T 1926/09 – No Spanking Here

From time to time, “appellants” who have not filed a notice of appeal in due time try to argue that the payment of the appeal fee should be sufficient to establish that an appeal had been filed. This attempt invariably fails, but it sometimes gives the boards an opportunity to make a point or two.

[1] According to A 108, notice of appeal must be filed within two months of notification of the decision. The applicant does not dispute that no notice of appeal was filed in due time.

[2] The applicant however contends that a de facto notice of appeal existed in that the appeal fee was paid in time, thus clearly indicating that an appeal was being made which could only have been directed against the decision of 23 April 2009.

[3] The board cannot accept this argument. It was already decided in J 19/90 [2.1.2 to 2.1.4] that merely paying the fee for appeal does not constitute a valid lodging of an appeal. According to said decision, this applies even if the object of the payment was indicated as being a “fee for appeal” relating to an identified patent application and the form for payment of fees and costs was used.

This decision was confirmed in subsequent decisions of the boards of appeal, for example T 445/98 [3] and T 371/92 [3.2, 3.4-5].

Furthermore, the board draws attention to decision T 778/00 [2.1,2,4].

This decision again confirms that the mere appeal-fee payment is no substitute for the procedural act of filing the appeal as prescribed in A 108, first sentence, in conjunction with R 99(1)(b) and (c) (R 64(a) and (b) EPC 1973), because the appeal fee could have been paid by the representative before the party concerned has decided whether or not an appeal should be filed.

[4] The applicant argues that decisions J 19/90 and T 445/98 were both taken in opposition cases rather than ex parte proceedings, where different considerations in the exercise of any discretion should apply. However, the present board is of the opinion that it is in the public interest in both ex parte and inter partes proceedings to be informed with certainty about the applicant’s intention of challenging a first-instance decision. Consequently, there can be no discretion regarding the procedural acts prescribed in A 106 to A 108 in conjunction with R 99 for the filing of an appeal.

Therefore, the present board does not see any valid ground to depart from the case law cited.

[5] The applicant also raised the issue of “natural justice”. It was argued that if a patent application was refused without appeal, the applicant was being unjustifiably “punished” for a perceived “offence”. The applicant was thus forced to seek protection by filing a divisional application of the parent application of the current case which was still pending. It was the applicant’s understanding that filing such divisional applications was not considered by the EPO to be in the public interest and might even constitute an abuse. Therefore, it was unacceptable and improper for the EPO to infer an understanding of the EPC which promoted such a course of action.

The present board wishes to observe the following. The board is far from “punishing” anybody for “offences” perceived or real, but is bound to administer the law as laid down in the Convention. Considerations relating to the filing of a divisional application are not relevant for the present case and cannot, therefore, be taken into account by the board.

[6] For these reasons, the appeal must be rejected as inadmissible (R 101(1)).

Note that the Board found the appeal to be inadmissible and, therefore, refused to reimburse the appeal fee. One might have argued that the appeal should have been deemed not to have been filed, which would have had the consequence that the appeal fee was to be refunded:

“Reimbursement of appeal fees is possible in a case in which no notice of appeal is filed or deemed to have been filed within the time limit prescribed by A 108, so that no appeal has ever existed.” (T 41/82 [1])

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NB: This decision was also reported here.

T 137/09 – Waking Up Late

The present decision, the knowledge of which I owe to fellow EC member Manolis, deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD).

The admissibility of the appeal was questioned by the opponents on three grounds:

(1) The patent proprietor had filed with the grounds of appeal only new requests which were different from the one upon which it was decided at first instance and had not submitted any statement that the decision under appeal was incorrect; moreover, even though the notice of appeal mentioned as request the maintenance of the patent as granted, this request had not been maintained in the statement of the grounds of appeal; therefore, the statement of the grounds of appeal did not contain any discussion of the decision under appeal and was inadmissible.

(2) The patent proprietor had not attempted during opposition proceedings to overcome the objections raised by the opponents even knowing the OD’s opinion on the only request pending and had not even replied in writing to the objections raised; therefore, his appeal should have been limited to defend the only request pending before the department of first instance (reference was made to G 9/91).

(3) Since the objections which had led to the revocation of the patent were known to the patent proprietor at least from the summons to the oral proceedings (OPs) before the first instance, he could have submitted amended claims already during the first instance proceedings; since he had submitted new requests for the first time with the grounds of appeal and these requests did not originate from objections which became known for the first time from the decision under appeal, the appeal was inadmissible as found in the similar case T 39/05. One of the opponents submitted also that a question had to be referred to the Enlarged Board (EBA) if the present appeal, contrary to T 39/05, would have been found admissible by the Board.

