respectfully requested to base further examination on the amended set claims …”). The appellant amended claim 1 by deleting the last feature of claim 1 objected to under A 84 and introduced from the description the feature that the induction layer is an antenna array “formed by silver-plasm or a mixture of silver-plasm and carbon-plasm”, which had not been claimed in the appeal proceedings before.

[3.1] In the communication annexed to the summons to OPs, the appellant was advised that any amendments to its case would have to be examined for compliance with the requirements of the EPC, including inter alia their admissibility. In the board’s judgement, the appellant was forewarned and could therefore have foreseen that any new request might be subject to examination of its admissibility. By not attending the proceedings the appellant effectively chose not to avail itself of the opportunity to present comments orally before the board but instead to rely on its written case (cf. Article 15(3) RPBA).

[3.2] According to R 137(3) in its original version applicable to the present case (see Article 2(2) of the decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the EPC, OJ EPO 2009, 299),

“after receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED”.

By virtue of A 111(1) and R 100(1), these provisions are also applicable mutatis mutandis to appeal proceedings. According to Article 12(4) RPBA, requests which could have been presented or were not admitted in the first-instance proceedings can be held inadmissible by the board. The board notes that a claim referring to the same feature was objected to by the ED under A 84 as being obscure (see the communication dated 21 July 2006, point 2.7). The ED further argued that the expressions “silver-plasm” and “carbon-plasm” could not be clarified without infringing the requirements of A 123(2) and the corresponding features should therefore be removed.

Apparently, the applicant chose to follow this recommendation, since it no longer prosecuted any claim directed to such a feature in the first-instance proceedings. The board interprets this behaviour as abandoning the corresponding subject-matter. According to Article 12(4) RPBA as referred to above, the board therefore has discretion not to admit such a request which the appellant returns to late in the appeal proceedings.

[3.3] Article 12(2) RPBA stipulates that the statement of grounds of appeal shall contain a party’s complete case. According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion. The discretion is to be exercised, inter alia, in the light of the current state of the proceedings.

In the present case, the appellant re-introduced abandoned subject-matter even after OPs had been arranged, and therefore at a very late stage of the proceedings.

[3.4] In addition, according to the established case law of the boards of appeal it is relevant, with respect to the admissibility of new claims during appeal proceedings, whether the respective versions of the sets of claims converge or diverge, i.e. whether the claimed subject-matter of the independent claims of a main request goes in the same direction and further specifies the same alleged inventive aspect (see e.g. T 1685/07 [6.5]; T 240/04 [16]).

In the present case, claim 1 filed with letter of 6 May 2011 specifies features which do not constitute a further limitation of claim 1 of the preceding request on which the annex to the summons for OPs was based and which specified

“wherein said output of the antenna array of the induction layer (4) is positioned between a hard sheet (600) and a printed substrate (500); a buffering layer (8’) is provided between the hard sheet (600) and the output of the antenna array; the hard sheet (600), the buffering layer (8’) and the output of the antenna array are overlaid on the printed substrate (500) by means of the screwing-conjunction; the output of the antenna array is connected with corresponding input terminal (511’)”.

Instead of amending and further specifying this aspect of the different layers of the structure of the touch screen, the appellant amended claim 1 by replacing this feature by the following aspect

“wherein said induction layer (4) is an antenna array formed by silver-plasm or a mixture of silver-plasm and carbon-plasm”.

It thus went in a different direction, specifying the material of one of those layers instead. 

The added feature of amended independent claim 1 therefore concerns a technical problem (reduction of cost, see appellant’s letter of 6 May 2011, page 3, paragraph 5) which is only remotely related to the original one linked to the deleted feature (improving the sensitivity of the structure).

[3.5] By filing, at a very late stage, a new set of claims directed to abandoned subject-matter which is not substantially identical to that of the previous request and is therefore a diverging request […] and not attending the OPs, the appellant waived the opportunity of discussing its case. To admit a new request in those circumstances would practically give appellants the opportunity to compel a remittal to the department of first instance as they pleased, which would run counter to the principle of procedural economy.

Therefore, and since the appellant did not provide any reasons or arguments as to why the objections raised by the ED against the re-introduced feature were wrong or had been overcome, the board has to decide on the admissibility of the new request by using the criterion of whether amended claim 1 would be prima facie clearly allowable under the EPC (see T 979/02 [3.2-3] and T 70/98 [2.1-5]).

[3.6] The appellant did not present any argument with regard to the objections raised in the communication dated 21 July 2006 against the feature re-introduced in claim 1 with the letter of 6 May 2011. In the board’s judgement these objections are justified and therefore prima facie have not been overcome by the appellant.

The board considers the expressions “silver-plasm” and “carbon-plasm” to be unclear, rendering the features “antenna array” and “induction layer” unclear. An unclear feature, however, cannot contribute to the inventive step of the claimed subject-matter. In contrast to the appellant’s argument, the added feature therefore cannot render the claimed subject-matter inventive over the prior-art on file.

