T 2433/09 – Boomerang

When a patent (or application) does not contain any evidence that the underlying problem is indeed solved, the patent proprietor (or applicant) is in a bad position because it has to argue that this was credible, on the basis of common general knowledge (CGK). This, however, will prove problematic at a later stage of the problem-solution approach where the very same CGK then suggests that this solution was indeed obvious to the skilled person.

The present case provides an example of such a situation.

Claim 1 of the main request on file read:

1. A vehicle for a hot melt ink-jet ink, the vehicle comprising from 35 to 98% by weight of a radiation curable material and a thickener, said vehicle being a thixotropic paste at 20ºC, preferably also at 25ºC, and said vehicle having a viscosity of less than 25 centipoise at least one temperature in the range of from 40ºC to 130ºC.

The Board found document D0 to be the closest prior art and then pursued the assessment of inventive step:

[3.4] As the next step according to the problem-solution approach, it is necessary to determine the problem which the claimed invention addresses and successfully solves in the light of the closest prior art.

[3.4.1] The [patent proprietor] defined the problem to be solved in view of document D0 as lying in the provision of an ink-jet ink affording better flow properties within the printer apparatus, and improved image quality and durability.

The solution as defined in claim 1 of the patent in suit relates to a vehicle for a hot melt ink-jet ink characterised in its higher content of radiation-curable material and lower content of thickener, and being a thixotropic paste at 20ºC.

[3.4.2] The board would like to emphasise in this context that the patent in suit itself does not contain a single example of a printing process employing the claimed vehicles or inks, nor has any such data been supplied by the [patent proprietor] in the present opposition/appeal proceedings.

Thus, no evidence has been provided that any of the alleged advantages have actually been achieved in comparison with the inks according to document D0 or any other prior art.

Any positive assessment in this respect can therefore only be based on CGK and the known properties of the components of the claimed compositions.

[3.4.3] Concerning the alleged advantage of improved flow properties within the printer apparatus, the [opponent] disputed that this had been plausibly demonstrated. Indeed, according the printing process disclosed in document D0, at the operating temperature of the printing apparatus, the ink is in a liquid state in the printer head […], and therefore possesses good flow properties. Therefore, it does not appear to be credible that any advantage in this respect would be observed by employing the present vehicle in the printer apparatus disclosed in document D0.

[3.4.4] The remaining two advantages relied on by the [patent proprietor] were improved print quality and durability. In view of the fact that the [opponent] explicitly acknowledged that these two advantages could be regarded as having been achieved by the subject-matter claimed, the board sees no reason to differ. Indeed, as explained in more detail under point [3.5.1] below, the paste-like consistency of the claimed vehicle at room temperature could be expected to allow controlled mingling of droplets to occur on printing, thus improving image quality. Additionally, it can be accepted that larger amounts of curable material in the ink would increase the durability of print.

[3.4.5] Consequently, the board considers it to be plausible that the problem as defined above under point 3.4.1 has been successfully solved as far as the aspects of improved print quality and durability are concerned.

[3.5] It remains to be investigated whether the proposed solution would have been obvious to the skilled person in the light of the prior art.

[3.5.1] […] D0 already discloses the principle of combining the advantages hot-melt and radiation-curable inks by formation of inks comprising “wax and resin whose melting point is 40-70ºC” and “ultraviolet ray setting resin”. On heating, the inks become liquid and jettable, and at room temperature they return to their initial “solid or semi-solid” state […].

Through the reference to “semi-solid”, the skilled person would already derive the clear teaching that a range of consistencies may be tolerated in the inks according to document D0. Further confirmation thereof can be found in paragraph [0020], wherein it is suggested that the viscosity of the ink at room temperature may be adjusted, as need demands.

It must be emphasised in this context that, starting from the solid ink composition specifically exemplified in document D0 and faced with problem of improving image quality and durability, the skilled person would have had at his disposal the same CGK as that relied on above under point [3.4.4].

Thus, as outlined above under point [3.4.4], the skilled person would have been aware of the fact that a vehicle having a semi-solid or paste-like consistency would allow controlled mingling of droplets to occur. This is also derivable from document D0 itself, which discloses that liquid inks suffer from colour bleed […], whereas no spread of the ink droplets occurs in the exemplified solid inks […]. It follows that a substance having an intermediate viscosity behaviour, between that of a liquid and a solid, would be expected to provide the required intermediate extent of mingling of droplets, and thus provide a solution to the problem of image quality.

Moreover, the skilled person would have been aware of the properties imparted by the various components of the ink according to document D0. Thus, the known purpose of the radiation-curable component in ink-jet inks is to provide a hardened film when subjected to an external energy source […]. Therefore, as outlined above under point [3.4.4], greater amounts of curable material in the ink would be expected to increase the durability of print.

Similarly, the wax component in document D0 is known to impart the solid consistency of the ink at room temperature […].

In view of the above, it would be within the normal routine of a skilled person, and within the teaching of document D0, to adapt the exemplified ink composition in order to achieve the optimum balance of properties required for achieving image quality and durability, namely, by decreasing the amount of wax, in order to produce a product that was semi-solid at room temperature, and by increasing the amount of radiation-curable material, in order to improve hardening. […]

The [patent proprietor’s main request is rejected for lack of inventive step.

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T 1807/07 – Don’t Get It Twisted

This is an appeal against the revocation of the opposed patent by the Opposition Division.

Claim 1 of the main request before the Board (and of the patent as granted) read:

Process for production of a synthetic toothless substitute (28, 38) of pressed fine ceramic powder which can fit on at least one preprepared dental stump (1 0), where taking into account the shrinkage the inner surface (22) of a fully ceramic skeletal structure (14) of biologically compatible material is calculated, where the geometric conditions of the patient’s mouth are scanned and digitised, the data enlarged linear in all directions by a enlargement factor (f) compensating precisely for the sinter shrinkage, transferred to the control electronics of at least one processing machine and suitable tool paths derived from this, the enlarged design form of the skeletal structure (14) dense sintered to the direct end dimensions and then individualised by capping with coating material (24) of porcelain or plastic,

characterised in that on the basis of the scanning and digitisation of a positive model (46, 47) of the situation in the patient’s mouth, taking into account the sinter shrinkage, an enlarged design form of the skeletal structure (14) with an inner and an outer surface (20,22) is produced by material removal from a blank (48) of porous ceramic, where the control commands are sent to a suitable machine tool for production of the enlarged design form of the skeletal structure (14) from the blank (48) temporally decoupled from the digitisation. (my emphasis)

The crucial issue was whether the scanning and digitisation of a positive model of the situation in the patient’s mouth was disclosed in the application as filed.

