Monday 11 November 2013

T 2063/12 – Clear In Itself


Claim 1 of the main request before the Board read:

1. A cement dispersant, comprising a water-soluble polymer (P) as a main component, said water-soluble polymer (P) having a weight-average molecular weight of 30,000 to 150,000 and being constituted by a polymer (P1) part and a polymer (P2) part, 
wherein: R1 and R2, being identical with or different from each other, represent a hydrogen atom or a methyl group; R3O, being identical with or different from each other, represents an oxyalkylene group having 2 to 4 carbon atoms; "a" represents a molar-number-average degree of addition polymerization of the oxyalkylene group and is a number of 20 to 200; and R4 represents a hydrogen atom or a hydrocarbon group having 1 to 3 carbon atoms; and a carboxylic constitutional unit (II) of the following general formula (2):
wherein R5 and R7, being identical with or different from each other, represent a hydrogen atom or a methyl group; and M1 represents a hydrogen atom, a monovalent metal, a divalent metal, ammonium, or an organic amine;


wherein the mass ratio between the constitutional units constituting the polycarboxylic polymer (P-1) is in the range of constitutional unit (I) / constitutional unit (II) / constitutional unit (V) = (50 to 99)/(50 to l)/(0 to 49), the total of the constitutional units being 100 mass%, wherein said constitutional unit (V) is derived from a monomer (e), which is copolymerizable with at least one of the other monomers; said cement dispersant displaying an area proportion in the range of 13 to 60% wherein the area proportion is defined by a measurement process including the following steps (1) to (9) of:
(1) measuring a weight-average molecular weight of the water-soluble polymer (P) by gel permeation chromatography (GPC);
(2) detecting a height (H) of the top peak of the resultant GPC chart;
(3) representing a value of a weight-average molecular weight indicating a height (1/2H) of 1/2 of the height of the top peak on the higher molecular weight side of the top peak by MA;
(4) measuring an area (A0) of a higher molecular weight side portion than the weight-average molecular weight MA of the resultant GPC chart;
(5) representing a value of a weight-average molecular weight indicating a height (1/2H) of 1/2 of the height of the top peak on the lower molecular weight side of the top peak by MB;
(6) measuring an area (B0) of a lower molecular weight side portion than the weight-average molecular weight MB of the resultant GPC chart;
(7) defining an area ratio A of the higher molecular weight side portion as A = (A0 x 100)/(A0 + B0);
(8) defining an area ratio B of the lower molecular weight side portion as B = (B0 x 100)/(A0 + B0); and
(9) defining a value (A - B), given by subtracting the area ratio B of the lower molecular weight side portion from the area ratio A of the higher molecular weight side portion, as the area proportion (%)."
(9) defining a value (A - B), given by subtracting the area ratio B of the lower molecular weight side portion from the area ratio A of the higher molecular weight side portion, as the area proportion (%).
The Board found this claim to lack clarity:

[1.1] Claim 1 relates to a cement dispersant that displays an area proportion in the range of 13 to 60%. The measurement process for determining the area proportion is given in claim 1 and is based on gel permeation chromatography (GPC).

It is known to the skilled person that the outcome of such GPC measurements is highly dependent on the sample concentration, calibration standard, eluent and column used (see for example T 541/09 [4.3.2]). This means that different results will be obtained dependent on the measurement conditions used. No GPC measurement conditions are indicated in claim 1. This implies that the area proportion defined in claim 1 may vary dependent on how the GPC is run. Therefore the scope of claim 1 is not clearly defined.

It is true that some indications concerning the GPC measurement conditions are given on page 28 of the description, but said conditions are not part of claim 1. However, according to A 84, the claims must define the matter for which protection is sought. A consequence thereof is that the claims must be clear in themselves when read by the person skilled in the art, without any reference to the content of the description (see T 2/80 [2]; T 1129/97 [2.1.2]; T 2006/09 [4]). Therefore, it cannot be argued that said measurement conditions are implicitly the ones that should always be used when trying to determine the area proportion of the dispersant according to claim 1.
    
The Board concludes that claim 1 of the main request is not clearly defined. The requirements of A 84 are not fulfilled. Said request must fail.

I really dislike this approach. Claim drafters have to satisfy all requirements of A 84, i.e. not only clarity but also concision. Providing a lengthy description of measurement conditions in a claim may often result in a lack of concision. Moreover, the skilled person is perfectly capable of looking up details on measurement conditions in the description.

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2 comments:

Anonymous said...

The decision was taken in the absence of the appellant. In the invitation to oral proceedings, the Board expressed its opinion on Art. 84 EPC. In the absence of any further arguments they had no reason to deviate from this opinion, which was finally copy/pasted into the decision. Therefore, I would think that the approach was reasonable and would not squeeze a general teaching out of this decision.

Bill said...

There are quite a few decisions like this.

In a way it places a very heavy burden on the draftsperson to get everything defined perfectly when the application is drafted.

One can take various views on this

a) as suggested by the UK House of Lords in the Kirin-Amgen decision, a patent application is a legal document and must be prepared by an attorney who is trained in the relevant law. This attitude is a bit impractical as patent applications are often drafted abroad by an attorney but not one who knows the EPC and its case law in detail.
b) Every test has a tolerance. Therefore every test is unclear as far as the Appeal Boards are concerned. As every test has a tolerance, values defined by a test method have a range. The question is then not whether the claim is clear but rather are there values in the range which are found in the prior art - so the question becomes one of novelty or inventive step. If the range is not novel or inventive then the applicant/proprietor must include further details from the description to narrow the range (as mentioned by the Appeal Board some details are given on page 28). One can argue that if a test method is well known to the skilled person then such persons are aware of the range and hence the range is not unclear. The Appeal Board argues that the skilled person was well aware of the range:

"It is known to the skilled person that the outcome of such GPC measurements is highly dependent on the sample concentration, calibration standard, eluent and column"

Of course there is a good possibility that the range is very broad - but there are Appeal Board decisions that say that breadth of claim is not a problem for clarity per se.

c) If b) is accepted then there might be some tests where a range cannot be defined. In such a case one could talk about a lack of clarity.

Kind regards,

William Bird
Patentive, Düsseldorf