Tuesday, 1 January 2013

T 1407/09 – Multiple Choice

A new year calls for a novelty decision.

Both the patent proprietor and the opponent filed an appeal against the maintenance of the opposed patent in amended form.

The Board found the main request and the first auxiliary request to lack novelty.

In what follows, it examines the novelty of the second auxiliary request, claim 1 of which read:
A biologically-degradable or bio-soluble glass fiber composition, characterized in that it comprises the following components expressed in percent by weight:
  • SiO2: 61 to 66;
  • Al2O3: 1.1 to 1.8;
  • (CaO + MgO): higher than 9;
  • CaO: 6 to 9;
  • MgO: 0 to 5;
  • Na2O: higher than 17.5 to 18.50;
  • K2O: 0.6 to 1;
  • B2O3: 5 to 15;
  • P2O5: 0 to 5;
  • SO3: 0 to 1;
  • Fe2O3: 0 to 0.5;
  • Others: less than 2.
The Board found this claim to be novel:

[4.3.1] The commercial glass fiber “Fibralene PV 200”, for which prior use has been acknowledged above, does not anticipate the subject-matter of claim 1 of this request because its K2O content (0.37%) as disclosed in document B1 is lower than the one claimed (0.6 to 1 wt.%).

[4.3.2] Document A1 is state of the art under A 54(3). Irrespective of whether its priority is valid or not, in particular as regards its claim 3 and Example C6, in the board’s view it does not anticipate the subject-matter of claim 1 of this request.

The glass fibers according to Example C6 have a lower K2O content (0.47%) and a higher Al2O3 content (1.85%) than those defined in the claimed subject-matter.

The glass fibers according to claim 3 also do not anticipate claim 1 at issue because, apart from their B2O3 and MgO content which fall within the corresponding ranges in claim 1 at issue, the ranges of values for the other glass constituents defined in claim 3 (namely SiO2 62-68; Al2O3 1.5-2.5; Na2O > 17; K2O 0-3; CaO 5-8) overlap with the corresponding ranges in claim 1 at issue. There is however no disclosure in A1, including its examples, of the five selections to be made in order to fall directly and ambiguously within the particular ranges defined in claim 1 of auxiliary request 2 at issue.

The board agrees with [the opponent] that the disclosure of a document is not restricted to its examples.

However, in the present case, even if – as argued by [the opponent] – the skilled person would seriously contemplate values which are close to those defined in example C6 and which simultaneously fall within the ranges of values defined in claim 3, there is still a multiple choice to be performed to arrive at the wording of claim 1 at issue:
  • the first choice concerns K2O and whether the value to be chosen is lower or higher than the one (0.47%) in example C6;
  • the second choice concerns Al2O3 and whether the value to be chosen is higher or lower than the one (1.85%) in example C6.
Only the choice of a lower value for Al2O3 and a higher value for K2O would lead to subject-matter falling within the terms of claim 1 at issue; each of the other three choices necessary would lead outside the claimed subject-matter. However, document A1 gives the skilled person no information about how these choices are to be done, and it is constant case law that, if more than one choice has to be made in order to arrive at the subject-matter claimed, novelty has to be acknowledged.

[4.3.3] In the board’s view, document A2, state of the art under A 54(2), also does not anticipate the subject-matter of claim 1 at issue. The specific glass fibers exemplified in A2 are distinguished from the claimed subject-matter by three or more differentiating features. The sole fiber which is distinguished therefrom by only two differences is the one according to Example 7B.

