Monday 7 October 2013

T 116/12 – Dangerous Copy & Paste


This is an examination appeal concerning a Euro-PCT.

The invention concerned a method for impregnating textiles in a household washing machine. One of the claimed features was that the lye container is filled with water such that the ratio of the weight of the dry textiles and the weight of the water is greater than 1:8. (NB: This feature has been corrected during the international phase; the application as filed had “less than 1:8”.)

The EPO had acted as IPEA. The IPER contained the following statement (English translation):
“… The present application does not fulfil the requirements of Article 33(1) PCT because the subject-matter of claim 1 is not novel within the meaning of Article 33(2) PCT.

In D1 the ratio of the weight of the textiles and the weight of the water is disclosed to be between 1:100 and 1:1. It is asserted that the claimed float with a ratio of 1:8 is a purposeful selection of a short float. 1:100 would be too long and 1:1 would not be feasible.

The claimed selection is not a selection invention because not all of the requirements for such an invention are fulfilled. The selected sub-range has to be narrow (i), (ii) has to be sufficiently far removed from concrete examples disclosed in the prior art and the boundary values and must not be an arbitrary specimen (iii)

[The subject-matter of claim 1] is not a selection invention because requirement (iii) is not satisfied. …”
In its communication pursuant to A 96(2) [EPC 1973] the Examining Division (ED)  just referred to the IPER objections.

In its reply the applicant discussed the objection in detail.

The ED then refused the application. Paragraph 8 of the reasons contained the following passage (English translation):
In D1 the ratio of the weight of the textiles and the weight of the water is disclosed to be between 1:100 and 1:1. In particular, D1 explicitly discloses a possible value of the ratio of the weight of the textiles and the weight of the water of 1:1. This explicit value clearly is within the range given in claim 1 of the application under consideration, according to which the ratio of the weight of the dry textiles and the weight of the water should be greater than 1:8. Even though D1 […] only discloses one single example with a textile/water ratio of 1:25, there is no indication that the invention cannot be carried out over the whole range mentioned in D1 (1:100 to 1:1) It is asserted that the claimed float with a ratio of 1:8 is a purposeful selection of a short float. 1:100 would be too long and 1:1 would not be feasible.

The claimed selection is not a selection invention because not all of the requirements for such an invention are fulfilled. The selected sub-range has to be narrow (i), (ii) has to be sufficiently far removed from concrete examples disclosed in the prior art and the boundary values and must not be an arbitrary specimen (iii)

[The subject-matter of claim 1] is not a selection invention because requirement (iii) is not satisfied. A ratio of greater than 1:8 from a range from 1:1 to 1:100 is not narrow. As a matter of fact, one of the boundary values disclosed in D1 is within the claimed partial range. …”
The applicant filed an appeal. The ED granted interlocutory revision but did not order reimbursement of the appeal fee. Therefore, this question had to be dealt with by the Board:

*** Translation of the German original ***

[2] The appeal fee is to be reimbursed if such reimbursement is equitable by reason of a substantial procedural violation (R 103(1)(a)). The appellant considered the denial of the right to be heard in regard of the criteria (i),(ii), and (iii), which the impugned decision considered not to have been met, to constitute such [a substantial procedural violation].

[3] As far as criteria (i) and (ii) are concerned, the ED has never revealed prior to its decision that it might consider these criteria not to be met. Nor could the appellant expect that it would, because the IPER, to which the ED has sweepingly referred in its (only) communication pursuant to A 96(2) EPC [1973], only questioned criterion (iii).

The mere listing of criteria (i) and (ii) is not tantamount to granting the right to be heard within the meaning of A 113(1), nor can the remarks on these two criteria in the reply to the communication – regardless of their content – under these circumstances constitute comments to the grounds on which the impugned decision is based.

[4] Regarding criterion (iii), it is true that the arguments the appellant had made in its reply to the communication have been taken into account in the summary of its arguments in favour of the position that this criterion had been met (point 8 of the reasons for the decision, first passage until “1:100 would be too long and 1:1 would not be feasible.”), but not in the justification of the adverse conclusion of the ED. The way in which this justification is worded (point 8, from “The claimed selection is …”) is essentially identical to the corresponding passage of the IPER […]. Thus there is no indication whatsoever that the counterarguments of the appellant regarding criterion (iii), which were filed with the reply to the communication […], have been taken into account by the ED.

[5] However, A 113(1) is violated when facts and arguments in the submissions of the appellant which are of central importance for the defence of its case and which could plead against the decision are completely ignored in the decision (T 763/04). This concerns in particular assertions made in reply to a communication, so that, as a rule, one has to assume that the right to be heard has been violated when – as in the present case – the reasons for the decision of the ED boil down to a repetition of the reasons given before the decision was issued (T 1997/08).