In addition, the board considers the added feature to be in contradiction to the rest of the wording of claim 1 which still specifies that the induction layer is “printed” on the insulation membrane. It is ambiguous to say that “silver-plasm or a mixture of silver-plasm and carbon-plasm” can be “printed” on an insulation membrane. The board interprets the term “printed” in claim 1 to refer to printed circuit technology which, however, is in contrast to the use of “silver-plasm” or “carbon-plasm”.

For these reasons, amended claim 1 of the sole request on file lacks clarity under A 84 and its subject-matter is not considered to be prima facie clearly allowable under the EPC.

[4] For the afore-mentioned several reasons, the board refuses its consent under R 137(3) and decides not to admit the request filed with letter of 6 May 2011 into the appeal proceedings.

[5] Since this request now held inadmissible replaced the previous request, there is no longer any request to consider, and the application has to be refused under A 97(2) and A 113(2) on the basis that the application contains no claims to which the applicant has agreed and the appeal must be dismissed.

The Board also drafted a take-away headnote:

If a feature objected to as “obscure” by the ED and omitted from all requests subsequently filed by the applicant is then re-introduced in the claims filed one month before OPs during the appeal proceedings without commenting on the objection raised earlier against this feature, the board may refuse to admit these claims into the proceedings at its discretion under Article 12(4) RPBA.

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The file wrapper can be found here.

NB: Also reported on Le blog du droit européen des brevets.

T 206/10 – Hearing Disorders

The applicant filed an appeal after the Examining Division (ED) had refused his patent application.

Here are some relevant details relating to the examination proceedings.

There were oral proceedings (OPs) on November 15, 2007. The ED announced that it could not grant the main request on file but that the auxiliary request was allowable. The ED then sent a communication under R 51(4) based on the auxiliary request. In its response, the applicant did not agree with the text proposed by the ED and requested an appealable decision.

Since the ED had changed, the applicant was summoned to OPs to be held on July 28, 2009. These OPs were limited to a discussion of the main request only.

In a letter dated June 4, 2009, the applicant withdrew the main request “in favour of the auxiliary request” and submitted that “it is thus believed that the OPs can be cancelled and that a fresh R 71(3) EPC communication can be issued …”

The ED maintained the OPs.

On the day before the OPs, the applicant informed the ED that he would not attend and added that he hoped that “a further R 71(3) communication can be issued on the basis of the claims and description previously agreed. Any other decision in these circumstances will run the risk of being a substantive procedural violation.”

The ED decided to refuse the application. It held that there were two contradictory statements by the applicant, namely that he did not agree with the proposed text for grant (i.e. of the auxiliary request in the letter of March 17, 2008) and that he was withdrawing the main request in favour of the auxiliary request (faxed letter dated June 4, 2009). Though the first statement was regarded as an express disapproval of the auxiliary request, the second could not be regarded as a clear and express approval of the text (see T 549/96 [4.1]). Further, the ED saw no legal basis for a “re-issuing” of a R 51(4) EPC 1973/R 71(3) communication on the same unamended request.

Following the appeal, the ED granted interlocutory revision but refused reimbursement of the appeal fee.

In what follows the Board deals with the allowability of the appeal:

[4] The appeal is allowable. R 67, first sentence, EPC 1973 states that the reimbursement of appeal fees is to be ordered in the event of interlocutory revision if such reimbursement is equitable by reason of a substantial procedural violation.

[5] There is no need to decide whether the indication in the summons dated 29 April 2009 to the new OPs that “the issue to be discussed will be … only whether the Main Request fulfils the requirement of patentability” at that stage of the grant proceedings constitutes a restriction depriving the applicant of a decision based on a text of his own choosing, as alleged by the appellant, thus contravening A 113(2) and constituting a substantial procedural violation.

[6] In any case, there is a substantial procedural violation in the reasoning of the ED in its impugned decision dated 12 August 2009 that there are contradictory statements by the applicant in the letter dated 17 March 2008 on the one hand and in the letter dated 4 June 2009 on the other with respect to the auxiliary request and that there is therefore no clear and express approval of the text for grant according to the auxiliary request, so that the patent application is to be refused. A proper interpretation and reading of the applicant’s letters dated 4 June 2009 and 27 July 2009 according to their wording and to the expressed intention cannot reasonably justify and substantiate the conclusion drawn by the ED.

[7] At first glance there can be no doubt, nor is it disputed, that the letter dated 17 March 2008 contains a clear and unambiguous statement that the text proposed for grant is not approved by the applicant and an appealable decision on the main request is requested.

