Monday, 14 January 2013

T 2120/08 – Too Long

In this examination appeal the Board inter alia had to decide on the clarity of claim 1 of the main request filed during the oral proceedings before the Board, which read:
A process for the manufacture of an endless multifilament aramid or glass yarn provided with a superabsorbent material having a swelling value of at least 60 (as specified in the description) and having hydrophilic properties, which yarn is capable of absorbing and retaining quantities of water and suitable for optical communication cables, wherein an aqueous solution comprising a water-soluble pre-superabsorbent material selected from polymers derived from acrylamide, from acrylamide and sodium acrylate, and from acrylamide and dialkylaminoethylmethacrylate is applied onto the yarn, after which the yarn is dried and heated at 100 to 300°C in order to cross-link the water-soluble pre-superabsorbent material to the superabsorbent material. (my emphasis)
[4] In present Claim 1, the Board’s objection that the term “pre-superabsorbent” lacked a clear definition has been overcome by specifying the kind of material meant (namely, selected from polymers derived from acrylamide, from acrylamide and sodium acrylate, and from acrylamide and dialkylaminoethylmethacrylate).

[4.1] As regards the reference to the description for the meaning of the “swelling value” and the manner according to which it is determined, it aims at clarifying the scope of Claim 1, as this parameter does not have a well-recognized meaning in the art, whilst safeguarding its conciseness. In fact, the description for determination of the swelling value in the application as filed (page 7, line 27, to page 8, line 28) is in the present case too long to be included in Claim 1, so that the repetition of the full description of the method in Claim 1 would result in a lack of conciseness. Hence, the reference “(as specified in the description)” is in the present case absolutely necessary (R 43(6)) (Case Law, 6th edition, 2010, II.B.1.1.2 and 1.1.3, e.g. in connection with T 908/04 or T 1156/01) in order to fulfil both requirements under A 84 that the claim must be clear per se and concise, in particular as regards the definition of the “swelling value”.

4.2 Therefore, Claim 1 of the Main Request fulfils the requirements of A 84.

NB: Not long ago, T 830/08 found another allowable exception to R 43(6).

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