[1.1] Since the patent in suit was revoked by the OD the patent proprietor was adversely affected by the decision of the department of first instance and was entitled under A 107 to file an appeal against this decision (see e.g. T 457/89 [1]).

The requirements for the admissibility of the appeal are governed by A 108 and R 99.

It has not been disputed that the patent proprietor’s appeal complies with the requirements of A 108, first and second sentence, and R 99(1)(a),(b) and (c) and R 99(3) and that a statement of the grounds of appeal was filed within four months of notification of the decision as required by A 108, third sentence. The Board has also no doubt that the appeal complies with these requirements.

[1.2] A 108, third sentence, requires also that the statement of the grounds of appeal is filed in accordance with the Implementing Regulations.

In particular, R 99(2) specifies that the statement of the grounds of appeal shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

It was not disputed that all the requests submitted with the statement of the grounds of appeal, which requests are different from the only request pending before the department of first instance, i.e. the rejection of the oppositions, intend to overcome the novelty objection based on the disclosure of document D20b which led to the revocation of the patent; moreover, the statement of the grounds of appeal contains a discussion of the novelty of the claims of the new requests with respect to the disclosure of document D20b and of the other documents cited during the opposition proceedings.

Therefore, even though the statement of the grounds of appeal does not discuss explicitly the reasoning of the decision under appeal with respect to the then pending only request, it is immediately apparent that

• the new requests try to overcome the objections of the department of first instance contained in the decision under appeal and establish therewith a causal link with the decision;
• the statement of the grounds of appeal indicates the reasons for setting aside the decision impugned;
• the statement of the grounds of appeal indicates the facts and evidence on which the appeal is based.

Therefore, the appeal complies in the Board’s view also with the requirements of A 108, third sentence, and R 99(2) (see also Case Law of the Boards of Appeal VII.E.7.6.2(a) on pages 856 and 857 as well as VII.E.7.6.2(d) on pages 858-859 and decisions T 162/97 [1.2-3] and T 934/02 [headnote 1;2]). Moreover, the above finding is not contrary to the decision G 9/91 [18], which states that

“The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the OD on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the OD has not been based … This approach also reduces the procedural uncertainty for patentees having otherwise to face unforeseeable complications at a very late stage of the proceedings, putting at risk the revocation of the patent, which means an irrevocable loss of rights.”

In fact, this decision specifies that to challenge the decision under appeal on its merits is the main purpose of the appeal but not its only purpose and relates in particular to the introduction in appeal of fresh grounds for opposition which would cause an unacceptable procedural uncertainty for patentees, i.e. it relates in particular to a legal situation very different from the present one (see also T 162/97 [1.2, last §]). Furthermore, G 9/91 [19], by stating that a patent amended during appeal proceedings is to be fully examined as to its compatibility with the requirements of the EPC, confirms implicitly that new requests based on amended claims do not render automatically the appeal inadmissible and that the patentee cannot be bound to defend its patent only on the basis of requests submitted already before the department of first instance. Therefore, the decision G 9/91 confirms implicitly also that an appeal based only on new requests can be admissible.

[1.3] As regards the [opponents’] submissions that during the opposition proceedings the [patent proprietor] had not replied to the objections raised by the opponents and by the OD and had not tried to overcome these objections by filing amended claims, the Board remarks that there are no requirements in the EPC which oblige the patent proprietor to submit any argument during opposition proceedings. Therefore, the patent proprietor’s behaviour during opposition proceedings cannot have any bearing on the admissibility of its appeal which is governed only by A 108 and R 99 (see e.g. T 457/89 [1]).

[1.4] Moreover, the fact that the [patent proprietor] had requested in its notice of appeal the maintenance of the patent as granted and that the grounds of appeal were based instead only on amended sets of claims has also no bearing on the admissibility of the appeal since, according to R 99(1)(b) and (c), the notice of appeal has to indicate which decision is impugned and a request defining the subject of the appeal, i.e. the extent to which amendment or cancellation of the decision is requested, whilst the appeal’s requests for the maintenance of the patent in a particular form have to be defined according to R 99(2) in the grounds of appeal (see T 358/08 [catchwords 1 and 2]).

This has been complied with in the present case since the notice of appeal specified the request to set aside the decision under appeal whilst the grounds of appeal clarified in which form the patent was requested to be maintained.