[8] However, the explicit declaration in the letter dated 4 June 2009 that the applicant “withdraw[s] the Main Request” is equally clear and unequivocal in its meaning as required e.g. in decision T 549/96 [4.1], also cited in the decision under appeal. As a consequence, there was no longer any basis for a decision on the main request. The further statement that the main request is withdrawn “in favour of the Auxiliary Request” therefore on objective evaluation leaves no doubt that the applicant now seeks to have the auxiliary request granted, particularly when taking into account that only these two requests for grant, namely the main request and the (single) auxiliary request, were on file. In addition, this interpretation is strongly supported by the second sentence of the said letter, which says that “it is thus believed that the OPs can be cancelled and that a fresh R 71(3) Communication can be issued.” There appears to be no other explanation how this in combination with the foregoing declaration could be understood as the wish and request of the applicant that (now) the patent should be granted on the basis of the auxiliary request. Otherwise the request for a new R 71(3) communication would have made no sense at all.

[9] With regard to the content of the applicant’s letter dated 4 June 2009, the procedural response of the ED in sending the “Brief Communication” merely informing the applicant that the date for OPs on 28 July 2009 was maintained constitutes a disregard of the applicant’s submission and thus a procedural violation, in particular of the right to be heard under A 113(1). This communication neither gives any reasons why the ED refused the applicant’s requests nor reveals that these declarations had at least been taken into consideration. According to the case law of the boards of appeal, it is not sufficient to observe A 113(1) merely formally by granting the applicant the procedural opportunity to present comments, as was the case here. This procedural step falls short of its legislative purpose and remains a pure formality if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgment of their existence. In summary, A 113(1) does not merely require a party to be given an opportunity to voice comments; more importantly, it requires the deciding instance to demonstrably hear and consider them (T 763/04 [4.4]; T 246/08 [2.6]).

Therefore in view of the clear declarations of the applicant, the ED should have cancelled the date for OPs, issued a new R 71(3) communication or – if it still had doubts in respect of a clear approval of the text for grant – clarified the requests instead of merely informing the applicant that the date for OPs was maintained, which is legally and procedurally an inadequate response under the given circumstances.

[10] Even the applicant’s faxed letter dated 27 July 2009, in which it referred to its letter dated 4 June 2009 and inter alia expressed the hope that “… a further R 71(3) Communication can be issued on the basis of the claims and description previously agreed” and added that “Any other decision in these circumstances will run the risk of being a substantive procedural violation”, obviously did not cause the ED to reconsider the unequivocally declared consent of the applicant to the grant of a patent according to the auxiliary request already previously agreed and to reverse its own decision to maintain the date of the OPs.

[11] At the latest after the filing of the letter dated 27 July 2009 the requirements for a new R 71(3) communication were met, since in it the applicant again expressed his approval for the granting of a patent on the basis of the auxiliary request previously agreed sufficiently clearly and beyond any reasonable doubt. At that stage at the latest, if the ED felt that there still were “contradictory statements”, according to the case law of the boards of appeal (T 666/90, T 552/97, T 355/03) it was obliged to rectify the misunderstanding and clarify the applicant’s true intention, instead of merely informing the applicant that the date for OPs was maintained and finally issuing the decision which is under appeal. This applies all the more because the applicant had already explicitly asked for confirmation of his declarations in his letter dated 4 June 2009.

The fact that the appellant did not attend the OPs on 28 July 2009 is immaterial for the present decision, because the relevant substantial procedural violation occurred before the OPs were held and furthermore the applicant could only have declared the same as he had already done in a sufficiently clear manner in his letters dated 4 June 2009 and 27 July 2009.

[12] Under A 113(2) the EPO may examine and decide upon the European patent application only in the text submitted to it by the applicant. A 113(2) is considered a fundamental procedural principle, being part of the right to be heard (see Case Law of the Boards of Appeal of the EPO, 5th edition, VI.B.4.). According to this case law the said procedural principle is of such fundamental importance that any infringement of it, even as the result of a mistaken interpretation of a request, has to be considered to be a substantial procedural violation (T 552/97; T 647/93).

[13] Under these circumstances the requirements of A 67 EPC 1973 are met. The ED rectified its decision by means of interlocutory revision. The above-mentioned substantial procedural violation led to the contested decision (refusal of the patent application) of the ED. In order to overturn this decision the applicant had to file an effective appeal, including the payment of the associated appeal fee. Hence, it appears equitable to reimburse the appeal fee.

[14] By communication under R 71(3) dated 16 February 2010 the ED correctly and in accordance with the informed the applicant that it intended to grant a European patent on the basis of the (unamended) auxiliary request already agreed in the course of the grant procedure after receipt of a R 51(4) EPC 1973 communication. Obviously the examining decision (sic) did not uphold the further ground for the refusal of the patent application indicated in the decision under appeal that the “re-issuing of a R 71(3) communication on the same unamended request is neither foreseen nor justified”.

