This is an appeal by the patent proprietor against the maintenance of its patent on the basis of the first auxiliary request.
In a first appeal decision on the same patent (T 894/05), the Board had remitted the case to the first instance with the order to maintain the patent in amended form. Claim 1 of the allowed request read:
A refrigerant composition which comprises:(a) 46% by weight based on the weight of the composition of pentafluoroethane,(b) 50% by weight based on the weight of the composition of 1,1,1,2-tetrafluoroethane and(c) 4% by weight based on the weight of the composition of n-butane.
Upon remittal, the patent proprietor filed two sets of amended pages of the description as a main request and an auxiliary request, respectively. In the decision now under appeal, the Opposition Division (OD) found that the amended description according to the main request did not comply with A 84, since the sentence “It is clear that similar comments apply to the composition R125 - 46.5%, R134A - 50% and R600 - 3.5%” had not been deleted. The description was thus not properly adapted to the limitations carried out in the amended claims. The amended description according to auxiliary request 1 differed from the description according to the main request only in that said sentence was deleted.
[2] In order to meet the requirement of A 84 that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description which could render the scope of the claims unclear. Any disclosure in the description inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (see T 1808/06).
[3] In the present case, the dispute between the parties concerns only the question of whether or not the sentence “It is clear that similar comments apply to the composition R125 - 46.5%, R134A - 50% and R600 - 3.5%” on page 4, lines 6 to 7 of the description of the patent in suit may be retained, namely whether or not it is consistent with the amended claims found by the Board to meet the requirements of the EPC.
[4] Claim 1 as remitted to the OD relates to a refrigerant composition comprising by weight (a) 46% pentafluoroethane (R125), (b) 50% 1,1,1,2-tetrafluoroethane (R134A) and (c) 4% n-butane (R600).
[5] The Appellant argued that retention of the contested sentence was justified because the composition “R125 - 46.5%, R134A - 50% and R600 - 3.5%” defined in the contested sentence fell under amended claim 1, since the skilled person would not understand amended claim 1 as relating to a single specific composition only, but rather as extending to ranges of plus or minus 0.5% in relation to each of the three specifically defined amounts of 46, 50 and 4%, for R125, R134A and R600, respectively.
[5.1] However, the Board, holds that the composition R125 - 46.5%, R134A - 50%, R600 - 3.5% does not fall under the subject-matter of claim 1 of the patent in suit, since claim 1 defines a refrigerant composition defined in terms of specific percentage weight amounts, namely 46, 50 and 4%, the description of the patent in suit not providing the skilled person with any reason to understand these specific percentage weight amounts as extending to plus or minus 0.5%. On the contrary, the patent in suit, when defining the percentage weight amounts of the components of the refrigerant compositions described therein, quite clearly differentiates between values which differ by 0.5%.
The sentence in question is an example therefor, as it compares a composition comprising 46.5% of R125, 50% of R134A and 3.5% of R600 with the composition of Example 1 comprising 46% of R125, 50% of R134A and 4% of R600, these two compositions also being distinguished in the table on page 4, lines 10 to 16 of the application as filed. Comparative Examples 2 and 3 on page 4 of the patent in suit, wherein the amounts of R125 and R600a differ by 0.5%, further illustrate the fact that the patent in suit distinguishes between percentage weight amounts of components of refrigerant compositions differing by 0.5%. Contrary to the argumentation of the Appellant, claim 1 does indeed relate to a specific composition, as supported by the description wherein the amounts of 46% of R125 and 4% of R600 in claim 1 find support in the application as filed as one of the “specific formulations” (emphasis added) described on page 4, lines 10 to 16 and in the particular formulation of Example 1, only, there being no suggestion in the patent specification that these amounts are approximate values, let alone that they extend to plus or minus 0.5%.
[5.2] The Board is thus not convinced by the Appellant’s arguments and as a consequence holds that retention of the contested sentence on page 4 of the patent in suit leads to unclarity of the subject-matter claimed, as it could suggest to the reader, contrary to the facts of the case, that the claims embrace said composition.
[6] By virtue of this sentence on page 4, lines 6 to 7 of the patent specification, the amended version of the specification according to the main request on which the contested decision was based cannot be allowed. […]
The appeal is dismissed.
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13 comments:
I am troubled by this Decision.
I'm thinking that scientific fact is one thing, while what is within the ambit of the claim is another. You can puff up or shrink the scope but you can't change scientific fact willy-nilly. Fair enough, one has to conform a description to the claims so that they don't contradict each other and so that what is defined as the invention in the claim fits with what is described as the invention in the description. But that does not require re-writing scientific fact.
