T 748/09 – Gold Governs The Globe

When G 2/10 was issued by the Enlarged Board of appeal (EBA), I was not quite certain whether it was brilliant or trivial, and to be honest, I still do not know for sure. Be that as it may, we now see decisions where G 2/10 appears to overtake G 1/03 - which puzzles your humble servant.

In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The appeal of the opponent was found admissible although it was filed in the wrong name, without an address and a statement explaining to which extent the decision was contested. However, the substantive arguments of the opponent were found not to be persuasive and its appeal was found unallowable.  

The Board then examined the allowability of the appeal of the patent proprietor:

[2.2.1] Claim 2 of the new main request contains the wording “with the proviso that a metal alloy consisting essentially of 50 - 98.9 % Nb, 0.5 - 5 % Zr and 0.6 - 49.5 % Ta is excluded”. The amendment to claim 1 aims at excluding the alloy compositions disclosed in Table 1 of document D1, which represents prior art in the sense of A 54(3). The amendment therefore constitutes the introduction of an “undisclosed disclaimer”.

[2.2.2] In decision G 2/10, the EBA considered that in decision G 1/03 the EBA did not provide an exhaustive treatment of the conditions when an “undisclosed disclaimer” violates A 123(2) and when it does not (G 2/10, page 34, first paragraph). Moreover, the EBA held that the gist of the questions referred to the EBA in cases G 1/03 and G 3/03 (sic) to which the EBA had to give an answer, was to establish whether, and if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite of the absence of a basis in the application as filed. It is this question and no more the EBA had answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable”, indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when an undisclosed disclaimer violates A 123(2) and when it does not.

The EBA further stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of A 123(2) established in opinion G 3/89 and decision G 11/91, which definition has become the generally accepted “gold” standard for assessing any amendment for its compliance with A 123(2). Consequently, the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of A 123(2) also applies to an amendment limiting the claim by disclaiming disclosed or undisclosed subject-matter. Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of invention in the application as filed, or subject-matter disclosed in a document representing prior art in the sense of A 54(3), respectively, must be that after the amendment the skilled person may not be presented with new technical information.

Put another way, the point of reference for assessing an amended claim for its compliance with A 123(2), including amendments by introducing an undisclosed disclaimer, is the subject-matter which the claim contains after the amendment. Hence, the test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This opinion corresponds to the one given in T 2464/10.

[2.2.3] The “remaining subject-matter test” applied to claim 2 of the new main request

Following the principles laid down in decision G 2/10 with respect to the “gold standard”, the remarks in this decision must be interpreted as an instruction to the Board to apply the further test developed therein, in addition to the principles set out in decision G 1/03, in order to carry out a full assessment of whether an “undisclosed” disclaimer meets the requirements of A 123(2).

The elemental limitations imposed by the disclaimer of claim 2 serves the purpose of excluding the Nb-Zr-Ta alloy compositions, which are disclosed in document D1, from the claimed Ta-alloys and - in consequence thereof - of establishing novelty vis-à-vis D1 which constitutes prior art in the sense of A 54(3). However, by introducing into claim 2 the compositional restrictions, which are exclusively based on document D1 rather than on the technical disclosure of the application, the skilled person is confronted with new subject-matter that he cannot derive clearly and unambiguously from the application as originally filed. To give an example, it is noted that the upper limit of less than 50% niobium now featuring in claim 1 is not disclosed anywhere in the application as filed and neither are the limits of less than 0.5% Zr and more than 5% Zr. It follows from the above considerations, that the disclaimer of claim 2 of the auxiliary request 1 does not satisfy the requirements of A 123(2). Hence claim 2 of the new main request is not allowable.

[2.2.4] The appeal is, therefore, not allowable.

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