[15] Even though it is not decisive for the decision in the present appeal proceedings, the sole subject-matter of which is the request for reimbursement of the appeal fee for reasons of equity, the board considers it appropriate to make the following additional remark. Contrary to the said ruling of the ED in the decision under appeal, the crucial question to be raised is not whether the EPC provides a basis for the re-issuing of a R 71(3) communication on the same unamended request, but rather whether it provides a proper legal basis for the decision to refuse a request for such a re-issuing. From the legal point of view the refusal of a request for re-issuing of a R 71(3) communication on the same unamended patent application, as in the present case, constitutes an administrative act detrimental to the applicant. In order to be effective, such an administrative act requires a legal basis either in terms of an explicit legislative provision in the EPC providing for the respective legal consequence under the particular facts and circumstances or, in the absence of such a regulation, the existence of a general principle of law, developed and stated by case law or the presence of other higher-ranking legitimate interests of the parties to the proceedings or of the public overriding the interest of the applicant in getting a re-issued R 71(3) communication. However, no such legal basis has been indicated by the ED, nor is such a basis obvious or discernible.

NB: You might be aware that new R 71(6), which will enter into force on April 1, 2012, explicitly provides for re-issuing of R 71(3) communications: see the Decision of the Administrative Council of 26 October 2010, OJ 12/10, 637 :

(6) If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the ED shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings.

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T 753/09 – Late Expertise

The opponent appealed against the decision of the Opposition Division to maintain the opposed patent in amended form.

During the appeal proceedings, the opponent filed an expert’s declaration:

The patent proprietor argued that the declaration of Mr G. was belated and should not be admitted into the proceedings. The background of Mr G., an alleged skilled person in the art, was left completely in the dark. He was not an independent expert, but one appointed by a party to the proceedings. From the fact that he only had signed the Italian declaration, but not the English translation, it could be deduced that he lacked sufficient language skills for understanding the translation. It was thus doubtful if he really had understood document E1, an English patent application, or document E2, a French patent application. The proprietor requested, in case the board would admit the declaration of Mr G. into the proceedings, that the board of appeal appoint an independent expert to produce an affidavit on the teachings of E1 and E2 or, alternatively, that the respondent proprietor be given the opportunity to file a corresponding affidavit.

Will the Board admit Mr G.’s statement?

[3.1] The declaration of Mr G. was filed by the opponent as a response to the summons to oral proceedings (OPs) issued by the board, ostensibly for demonstrating how the skilled person would interpret documents E1 and E2. From a procedural point of view, the submission is belated (Article 12(2) RPBA, for the applicable version see OJ EPO 2010, Supplement to the OJ 1, page 39), nevertheless such late submissions are normally admitted if sufficiently relevant and if the other party can reasonably react to the late filing.

[3.2] Firstly, it appears that the declaration does not provide more technical information than the documents E1 and E2 themselves, thus from a technical point of view it is not more relevant than the documents on file. In principle, it is the primary and everyday task of a board of appeal under the EPC, comprising at least two technically qualified members (A 21(3)(a)(b) and (4)) to establish what various technical documents teach to the skilled person. Given that the technical teaching of both documents is relatively simple, and given that patent attorneys normally have a technical background themselves, the explanation provided by Mr G. may as well be put forward in an equally convincing fashion by the authorized representatives of the appellants, with no less evidentiary weight before the board. Therefore, in order to establish the teaching of documents E1 and E2 there is no need to admit the declaration of Mr G.

[3.3] On the other hand, it is apparent that the appellant opponent seeks to add more weight to its previously developed technical argumentation by emphasizing the very fact that Mr G. has the same view in his capacity as an expert, i.e. a skilled person by definition. The respondent proprietor has various options to deal with such late filed evidence, since an expert declaration must be considered not just an argument, but evidence pursuant to A 117(1)(e). It is certainly open to the other party to contest the expert qualifications of Mr G. (which the respondent proprietor did), but more importantly, if statements of an expert indeed require expert knowledge, and for the same reason a greater evidentiary weight should be attributed to them than to “simple” statements of a party, then the possibility must be given to the other party to have such an expert declaration verified or possibly refuted by another expert having the same qualifications (as also requested by the respondent proprietor as an auxiliary measure). Such a defense (sic) against an expert’s declaration requires quite some time.

In the present case the expert declaration was submitted less than two months before the OPs, not leaving enough time for the respondent proprietor to prepare a suitable counterstatement, also given the holiday season between the submission and the OPs. Article 13(1) RPBA stipulates that

“Amendments [to a party’s case] sought to be made after OPs have been arranged shall not be admitted if they raise issues which ... the other party ... cannot reasonably be expected to deal with without adjournment of the OPs”.

This being the case here, the expert declaration of Mr G. is not admitted into the proceedings.