Thus, when I teach that I get a nice technical effect with an aluminium alloy with 1wt% of X, 2wt% of Y and 3wt% of Z, I am deliberately selecting a range of composition. If I had intended a tighter definition, I would have recited in the claim 1.005 wt% of X, 1.995 wt% of Y and 3.010 wt% of Z. Typically, I have an Example with the precise values immediately above, and a claim to the more extensive ranges I mention higher above. I make a deliberate considered choice as to the number of significant figures of decimal places that I specify.
But all that appears lost on this Board of Appeal.
I can't understand its logic. Heaven help us, if DG3 turn into pedants, Prinzipienreiter, Erbsenzähler, mere bean counters. we have enough of that already, in DG1. The confidence of the science and engineering communities in the EPO is vital. Decisions of DG3 that they think are flawed are dangerous to the reputation of the EPO. Come on DG3 guys. Substance please, not mere form.
I should be much obliged to any reader here for a defence of this (to me, crackpot) Decision. What please am I just not seeing?
Heaven help us, if DG3 turn into pedants, Prinzipienreiter, Erbsenzähler, mere bean counters.
In the present context, I would have rather written "Paragraphen-Schnösel". ;-) (I love that expression).
we have enough of that already, in DG1. The confidence of the science and engineering communities in the EPO is vital.
Dearest Max, from my point of view the decision seems to find justification.
The claims were very severely limited in opposition, to the point of covering only a broom cupboard of the Vatican State rather than pre-1993 USSR.
The present claim 1 is based on dependent claim 13 of the B1 document, which read:
A [refrigerant] composition [according to many other claims extending back to 1] which comprises:
(a) 46% to 46.5% by weight of pentafluoroethane,
(b) 50% by weight of 1,1,1,2-tetrafluoroethane and
(c) 4% to 3.5% by weight respectively of n-butane.
For one reason or the other, the applicant had to surrender during opposition the "to 46.5%" and "to 3.5%" bits, which had been introduced during the examination procedure.
By insisting that the disputed sentence in the document should be maintained, the proprietor appeared to want to preserve by the back door protection for subject-matter he couldn't legitimately obtain through the claims.
The divisions and the boards are not above criticism, but prima faciae, on this one, I'd go along. The 9-page long original disclosure is one acute case of parametritis. (Gee, I like that one too!)
Mind you, by crossing a Prinzipienreiter with a Paragraphen-Schnösel you obtain a Paragraphenreiter.
Thanks Fly. Always a pleasure to read you. I always learn something.
Revealingly, you write:
"By insisting that the disputed sentence in the document should be maintained, the proprietor appeared to want to preserve by the back door protection for subject-matter he couldn't legitimately obtain through the claims."
From which I learn that if I want something from DG3 I had better learn to ask for it nicely, because if my motives are seen as suspect, I won't get it, even if the facts and the law say I should.
Are we representatives children then, subject to the gut feelings and instincts of the wise grown-ups who populate the Boards of Appeal?
In the USA, White Hat wins and Black Hat loses, regardless what are the facts and the law. I do not want that at the EPO thank you very much.
And despite your protestations, I still think that sentence does not contradict the maintained claim and I still don't see how that sentence extends the scope of the allowed claim, when it is properly construed.
Did MaxDrei have a look at the table on page 6 of the description (and read the entire reasoning)?
Example 2 has R125 - 46%, R134a - 50%, R600a - 4%. Example 3 has R125 - 46.5%, R134a - 50%, R600a - 3.5%. I would agree with the Board that the skilled reader of the patent would not consider Example 3 as a special case of Example 2. Then the same applies to Example 1 and the disputed sentence.
But if one insists that all values in the patent should be interpreted using the convention that 46 means between 45.5 and 46.5, then I note that 46.5 means between 46.45 and 46.55. Clearly 46.55 false "outside" 46.
Either way the result is the same, but I think the Board's approach makes a lot of sense in the light of the description.
Substance please, not mere form.
The proprietor kept his patent, just not with this sentence and for a good reason. What is the problem?
Maxdrei, I have seen quite some cases where the patent proprietor tried to give the claim a broader or narrower meaning than it actually said, openly referring to Art. 69. That is usually not accepted because Art. 69 is not meant to give claims a different interpretation from what they actually say; neither is it meant to be (ab)used in proceedings before the EPO. I have seen arguments on Art. 123 because of a change in the description! The fact that in this case the patentee did not want to adapt the description is telling, that is not just mere gut feeling by the board. And no, representatives are not children, but sometimes they have to do what their clients ask them to do, even if they know better.