The opponents pointed out that the application only disclosed the scanning of the skeletal structure.

The patent proprietor argued that claim 1 had to be read through the eyes of the skilled person and based on the description. The description referred to both the “positive model of the situation in the patient’s mouth” and the “positive model of the skeletal structure”, but it was clear to the skilled person that the claimed method only included the scanning of the positive model of the skeletal structure. The scanning of the positive model of the situation in the patient’s mouth was not disclosed or described. This interpretation was a possible variant but not supported by the description. Moreover, the use of the reference signs “(46, 47)” unambiguously indicated that only the positive model of the skeletal structure could have been meant.

The Board was not persuaded:

*** Translation of the German original ***

[2.1] Claim 1 of the main request […] contains the technical feature according to which on the basis of the scanning and digitisation of a positive model (46, 47) of the situation in the patient’s mouth, taking into account the sinter shrinkage, an enlarged design form of the skeletal structure is produced by material removal from a blank of porous ceramic. However, the original application does not disclose such a method step. Contrary to its line of argument in the statement of grounds of appeal as well as in the opposition proceedings, the [patent proprietor] agreed to this assessment by the Board without restriction during the oral proceedings.

The original description of the application (referred to as “the application” in what follows) clearly distinguishes between a positive model of the situation in the patient’s mouth (model 1, mostly made from plaster), which is made from a cast, and a positive model of the skeletal structure (model 2, mostly made from wax or plastic) which is fitted onto the paster model 1 […]. When reading the wording of claim 1 in the light of the description, the skilled person can only come to the conclusion that claim 1 only claims the scanning and digitisation of the “positive model of the situation in the patient’s mouth” because this feature is found both in the preamble and in the characterising portion of claim 1. The scanning and digitisation if the skeletal structure is not mentioned in claim 1 of the main request […].

The [patent proprietor] objected that in the description only the positive model of the skeletal structure (model 2) was scanned and digitised. In view of this contradiction between the subject-matter of the claim and the description only positive model 2 could be meant in claim 1.

The Board cannot endorse this point of view.

It is true indeed that the application does not disclose the scanning and digitisation of the positive model of the situation in the patient’s mouth. If it did, the amendment would not be problematic. However, one cannot conclude from this that the wording “positive model of the situation in the patient’s mouth” has to be interpreted as “positive model of the skeletal structure”. Such an interpretation would be tantamount to twisting the facts, which the skilled person has no reason to do. The application clearly distinguishes between model 1 and model 2 and it is not unreasonable to imagine that the enlaged embodiment of the skeletal structure is obtained by scanning and digitising of the situation in the patient’s mount. This was even stated by the [patent proprietor] during the written proceedings.

Also, the submission of the [patent proprietor] according to which the reference signs (46,47) in claim had to be taken into account in the choice of the “correct” interpretation, cannot alter this assessment. It is true that reference signs may serve to make a claim more clear to the reader, as found in decision T 237/84. Apart from the fact that the reference signs in a claim are not limiting the claim, from the point of view of patent law, in the present case the skilled person would at most assume that the insertion of the reference signs (46,47) was due to an error because they are not related at all to the positive model of the situation in the patient’s mouth.

It follows that the subject-matter of claim 1 of the main request […] extends beyond the content of the original application and, as a consequence, violates the requirements of A 123(2). Thus the claims of the main request […] cannot be granted.

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T 1514/06 – Dead Man Filing

The present appeal was filed by the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form.

The decision deals with a company demerger and related procedural questions.

*** Translation of the French original ***

Transfer of the opponent status

[1.1] According to the established case law, an opposition pending before the EPO may be transferred or assigned to a third party as part of the opponent’s business assets (economic activity) together with the assets in the interests of which the opposition was filed. (cf. G 4/88 [order])

[1.2] In the present case, in view of the supporting evidence filed by the JB TEC (C) company, represented by the same representative having a power of attorney dated September 8, 2011 […], the Board considers that the transfer of the opponent (and, consequently, appellant) status of the JB TEC (A) company (registered in the company register (RCS) of Lyon (France) as n° 381 958 222 and struck off on September 16, 2010; see documents L1, L4b) to the JB TEC (C) company (registered in the company register of Lyon (France) on September 9, 2009, as n° 514 495 191; see documents L4a and L4b) has been established.

[1.2.1] As a matter of fact, the draft of the demerger agreement (traité de scission), both in its original (document L2) and rectified version (document L3) shows that the JB TEC (A) company has transferred 

• its business (branche d’activité) related to classical sealed mechanical shakers to the Agitec SAS company, and
• its business related to magnetic stirrers for mainly pharmaceutical and biological uses (Board’s emphasis) […] to the JB TEC (C) company.

It should be noted that the corporate objective (objet social) of the JB TEC (C) company, as indicated in the excerpt from the company register of Lyon […] is to “commercialise, conceive, study, realise and provide service for all products and equipments intended for use in industry and in particular for biotechnology, pharmaceutical, cosmetic and food industries, etc.” The rectified draft of the demerger agreement […] discloses the remainder of the corporate objective in the following terms: “… working in the very demanding context of sanitary security that may require the use of techniques allowing to transfer power by means of magnetic coupling.”

The demerger agreement, which has been rectified based on accounting data only, after consultation of the demerger auditor (commissaire à la scission) and published in a newspaper authorized to publish legal advertisements, as required by French law, has been the object of a declaration of conformity […] signed on July 13, 2010, by Mr Mangeolle, the president and unique stockholder of both companies involved in the demerger agreement.