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T 2254/08 – Not Proven

This decision, one aspect of which (a request for exclusion from public inspection) was discussed in the preceding post, also contains an interesting passage on an alleged prior use.

[2.1] The alleged prior use is based on D14, D15a and D15b as evidence that a closure assembly under the name “Alusnap” was launched or put on the market, i.e. at least offered for sale, before the priority date of the patent in suit. It is only necessary to discuss D14 as will become apparent below. D14 is a document dated November 2005 supporting an offer for the sale of shares in a company which has the name Guala Closures S.p.A.

In a table on page 71 of D14 a launch date of 2001 is indicated for a closure with the name “Alusnap”. There is also a reference on this page to “Alusnap” being patent protected. The said table indicates the number of components in “Alusnap” as 6. On page 72 of the document there is a diagram of the closure.

In the patent in suit it is stated in column 2, lines 45 to 46 that “The Applicant has named the device of the invention “ALUSNAP” (Trade Mark)”.

[2.2] As part of the evaluation of the alleged prior use it must be considered what may have been prior used, i.e. what are the technical features of any prior used device. D14 has on page 72 a diagram of an “Alusnap closure”. If this diagram is to be considered as evidence of the features of the prior used closure then it must be proven that the prior used closure is identical to that shown in this diagram.

Apart from the name “Alusnap” there is no link between the diagram on page 72 of D14 and the allegedly prior used closure. “Alusnap” is a trade mark (see column 2, lines 45 to 47 of the patent in suit). A trade mark is used to indicate the origin of goods or services and is not normally considered to be an indication of the technical features of a device with which it is associated. It is moreover normal for improvements to be made to a device without however changing its name or trade mark. In the present case both D1 (see page 3, lines 2 and 3) and the patent in suit (see above) indicate that the device disclosed therein is named “Alusnap”, even though these documents disclose different devices. There is thus evidence that in the case of “Alusnap” the same name has been used for closures having differing technical features. It must therefore be concluded that this trade mark is not one which exceptionally could be considered to uniquely define the technical features of device with which it is associated.

In this respect the Board notes that the number of components of the device is given as six in the said table in D14 whereas the number of components in the devices according to the patent in suit and D1 could be considered to be different due to the first and second outer sleeves being separate in the device according to the patent in suit. Opponent I and opponent III gave differing answers concerning the number of components in the device according to D1. The Board concludes therefore that also this information given in D14 does not allow the device to be identified.

There is hence no evidence as to the technical features of the closure that is stated to have been launched in 2001. The closure could, for instance, have corresponded to the one disclosed in D4 which has the same applicant as for D1, or it could have been a still further closure having quite different features.

Not only is there no evidence that “Alusnap” is a unique name for a particular form of closure, there is evidence that it specifically is used for closures having varying technical features.

[2.3] In this respect the Board also notes that it does not necessarily accept that the reference to a “launch date” in D14 or the other evidence relating to the circumstances and date of the alleged prior use is sufficient to prove that a prior use actually has taken place. The Board does not have to consider these matters since, as explained above, it does not consider that what might have been prior used has been proven.

[2.4] The Board concludes therefore that the technical features of the allegedly prior used closure have not been proven.

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T 2254/08 – No Hiding

Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form.

Among other things, the Board had to deal with the (not so frequent) request to exclude a document from file inspection:

[1.1] With its grounds of appeal opponent I filed D14 which is a document concerning a global offering of shares in Guala Closures S.p.A. The document is marked as confidential on its front page. Opponent I also gave the Internet address of the website from which it obtained the document. The address given by opponent I turned out to have an error in it.

Click to enlarge

In its response to the appeal of opponent I the proprietor requested that D14 be removed from the proceedings, that it be excluded from file inspection, and that all references thereto be deleted from the file, since it considered that it was a confidential document that should not be made available to the public.

Opponent I thereupon corrected the Internet address of the website and filed a confirmation from a public notary that he had accessed the website via the Internet and was able to print out documents D14 and the full version of D15a which is in the Italian language and part of which corresponds essentially to D14.

The Board itself accessed the website at the corrected address and found that it could view the document D14 and print out a copy thereof.

The availability of D14 and D15a to an unrestricted public is not therefore in doubt. D15b is an excerpt from a document alleged by opponent I to be the English version of D15a. Proof of this allegation was not supplied by opponent I and it is not necessary to consider this document further in the present decision since its content is covered by D14 and D15a.

[1.2] A 128 governs file inspection. Paragraph (4) of the article indicates that the inspection may be subject to restrictions laid down in the Implementing Regulations and R 144 sets out these restrictions. The documents mentioned above do not fall under any of the categories set out in R 144 paragraphs (a) to (c) EPC so that it must be considered whether they could fall under paragraph (d) of this rule.

