tag:blogger.com,1999:blog-2352189175211648260.post737152119437033427..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1188/10 – Range Pickingorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-2352189175211648260.post-17647999842435638692011-12-16T10:40:58.089+01:002011-12-16T10:40:58.089+01:00I perfecly agree with Myshkin in what the test sho...I perfecly agree with Myshkin in what the test should be. <br /><br />And the best way to provide support for such a generalization in the application as filed is to mention specific advantages/the "technical contribution" of the individual features or of sub-combinations of features in the context of the invention in the original specification. <br /><br />The skilled person will therefore immediately deduce the technical teaching that the specific advantages mentioned depend on the feature under consideration and not on the specific context from the documents as originally filed.<br /><br />Further remark: G1/93 is not the only case where the existence of features without "technical contribution" is mentioned. Looking at the case-law for <i>novelty</i> of the selection of sub-ranges, it turns out that sub-ranges which are not narrow, not "far remote" and/or not the result of a "purposive selection" (which in turn means that some (technical?) advantages should be associated with the sub-ranges) are not novel since they do not convey any new (technical?) information.<br /><br />Given this and the rule that the same standards should be applied for novelty and disclosure, this means that a limitation to such a sub-range should not contravene A 123(2) EPC.Michael Thesenhttps://www.blogger.com/profile/11216937613426928728noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-4448774106717559662011-12-15T18:40:26.009+01:002011-12-15T18:40:26.009+01:00Limiting the range of a technical parameter does p...Limiting the range of a technical parameter does provide a technical contribution. The limitation might not be inventive or even novel, but it is technical nonetheless.<br /><br />The Board in the decision being discussed here has concluded that the limitation is in fact implicitly disclosed, apparently for the reason that the skilled person would recognise that the values used in the examples can be generalised.<br /><br />In my view it is not sufficient for Art. 123(2) that the skilled person would recognise that some feature "can be generalised". That is inventive step. Imho the test is, or should be, whether the skilled person would recognise that the application as filed discloses this generalisation, i.e. whether the application as filed, read as a whole, tells the skilled person to use those values also in a more general context.<br /><br />Something is not implicitly disclosed if the skilled person would merely recognise that its presence fits with the disclosure, something is only implicitly disclosed if its absence does not fit with the disclosure.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-58058773122810982402011-12-15T17:11:50.561+01:002011-12-15T17:11:50.561+01:00Looking at G1/93 2nd headnote: an undisclosed feat...Looking at G1/93 2nd headnote: an undisclosed feature, added during examination, not providing a technical contribution, merely limits the protection conferred, ... is not be considered as A 123(2)...<br /><br />Are they reviving this statement?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-79168599596916285992011-12-14T13:25:49.074+01:002011-12-14T13:25:49.074+01:00Yes, that is correct. Whenever you turn a stone in...Yes, that is correct. Whenever you turn a stone in the field of patentability, you will find a skilled man under it.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-16514968484330258612011-12-14T12:47:13.069+01:002011-12-14T12:47:13.069+01:00But the assessment of novelty requires interpretat...But the assessment of novelty requires interpretation. Through whose eyes, therefore, must the added subject matter be seen to be present? Why, that ever-useful nerd (but not a complete android) the Skilled Man.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-11796324578362660262011-12-13T14:28:52.879+01:002011-12-13T14:28:52.879+01:00I would say that this finding is quite out of line...<i>I would say that this finding is quite out of line with the established case law.</i><br /><br />So would I. <br /><br />The reference in the reasons to the notional "skilled person", normally invoked for inventive step and sufficiency of disclosure, should set off alarm bells. Added subject-matter is a matter of strictly determining whether something is there or not, as the former <b>novelty</b> test suggests.Anonymousnoreply@blogger.com