This is an appeal by the patent proprietor against the maintenance of its patent in amended form.
Claim 1 of the patent as granted read:
NB: It is interesting to see that the Examining Division had accepted references to definitions provided in the description.
The discussion of the novelty of this claim by the Board is not without interest:
*** Translation of the German original ***
[3.7] When examining the novelty of the silica according to claim 1 over the product “Zeosil 1165MP” mentioned in the impugned patent, the Opposition Division arrived at the conclusion that the feature “wk coefficient < 3.4” was not a distinguishing feature. The Board does not share this opinion, for the following reasons:
[3.7.1] As far as the precision of the indication “wk < 3.4” is concerned, it has to be noted that claim 1 does not unambiguously require that the value of the wk coefficient necessarily has to be smaller than 3.4000… In view of the fact that the wk value is a calculated ratio of two measured lengths (peak heights), the skilled person would rather assume that this figure having only one decimal place (Nachkommastelle) is a rounded value.
[3.7.2] When assessing whether one particular precipitation silica has this feature or not, this ambiguity of the indication “wk coefficient < 3.4” makes it necessary to consult the description in case of doubt. It turns out that example 8 of the impugned patent, which has been referred to in the opposition proceedings, clearly shows that the value 3.4 for the “Zeosil 1165MP” product, which is listed with one decimal place, corresponds to the peak height ratio B/A = 38.7/11.4, which, in strictly mathematical terms, is equal to 3.3947…, wherein the peak height is measured with a precision of one decimal place (in this respect, see also document D9 together with document D9a, as well as document D16 […]).
[3.7.3] It follows without doubt that the listed value of 3.4 is a value rounded to one decimal place, and not a value obtained by truncation, which the opponent had considered to be another option, in view of document D9a.
[3.7.4] In the opinion of the Board, it follows that the indication “wk coefficient < 3.4” contained in claim 1, when seen in the light of the description, designates a range of values that could also be designated by means of the expression “wk coefficient smaller than or equal to 3.3” wherein only values rounded to one decimal place are to be taken into account. Incidentally, this interpretation is completely in line with the manifest intention of the drafter of the patent to exclude said “silica Zeosil 1165MP”, which was only studied as a reference, from the scope of the claims, and to delimit the claim with respect to this silica, respectively.
[3.8] Therefore, when claim 1 of the impugned patent is interpreted in a technically meaningful way, the product disclosed in the impugned patent under the reference “Zeosil 1165MP” differs from the subject-matter of this claim also because of its wk coefficient of 3.4.
[3.9] In the opinion of the Board, the aspect that product batches are variable does not play any role in this assessment. It is a fact that the sample of the silica “Zeosil 1165MP” examined in the impugned patent does not have a wk coefficient < 3.4.
In the light of what has been said above, it is not relevant either whether a silica having a wk value of exactly 3.4 (i.e. 3.4000…) can be distinguished, from a technical point of view, from a silica having a “nominal” (i.e. unrounded) wk value that is equal to say, 3.39.
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