Paragraph (d) indicates that the President of the EPO may exclude from file inspection other documents which do not serve the purpose of informing the public about the European patent application or the European patent. Furthermore, in the Decision of the President of the EPO dated 12 July 2007 (OJ 2007, Special edition 3, 125) regarding R 144(d) it is stated in Article 1(2)(a) that a document shall be excluded from file inspection at the request of a party if the inspection could be prejudicial to the legitimate personal or economic interests of legal or natural persons.

[1.3] It is established that the documents were accessible to the public irrespective of any confidentiality statement on the document itself. Since the documents have been available to the public by one means, i.e. the Internet, the economic interest of the proprietor cannot be affected by its being available by another means, i.e. file inspection. The documents are also relevant to the proceedings since they constitute evidence related to an alleged public prior use of a possibly relevant device. The documents therefore do not fall into the category set out in paragraph (d) of R 144 so that there is no reason to exclude them from file inspection.

[1.4] In accordance with Article 1(3) of said Decision of the President a document covered by Article 1(2)(a) thereof shall be provisionally excluded from file inspection until a final decision on the request has been taken. The provisional exclusion had been effected in the present case. The Board has now come to the conclusion that there is no basis for the exclusion from file inspection so that it can now take a final decision lifting the exclusion.

[1.5] Also, the request of the proprietor that the documents be removed from the proceedings and references thereto deleted is refused. As explained above the documents are in the public domain so that there is no reason for any such action, irrespective of whether or not the EPC would even allow such actions.

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T 959/08 – (Dys)Functional

The applicant filed an appeal after its application had been refused by the Examining Division (ED) for lack of clarity.

Claim 1 before the Board read:

A process for producing aliphatic polyesters having a weight-average molecular weight (Mw2) that falls within a numerical range as defined by the following numerical formula (2) and numerical formula (3) and having at least 50 % of aliphatic hydroxycarboxylic acid units, which comprises polymerizing a crystallized, aliphatic polyester prepolymer having a weight-average molecular weight (Mw1) that falls within a numerical range as defined by the following numerical formula (1) and having at least 50 % of aliphatic hydroxycarboxylic acid units, in a solid phase in the presence of a volatile catalyst, i.e. a catalyst capable of vaporizing away from the reaction system during the reaction, the volatile catalyst being an organic sulfonic acid compound selected from the group consisting of alkanesulfonic acids having from 1 to 10 carbon atoms, halogen-substituted alkanesulfonic acids, benzenesulfonic acid and benzenesulfonic acid derivatives, naphthalenesulfonic acid and naphthalenesulfonic acid derivatives, wherein the volatile catalyst is removed during the solid phase polymerization by evaporation at a temperature of not higher than the melting point of the polymer by adjusting the type and the amount of the catalyst, the flowing gas atmosphere having a flow rate of 0.02 to 200 ml/min, per gram of the prepolymer:

(1) 2 x 10^(3) <= Mw1 <= 1 x 10^(5)

(2) 5 x 10^(4) <= Mw2 <= 1 x 10^(6)

(3) Mw1 < Mw2

the weight-average molecular weight (Mw) being determined by gel permeation chromatography at a column temperature of 40ºC, using chloroform as the solvent by comparison with the molecular weight of a standard sample of polystyrene, and

a residual percentage of the catalyst, R, in the product, which is defined by the following numerical formula (10), being at most 50 %:

(10) R [%] = CA [ppm] ÷ CB [ppm] x 100

wherein R is the residual percentage of the catalyst [%], and this constitutes an index of the variation in the catalyst concentration before and after the solid-phase polymerization,

CB [ppm] is the theoretical catalyst concentration in the case where all the catalyst as fed into the reaction system before solid-phase polymerization is to remain in the product, aliphatic polyester, and this is represented by the following numerical formula (11), and CA [ppm] is the actual catalyst concentration in the aliphatic polyester as finally obtained after the solid-phase polymerization, and this is represented by the following numerical formula (12):

(11) CB [ppm] = WB [g] ÷ WP [g] x 10**(6)

wherein WB [g] is the total weight of the catalyst as fed into the reaction system before the solid-phase polymerization, and WP [g] is the weight of the aliphatic polyester as finally obtained after the solid-phase polymerization,

(12) CA [ppm] = WA [g] ÷ WP [g] x 10**(6)

wherein WA [g] is the weight of the catalyst having remained in the aliphatic polyester as finally obtained after the solid-phase polymerization, and WP [g] is the weight of the aliphatic polyester as finally obtained after the solid-phase polymerization.

[2] Claim 1 relates to a process for producing high molecular weight aliphatic polyesters having at least 50% of aliphatic hydroxycarboxylic acid units, whereby a crystallized, low molecular weight aliphatic polyester prepolymer having at least 50% of aliphatic hydroxycarboxylic acid units is polymerized in solid phase in the presence of a volatile catalyst. At the same time, the process has to be conducted in such a way that the residual percentage of the catalyst, R, in the product, which is defined by the following formula (10), is at most 50%:

R [%] = CA [ppm] : CB [ppm] x 100,

CB [ppm] being the theoretical catalyst concentration in the case where all the catalyst as fed into the reaction system before solid phase polymerization is to remain in the product, and CA [ppm] being the actual catalyst concentration in the product.