If, as argued by [the opponent], the skilled person would take into consideration the entire disclosure of document A2 and in particular seriously contemplate the broader glass composition disclosed at page 9, lines 20 to 29 – i.e. the glass composition B – reproduced hereinafter:
  • SiO2: 55 to 65%; preferably 58 to 62%
  • Al2O3: 0 to 3%; preferably 1 to 2.5%
  • CaO: 6 to 10%; preferably 7 to 9%
  • MgO: 0 to 5%; preferably 1 to 4.5%
  • Na2O: 15 to 22%; preferably 16 to 20%
  • K2O: 0 to 3%; preferably 1 to 2.5%
  • B2O3: 3 to 10%; preferably 4 to 8%
  • P2O5: 0 to 3%,
he would have to make multiple choices to arrive directly and unambiguously within the terms of claim 1 of this request. For similar considerations as in point [4.3.2] above, claim 1 of this request is therefore novel over A2.

[4.3.4] The board is satisfied that the subject-matter of claim 1 at issue is also novel over the content of the documents in the proceedings.

[4.3.5] It follows from the above that claim 1, and claims 2 to 6 which depend thereon, meet the requirements of A 54(1), (2) and (3).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

Let me wish you a happy new year!


MaxDrei said...

Can we talk about the novelty of the claimed subject matter over the disclosure of A1, with particular reference to signpost Example C6? The claimed range of Al2O3 goes up to the value "1.8", that is, just one significant figure after the decimal point. So the real range runs up to "1.85". C6 specifies 1.85. No gap there then.

As to K2O, the bottom end of the claimed range is "0.6", that is,"0.55". C6 specifies "0.47" but note that claim 3 of A1 allows K2O to be anywhere between zero and 3. Thus, the ONLY difference that confers novelty over C6 is a gap of 0.08% in the zero to 3% weight range of K2O. Is this really enough of a difference to confer novelty? What about all those alloy cases which remind us that weight percentage compositions are nominal rather than exact. How likely is it, in the real world, that the person seeking to reproduce the teaching of A1, and seriously contemplating in particular its Example C6, will feel obliged to stay absolutely within 0.08% of each and every one of the values given in C6?

You will gather that I'm not convinced there is novelty over A1.

Anonymous said...

And where would you suggest would be the limit for novelty? How much of a difference would be enough? Is one going to judge novelty by probability? Please keep it simple: stick to the normally applied principle that any difference gives novelty. If that difference is enough to give also inventive step is then the next question. Since often there is no effect shown for the small difference, the problem solved would be a further composition which in the light of the prior art would be within the normal application of that particular document.

MaxDrei said...

Thanks for that answer. With Art 54(3) and novelty of selection, we can't be fuzzy on Art 54 because Art 56 is not available to sweep up any mess.

Selection rules involve asking how close the edge of the claim is, to any of the 54(3) worked Examples. Crikey, many suppose that what is "disclosed" in a prior art reference is everything within the ambit of the claim of the prior doc. All I'm saying is that something within a whisker of a worked Example is something the reader of the art would seriously contemplate (and even practise, if he were faithfully to carry out the instructions given in the 54(3) reference). The notion that all that the 54(3) ref makes available to its readers is its exact worked Example and nothing else strikes me as unreal.


Anonymous said...

Of course you are right that one cannot use a 54(3) document against inventive step.

But I sense a difference in attitude reagrding 54(2) and 54(3) novelty. Now that would be a very bad thing, in my eyes. There is no support in the EPC at all, nor in established jurisprudence, for applying different standards in answering the question if something is novel over a 54(2) or a 54(3) document.

Also, you seem to confuse "contemplate" with "disclose". If a skilled person would contemplate doing something, is a mattter of inventive step, not novelty. Novelty is about disclosure. Even if a claim encompasses something, which the skilled person might consider doing, it does noet mean that all the possibilities encompassed by a claim are acutally disclosed. It is even possible that if the skilled person finds an unexpected effect by actually doing the thing he contemplated, he might have a selection invention.

So even if the difference with a document is small, it does not destroy novelty. If it cannot be used against inventive step, too bad.

MaxDrei said...

OK anon, but I was alluding to the "seriously contemplate" line of Art 54 jurisprudence. See T666/89 and its progeny, and the Caselaw book 6th Edn 4.2.2 page 129.