I suspect MaxDrei's comments may have been made without a full reading of the decision but (s)he alone can confirm that. Having had to amend the claim to remove one of the embodiments from the scope, that embodiment must either be deleted or explicitly indicated to be not part of the invention.
With regard to the A. 69 point above, I would strongly disagree that this must not be used in proceedings before the EPO. I know that it is almost impossible to have an argument based on the article accepted but the fact is that it is a mandatory provision for all fora. The second sentence of A.69(1) is not restricted to infringement courts. In order to determine whether prior art is novelty destroying, the scope of protection must be determined in order to determine whether the prior art lies within this scope and A.69(1) second sentence tells the EPO how to do this IMO.
Thanks for all the comments. I'm travelling,so not in a good position to respond in depth. I accept the point that if the claim recites 46.5 then it is referring to a range from 46.45 to 46.55. But if the claim recites 46wt% then it is in truth defining a range of from 45.5 to 46.5. So, relative to that latter claim, is a worked Example in the supporting description, reporting a single pinpoint specified value of 46.5, an embodiment of the claimed invention or is it not?
The Americans choose not to conform the originally filed specification to the eventually issuing claims. Yet the juries and judges who try the infringement issue cope with that OK. The EPO worries about poor little infringement judges getting hopelessly muddled if 46.5 remains in the specification. Really, I think not. It is the claims, not the description, that define the scope of protection: that a residual 46.5 in the description will f--k up completely the business of deciding the scope of protection is silly.
Scientificaly, if 46wt% really does solve the objective technical problem then 46.5wt% ought to do so just as well. After all, it is within the ambit of the claim.
But if the claim recites 46wt% then it is in truth defining a range of from 45.5 to 46.5. So, relative to that latter claim, is a worked Example in the supporting description, reporting a single pinpoint specified value of 46.5, an embodiment of the claimed invention or is it not?
I can't follow you. Do you mean that the example in the description should be understood as EXACTLY 46.5, but the values in the claim as defining a range? Does what you previously called "science" not play a role anymore when reading examples?
Then what happens if the applicant would have drafted a dependent claim based on the example? Would the exact value suddenly become a range, so that transferring that sentence from the description to the claims would violate Art. 123(2)?
If this is your position, it does not seem very reasonable.
Anyway, the Board's reasoning is different and in my view convincing. You do have to take the time to study it and the relevant parts of the description.
The EPO worries about poor little infringement judges getting hopelessly muddled if 46.5 remains in the specification.
This is probably your real gripe, why does the EPO care about a little sentence.
How about the applicant, why does the applicant care about a little sentence.
How about all of us, why do we care about a little decision about a little sentence.
Art. 84 requires that the description conforms to the claims. Sentences as this probably slip through the mazes of the EPO's net on a daily basis, but that does not mean that if the problem is spotted it should be ignored. The applicant did not accept that the sentence should be deleted, so he rightfully made use of his right to appeal. The Board then judged the OD was correct. If the applicant had not wanted all this fuss, he could simply have agreed and then later used your reasoning that 46 "as a fact" covers 46.5.
Of course the patent as granted had "46 to 46.5%", so if you really insist that 46% is to be read as "45.5 to 46.5%, a national court might very well invalidate your patent (Art. 138(1)(d)). Or good luck arguing that the skillled person would understand a claim with "46 to 46.5%" as "45.5 to 46.55%" (or would that be "45.5 to 46.5%" using your logic?).
I would also note it was the opponent who objected to the sentence. The OD was therefore forced to decide on the issue, and this question would likely have gone to appeal irrespective of the OD's decision. Neither the OD nor the Board can say "please don't bother us with your petty problems" (especially when the problems actually have a basis in the EPC).
@Roufousse:
For one reason or the other, the applicant had to surrender during opposition the "to 46.5%" and "to 3.5%" bits, which had been introduced during the examination procedure.
The reason seems to be that the disputed sentence was not present in the priority document. Claim 13 of the B1 publication was therefore not entitled to priority. Due to an intermediate document disclosing a composition with 46.5% / 50% / 3.5%, claim 13 was not new.
In the summons for the second OP before the OD (i.e. after the first decision by the Board that fixed the claims of the patent), the OD expressed the opinion that the sentence did not violate Art. 84, because it was clear to the skilled reader that the composition in the sentence was NOT covered by the claim. The OD gave as reason essentially that 46 is 45.5-46.4, and that 46.5 would be rounded up to 47. I don't think this is very convincing.