Thus it has been established that the initial draft has been validated in conformity with the applicable rules, which is a necessary prerequisite for a registration in the company register.

It has also been clearly demonstrated that the JB TEC (C) company is the transferee of the business related to magnetic stirrers, it being understood that it is precisely this equipment that is used for producing pharmaceutical, biotechnological and food products. Now the patent under consideration in the present proceedings concerns a magnetic stirrer.

[1.3] The Agitec company is only transferee of the business related to mechanical shakers. Therefore, it is excluded that the opposition was part of the business assets transferred to this company.

[1.4] Moreover, it has to be noted that the demerger under consideration has led to the dissolution without liquidation of the JB TEC (A) company […], which means that once this transaction had been achieved, there were no more assets to be allocated, nor liabilities to be covered.

On the documents transmitted on August 5, 2011, by the JB TEC company

[2.1] However, the reality of the transfer of the opponent status together with a transfer of business assets has to be distinguished from its procedural effectiveness. The latter requires the filing of a request in order to ensure legal security. This is why the change of party to the appeal proceedings cannot occur without having been brought to the attention of the Board. Otherwise, there could be procedural acts or decisions without the opponent - who is the sole authorised party - being involved (see T 19/97 [5]).

[2.2] The JB TEC (A) company having been dissolved on September 16, 2010, […], it did not have any legal personality any more, such that the power of attorney given to Mr Blanchard was null and void (caduc).

[2.3] However, Mr Blanchard has been designated as the representative of the JB TEC (C) company, the present holder of the opponent status, by means of an authorisation dated September 8, 2011 […], i.e. one year later. These pieces of information, as well as the request to transfer the opponent status to the JB TEC (C) company, have been brought to the attention of the Board on September 14, 2011, only.

[2.4] As a consequence, the documents under consideration have been removed from the proceedings as having been filed in an irregular manner.

[2.5] Upon request of the JB TEC (C) company, the content of said documents, comprising inter alia objections regarding the patentability of the subject-matter claimed in the auxiliary requests, has been re-introduced in the course of the oral proceedings (OPs), as an integral part of its oral submissions.

During the OPs, the Board has suggested that the OPs be postponed in order to safeguard the rights of the [patent proprietor].

However, the [patent proprietor] has declared that it was capable of presenting oral submissions without there being need for a postponement of the OPs.

[2.6] Consequently, in view of the particular circumstances, the Board has admitted the contents of said documents into the proceedings, irrespective of their belatedness (A 13(1)(2) RPBA).

Finally the patent was revoked.

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The file wrapper can be found here.

T 636/09 – Lack Of Reference

Who said this was a cannabis-free blog?

Claims 1 and 7 of the main request before the Board read (in English translation):

1. A process for producing an extract containing tetrahydrocannabinol, cannabidiol and optionally the carboxylic acids thereof from Cannabis plant material, wherein the dried plant material is comminuted and wherein Cannabis sativa L., of the fibre type is employed as cannabis plant material; wherein said plant material is extracted by means of CO₂ under supercritical pressure and temperature conditions at a temperature in a range from 31 °C to 80°C and at a pressure in a range from 75 bar to 500 bar, or is extracted in the subcricital range at a temperature of 20°C to 30°C and a supercritical pressure of 100 bar to 350 bar; and the obtained primary extract is separated out under subcricital conditions or under conditions subcricital in terms of pressure and supercritical in terms of temperature.

7. A primary extract from cannabis plant material, containing tetrahydrocannabinol and cannabidiol and optionally the carboxylic acids thereof, characterized in that it may be obtained through a process in accordance with any one of claims 1 to 6; and in that it contains at least reduced proportions of monoterpene and sesquiterpene hydrocarbons, alkaloids, flavonoids, and chlorophylls.

The Board found claim 7 to lack novelty:

*** Translation of the German original ***

[3] The primary extract defined in present claim 7 is characterised both by the production process and by the feature that it contains at least reduced proportions of monoterpene and sesquiterpene hydrocarbons, alkaloids, flavonoids, and chlorophylls. Document D3 […] discloses a supercritical extraction of marihuana that is carried out with CO₂ that has a density of 0.9 g/ml at the chosen temperature of 40°C. It has to be noted that under these circumstances the pressure of supercritical CO₂ lies within the presently claimed pressure range of between 75 and 500 bar, which means that this feature is implicitly disclosed. Moreover, [the Board] has to agree with the Opposition Division that in the process disclosed in document D3 the individual fractions are quenched (abgefangen) at a subcritical temperature of 25°C. The expression “trapped” used un document D3 implies that the CO₂ extract is kept at normal conditions, i.e. room temperature and atmospheric pressure, which means that the CO₂ evaporates and only the extraction residue, i.e. the primary extract, is left. It follows that all process steps mentioned in claim 1 of the present main request are disclosed in document D3. In this context it has to be noted that the industry-scale (großtechnisch) character of the process defining the claimed product, to which the [patent proprietor] has repeatedly referred, cannot serve as a distinguishing feature, be it only because said process defined in claim 1 does not contain any feature allowing to derive an industry-scale dimension. The absence of the industry-scale character cannot be interpreted into the claim by reference to the description, as the [patent proprietor] has requested by referring to A 69. In view of this conclusion the question of whether an industry-scale process would result in structural features of the product obtained therein allowing to distinguish [this product from a product] obtained in an analytical process comprising the same process steps, may remain unanswered.

As far as the starting material is concerned, the Board comes to the conclusion that the starting material “Cannabis sativa L., of the fibre type” defined in the main request is not different from the marihuana used in document D3. As stated in the impugned decision […] marihuana, in contrast to hashish, also designates dried plant material. The [patent proprietor] bases the difference between the plant material used in the impugned patent and the marihuana used in document D3 on the expression “fibre type”, which, in contrast to marihuana, was characterised by a reduced Δ⁹-THC content. However, as can be seen in the original application […], the expression “hemp of the fibre type” and its synonym “industrial hemp” are defined differently in different countries. In Germany, the upper limit of industrial hemp is fixed at 0.3% Δ⁹-THC, whereas in Switzerland the upper limit is 0.5%. Consequently, the Board comes to the conclusion that the expressions “hemp of the fibre type” or “industrial hemp” are not clearly defined expressions for the skilled person and cannot constitute distinguishing features for the starting material but only represent its intended use.