[1.5] According to the [opponents] it was decided in T 39/05 [1.1.2] that an appeal should not be admissible if the grounds of appeal relate to new requests which do not originate from objections which became known for the first time in the reasoning of the decision under appeal. Therefore, according to the [opponents], this decision would apply to the present case in which the objection of lack of novelty over document D20b which had led to the revocation of the patent was already known to the patent proprietor at least from the summons to the OPs before the department of first instance.

The Board remarks that the reasoning for the inadmissibility of the appeal in case T 39/05 consists of two distinct parts.

The first part of the decision, including said point [1.1.2], concerns the entitlement of the patent proprietor to file an appeal as governed by A 107; in particular, it is specified in the decision that the Boards of Appeal of the EPO had already found admissible appeals based only on new requests (see point [1.1.1] which also refers to T 162/97 discussed above); moreover, it is stated that the appeal in the specific case could have been considered to be possibly admissible if the new requests would have originated from objections become known to the patent proprietor for the first time in the reasoning of the decision under appeal (point 1.1.2).

However, the Board notes that it is clear from the last full paragraph of point [1.1.2] that this decision concerns in particular the filing of requests based on claims having a different category from that of the claims discussed before the department of first instance; moreover, since it could not be deduced from these new requests which objections raised before the department of first instance by the opponents would be overcome, such new requests could not be considered to have been filed with the intention to overcome the objections upon which the decision under appeal was based. Therefore, case T 39/05 concerns a legal situation different from the present one in which the requests submitted during appeal are in the same category as the only request pending before the department of first instance and are to be considered a reply to the novelty objection on which the decision is based.

The Board thus finds that at least this part of the decision T 39/05, concerning a different legal situation, is not applicable to the present case.

The second part of this decision, relating to the requirements of A 108(3), third sentence and therefore also to those of R 99(2), states the necessity of filing a statement of the grounds of appeal according to the Implementing Regulations and the necessity of the new requests to contain a causal link with the decision under appeal (see points [1.2.1] and [1.2.2]), requirements which have been complied with in the present case as explained in point [1.2] above.

Therefore, also this decision confirms the finding of the Board that the present appeal complies with all the requirements of A 108 and R 99 and is admissible.

[1.6] Under Article 112(1) EPC it is within the discretion of the Boards of Appeal to refer a case to the EBA if this appears necessary for ensuring uniform application of the law or a point of law of fundamental importance arises. Since in the present case the Board’s decision on the admissibility of the appeal is not contrary to T 39/05, as explained above, and thus a point of law of fundamental importance does not arise, there is no necessity to refer [the opponent’s] question to the EBA for ensuring uniform application of the law. [The opponent’s] request to refer to the EBA thus is to be refused.

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T 555/07 – Do It Differently

It is not advisable to file unannounced experimental evidence just one month before oral proceedings (OPs), because in most cases the Board will refuse to take such evidence into account. This is what happened in the present case. The case is interesting because the OPs were finally postponed (due to the general air traffic breakdown following the eruption of Eyjafjallajökull in Iceland) and because the patent proprietor had some good reasons for filing the results belatedly.

[1.1] According to Article 13(1) RPBA […], an amendment of the party’s case after it has filed its grounds of appeal or its reply thereto may be admitted and considered at the Boards discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA states that amendments made after oral proceedings (OPs) have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs.

[1.2] The Board notes the following facts, undisputed by the [patent proprietor]:

- the new data have been submitted by the [patent proprietor] almost three years after the [opponent’s] statement of the grounds of appeal and only about one month before the initially arranged date for OPs before the Board of 21 April 2010 […];

- these data aim at demonstrating an advantageous technical effect of the CW method of the invention vis-à-vis the prior art disclosed in document D23,

- the relevance of this citation in respect of inventive step, although not expressly considered in the decision under appeal, was at least extensively discussed in the grounds of appeal, - after the grounds of appeal the [opponent] has made no further submission preceding (and, thus, possibly justifying) the filing of new experimental data,

- the [patent proprietor] has not expressed in its reply to the grounds of appeal the intention to carry out experimental tests, nor has announced immediately after receiving the summons to OPs that experimental results were going to be filed before the hearing,

- it was not possible for the [opponent] to verify the new data or to provide counter evidence in the few weeks comprised between the date of filing of these data and the date initially scheduled for OPs, or in the additional few weeks available in consequence of the postponement of the OPs from 21 April to 18 June 2010 due to unforeseeable force majeure.

