This is another examination appeal.
The claims were directed at a plasma torch for spectrochemical analysis.
On August 18, 2009, the Examining Division (ED) issued a communication pursuant to A 94(3) according to which most claims lacked novelty. In response, the applicant amended the claims (February 24, 2010).
A first telephone consultation took place on March 15, 2010, wherein the Examiner suggested certain further amendments of claim 1.
On May 27, 2010, the applicant filed amended claims; the amendments, however, did not correspond to what the Examiner had suggested.
There was a second telephone consultation on June 9, 2010. The Examiner pointed out that claim 1 on file was now novel but still not inventive. In response to this consultation the applicant filed amended claims on July 12, 2010.
It is not clear from the file whether there was yet another telephone consultation, but on September 8, 2010, filed further amendments. In its letter the applicant mentions a request to delete dependent claims 2, 3, and 4 and provides arguments why the examiner should reconsider this request.
Claims 1 to 4 on file read:
1. A plasma torch (40) for introducing a sample into a plasma (17) produced in the torch for spectrochemical analysis of the sample, wherein the plasma torch is for 5 aerosol samples having relatively high salt concentrations, the plasma torch including a tube (25) for conveying a flow of a gas carrying the aerosol sample to a plasma (17) produced in the torch by an electromagnetic field, the tube (25) having an inlet (31) and an outlet (39) of smaller size than the inlet, and being shaped to deliver a substantially laminar flow of the aerosol-laden gas at the outlet for penetrating the plasma, wherein the tube (25) is tapered (27) along substantially its whole length such that its cross-sectional area gradually and smoothly reduces towards its outlet along said substantially whole length, the arrangement being such that the tube (25) is resistant to obstruction by salts deposited by the aerosol sample containing relatively high salt concentrations. (my emphasis)2. A torch (40) as claimed in claim 1 wherein the tube (25) is tapered (27) along its length for a distance that is at least five times the internal diameter of the inlet of the tube.3. A torch (40) as claimed in claim 2 wherein the tube (25) is tapered (27) along its length for a distance that is from five to ten times the internal diameter of the inlet tube.4. A torch (40) as claimed in any one of claims 1 to 3 wherein the tube (25) includes a parallel walled portion (29) extending to the outlet (39), wherein the tapered portion (27) of the tube smoothly blends into the parallel walled portion.
There was another (fourth?!) telephone consultation on October 13, 2010, wherein the Examiner insisted on the necessity to delete claims 2 to 4 in view of the amendment of claim 1.
On May 16, 2011, the Examiner called the applicant’s representative and informed him that the case was essentially suitable for issue of an intention to grant subject to deletion of claims 2 to 4. A communication pursuant to A 94(3) with a one-month time limit was sent shortly afterwards.
The applicant responded by refusing to delete claims 2 to 4. The request for oral proceedings was withdrawn and an appealable decision was requested.
The application was then refused on the ground of A 123(2); the applicant filed an appeal.
The Board did not agree with the ED:
[2.1] In the view of the board, in the present case the focus of the decision is disproportionally directed to the structure of the claims as filed to the detriment of what is really disclosed to the skilled person by the documents as filed. This led to the ED identifying three separate alternatives pertaining to the tapering of the tube disclosed in the present application, which led to assumptions upon which the subsequent reasoning is based and which the board does not consider to stand up to close scrutiny.
[2.2] Firstly, as submitted by the appellant, a tube tapered along at least a substantial portion (designated (i) by the division) includes a tube tapered along substantially its whole length (designated (ii) by the division). Therefore no alternative is involved. Similarly, a tube tapered along at least a substantial portion (designated (i) by the division) includes a tube tapered over its entire length (designated (iii) by the division).
[2.3] Secondly, the stance of the division with respect to the tube being tapered over its entire length (designated (iii)) is somewhat contradictory because after stating it was an alternative, the division went on to consider a reference to entire length as not to be a particular embodiment, but to be a possibility. The consequence of this shift in position is to cast doubt on the division’s own argument about subject matter extending beyond the application as filed in a combination of pending claim 1 with claim 2, 3 or 4 because all the features concerned the described embodiment variation.
[2.4] In considering the reference in the passage on page 6 of the specification concerning the “entire length” feature to offer no basis for the “substantially the whole length” feature, the division can, nevertheless, be considered to reaffirm its view that “substantially its whole length” and “entire length” are alternatives.