Thus document D3 discloses a starting material that is identical to [the starting material of] the claimed subject-matter and an identical extraction process.

It remains to be discussed whether the feature “and in that it contains at least reduced proportions of monoterpene and sesquiterpene hydrocarbons, alkaloids, flavonoids, and chlorophylls” of claim 7 can establish novelty over document D3, which, as was correctly stated in the impugned decision, does not make any statements on the exact composition of the extracts. However, as the Board has already suggested in the annex to the summons to oral proceedings […] this feature is not suitable for establishing novelty over document D3 because there is no reference value and, therefore, because it is completely unclear with respect to which reference product these contents are reduced. In the absence of a reference value this feature can also mean that the parts of said substances are relatively small in comparison to the amount of the extracted main component, Δ⁹-THC, which certainly is the case for the extraction product disclosed in document D3, too.

Thus the Board arrives at the conclusion that the subject-matter of claim 7 of the present main request is not novel over document D3. Thus the requirements of A 54 are not fulfilled.

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T 59/10 - General Practice

Whether an amendment consisting in a simple combination of claims as granted can be objected to for lack of clarity is a controversial issue; there have been somewhat contradictory decisions on that matter. The present decision tries to shed some light.

*** Translation of the French original ***

[3.4] As far as the clarity of claim 1 is concerned, according to the established case law of the Boards of appeal (see e.g. T 381/02 [2]) the Board can only examine an objection based on A 84 in so far as the objection concerns amendments with respect to the patent as granted. In this context a claim is not considered to have been “amended” when it results from a granted claim that is completed using features of other granted claims without exceeding the scope of the granted version resulting from the interdependence of the granted claims. Accordingly, claim 1 of the present request cannot be considered to have been amended because it corresponds to a combination of claims 1 to 4 and 7 as granted and its subject-matter corresponds exactly to the subject-matter of claim 7 as granted. As a consequence, the Board cannot examine the clarity of the claims.

[3.5] The [opponents] have pointed out that decisions T 1459/05 and T 656/07 did not follow the previous development of the case law and, therefore, required clarity to be examined in the present case.

[3.6] The Board notes that in case T 656/07 the lack of clarity resulted at least in part from amendments made after the grant of the patent. The Board had considered that it was possible to raise an objection of lack of clarity in the opposition proceedings because it resulted from amendments that had been made in the course of these proceedings, although the contested feature as such had already been present in the claims as granted, but in a different combination (point [2.2] of the decision). Therefore, this decision is in line with the established case law.

[3.7] In case T 1459/05 [4.3.5] the Board had found it necessary to exercise its discretionary power and to leave aside, exceptionally, the general practice that prohibits examination of compliance with A 84 when the amendments consist in combination of claims as granted. In particular, it was exceptionally possible to examine the clarity of a claim in view of a particular feature  contained in one of the combined claims if the amendment made the assessment of the text of the patent as amended – e.g. in respect of novelty and inventive step under A 100(a) – more difficult or even impossible (impracticable).

However, the present Board notes that it is not the “general practice” that prohibits an examination of compliance with A 84 but that [it is because] A 84 does not constitute a ground for opposition within the meaning of A 100 [that such examination is not possible].

Moreover, the present situation is not such that it would not be possible to examine novelty or inventive step […]. Therefore, it is not necessary to analyse this decision in further detail.

[3.8] Consequently, it is not within the powers of the Board to verify whether the requirements of clarity enshrined in A 84 are complied with in the present case.

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T 433/08

The present decision reminds us that even if the first instance has committed a substantial procedural violation, this does not mean that the appeal fee will be reimbursed.

Both the patent proprietor and the opponent had filed an appeal after the Opposition Division (OD) had maintained the patent in amended form.

When the auxiliary request was examined, the opponent pointed out that the request was not inventive over document D2. The OD referred to document E2, which had already been cited in the examination proceedings, and decided to use it as the closest prior art rather than D2. It finally found the auxiliary request to be inventive over E2.

[14.1] According to R 103(1)a), “the appeal fee shall be reimbursed … where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation” (emphasis added).

[14.2] In the reasons given in the decision under appeal, the OD relied on document E2, which document had not been referred to at all in the course of the opposition proceedings before the issuance of the decision to maintain the patent in amended form.

[14.3] This course of action is in breach of the requirements of A 113(1), which stipulates that “decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments”.

[14.4] It was common ground between the parties that a procedural error had occurred. They had, however, diverging views as to the equitability of a remittal and/or reimbursement considering the particular circumstances of the case.

[14.5] Concerning the given circumstances, the board notes on the one hand that although document E2 had been cited as relevant prior art in the substantive examination of the case, the opponent chose not to invoke it in the opposition proceedings. However, even though it could thus be assumed that the opponent considered this document to be less relevant than the other documents which it relied upon, this does not in itself empower the OD to use as a basis for the decision a document not having been referred to at all in the opposition proceedings.

[14.6] On the other hand, the OD considered document E2 to be the closer prior art, and hence to be more relevant for the assessment of inventive step and for a potential denial of inventiveness, than those cited by the opponent. The OD would not have reached a decision more favourable to the opponent (and less favourable to the patent proprietor) if it had not taken into account document E2. Thus, the OD did not act to the detriment of the opponent […]. Such detriment was not even asserted by [the opponent]. Indeed, with its letter setting out the grounds of appeal, [the opponent] submitted document E2/E2’ of its own volition as advantageously supporting its request to revoke the patent in suit as a whole.