The Board concludes therefrom that the unannounced filing of the new data about one month before the initially arranged date for the OPs constitutes an amendment of the [patent proprietor’s] case that takes by surprise the Board and the [opponent] and that raises issues that this latter cannot reasonably be expected to deal with without adjournment of the hearing.

[1.3] The Board finds irrelevant in this respect the [patent proprietor’s] argument that the [opponent] should have - in the [patent proprietor’s] opinion - either preventively requested in the grounds of appeal sufficient time for providing counter evidence in the hypothetical case that experimental data were subsequently filed by the [patent proprietor], or at least reacted to the filing of the new data on 19 March 2010 by requesting a postponement of the hearing.

In the opinion of the Board, neither the presence or absence of a preventive generic declaration of intention in the grounds of appeal (to provide counter evidence to any experimental data possibly filed by the counterpart in the subsequent appeal proceedings) nor the [opponent’s] choice on how to react to the filing of the new data have any bearings on the question whether the unannounced filing of the new data about one month before the already arranged OPs takes by surprise the Board and the [opponent] and raises issues that these latter cannot reasonably be expected to deal with without adjournment of the hearing.

Moreover, the Board finds the further submission of the [patent proprietor] that the main reason for the belated filing of the new data was the difficulty (also mentioned by the [opponent]) in obtaining some of the ingredients needed for replicating the examples of document D23, insufficient for rendering admissible the filing of previously unannounced experimental data.

Indeed, even assuming that this difficulty was actually the sole reason for the delayed filing of the new data, still the [patent proprietor] should have acted differently in order to avoid taking by surprise the Board and the other party at such late stage of the appeal proceedings. For instance, it should have promptly informed the Board and the other party on the nature of the difficulty encountered and on the then ongoing attempts to overcome this difficulty.

Moreover, when the needed ingredients had become available, the [patent proprietor] should have again promptly informed the Board and the [opponent] that experimental work was finally going to be started, possibly announcing also the expected date for the filing of the results.

[1.4] Therefore, the Board has decided not to admit the new data into the appeal proceedings.

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T 1088/08 – Dangerous Percentages

The applicant appealed against the decision of the Examining Division to refuse its application. Claim 1 before the Board was drafted as follows:

1. Dietary food for use in the complementary dietary treatment of diabetes mellitus, comprising a lipid phase (Fettphase), wherein the composition in the lipid phase contains:
(a) 10 to 30% of triglycerides of octanoic and/or decanoic acid (caprylic acid; C8:0 and/or capric acid; C10:0);
(b) 20% to 60% of oleic acid;
(c) 10 to 35% of linoleic acid;
(d) 3 to 10% of α-linolenic acid.

The Board raised a clarity objection.

*** Translation from the German ***

[3.1] The appellant is to be approved in that in the present case the objection of lack of clarity was first raised by the Board of appeal. However, this way of proceeding is consistent with the principle established by G 10/93 [headnotes] according to which the board can include requirements which the ED did not take into consideration in the proceedings if there is reason to believe that such a requirement has not been met. The appellant has been given sufficient opportunities to express its opinion in regard of the objection of lack of clarity raised by the Board, as the objections had already been raised in the written proceedings in the notifications dated March 24 and July 23, 2010.

[3.2] In claim 1 the content of components (a) to (d) is given in “%”. The appellant has not contested that this indication as such leaves open whether this means percents by weight, percents by volume or mol percents.

[3.2.1] The appellant has expressed the opinion that based on the indication of grams on page 12 and in the example of the application as filed, it was clear that the percentages in claim 1 have to be percents by weight. However, as already mentioned in T 1129/97 [2.1.2], the clarity requirement enshrined in A 84, as the EPO’s boards of appeal have consistently ruled, demands that the claims be clear per se for a person skilled in the art with general knowledge of the technical field in question, without the need to refer to the description of the patent in suit. As a consequence, the appellant’s argument based on the description cannot succeed.

[3.2.2] It remains to be checked whether the skilled person, based on his general knowledge, would have understood the indication “%” in claim 1 to mean percent by weight.

In this context the appellant referred to D13 […] where it is stated that the percentages in D13 refer to weight.

D13 discloses guidelines (Leitsätze) for edible fats and oils. First it has to be stated that claim 1 does not necessarily contain edible fats or edible oils. Rather, claim 1 is very generally directed to dietary food comprising a lipid phase. Even the reference in the application as filed […] to olive, colza, canola and sunflower oil as sources for the acids of the claimed lipid phase does not imply that those oils have to be contained in a composition according to the claims.