[2.1] Thus, the process of Claim 1 is characterized by a functional feature directed to a result to be achieved, namely the residual percentage of the catalyst, R. As pointed out in T 68/85 [8.4.3]), such a functional definition of a claim feature

“must stop short where it jeopardises the clarity of a claim as required by A 84. That clarity demands not only that a skilled person be able to understand the teaching of the claim but also that he be able to implement it. In other words, the feature must provide instructions which are sufficiently clear for the expert to reduce them to practice without undue burden, if necessary with reasonable experiments.”

Whilst it is true that the requirement of implementing a functional feature of a claim is an issue relating to A 84, this requirement, viewed in relation to the disclosure as a whole, is also highly relevant to the question of sufficiency in the sense of A 83. Hence, as pointed out in T 435/91 [headnote; 2.2.1], the definition of a component by its function

“is not sufficient if the patent discloses only isolated examples but fails to disclose, taking into account, if necessary, the relevant common general knowledge (CGK), any technical concept fit for generalisation, which would enable the skilled person to achieve the envisaged result without undue difficulty within the whole ambit of the claim containing the “functional” definition.” Regarding the overlapping aspects of A 84 and A 83, reference may also be made to T 713/98 [3.2].

[2.2] In the present case, Claim 1 refers to various process features for achieving the desired result, namely removing the volatile catalyst during the solid phase polymerization by evaporation at a temperature not higher than the melting point of the polymer by adjusting the type and the amount of the catalyst, and the flowing gas atmosphere having a flow rate of 0.02 to 200 ml/min per gram of prepolymer. However, these process features are defined in such general terms that a person skilled in the art is left with a considerable number of variables which would have to be adjusted in order to arrive at the desired result. In other words, Claim 1 itself does not provide any meaningful instruction to achieve the desired result.

[2.3] Furthermore, these rather general process features of Claim 1 which could be varied in order to achieve the desired result are not explained more fully in the original description. In fact, the relevant passages in the description merely indicate that variables like the temperature, the catalyst, the flowing gas and the pressure may have an influence on R, but the description is conspicuously devoid of any concrete, coherent and convergent teaching how to reliably and consistently get the desired result.

Moreover, when discussing the individual variables, the description is equivocal rather than providing clear further instructions. With regard to the temperature, for example, Claim 1 requires the temperature to be not higher than the temperature of the melting point of the polymer. By contrast the description as filed states in the paragraph bridging pages 1 and 2 that the solid phase polymerization is carried out at a temperature not higher than the melting point of the prepolymer, or at page 24, first full paragraph, that the temperature should not be higher than the melting point (Tm) of the polymer (including the prepolymer and the reaction product, aliphatic polyester). Since it is CGK that the melting points of the prepolymer (low molecular weight), the resulting polymer (high molecular weight) and the polymer mixture are not identical, the application as filed refers in the end to three different temperatures whereby it is not clear which one should be followed.

Further, according to the application as filed, the solid phase polymerization could be carried out under reduced pressure, whereby

“The degree of reduced pressure in the reaction system for solid-phase polymerization under reduced pressure could be suitably determined, in consideration of the polymerization rate, the type and the amount of the volatile catalyst used, the vaporization rate and efficiency of the volatile catalyst to vaporize away from the reaction system that contains the polyester formed in the step of dehydrating polymerization, the rate and the efficiency of removing water having been formed through the solid-phase polymerization, and the final weight-average molecular weight (Mw) of the product, aliphatic polyester” (page 28, first full paragraph).

Although this paragraph is remarkably free of tangible process measures, the person skilled in the art would deduce from this paragraph (also taking into account the CGK) that a reduced pressure facilitates the evaporation of the volatile catalyst. But the application as filed also contains the bewildering statement that

“In general, the volatile catalyst used could hardly vaporize away from the reaction system in solid-phase polymerization under reduced pressure” (page 29, first full paragraph).

When the appellant’s attention was drawn to this inconsistency, the appellant declared that the statement on page 29 of the application was an obvious error, but, at the same time, deleted the process variable “pressure” from Claim 1. Thus, it is not clear as to whether (according to the description) or not (according to Claim 1) pressure, and in particular reduced pressure, is a suitable process variable for achieving the desired result.

The thrust of the appellant’s defence was that the person skilled in the art would know how to carry out the process in order to obtain the desired result. However, in the absence of any convincing evidence and in view of the rather vague and even equivocal description, the appellant’s argument is not convincing.