[14.7] Moreover, it is to be noted that the board, in the present decision, (also) considered that an inventive step attack based on a combination of document D2/D2bis as closest prior art with document D1bis could not succeed […], contrary to the arguments of [the opponent] brought forward in the opposition proceedings.

[14.8] Under these circumstances, the board concludes that by this course of action the rights of [the opponent] were not curtailed to an extent that would make the reimbursement of its appeal fee equitable by reason of a substantial procedural violation.

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T 2097/10 – React!

This is an appeal against the revocation of the opposed patent by the Opposition Division (OD).

Among other things, the patent proprietor complained that it had been deprived of the possibility to file further requests.

The Board did not see things that way:

*** Translation of the German original ***

[2.4] The [patent proprietor] further criticised that the OD had terminated the proceedings although [the patent proprietor] had announced that it intended to file amended claims.

However, [… the OD] can only decide on the admissibility of requests that have actually been filed; it cannot decide on requests the filing of which was announced.

The [patent proprietor] admitted that it had announced further auxiliary requests but had not filed them.

When the OD interrupts the proceedings in order to examine whether it can reach a decision, the parties have to expect that there will be a decision on the requests on file and that, depending on those requests, this decision may be final and, therefore, lead to the proceedings being terminated.

Moreover, the OD would not respect the principle of impartiality – which governs the opposition proceedings, which are inter partes proceedings of a contentious nature – if it offered a party a further opportunity to file requests after it had dealt with all the requests of the party.

If the OD had invited the patent proprietor to file amended requests after it had discussed [the requests on file] and found them to lack inventive step, this would have been tantamount to favouring one of the parties and would have constituted a clear procedural violation.

The [patent proprietor] has submitted that the OD had announced in advance that it would only admit one single auxiliary request. However, this could not hinder the [patent proprietor] from filing another auxiliary request and, therefore, obtaining an appealable decision on the admissibility of this further request.

[2.5] The Board acknowledges that the course of the oral proceedings cannot be considered to have been absolutely fortunate (uneingeschränkt glücklich), but not to the point that the OD could be said to have committed a substantial procedural violation within the meaning of R 103(1)(a).

Thus the request for reimbursement of the appeal fee cannot be granted either.

The Board would like to point out that it would have been desirable to provide more detailed reasons for the impugned decision and in particular, why documents D18 and D19 were found to be relevant and introduced into the proceedings.

Moreover, as inventive step was also questioned along a new line of argument (Angriffsline) (starting from D7), the OD could have been expected to ask the patent proprietor whether, in view of this new factual situation, it wanted to file the announced amendments before the discussion of inventive step. That this has not happened is regrettable but not fundamentally wrong (grundsätzlich fehlerhaft).

In the end it is the parties that bear the responsibility for reacting to a changed factual situation by filing appropriate requests in due time. They cannot transfer this responsibility to the OD by adopting a wait-and-see attitude.

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T 132/09 – Not The Same

It is well known that the EPO is quite strict when assessing whether amended claims contain “new matter” (A 123). It is not always well understood that the very same approach applies when it comes to the validity of the priority claim. As a matter of fact, the case law uses the same criterion (“directly and unambiguously”) for amendments (A 123), divisional applications (A 76), novelty (A 54) and priority (A 87). It’s really all of one piece.

The present appeal was filed after the Opposition had revoked the patent under consideration for lack of novelty over some A 54(3) prior art. Unsurprisingly, the validity of the priority claim was discussed in the appeal proceedings.

Claim 1 of the main request before the Board read:

Process for the epoxidation of olefins by

i) reacting an olefin with hydrogen peroxide in the presence of an epoxidation catalyst and an alcoholic solvent, whereby hydrogen peroxide is employed as an aqueous solution containing 10 to 70 wt.-% of hydrogen peroxide or as an alcoholic solution prepared by reaction of hydrogen and oxygen in the presence of a noble metal catalyst and the alcohol;

ii) separating product olefin oxide and unreacted olefin from the reaction product of step i);

iii) recovering a stream comprising the alcoholic solvent,

characterized by

iv) subjecting the recovered stream of step iii) to hydrogenation,

whereby the olefin is propene and propene is used mixed with propane.

The Board found the priority claim to be invalid, for the following reasons:

[2.1] Claim 1 of the main request relates to a process for the epoxidation of olefins comprising steps i) to iv). In step i), an olefin is reacted with hydrogen peroxide in the presence of an epoxidation catalyst and an alcoholic solvent, and, in step ii), olefin oxide and unreacted olefin are separated from the reaction product of step i). According to the feature introduced at the end of claim 1, “the olefin is propene and propene is used mixed with propane” […].

The standard to be applied in deciding whether the claimed priority date is to be acknowledged is whether this subject-matter is directly and unambiguously derivable from the priority document D28 as a whole (see decision G 2/98 [headnote]).

In the claims of priority document D28, the term “propane” only appears in claim 13.

However, in this claim, specific percentages by weight of this component are defined for the product stream and the overhead product obtained from steps i) and ii), respectively. Moreover, claim 13 is dependent on claim 12, which relates to a specific epoxidation reaction wherein “the catalyst is a titanium silicalite and the solvent is methanol”. Hence, this very specific disclosure cannot provide a basis for the much more general subject-matter claimed in claim 1 of the main request.

As regards the content of the description of priority document D28, it is disclosed on page 6, lines 7 to 11, that propene is the preferred olefin to be used in the epoxidation reaction. Further down on the same page, it is specified that “propene may be used mixed with propane in an amount of between 0 and 10 vol.% of propane” (page 6, lines 28, 29; emphasis added). Thus, the propene feed is defined as optionally containing propane, but only in a maximum amount of 10 percent by volume. This passage cannot therefore provide a direct and unambiguous basis for the use mixtures of propene and propane without any limitation as to the relative amounts thereof.

The appellants referred to page 12, lines 11 to 18, and page 16, lines 20 to 24, as providing a basis for a general disclosure of the use of propene mixed with propane in the reaction of step i), without limitation on the amount of propane.