[6] Consequently, as far as the essential reasons for the impugned decision – i.e. that not all the criteria for the existence of a selection invention had been fulfilled – are concerned, the right to be heard within the meaning of A 113(1) has not been granted, neither for criteria (i) and (ii) […] nor for criterion (iii) […]. This procedural violation is so substantial that the requested reimbursement of the appeal fee is equitable.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

6 comments:

Anonymous said...

It would be good if the boards could be persuaded not to use copy and paste. The following decision is very hard to follow:
http://www.epo.org/law-practice/case-law-appeals/pdf/t091250eu1.pdf

Myshkin said...

Why is T 1250/09 hard to follow? The claims are there, the clarity objections are there. The clarity objections seem correct (and quite to the point) to me.

Roufousse T. Fairfly said...

It's a pity that the board was limited to only considering the procedural matter of the Art. 113 violation in relationship with the appeal fee reimbursement. It would have been interesting to see what they could have made of the substance of the case.

These claims make me cringe. One would expect a white goods manufacturer to draft claims for devices that target the wares of competing washing machine competitors.

Here, there is just one independent claim defining a method. The only party who could directly infringe upon it is the end user. I'd like to see a huissier following Otto Normalverbraucher from the druggist to flat 708, escalier B, and demanding to see how much hydrophobic agent and garments that were loaded into his machine, and the washing program which he selected.

As far as the washing machine itself is concerned, just about any one on the market at the priority date would suitable to carry the method as claimed. The "without flushing" (non-)step ("ohne Spülen") at the conclusion of the claim can be read in several ways (Art. 84 anyone?), and in my book it reads on the first phase of an ordinary wash cycle. I know of machines that can halt after washing, but even for machines that allow subsequent rinsing/centrifuging steps to take place, the initial phase does exactly what's written in the claim. The textiles are soaked in a warm solution of whatever stuff put in the detergent compartment, which is then expelled. If you put only two pairs of socks in the drum, then you get the kind of ratios mentioned in the claim.

Was a weak claim deliberately designed with indirect infringement in mind? Both hydrophobic agent and washing machine suppliers can be targeted by such a claim. FUD?

The applicant knew perhaps that a specific protection for a suitable washing machine would be difficult to get. I once had a seventh-hand Bosch machine built around the time when "Stammheim" became a household name. 800 RPM spinning, with rather simple programs, and in its final days it stopped at just at any point it pleased during the cycle, emitting a little puff of smoke.

But it isn't up to the examiner to preoccupy himself with how a claim could potentially be asserted...

The applicant requested examination of the German priority application DE102004061894 by the DPMA at the same time he filed his grounds of appeal before the EPO.

Maybe he'll come to regret it. I particularly like one of the documents cited, DE19748514. The final impregnation phase pretty much looks like a bullseye. Even though the document doesn't state what functions this impregnation should provide, the compounds at the top of page 5 do look hydrophobic to me.

One passage worries me: Die beim vorliegenden Beispiel verwendete Waschmaschine fasst ca. 60 Mops.

Aua! Poor little things! (I do hope that the author didn't mean to write "Möpse").

For the procedural error, I note that no amendments or auxiliary requests were filed, and no OP was requested in response to the first action. Did the examiner have a feeling that the exchange went into a kind of You say "Yes", I say "No".? In similar circumstances a colleague I held much in esteem would probably have exclaimed "laden!" ("summon!"), even if an OP hadn't been requested, to make sure that the applicant was heard, and to show that he was heard.

ps. KTvuzG Brylcreem: I *LOVE* that picture!

Roufousse T. Fairfly said...


pps: Myshkin, are you sure you wanted to comment this case? I can't see any clarity objections here, and don't understand the reference to T1250/09.

Roufousse T. Fairfly said...

Myshkin, please disregard my question from 04:33. I didn't realise you were replying to another message. I still don't quite get the connection between T1250/09 and the present case.

Myshkin said...

I think the only connection is that both decisions have an element of "copy & paste". I agree T 1250/09 has little to do with the present case, but maybe the anonymous just wanted to get something off his chest.

In case the anonymous' point is that, following the present decision, reasoning by copy & paste implies a violation of the right to be heard, it must be noted that in T 1250/09 the applicant, despite having been given the opportunity, chose not to comment on the Board's objections.

In the present case no amendments were filed, but arguments were presented. Something must be said about those arguments to show that they were heard and considered (although I can imagine cases where the arguments have no bearing on the Division's reasoning or are already refuted by the reasoning e.g. because they had been anticipated).

I wonder... would it have made a difference if there had been an oral proceedings in which the whole case had been thoroughly discussed (and the claims and decision would have stayed the same)? There would not have been a problem then with conditions (i) and (ii), but the written decision would still have lacked reasoning regarding the applicant's arguments in relation to condition (iii). I have the impression that (some) examiners then would be inclined to think "it's in the minutes, so why would I repeat it in the decision", and maybe the Boards would be more willing to let it pass? (After all, if the minutes shows the arguments were discussed, one can't really say the applicant was not "heard".)