T 2006/09 – Point Of Reference

Most readers of this blog will be aware of the % trap: specifying percentages without defining what exactly is meant (per cent by weight, by volume …) may kill a patent application or a patent, as the case may be. The present decision presents us with an interesting variant of this problem.

The applicant filed an appeal after the Examining Division had refused the application under consideration.

Claim 1 of the main request before the Board read:

1. A liquid ink jet ink comprising a solvent and a coloring component, dispersed in the solvent, a photo acid generating agent, generating an acid upon irradiation with light, and wherein the solvent contains at least one kind of a solvent that is polymerized in the presence of an acid, which at least one solvent is an aromatic oxetane compound,

wherein an alicyclic epoxy compound and an aliphatic or alicyclic oxetane compound having a valency of at least 2 are added,

wherein the aromatic oxetane compound is present in an amount of 0 to 40 parts by weight, wherein the alicyclic epoxy compound is added in an amount of no larger than 50 parts by weight,

wherein the total amount of oxetane compound is at least 40 parts by weight based on the total amount of liquid ink,

wherein the total amount of the compounds having an alicyclic and an aromatic skeleton is at least 30 parts by weight.

The Board concentrated on the clarity of the claim:

[4] According to A 84, the claims must define the matter for which protection is sought. A consequence thereof is that the claims must be clear in themselves when read by the person skilled in the art, without any reference to the content of the description (see T 2/80 [2] and T 1129/97 [2.1.2]).

[4.1] Claim 1 of each request defines the amounts of several components or group of components by ranges given in “parts by weight” without indicating a common amount of reference (such as 100 parts by weight of the solvent or of the total ink). In the absence of such a common amount of reference, the weight of one part by weight of a first component may differ from the weight of one part by weight of a second component, thereby rendering the ranges vague and the claims unclear.

[4.2] The appellant argued that it was evident to the person skilled in the art that the “parts by weight” in the claims referred to 100 parts by weight of the solvent, except for the total amount of oxetane derivatives […]. However, the appellant has provided no evidence in support of this argument; nor does the board see any reason why the person skilled in the art might not equally consider the “parts by weight” to be based on 100 parts by weight of the total ink.

[4.3] Although any reference to the content of the description cannot overcome this objection of lack of clarity of the wording of the claims […], the board would like to emphasise that even if such a reference to the description was made, it would not have helped to remove this lack of clarity. On page 29, lines 12 to 18, 22 to 28 of the application as originally filed, the expression “parts by weight” is based on the weight of solvent. However, it is mentioned on page 39, lines 10 to 15 that when the solvent consists of the epoxy compound alone, then the amount is based on the entire liquid ink. On page 45, lines 21 to 25, the minimum amount of 40 parts by weight of the total addition amount of oxetane compound is based on the amount of liquid ink. Furthermore, the amount of kneaded mass referred to in this part of the description (see page 112, lines 12 to 14) is based on an epoxy compound.

Consequently even if the content of the description was considered, the content of said description would not provide the person skilled in the art with the appropriate information allowing him to remove the lack of clarity in the claims. […]

[4.5] Hence, the board concludes that claim 1 of each request on file contravenes A 84.

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

The file wrapper can be found here.

There is a nice French summary of this decision on Le blog du droit européen des brevets.