Monday, 22 October 2012

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.

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

The file wrapper can be found here.


Anonymous said...

I understand from the 2 decisions of the Board 3.3.5 that on one hand 3.39 is not less than 3.4, but that on the other hand 5.2 is equal to or less than 5.

pat-agoni-a said...

With respect to the auxiliary request:
The two conditions Na2O and K2O between 0-15% delimit a square with corners at (0,0) (0,15) (15,0) and (15,15).
The condition R2O between 10-13% delimits a diagonal band within the two lines (10,0) - (0,10) and (13,0) - (0,13).
The intersection between both areas is that of the diagonal band. There is thus a redundancy, but no lack of clarity. In fact the conditions for Na2O and K2O are superfluous, but I can understand that the proprietor maintained them in the claim for fear of an, in my view unjustified, A 123(3) objection.

Anonymous said...


It seems from the file that the patent proprietor suggested to delete the Na2O and K2O to remove the redundancy. I suppose that it was not allowed to do so during the oral proceedings