Therefore, general knowledge that is possibly evidenced by D13 in the context of edible fats and oils cannot be taken into account for the interpretation of claim 1 that is not limited to edible fats and oils. Thus the appellant’s argument based on D13 cannot succeed.

Independently, the appellant’s argumentation is not consistent with the publication referred to as D9 in the examination proceedings, which concerns polyunsaturated fatty acids found in edible oils of maritime origin. In particular, Table 1 of this document shows unambiguously that fatty acid contents of fish and seal oils are also given in mol percents. Therefore, even if the lipid phase referred to in claim 1 were limited to edible fats and edible oils, the percentages in claim 1 would not necessarily refer to percents by weight.

The appellant has also pointed out that the skilled person would read percentages as percents by weight if the final product as claimed was a (semi)solid product such as for example margarine or fatty spread (Streichfett). Even if this argument were correct, it cannot apply to the whole extent of claim 1 because this claim is not limited to margarine or fatty spread. Thus this argument of the appellant is not persuasive either.

From the above it follows that it is not clear to the skilled person having general knowledge whether the percentages in claim 1 refer to percents by weight, percents by volume or mol percents.

However, depending on [the nature of the percentage], claim 1 covers different contents of components (a) to (d).

Thus the contents of these components in the composition of claim 1 are unclear.

The appeal was dismissed.

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T 1931/07 – Vae absentibus

In a comment to a recent post, a commentator mentioned the Examiner’s fear that applicants may not show at oral proceedings (OPs). The Boards do not have the same problem, because they have Article 15(3) RPBA, which is indeed very powerful.

[1.1] In the OPs before the Board the [opponent] presented a further objection with regard to the main request: in the course of the discussion it turned out that Claim 1 was considered to extend the protection conferred.

[1.2] The Board had to clarify the question whether the objection raised for the first time in the OPs was to be admitted, in particular since the [patent proprietor], although duly summoned, was not present at the said proceedings.

[1.3] Article 15(3) RPBA […] reads as follows:

“The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.”

[1.4] Furthermore, it is common practice at the EPO and in particular at the Boards of Appeal to examine amended claims with regard to the requirements of A 123(2) and (3) (see T 341/92, [2.3.4]; also T 915/02 [3.3]). The [patent proprietor] must therefore have been aware that such an examination would take place and that further objection could be raised in the OPs, all the more given the fact that with regard to the amended wording of the main request the [patent proprietor] should have been conscious that the extension of the protection conferred would arise from the comparison of the wording of the respective claim according to the patent as granted and the corresponding claim of the main request.

[1.5] By not reacting to the objections already raised in the annex to the summons and in particular by not attending the OPs the [patent proprietor] consciously decided not to present (further) comments.

[1.6] Thus, the Board decided to admit the objection with regard to A 123(3) of Claim 1 of the main request.

This objection proved fatal to the main request on file.

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NB: This decision has already been reported on Le blog du droit européen des brevets.

T 520/07 – Appeal = New Deal

** Translated from the German **

[2] In its decision G 4/95 the Enlarged Board of appeal (EBA) found that there is no legal right to oral submissions by an accompanying person in oral proceedings (OPs) in opposition and opposition appeal proceedings. Rather, such oral submissions can only be made with the agreement and within the discretion of the EPO. In the exercise of this discretion, the criteria developed by the EBA have to be taken into account. If a request is made at the OPs, it should in the absence of exceptional circumstances be refused unless each opposing party agrees to the making of the oral submissions requested. (G 4/95 [10]).

In the present case the written submission dated January 16, 2009, only indicated that the employee of the [patent proprietor] [acting as] professional representative would represent the [patent proprietor] in the OPs [and that he would be] accompanied by Mr. S., and that the professional representative would make his submissions in the French language. The written submission did not contain a request for the accompanying person to present oral submissions before the Board. This request was made for the first time during the OPs before the Board.

The Board is of the opinion that there are no exceptional circumstances which would justify an admission of the oral submissions.

In particular the Board does not share the opinion of the [patent proprietor] that its request could not take the [opponent] by surprise because the same accompanying person already made oral submissions during the OPs before the Opposition Division (OD). Appeal proceedings are wholly separate and independent from the first instance proceedings. (T 34/90). Consequently, requests that have been made during first instance proceedings are not effective in subsequent appeal proceedings but have to be made during the Board of appeal (T 34/90 and T 501/92).