The opponent requested either a clarification of the sentence that the mentioned composition was only a comparative example, or deletion of the sentence. The applicant apparently did NOT want clarification (offering as an auxiliary request deletion of the sentence). So clearly the applicant wants the claim to cover this example, and indeed he argued that 46 encompasses 46.5.
Thanks Myshkin, you wrote much of what I would have wanted to add, in far fewer words.
There is also the problem that the range initially claimed in claim 13 constituted added subject-matter, as it was cobbled up from two individual points. I think one could still give a hard look at the present claim w.r.t. the infamous Art. 123(2)/(3) trap.
I think the proprietor was quite lucky in seeing arithmetic rounding rules used to construe the scope of the claim.
If the first appeal had been heard more recently, I suppose that he would have been clobbered by the current strict application of the RPBA, and couldn't have popped up a new set of claims in the course of the OP.
The claim looks to me somewhat like a single sign post reading "keep out" planted somewhere, without any barbed wires delimiting the area.
There is however a big fat Dobermann with a chain of unknown length. It is still in the interest of the public to make sure that the leash is as short as possible. Why should sloppy drafting be rewarded?
On a different level, I wonder about the interest in this patent, which describes a composition based essentially on R134a for replacing R22. (The initial disclosure focused on R12).
Nowadays R134a must be replaced too, as its CO2 equivalent is horrendous (>1000).
A substitute called R1234yf is being marketed by the same company. It's apparently really nasty stuff, as it tends to catch fire, and was much in the news lately, at least in Europe.
The English and German language Wikipedia are in that respect quite contradictory (earlier versions were even more distant):
EN: Although the product is classified slightly flammable by ASHRAE, several years of testing by SAE proved that the product could not be ignited under conditions normally experienced by a vehicle.
DE:
2,3,3,3-Tetrafluorpropen bildet brennbare Gas-Luft-Gemische und wird als hochentzündlich eingestuft. Der Explosionsbereich liegt zwischen 6,2 Vol% als untere Explosionsgrenze (UEG) und 12,3 Vol% als obere Explosionsgrenze (OEG).[...] Die Selbstentzündungstemperatur liegt zwischen 400 °C) und 405 °C. Bei der Verbrennung wird giftiger und ätzender Fluorwasserstoff, sowie Carbonylfluorid (COF2) frei.
So much for an "Encyclopedia" which is increasingly cited by applicants and examiners alike.
The flammability of R1234yf is not really that much better than hydrocarbon-based CFC-substitutes discussed 20 years ago. But a load for an automotive air conditioner would be a lot larger than the 25 grams given in the article.
I'll stick to walking and riding my bike.
Thanks both. I'm impressed by the time you have spent, reading up on the case. I defer to that.
For me, the point which convinces, and which I overlooked, is what would be the situation if that sentence remaining in the description were later to be brought forward as an added claim. Does that added claim get the arithmetical range 46.45 to 45.55 ie does it extend the top limit of the range from the earlier 46.5? That would be an argument why it must be excised from the descrn as an example of the claimed matter. I just wish they had justified it like that, in the Decision.
As we all know, concocting fresh claims out of stray sentences in the description is a contentious area. On the Patently-O blog there is currently a thread on just such a point (In America they call the issue "written description" rather than "new matter"). Now they are on a "First to File" system, I expect their written description requirements to align with Art 123(2) practice at the EPO. Yippee!
No problem Max.
The priority application was filed 15.07.1998. D1 is a paper by the named inventor presented at a conference which lasted from 14.07 to 17.07.1998. The paper was presumably read after the priority date.
I would therefore presume that the application was an emergency filing based on D1 as sent to the conference committee, which would somewhat excuse its limitations.
If this had happened under EPC2K the draft itself could be filed as a priority application, without claims, in the style of US-provisionals.
If the claims of the second application were broader than the conference-paper-based priority allowed, then the conference proceedings publication could belong to prior art under Art 54(2)... There is more than a whiff of poisonous "priority" here. ;-)
The best solution might be to file two priority applications, one being the conference paper as drafted by the inventor, and the other one a regular application drafted by the representative based on his understanding and generalisation of the paper.
Regarding the first appeal proceedings: the proprietor could have filed a claim for the two singular points, or two separate claims each defining the single point. That would have provided the best possible coverage under the circumstances. Since the decision of the board was binding, there was no way this could be corrected later.
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