Monday, 8 October 2012

T 1084/10 – Sound Questions

In this decision the Board addresses the link between A 123(2) and corrections of contradictions in the opposed patent.

Claim 1 of the main request before the Board read, in English translation (the amendments with respect to claim 2 as granted are apparent):
Method for operating a melting furnace, wherein charge materials, fuel and at least one oxidizing agent are fed to a melting zone, the oxidizing agent being injected into the melting zone at supersonic speed (mit Überschallgeschwindigkeit) by means of a plurality of injectors which are arranged at preferably equal angular intervals around the periphery of the melting furnace, and the injection, at least in one process step, being effected by a temporal sequence of flow and rest phases (pulses) of the individual injectors, characterized in that and wherein the ratio of flow and rest phases of the injectors and the number of injectors injecting at ultrasound supersonic speed (mit UltraÜberschall) are varied according to a predetermined program as a function of a predetermined or continuously determined quantity of oxidizing agent that is to be supplied, in such a manner as to achieve a smooth profile of the quantity of oxidizing agent supplied at ultrasoundsupersonic speed and a flow pattern that substantially uniformly covers the melting zone, characterized in that whenever the difference between the maximum power of all the injectors injecting at ultrasound and the total quantity of oxidizing agent to be supplied by ultrasonic injection corresponds to the maximum power of a single injector, the number of injectors injecting at ultrasound is reduced by one, and whenever the quantity of oxidizing agent to be supplied by ultrasonic injection exceeds the maximum power of all the injectors injecting at ultrasound supersonic speed, the number of injectors injecting at ultrasoundsupersonic speed is increased by one, wherein thereafter in each case the quantity of oxidizing agent to be supplied by ultrasonic supersonic injection is distributed uniformly between the injectors that are injecting at ultrasoundsupersonic speed.  

*** Translation of the German original ***

[2.1] During the opposition proceedings the [opponent] had attacked the patent on the ground of insufficiency of disclosure under A 100(b). it had pointed out that claim as granted clearly and unambiguously defined “injectors injecting at ultrasound (Ultraschall)” for melting furnaces but that there were no indications in the description as to how such injectors should be designed. As a consequence, the claimed method for operating a melting furnace could not be carried out with “injectors injecting at ultrasound”.

The Opposition Division (OD) agreed with this assessment. As a consequence, in the course of the oral proceedings (OPs), it found claims 1 to 4 as granted not to be patentable because they did not comply with A 100(b).

In order to overcome this objection, the patent proprietor filed a new main request consisting of amended claims 1 to 4 wherein the term “ultrasound” (Ultraschall) was replaced by “supersonic [speed]” (Überschall). The description was amended accordingly and the OD accepted the amendment. In paragraph 3 of the impugned decision the OD explained why the amendments did not violate A 123(2)(3). In particular, it was immediately recognisable to the skilled reader that the term “ultrasound” had been – incorrectly – used as a synonym for the expression “supersonic [speed]” in the patent and also in the discussion of the prior art. This assessment followed already from the fact that ultrasound was not used for injecting gases into melting furnaces […].

The [opponent] was of the opinion that the amendments should not have been admitted by the OD [because it was not clear that only supersonic speed could have been meant; the use of ultrasound, cited twice in the characterising portion of the claim, could be the very invention ; also, ultrasound injectors were known in the prior art].

[2.2] The Board cannot endorse the point of view of the [opponent], for the following reasons:

Under R 80 the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under A 100. This is undoubtedly the case here. It is clear from the minutes of the OPs before the OD that the amendments of the patent were exclusively occasioned by the ground of insufficient disclosure under A 100(b) and carried out in order to account for and overcome this ground. Therefore, the amendments allowed by the OD are not objectionable in this respect.

Moreover, it has to be examined whether the patent as amended satisfies the the requirements of A 123(2)(3). It is necessary to discluss whether the skilled person, using his common general knowledge, would consider the amended claim to be explicitly or implicitly, as well as directly and unambiguously, disclosed in the original application.

In the present case the skilled person considering the whole content of the patent could only come to the technically meaningful conclusion that the impugned patent used the term “ultrasound” but that only “ultrasonic [speed]” could have been meant. The patent states, in paragraphs [0006], [0011], and [0016] as well as in the preamble of claim 1 as granted that the oxidizing agent is injected into the melting zone at supersonic speed. Ultrasound injection of oxidizing agents is not known in the field of melt metallurgy and does not make any technical sense to the skilled person. Neither the embodiment of paragraph [0016] of the patent nor any other part of the description mentions parts that capable of generating ultrasound. Rather, in the last sentence of paragraph [0002] and in paragraph [0003] as well in said embodiment of paragraph [0016] clearly states that in the claimed method oxygen and fuel gas are injected at supersonic speed by means of injection lances via a Laval nozzle. Therefore, the skilled person – whom the patent addresses – can only come to the conclusion that the patent under consideration uses two contradictory terms and that “ultrasound” has to mean “supersonic [speed]”.

According to the case law of the Boards of appeal of the EPO (see T 190/99) it is possible to amend a granted claim in order to replace an incorrect technical statement, which is manifestly inconsistent with the disclosure of the patent as a whole, by the correct indication of the corresponding technical features. According to that decision, the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense.

In the present case, the technical term “ultrasound”, which was manifestly incorrect, was accordingly replaced by the correct term “supersonic [speed]”. This amendment, which eliminates a manifest contradiction, does not extend the claimed subject-matter beyond the content of the application as filed, nor does it extend the protection conferred by the patent. Thus the amendments are not objectionable under A 123(2)(3) either.

It follows from these considerations that, contrary to the view of the [opponent], the amendments do not qualify as a correction of errors in documents filed with the EPO (R 139) nor as a correction of errors in decisions (R 140).

In view of this, the Board sees no reason to refer the questions presented by the [opponent] regarding the application of R 139 and R 140 to the Enlarged Board of appeal.

NB: The questions which the opponent wanted to have answered by the EBA were:
1. Can linguistic errors, errors of translation and mistakes in the description, claims and drawings of a European patent as granted by the EPO be corrected under R 139, second sentence?

2. If the answer to the first question is affirmative, is such a correction under R 139 admissible even if it does not satisfy the criteria for correction of the decision to grant under R 140?

3. If the answer to the first question is affirmative, can a division of the EPO, other than the division competent to decide on a correction of the decision to grant under R 140, decide on the admissibility of the correction under R 139?

I find this decision stimulating because - if I understand correctly - it insists on the need to distinguish a correction under R 139, which is the result of a request by the applicant, from a corrective amendment in reaction to an objection raised by the opponent.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


Anonymous said...

This was a narrow escape for the patentee, though.
What we can also learn from this case is that it is generally a bad idea to have the patent application drafted in a language (German) different from that of the (French) inventors. Never mind the fact that it is illegal, under French law, to file abroad a first patent application for an invention made in France.