T 71/10 – Just An Option

The opponent filed an appeal against the decision to maintain the opposed patent in amended form.

In its notice of opposition, the opponent had objected to the amendment of expressions such as “:m”, “:L” and “:g” to “μm”, “μL” and “μg”. The Opposition Division did not find this argument persuasive:

In response to the statement of grounds of appeal filed on June 28, 2010, the patent proprietor vigorously objected to the arguments presented by the opponent against the correction. In another submission filed on December 16, 2011, the patent proprietor nevertheless proposed to come back to the original text.

In auxiliary request 1, on page 4, line 33 of the patent specification the term “μm” according to the granted patent was replaced, twice, by “:m”.

The opponent objected to this amendment on the ground that it violated A 123(3).

The Board would not accept this argument:

[3.3] The amendments amount to a limitation of the definition of the monomer of each of steps a) and b) recited in the set of granted claims, i.e. divinylbenzene and N-methyl-N-vinylacetamide, respectively, thus leading to a limitation of the scope of the subject-matter claimed.

Page 4, lines 33 of the granted patent reads “The polymer beads can have a diameter in the range of 3 to about 100 μm…” (emphasis by the Board) which implies that the limitation of the diameter is an optional feature of the polymer beads. Hence, an amendment of this passage cannot modify the scope of the subject-matter claimed.

In decision T 142/05, it was considered that the deletion in the description of an important desired property of the claimed subject-matter led to an extension of the scope of protection. That is, however, a different situation from the case at issue in which the diameter range of the beads is an optional, hence not an important feature. Therefore, decision T 142/05 is not relevant for the present case.

For these reasons, the argument of the appellant that the amendment broadened the scope of the claimed subject-matter cannot be followed and A 123(3) is complied with.

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