Friday, 11 November 2011

T 75/09 – Don’t Look Away

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

The core issue was clarity/sufficiency of disclosure, and in particular the definition of the parameter “through plane thermal conductivity”

The way in which the ED had handled the requests on file triggered some general observations by the Board:

[2] In view of the course of the examination proceedings before the ED, and in particular the different conclusions drawn by the ED with regard to the different requests of the applicant, but also the [applicant’s] argument [according to which the introduction of a further limiting feature reduced the importance of the measurement of the thermal conductivity with regard to A 83] the Board deems it appropriate to add some more general observations concerning the examination of a case like this, before turning to the [applicant’s] individual requests.

[2.1] As set out […] in the minutes of the oral proceedings (OPs) before the ED on 31 January 2008 and in […] the annex to the Communication under R 71(3) (hereinafter “the Annex”), the ED had taken the view that all requests higher ranking than the sixth auxiliary request filed at the OPs could not be allowed for the reason of lack of clarity. In the decision under appeal […], this view was again confirmed with regard to the main request and first auxiliary request […].

[2.2] The reason for this finding was explained with regard to Claim 1 of the main request in […] the decision now under appeal […]:
[3.15] Since the determination of the “thermal conductivity” is significantly dependent on the measurement conditions used, the indication of the measurement conditions is part of the clear definition of the parameter “thermal conductivity”, and hence of the clear definition of the claimed product in accordance with A 84.

[3.16] This lack of information results in uncertainty as to the definition of the parameter “thermal conductivity”, and therefore said parameter cannot limit the subject-matter of claim 1 of the [main request] in any clear way. In other words, claim 1 is not clear as required by A 84.
Despite the identification of the measurement “according to ASTM Method D5930” in its Claim 1, the same conclusion had been drawn with respect to the first auxiliary request in […] the Annex and confirmed in […] the decision under appeal […], because the measuring temperature had not been defined in its Claim 1. Furthermore, this conclusion had also been drawn with regard to Claim 1 of the third auxiliary request […]. Consequently, the ED had held that neither auxiliary request complied with A 84.

[2.3] Moreover, based on the statement “the parameter ‘thermal conductivity’ would remain the only distinguishing feature and thus this claim would remain unclear” or in similar words […], the ED had come to the same conclusion with regard to each of the second, fourth and fifth auxiliary requests.

[2.4] By contrast, the ED had indicated in the Communication under R 71(3) that it deemed the sixth auxiliary request to be in compliance with the requirements of the EPC.

[2.4.1] A closer look at Claim 1 of this request shows that it contained a combination of features which had as such also been incorporated in those higher-ranking auxiliary requests and which had been considered there as not being suitable for overcoming the objection under A 84 EPC against those requests […]:

[2.4.2] In view of the reasoning for the refusal of the main and the first auxiliary request in the decision under appeal and additionally for the second to fifth auxiliary requests in the Annex, the Board can only conclude that the ED had apparently taken the view as regards the sixth auxiliary request
  • that the above objection of lack of clarity in respect of the definition of the thermal conductivity could be left aside/disregarded, because the “thermal conductivity” did not “remain(s) the only distinguishing feature” (with respect to the prior art) and
  • that, therefore, a patent could nevertheless be granted despite this lack of clarity in both independent claims of this request.
[2.5] However, such an approach is not, in the Board’s opinion, in accordance with the requirements of the EPC.

[2.5.1] A 18(1) states that “The EDs shall be responsible for the examination of European patent applications”, i.e. in all its aspects.

[2.5.2] The articles of the EPC relevant to the examination proceedings as a whole are organised in different Parts and Chapters of the Convention. Thus, Part III “The European Patent Application”, Chapter I “Filing and requirements of the European patent application” contains A 75 to A 86, whilst A 52 to A 57 concerning the grant of a patent, in general, and novelty, inventive step and industrial application, in particular, are found in Part II “Substantive Patent Law” Chapter I “Patentability”.

[2.6] In view of this structure of the EPC, the Board takes the view that articles in one chapter of the EPC concern requirements different from those defined in articles of the other chapter of the EPC and that, consequently these different requirements have to be treated separately and independently from one another.

[2.7] It follows that the assessment of the substantive requirements for grant, i.e. novelty, inventive step and industrial application, can only be brought to a meaningful and appropriate end, in particular can only result in the grant of a patent, after any problems concerning (i) the “Filing and requirements of the European patent application” as such and (ii) the “Common provisions governing procedure” (Part VII Chapter I of the EPC), namely those laid down in A 123(2), have positively been solved.

This implies, in the Board’s opinion, that any problems concerning the requirements of A 83 (sufficiency of disclosure) and of A 84 (requiring the claims to be clear and concise and supported by the description - without making in this respect any distinction between independent and dependent claims) and, in the case of amendment, those of A 123(2) have to be dealt with independently from and prior to the question of patentability.

[2.8] Moreover, it should be kept in mind that a feature in an (independent or dependent) claim, which prima facie does not appear to be relevant for the decision on patentability at any time during or at the end of the examination procedure, may at a later stage in the life of the granted patent, e.g. in opposition proceedings under A 99 before the EPO or in revocation proceedings before a court under A 138, become highly relevant or even decisive for the validity of the European patent.

However, a deficiency concerning the requirements of A 84 is neither a ground for opposition before the EPO under A 100 EPC nor a ground for revocation under A 138(1). Consequently, such a deficiency cannot be dealt with, let alone remedied in either proceedings.

Reference can be made in this respect to established jurisdiction, namely to the decision of the Enlarged Board of Appeal G 9/91 [19] and e.g. decisions T 301/87 [3.8] and T 690/00 [4.1], cf. also Chapter VII.D.4.2 in the Case Law of the Boards of Appeal of the EPO, 6th edition, 2010).

[2.9] In other words, where - as in the present case - there are multiple requests and a feature common to all requests is held not to meet the requirements of A 84, as a consequence of which higher ranking requests are refused, all lower ranking requests retaining this feature have to be refused for the same reason.

The fact that in a lower ranking request the offending feature no longer has to be relied upon to establish a distinction over the prior art does not overcome the defect pursuant to A 84. Nor does it give the deciding body the discretion to disregard the deficiency.

In particular it has to be borne in mind that the significance of a feature may become apparent only at a later stage in the life of a patent, e.g. in opposition or revocation proceedings.

The appeal was finally dismissed because the cited ASTM standard and, as a consequence, the application did not explain how to measure thermal conductivity through a plane, and, therefore, violated A 83.

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

The file wrapper can be found here.