tag:blogger.com,1999:blog-2352189175211648260.post1761401062404157184..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 459/09 – Freeze! Or I’ll Shootorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-2352189175211648260.post-74907375324816895072013-02-26T13:08:17.561+01:002013-02-26T13:08:17.561+01:00It looks as if the board was aching to inquire int...It looks as if the board was aching to inquire into sufficiency of disclosure:<br /><br /><i>A problem arises, however, for this scheme when it is combined with the claimed requirement for triple-band operation at 900 MHz, 1800 MHz and 2100 MHz. <br /><br />Due to the fact that the specified operating frequencies are not related by an integer divisor of the highest frequency [...] <b>it is not clear how</b> a realistic juxtaposition of the three monoband arrays could be conceived so as to arrive at coinciding positions for the provision of single triple-band antennas.<br /><br />[...] Nor does the remainder of the <b>patent specification</b> illustrate an embodiment of an antenna array according to claim 1 of any of the requests under consideration.</i><br /><br />But Art. 83 was out of bounds, as the decision under appeal did not go into that issue at all:<br /><br /><i>By decision dispatched on 13 October 2008 the opposition division revoked the patent for the reasons of lack of novelty (A. 52(1) and 54(3) EPC), added subject-matter (A. 123(2) EPC), extension of protection conferred (A. 123(3) EPC), <b>and lack of clarity (A. 84 EPC 1973)</b> of the main request and four auxiliary requests then on file.</i><br /><br />The opponent also never invoked Art. 100(b)/83. The notice of opposition only affirmed "Der Gegenstand des Streitpatentes ist gemäß Artikel 52 bis 57 EPÜ nicht patentfähig [...]". (Where is the substantiation for Art. 53? 55? 57? even 56!?!) The expression "mangelnde Offenbarung" was employed twice throughout the proceedings, but improperly, as it was really added subject-matter that was meant.<br /><br />The prior art cited by the opponent wasn't very good. D1 was a 54(3) document (strictly usable for novelty, and therefore much easier to circumvent, and circumvented it was), and the other evidence submitted was prior use, of limited value. The OD introduced a new document (out of frustration?), but it was also 54(3) document. <br /><br />It was the proprietor/appellant who wanted a question regarding Art. 83 referred to the EBA. Why? Because there was a feeling that it was really Art. 83 that was being discussed?<br /><br />Usually, one tries to address clarity in opposition issues by masquerading them under the guise of sufficiency of disclosure. Here, it very much appears to have been the other way around - Art. 84 for Art. 83, which explains the casuistry. But it was in truth the OD who had initially become creative.<br /><br />Did the board make a choice between a bad and a worse outcome?<br /><br />Things would have been so much simpler if good 54(2) prior art had been submitted in due time, and the applicant challenged in clarifying the "invention", which indeed is very poorly defined.<br /><br />I am convinced that the idea of interspersing antennas arrays to cover several more or less harmonically related bands would have been arrived at in the days of shortwave radio, where wavelengths are measured in decameters rather than decimeters, and antennas needed hectares of dear real estate. I would wager a couple of yen on finding a document describing a <a href="http://en.wikipedia.org/wiki/Curtain_array" rel="nofollow">curtain array</a> with interspersed elements for, say, the 31m, 25m, 11m, falling within the wording of claim 1 as granted. Or an overseas telephone station with arrays of rhombics. A first thought of mine was the infamous soviet <a href="http://www.youtube.com/watch?v=hH6C0kun5DU" rel="nofollow">woodpecker</a> transhorizon radar, but the array shown does not quite have what I want. I found in Espacenet <a href="http://worldwide.espacenet.com/publicationDetails/biblio?CC=US&NR=5160936A&KC=A&FT=D&ND=5&date=19921103&DB=EPODOC&locale=en_EP" rel="nofollow"> US5160936</a>, which is quite cute.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-45501340959819117942013-02-25T23:56:14.540+01:002013-02-25T23:56:14.540+01:00The question for the EBA was about 100b, not 84, s...The question for the EBA was about 100b, not 84, so refused for lack of relevance for the issue of the decision.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-58634193098556083352013-02-25T23:53:35.217+01:002013-02-25T23:53:35.217+01:00Anon, perhaps because Art. 82 is about application...Anon, perhaps because Art. 82 is about applications, not granted patents?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-58542461828818104922013-02-25T15:08:44.826+01:002013-02-25T15:08:44.826+01:00How many of the commernters have read the Decision...How many of the commernters have read the Decision, I wonder. I suggest to read it and then ponder what you would have done, given the facts.<br /><br />As to the logic of the decision, I can't fault it. Can you?<br /><br />As to the function of dependent claims, yes I do know what they are for. And so? Parties that go through to issue with gobbledygook in their dependent claims (or without the dependent claims they are going to need if ever validity comes under attack) have always done so at their own risk. Was it ever otherwise?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-21743302183174953212013-02-25T12:26:47.867+01:002013-02-25T12:26:47.867+01:00Did not read the entire decision, but I have the t...Did not read the entire decision, but I have the two following comments:<br /><br />1/ why did this board not comment G1/91 which excluded A82 from the EPC requirements to fulfill? This is relevant, because the general comment in the head note leads to think that ALL the EPC requirements are now to be fulfilled...<br /><br />2/ this board implicitely states that only the independent claims are examined... Should be clarified.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-89854450604361749962013-02-25T11:47:19.341+01:002013-02-25T11:47:19.341+01:00Thank you for the post.
Interestingly, the paten...Thank you for the post. <br /><br />Interestingly, the patentee requested a referral to the EBA, which was refused. <br /><br />A rogue board?<br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-20811592161988671012013-02-25T09:35:45.957+01:002013-02-25T09:35:45.957+01:00MaxDrei, don' you really know why dependent cl...MaxDrei, don' you really know why dependent claims exist? Let me tell you: in nullity cases you are, by most national law systems, not allowed to change your claims. At best, you may delete the offending claim(s) and end up with was originally a dependent claim. So there is another reason why one should bother about clarity of dependent claims. Although it is in fact the same issue: dependent claims may become independent claims in the course of the proceedings.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-78755205263373380022013-02-25T07:49:03.622+01:002013-02-25T07:49:03.622+01:00Common sense tells me that real life Examining Div...Common sense tells me that real life Examining Divisions do not explore every clarity issue that might arise whenever any dependent claim is imported into the independent claim on which it depends.<br /><br />So it is also common sense to check compliance with Art 84 when such claim-swallowing happens during opposition.<br /><br />And if this becomes the norm, what will be the consequence for DG1? Henceforth (going forwards) why should an ED bother to look at all at the dependent claims? Get the independent claim in compliance with the EPC and you're done.<br /><br />But does that really matter? Americans don't care about dependent claims. Should we? Why?For the most efficient division of work at the EPO, to manage the workload and clear out the backlog, does it not make sense to leave for another day any detailed scrutiny of dependent claims, and openly allocate the first scrutiny of Art 84 issues on claim combinations to the OD rather than the ED?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-50780967213260166062013-02-25T04:17:46.446+01:002013-02-25T04:17:46.446+01:00I feel that this decision has become necessary in ...I feel that this decision has become necessary in view of the lack of examination of A84 during grant. Only too often are opponents confronted with a combination of a clear main claim with an unclear dependent claim the clarity of which had not been examined, but the contents of which should now "define" the invention. How can one know if one infringes such a claim? Anonymousnoreply@blogger.com