tag:blogger.com,1999:blog-2352189175211648260.post1042384349012075959..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1312/08 – The Extension Trap Againorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-2352189175211648260.post-46920365908379242872010-06-21T23:18:32.255+02:002010-06-21T23:18:32.255+02:00@Anon of 13:35:
The way I read granted claim 1, it...@Anon of 13:35:<br />The way I read granted claim 1, it does not limit the amount of a class. The claim states that an element from a class is present, and then limits the amount of that element. The amended claim then states that the element is from a subclass of the class. In this interpretation, there is no extension of the scope of the claim. And this interpretation of granted claim 1 seems to be in compliance with the Board's literal reading of the amended claim.<br /><br />So to be precise, I disagree with the Board's "Moreover, claim 1 as granted required inter alia an amount of proteases (c)+(d) equal to 0.01 to 0.5% by weight (as powdered enzyme product)." In my view, claim 1 as granted requires a protease (c) and a protease (d) in an amount (c)+(d) equal to 0.01 to 0.5% by weight, and allows the presence of arbitrary amounts of additional components, including proteases, apart from those specifically listed as components (a) to (d).<br /><br />"Consider a granted claim with 0.1-0.5 of class A (class A having members A' A'' A'' etc),"<br /><br />Sure, but granted claim 1 is of the type "[composition comprising] 0.1-0.5 of an element of class A". Clearly 0.1 A' and 0.6 A" does infringe this claim.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-83887877915910612872010-06-21T13:57:18.405+02:002010-06-21T13:57:18.405+02:00It seems that in order to avoid the A 123(3) EPC o...It seems that in order to avoid the A 123(3) EPC objection the amendment should have been worded stating that protease (c) is "only" produced from micro-organisms of type (I) to (IV). Thus excluding all other proteases with feature (c) produced by other ways.<br /><br />In fact, the use of "comprising" is useful because it leaves the content of the claim open, but is sometimes quite tricky in its consequences.<br /><br />Conclusion: Caveat comprising :-))Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-58053931368860055972010-06-21T13:35:33.812+02:002010-06-21T13:35:33.812+02:00Anonymous, that is not the issue.
The point is th...Anonymous, that is not the issue.<br /><br />The point is that when you have a granted claim with i) an amount of ii) a class, then you can run into problems with 123(3) when you narrow the class to a sub-class - because you then remove the original amount limitation of the broad class.<br /><br />Consider a granted claim with 0.1-0.5 of class A (class A having members A' A'' A'' etc), <br /><br />Product with 0.1 A' and 0.6 A'' (= 0.7 of A) would not infringe the claim.<br /><br />Claim is amended to 0.1-0.5 to A' (looks like narrowing the claim)...but now the original limitation of 0.1-0.5 of A is removed <br /><br />So the product with 0.1 A' and 0.6 A'' (= 0.7 of A) would now infringe the claim - hence falls foul of 123(3)<br /><br />That is my understanding of the issue at any rateAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-10387591392984834942010-06-21T00:05:18.434+02:002010-06-21T00:05:18.434+02:00Should the granted claim not be interpreted as all...Should the granted claim not be interpreted as allowing other proteases in addition to the proteases (c) and (d)? That would make the 123(3) problem go away.<br /><br />Alternatively, if the granted claim should be interpreted as comprising exactly two proteases, i.e. a unique one falling under (c) and a unique one falling under (d), then imo claim 1 of auxiliary request 1 should also be interpreted as comprising exactly two proteases. Again no 123(3) problem.<br /><br />To give a somewhat simpler example:<br />Granted claim: "a table comprising a leg whose length is 50cm".<br />Amended claim: "a table comprising a leg whose length is 50cm, wherein the leg is made of steel".<br /><br />The Board seems to say that the amended claim infringes 123(3), because the table could, in addition to the leg made of steel, have a leg made of wood whose length is 60cm. However, it seems pretty clear that this table is also covered by granted claim 1.Anonymousnoreply@blogger.com