The cited passage on page 12 is embedded in a section starting on page 11, line 4 and ending on page 12, line 24, relating to “one embodiment of the present invention” in which “the reaction mixture is separated in a pre-evaporator into an overhead product containing propene, possibly propane, propene oxide and solvent, and into a bottom product ...” (page 11, lines 4 to 7). Thus, this embodiment illustrates specific means for working up the reaction product of step i), and cannot therefore provide a basis for introducing a definition as to the composition of the olefin to be used in the general context of the epoxidation reaction. Indeed, as an “embodiment of the present invention”, the cited passage must be read in the context of the previous section of the description relating to the epoxidation step i) (see page 6, line 7 to page 8, line 9). Here, the amount of propane that may be present in the propene feed is clearly restricted to 10 volume, as explained in the previous paragraph.

Similarly, the cited passage on page 16, lines 20 to 24, is embedded in the section of document D28 relating to specific examples (see page 15, line 16 to page 18, line 16). On page 16, line 4, there is a reference to “a propene feed”, but it is not specified that this contains propane. However, the overhead product, separated in the pre-evaporation stage, contains propane (page 16, lines 15 to 17), and an uncondensed portion of this stream containing propane is returned to the epoxidation reaction (page 16, lines 22 to 24). It can therefore be concluded that the propene feed used in the examples must contain some propane, but it is not specified how much. This is not equivalent to a direct and unambiguous disclosure that unlimited amounts of propane may be present in the propene feed, particularly not in the context of a more general disclosure as now claimed.

For these reasons, the board concludes that the subject-matter of claim 1 of the main request is not entitled to the priority date of 2 May 2002, but only to the filing date of 29 April 2003 […].

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T 234/09 – More Round Figures

In last Friday’s post we have seen Board 3.3.05 make some interesting statements on novelty and rounded values. It had already done so a few months earlier, as the present decision shows.

Claim 1 of the main request before the Board read:

In what follows, the Board discusses the novelty of this claim.

*** Translation of the French original ***

[4.1] Document D2 (cf. claim 3) discloses the preparation of bio-soluble mineral wools. In particular, example 3 of this document discloses the preparation of a mineral wool having the following composition (percentage by weight):

[4.2] According to the [patent proprietor] this mineral wool differs from the claimed mineral wool by its Mg0 content (5.2%), which is greater than the maximum MgO value defined in claim 1, i.e. greater than 5%. [The patent proprietor] has not pointed out any further differences.

[4.3] The Board does not share the opinion of the [patent proprietor], for the following reasons:

[4.3.1] First it has to be noted that both in the claims under consideration and the claims as granted the composition of the fibres is defined by means of numerical ranges of % by weight of the components. It has not been contested that these compositions can easily be defined more precisely, as can be seen, for instance, in the analysis results given in Tables 1 and 2 of the patent. This notwithstanding, the patent proprietor has chosen to express most boundaries of said ranges by integers. However, some of said boundaries are expressed as decimal numbers with one decimal place (see claims 2 to 4 under consideration), even in cases where the figure after the decimal point is equal to 0. Therefore, within the context of the claims, the [patent proprietor] expressly distinguishes integers “N” and decimal numbers “N.0”.

[4.3.2] In view of what has been said above, the Board considers that in the context of the patent under consideration the skilled person would understand that the integers defining the boundaries of the numerical ranges of claim 1 are not to be understood as integers as defined in mathematics (i.e. numbers that could be expressed as decimal numbers N.000) as the [patent proprietor] has asserted. Otherwise, the boundaries of the ranges of claim 1 would all have been expressed in the form “N.0”.

Thus, quite to the contrary, said integers are to be considered as boundaries that have deliberately been expressed with a precision that is reduced with respect to the decimal numbers mentioned in the patent. Consequently, said numbers also cover the decimal values resulting in said integers when applying the rules of rounding.

[4.3.3] An analogous approach has been applied by the Boards in similar cases, such as T 1186/05 [3.6.5-6]. In contrast to the particular circumstances of the case under consideration, two of the decisions cited by the [patent proprietor] concern situations where there was no particular reason to round values that had only been disclosed implicitly in the prior art (T 646/05 [4.1]; T 74/98 [3.1-2]). The reasons for decision T 820/04 do not provide any explanation why a number expressing a percentage (0.1% and 70%) in a claim should always, irrespective of the context, have to be understood as corresponding to the precise value having additional zeros after the decimal point (such as 0.1000…% and 70.000…%).

[4.3.4] Based on the considerations set out above, the Board concludes that the weight percentage of 5.2% for MgO given in example 3 of document D3, when rounded in order to be compared, cannot be distinguished from the upper limit of 5% defined for MgO in claim 1.

[4.4] In other words, said example 3 discloses a mineral wool having all the features of claim 1. Thus the subject-matter of claim 1 is not novel (A 52(1) and A 54(1)(2)).

[4.5] Consequently, the main request is refused.

The patent proprietor also presented auxiliary requests.

Claim 9 of the second auxiliary request read:

The Board found this claim to lack clarity:

[8.1] Compared to claim 1 as granted (requiring 10-17% of R₂0 (Na₂O+K₂0), independent product claim 9 under consideration differs by the more limited range of 10-13% for the R₂0 content. In view of the fact that this feature was not among the features of the claims as granted, the amendment consisting in its introduction into independent claim 9 has to comply with the requirements of A 84 (cf. G 9/91 [19]).

[8.2] Now the three conditions “Na₂O 0-15 %”, “K₂O 0-15 %” et “R₂O (Na₂O+K₂O) 10-13 %” are clearly incompatible as far as the maximum values of Na₂O and K₂O are concerned. Said contradictory indications generate an ambiguity and, consequently, a lack of clarity regarding the scope of protection conferred by this claim.

[8.3] The [patent proprietor] has submitted that the skilled person would not have any problem understanding that all three conditions have to be complied with simultaneously and that, as a consequence, it was perfectly clear that neither the Na₂O nor the K₂O content could exceed 13%.