[2.5] In the present context, “entire” and “whole” have virtually the same meaning, in fact the first definition given in the online “Oxford English Dictionary” (“OED”) of “entire” is “whole; with no parts excepted”. It therefore seems the division would have had the same “no basis” difficulty with “substantially its entire”, i.e. any difference seen by the division would rest on the originally disclosed word “substantially”, to which the online OED gives one meaning as “in all essential characters or features; in essentials, to all intents and purposes, in the main”. It is quite common practice in patent claim drafting to use the word “substantially” in the sense of the OED definition in order to soften strict mathematical boundaries.
[2.6] Turning to the disclosure in detail, the board is mindful that the application is directed to a technical audience rather than to a philologist or logician, for which audience an attempt to derive information from the structure of dependent claims leads to an artificial result.
A reading of the passage concerned in lines 2 to 6 on page 6 reveals that it follows a passage about a design according to Figure 3, worded as follows:
“This led to the design of a tube 25 as shown in Figure 3, which has a tapered portion 27 of greatly increased length compared to section 23 of tube 10 of Fig. 2. The tube 25 is substantially constantly tapered along at least a substantial portion of its length such that its cross-sectional area gradually and smoothly reduces between its inlet 37 and its outlet 39 along said at least a substantial portion of its length. Tube 25 includes a narrow parallel sided portion 29 similar to portion 22 of tube 10 of Fig. 2.”
the page 6 passage itself amounting to one sentence, which is worded as follows:
“It is probable, but not yet experimentally verified, that the tapered portion 27 could extend over the entire length of tube 25, the taper at the outlet end 39 approximating the narrow parallel-sided portion 29, such that the flow of sample aerosol laden gas within tube 25 at outlet 39 is substantially laminar.”
[2.7] What is striking about this sentence is that it uses the definite article in referring to “the tune (sic) 25” and “the tapered portion 27” and uses the verb form “could extend”. This tells the skilled person directly and unambiguously that starting from the length shown for the tube 27 in Figure 3, the tapered portion could extend over the entire length of the tube, i.e. fully consistent with “at least a substantial portion”. This can be contrasted with the embodiment of Figure 3 as opposed to that of prior art Figure 2, where different reference numerals are used for corresponding parts (25 instead of 10, 27 instead of 23 and 29 instead of 22), and where, moreover, the indefinite article is first used with items 25, 27 and 29. A variation of and not an alternative to the items of embodiment described in relation to Figure 3 is therefore directly and unambiguously described in relation to “entire length”. Moreover, the sentence also makes clear that the parallel sided portion is approximated at the outlet end for laminar flow, in other words in view of the approximately parallel sides, the “taper” tends away from being a taper at the end.
[2.8] What is directly and unambiguously disclosed to the skilled person is thus that the tapered portion of the tube with the features of Figure 3 could extend over the entire length of the tube, there being an approximated parallel wall portion thereof at the outlet end. In the view of the board, this tallies with the feature of originally filed claim 6 pertaining to tapering of the tube along substantially its whole length, just as the skilled person would understand it and in accordance with the OED definition mentioned in point [2.5] above.
[2.9] Similarly in relation to claims 2 and 3, since “substantially the whole length” is included in “at least a substantial portion” and not an alternative thereto, and because “over its entire length” is a variation of a described embodiment, the subject matter of these claims shows no inconsistency in relation either to the original claims or the statement of invention, nor did the ED object against the description of Figure 3 as such in this context.
[2.10] In view of the foregoing, the board does not consider the assumptions made by the ED correct and therefore concluded that present claims 2, 3 and 4 do not include subject matter extending beyond the disclosure of the application documents as filed. So far as the additional comments of the ED in relation to claims 5 and 6 are concerned, a corresponding argument applies.
[2.11] Since there is a disclosure of “tapered over its entire length” directly and unambiguously referring to a variation of but not alternative to the embodiment of Figure 3 as set out in section [2.7] above, contrary to the view of the ED, the board has not identified any reason in the content of decision T 1150/00 which could affect its view. A similar situation exists in relation to decisions T 296/96, T 147/99 and T 172/02.
[3.1] The position of the ED was that the case was essentially suitable for issue of an intention to grant subject to deletion of claims 2 to 4. The board has, however, reached the conclusion that it is not necessary to delete claims 2 to 4, thus removing the sole objection of the ED. As editorial improvements to the description are not sufficient reason to depart from the position of the ED and the board sees no other reason thus to do, other than its disapproval of the necessity of the deletion, the appeal succeeds. Consequently, the oral proceedings requested on an auxiliary basis are not necessary. […]
The case is remitted to the department of first instance with the order to grant a patent […].
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NB: This decision was also commented on Le blog du droit européen des brevets (here).