[2.4] In order to illustrate the invention, the appellant has filed during examination (10 August 2006) a comparative example where polylactic acid was produced in the same way as in Example C-1 of the application as filed except that the solid phase polymerization was carried out under conditions so that the catalyst did not volatilize enough. In the comparative example R was 78%. The solid phase polymerization step in these two examples can be outlined as follows:

(i) In Example C1 of the application this step comprises two successive steps. In the first step, the reaction is carried out at 760 mmHg (1013 hPa), at a temperature of 140ºC, and a nitrogen flowing rate of 5 ml/min for 40 h. In the second step, the reaction is continued at 760 mmHg (1013 hPa), at a temperature of 160ºC, and a nitrogen flowing rate of 200 ml/min for 60 h.

(ii) In the comparative example, the solid phase polymerization is carried out in a single step at 760 mmHg (1013 hPa), at a temperature of 140ºC, and a nitrogen flowing rate of 5 ml/min for 60 h.

The above comparison shows that Example C-1 differs from comparative example in

• the reaction scheme,
• the overall reaction time (100 h vs. 60 h),
• the elevated temperature (160ºC vs. 140ºC), and
• the higher nitrogen flowing rate (5 ml/min vs. 200 ml/min).

Thus, various process parameters have been adjusted in order to obtain the desired result. It is, however, not apparent which one of these parameters is decisive in achieving the desired result or whether it is the combination of all adjustments which provides the desired result. In this context, it is noteworthy that two of the parameters, i.e. the temperature and the flowing rate, are well within the general limits indicated in Claim 1, whereas the other two parameters, namely the reaction scheme and the reaction time, are not even dealt with in the description as possible factors having an influence on the desired result.

Hence, the information provided with the additional comparative example is likely to raise more questions than it answers when trying to find a technical concept fit for generalisation how to reliably and consistently get the desired result.

[2.5] Finally, it is conspicuous to the board that, in order to achieve the desired result, the claimed process has to fulfil – simultaneously – two conflicting requirements. On the one hand, there must be enough catalyst species in the system in order to effectively catalyze the reaction. On the other hand, the catalyst species has to be removed during the solid phase polymerization in order to obtain the required R value.

In this connection, the appellant argued that a person skilled in the art would know how to run such a process. For example, a skilled person would choose a catalyst that could be removed but was not too volatile. Or if, the catalyst were too volatile, more catalyst would have to be added during the solid phase polymerization. However, the application as filed is completely silent about this aspect. Further, there is no prior art available which is concerned with this, in a way, paradoxical situation. Hence, the appellant’s unsubstantiated assertion in this connection is not convincing. 

[2.6] In summary, although the appellant argued that the functional definition in Claim 1 would be allowable in view of the case law of the Boards of Appeal (inter alia T 68/85), the above analyses reveals just the opposite. In the present case, neither Claim 1 itself nor the description nor the additionally filed comparative example provide a coherent technical concept fit for generalization, which would enable the person skilled in the art to achieve the desired result without undue burden. The lack of any tangible technical concept is even further compounded by a vague and equivocal description. Consequently, the functional claim wording directed to a result to be achieved in Claim 1 does not fulfil the requirements of A 84 and A 83, respectively (following T 68/85 and T 435/91).

[2.7] Furthermore, it is conspicuous to the board that Claim 1 combines a rather general polymerization process requiring no particular point in time of the addition of the catalyst with a parameter whose calculation refers to a particular point in time of the catalyst addition, namely before the solid phase polymerization.

Although this combination has a basis in the application as filed (Claim 1 as filed provides a basis for the general process, Claim 7 as filed for the parameter, and page 19, lines 7-13 for the addition before the solid phase polymerization), this combination leads nevertheless to an unclarity in Claim 1 as can be seen from the following example.

Claim 1 covers the possibilities that the catalyst may be added before and/or during the solid phase polymerization. If, however, all the catalyst is added during the solid phase polymerization, it is not possible any more to calculate the parameter R according to formula (10), because the divisor of the equation becomes 0 (i.e. no catalyst before the solid phase polymerization). It is CGK that such a situation is mathematically not defined, because a division is only defined for divisors not equal 0. Thus, also for this reason, Claim 1 does not clearly define the scope of the subject-matter claimed, contrary to A 84.

It might be worth pointing out that the possibility of adding the catalyst during the solid phase polymerization is not just a hypothetical possibility excogitated by the board to the disadvantage of the appellant. In fact, this possibility is explicitly mentioned in Claim 8 (“CB [ppm] … before and/or during dehydration polycondensation” and “WB [g] before and/or during the dehydrating polycondensation”) of the claim set pursued by the appellant in appeal and in the application as filed on the passage bridging pages 8 and 9 (“…the catalyst as fed into the reaction system during the solid-phase polymerization”). […]

The appeal is dismissed.

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