[8.4] The Board cannot accept this argument because when reading the claims, the skilled person is not capable of understanding that the condition “R₂O (Na₂O+K₂O) 10-13 %” prevails over the two preceding conditions, i.e. “Na₂O 0-15 %”, “K₂O 0-15 %”. The skilled person could also understand that the claim covers compositions comprising, for instance, 15% of Na₂O and that the upper limit of the range “10-13 %” was erroneous and should de facto read 15%.

[8.5] The amendment of the range of values concerning the R₂O content generates an ambiguity resulting in a lack of clarity of claim 9. The claim, therefore, does not comply with the requirements of A 84.

[8.6] Consequently, auxiliary request 2 is refused.

Well, that is tough on the patent proprietor.

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Interpretational Spotlight: Completely Encasing

When dealing with this appeal (against the revocation of the opposed patent), the Board had to examine whether claim 1 of the main request

A pipeline pig for scraping a build-up from the interior surface of a pipeline, the pipeline pig comprising a bi-directional body (20) having blunt, hemispherical front and rear noses (41, 42) and a cylindrical middle portion (43) extending between said front and rear noses (41, 42) providing surface area for sealing against the interior surface of a pipeline, and a plurality of studs (80) on said surface, thereby forming an abrasive surface for scraping the build-up from the interior surface of a pipe, characterised in that the bidirectional body (20) comprises (a) an elongatable and compressible core (60), formed from a material which tends to elongate and narrow as the pig moves through bends, curves, corners and areas of heavy buildup, said material being a mixture of resin and isocyanate; and (b) an external cover (40) made of heat-treated urethane completely encasing the compressible and elongatable core, said studs (80) being carried by the external cover (40). (my emphasis)

and in particular the feature “completely encasing” was directly and unambiguously disclosed in the application as filed.

[2] Claim 1 of the main request contains the feature “completely encasing” […] which is considered not to be derivable in a clear and unambiguous manner from the description, the claims and the drawings of the application as originally filed (corresponding to D1).

[2.1] The feature “an external cover (40), encasing the elongatable core (60)” originally comprised in claim 2 of D1 had been amended during the examination of the application for the patent in suit to the present term “an external cover (40) … completely encasing the compressible and elongatable core” of claim 1 of the present main request, which in this respect corresponds to claim 1 of the patent as granted.

[2.1.1] At the oral proceedings (OPs) before the Opposition Division (OD) the representative of the patent proprietor stated that the term “completely” had been added during the examination proceedings in order to distinguish the claimed subject-matter over the prior art D2. He further admitted that there might probably be a difference in the meaning of the terms “completely encasing” and “encasing” but argued that there would be a basis for both terms […].

At the OPs before the Board the [patent proprietor] for the first time in the proceedings argued that the two terms – due to the interpretation now based on three web-based dictionaries (namely Cambridge on-line, the Macmillan dictionary and the Collins dictionary), so that the term “encase” means “to cover or surround something or someone completely”, “to completely cover or enclose something” and “to place or enclose in or as if in a case”, respectively – actually have the same meaning, so that the added term “completely” would not add matter.

The Board cannot accept these arguments for the following reasons:

[2.1.2] First of all, where the claims are concerned the wording is used in particular to define the subject-matter for which protection is sought. Generally each single word of a claim has a specific meaning and is carefully and purposively selected to define the subject-matter defined therein.

Therefore it cannot be accepted that the addition of the term “completely” to the originally disclosed term “encasing” during the examination proceedings has in fact no meaning or does not alter the meaning of “encasing”. The IPER on this application contained an inventive step argument against claim 1 using D2 for the feature of “encasing the core”. On entry into the regional phase before the EPO claim 1 was amended as now discussed. The Board can see this amendment only as having been made with the intention to further delimit the claimed subject-matter over the prior art D2, as was also admitted in the opposition proceedings.

In this context the Board remarks that the quoted prior art D2 discloses a pipeline pig having a core with a plurality of studs being anchored in said core and further having a cover coated over said core through which said studs are protruding (see e.g. figures 1-4). Hence the core according to D2 is encased by a cover 20 but – due to the openings left in the cover (figure 1), which show the underlying core, and the mention in the description […] that the cover is not totally inclusive of the core – is not completely encased by the cover.

[2.1.3] Secondly, considering all four dictionaries and their definitions of the term “encase”, in particular that of D9 […], it is clear that the term “encase” does not necessarily mean to totally envelop something since any case, cover or mantle can contain holes serving a specific purpose e.g. for mounting switches or simply to allow cooling by an improved air exchange (for example a PC is encased by a cover having cooling holes and several switches and plug-in connectors).

[2.1.4] Therefore the addition of the term “completely” to the term “encasing” cannot be simply disregarded as the [patent proprietor] wishes the Board to do; it provides a difference over the originally disclosed term […], as admitted by the [patent proprietor] at the OPs during the opposition procedure.

[2.2] However, as conceded by the [patent proprietor] in its grounds of appeal, this feature is nowhere explicitly disclosed in D1, neither in the description nor the claims or drawings.

[2.2.1] The drawings of D1, in particular figures 1 and 2, do not provide a clear and unambiguous basis for this amendment since they – although the claimed pipeline pig represents a simple structure comprising three components: the core, the cover and the studs – are schematic, contrary to the [patent proprietor’s] arguments.

According to D1 “Fig. 1 is a side orthographic view of a pipe pig constructed in accordance with the principles of the invention, having the core shown in dotted outline” while “Fig. 2 is a cross-sectional view of the pipe pig of Fig.1, taken about the 2-2 lines” […] and “Figure 2 illustrates in cross-section the relationship of the cover 40 to the studs and the core 60” […]. These “principles of invention” as derivable from the description of D1 […] must not necessarily show all details of the desired pipeline pig in accordance with D1. For example, according to the described method of manufacturing the cover is of uniform thickness […], which is clearly not the case for the pig depicted in figure 1. It is further remarked that the wording “comprising” of claims 1 and 5 as originally filed does not exclude any holes or wire rods (= pins) being present in the cover and although certain preferred versions of the pig are described in D1 “other versions are possible” […].

Furthermore, at the OPs the [patent proprietor] admitted that the cross-section of figure 2 of D1 need not necessarily show any pins or holes. These can be present in other cross-sections of the pig.

[2.2.2] As correctly argued by the OD in the impugned decision, the fact that these figures do not show any openings or holes (i.e. in addition to the holes drilled for the studs) in the external cover 40 does not necessarily mean that there are no such openings.

According to the established jurisprudence a figure which served only to give a schematic explanation of the principle of the subject-matter of the patent (the same holds true with respect to figures 1 and 2 of D1, compare point [2.2.1] above), but not to represent it in every detail, does not allow the definite conclusion to be drawn that what is disclosed purposively excludes any feature not represented (see Case Law, 6^th edition 2010, section III.A.5; see T 170/87 [6]).

[2.2.3] From the description of D1 it is also neither apparent nor plausible that the cover should not contain any holes, e.g. resulting from the manufacturing process of the pig, which were alleged by the [patent proprietor] to deteriorate the cleaning properties of the claimed pipeline pig, since it is essentially the cylindrical portion of the pig cover and the plurality of studs mounted therein which are responsible for cleaning the internal surface of pipes […]. These arguments cannot be accepted since the [patent proprietor], although this deficiency was remarked in the Board’s communication annexed to the summons to OPs […], did not file any evidence supporting this allegation.

[2.2.4] In this context also the manufacturing method for producing a preferred version of the pipeline pig with an external cover made with urethane (more specifically Vibrathane 8083), which is described in D1 in the context of figure 2, has to be considered. According to this process there are wire rods supporting the core in the mould when the urethane is poured into it, to achieve a uniform thickness of the external cover. Thereafter the urethane is heated to a temperature of 250º, the pig is demoulded and then placed in a curing oven for approximately 2 hours […]. Thereafter a plurality of holes is drilled in the cover and the pig is heated again to 250º and studs are inserted in these holes with an air gun […].

The use of these wire rods is considered to be essential for centering the core within the mould and therefore in the (cured) urethane cover of the pig.

According to Mr Boase the specified temperature of “250º” has to be interpreted as “250 ºF” […] and thus corresponds to “121.1ºC”. This value perfectly fits with the curing temperature of 100ºC (212ºF) for the urethane VibrathaneR 8083 mentioned in the description and in the respective technical information sheet D11 […], sent to the parties by the Board with its communication annexed to the summons.

It was uncontested by both parties that there is a gradual curing of the pig cover. The curing starts immediately when mixing the urethane with the curing agent (D1 is silent with respect to the addition of a curing agent). According to D11 the typical pot life after starting this mixing is 5-6 minutes […], i.e. the time within which the urethane/curing agent mixture has to be poured into the mould. The progress of the curing reaction is then greatly influenced by the applied curing temperature and the elapsed time.

D1 is silent with respect to the time necessary for reaching said temperature of 250ºF of the mould and also with respect to the question whether the mould is horizontally or vertically arranged. It is uncontested that the resulting pig cover in any case must have a sufficient green strength of the applied urethane coating, to be demoulded and to be self-supporting. This fact excludes, in the Board’s view, that the urethane can be still fluid since in that case the demoulded pig with its partly cured urethane cover would lose its shape when placed in the curing oven without its supporting mould for the mentioned “about 2 hours”, so would not obtain a cover having a uniform thickness of the cured urethane.

The same conclusion is, however, considered to be fully valid for any holes produced by the supporting wire rods (also designated as “pins” by the parties) in the cover during the moulding step – if these wire rods are at all removed at this stage (D1 is silent about any removal). Since wire rods are made of metal (which by definition is an excellent thermal conductor) they will provide a good heat transfer along their surface to the interior of the urethane cover so that it is not credible that the urethane surrounding the hole can still be sufficiently fluid after removing the rods in said demoulding step, so as to fill it. The [patent proprietor’s] arguments to the contrary thus cannot be accepted. Consequently, any hole produced by the wire rods in the cover would extend through the thickness of the external cover.

If on the other hand said supporting wires would not be removed with or after said demoulding step, but would remain in said pig during said final “curing” step in the curing oven then there will in any case be holes in said external cover when the pins are removed only afterwards, or they will remain in the cover.

Therefore it is clear from the production method as described in D1 that the external cover cannot “completely” encase the core as required by claim 1 of the main request.

[2.2.5] The [patent proprietor’s] further arguments cannot hold for the following reasons.

Firstly, the description of D1 clearly mentions wire rods (or pins) in the process for making a pig with a cover having a uniform thickness so that the person skilled in the art need ask himself only how he should proceed with these wire rods since D1 is totally silent in this respect. Should they be removed or not from the produced pig and at which stage during the manufacturing process of the pig should they be removed from the pig and/or mould. Furthermore, as already remarked, the drawings are schematic only and do not necessarily show details, such as the wire rods, which as such are not considered to be important for the simple pig structure comprising the core, the cover and the studs being mounted in the drilled holes.

Furthermore, as remarked by the Board at the OPs, it would also be possible to use wire rods located at diametrically opposed locations in the length direction of the core, e.g. being separated from one another by about 90º, which have a length to just abut the inside of the mould and which therefore do not need to extend through the wall of the mould and consequently do not need to be removed during the demoulding step.

Secondly, all arguments based on the witness statement of Mr Boase or on the video or exhibits A1 to A3 are considered not to be relevant since the process discussed and shown therein is not identical with that described in D1 (see point [2.2.4] above) as it differs considerably from it since four diametrically opposed wire rods extending through the wall of a vertically arranged mould are used for centering the core in the mould. Further, no demoulding step takes place when the wire rods are removed after a first heating step, i.e. the complete curing of the urethane takes place in said mould for an unspecified curing time and at an unspecified curing temperature. Furthermore, the studs are already placed in said mould and enclosed in the urethane.

[2.2.6] Consequently, claim 1 of the main request extends beyond the content of the application as originally filed and thereby contravenes A 123(2). The main request is therefore not allowable.

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