Therefore, it cannot be argued that the [opponent] should not have been surprised by oral submissions of the same accompanying person. Rather, it had the right to expect that for such oral submissions to be allowed during the OPs before the Board there would have to be another request taking into account the conditions laid down in G 4/95.

As the [opponent] has not accepted these oral submissions, the [patent proprietor’s] request that oral submissions of an accompanying person be admitted had to be dismissed.

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

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T 2274/08 – Milky Ways

Claim 1 of the opposed patent differs as follows from claim 1 as filed (click to enlarge):

In its appeal against the decision of the Opposition Division (OD) to reject the opposition, the opponent pointed out that this amendment violated A 123(2).

*** Translated from the German ***

[2.1] During the examining proceedings the feature “flowing out via the floor region” has been inserted into the independent claims.

This process feature is not literally disclosed in the application as originally filed. However, from Figures 2f, 2g and 2h it is apparent that the milk leaves the measuring chamber flowing out via the floor region. From the illustration of the embodiment, the reader skilled in the art can see that the floor region of the measuring chamber consists in a wall having no holes or openings, so that the milk that is in the measuring chamber can only leave the measuring chamber by flowing over the floor region without traversing it.

The yellow highlighting has been added by me.

[2.2] The opponent has pointed out that although this process feature could be extracted from the figures, it represented an inadmissible intermediate generalisation because it had been taken in isolation from the other features disclosed in combination by those figures.

[2.3] According to the established case law of the Boards of appeal, this is only allowable if the corresponding feature has not been disclosed with the other feature such that it cannot be separated from them, i.e. in the absence of any clearly recognisable functional or structural relationship among said features (see, for example, T 1067/97 [2.1.3]).

[2.4] In the present case, Figures 2f to 2h disclose not only the feature objected to but also fill level sensors, a closing body and a discharge edge. The fact that the milk in the measuring chamber can leave the measuring chamber “flowing out via the floor region” only depends on the structure of the floor region, which has no holes or openings. Therefore, there is no relationship between this process feature, the fill level sensors, the closing body and the discharge edge.

As a consequence, the amendments that have been carried out in the independent claims do not violate the requirements of A 100(c).

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

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Related decisions can be found here and here.

T 9/08 – Documentum Ex Machina

This case is interesting because the Board raised a substantial procedural violation of its own motion and remitted the case to the first instance although none of the parties had requested such a remittal.

[5.1] According to A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

[5.2] In the present case the contested decision found that the subject-matter of claim 1 as granted involved an inventive step. Under the heading “Inventive step (A 56)” the Opposition Division (OD) gave […] its reasoning on inventive step. It stated that with regard to the problem-solution approach

“[t]he closest prior art is identified in a fluorescent polymer having one or more repeating units of formula 1 and a molecular weight comprised within the claimed range. This polymer is described for example in document EP-A- 0 964 045”.

Thus, document EP-A-0 964 045 was clearly identified as representing the closest state of the art and starting point for the assessment of inventive step in the decision under appeal.

[5.3] The Board, after having inspected the content of the file, noted in its communication pursuant to Article 15 RPBA that the closest prior art document EP-A-0 964 045 had not been introduced into the proceedings before the department of first instance, but was mentioned for the first time in the written decision under appeal.

A comparison of the minutes and the decision under appeal further revealed that at the oral proceedings (OPs) before the OD held on 16 October 2007 the parties relied on the arguments in their written submissions […], so that even at the OPs before the OD it had not been discussed with the Parties that the closest state of the art in the assessment of inventive step was this fresh document.

Thus, in relying on a closest prior art document which had never been discussed with the parties, and which was cited for the first time in the written decision under appeal, the OD’s decision violated the parties’ right to be heard pursuant to A 113(1).

[5.4] For the above reasons the Board holds that the OD’s handling of the case constitutes a substantial procedural violation which justifies the remittal of the case to the first instance for further prosecution.

[5.5] The decision under appeal rejects the [opponent’s] objection against novelty in finding that the subject- matter of the patent in suit according to the then pending claims was novel and that document D12 supporting that objection was not admitted into the proceedings before the OD. Therefore, the [opponent] in any case had to file an appeal so that the reimbursement of the appeal fee, which was not requested, is not equitable.

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This decision was also reported on Laurent Teyssèdre’s blog. If your command of the French language is sufficient, you should definitely have a look at Laurent’s post as well as his readers’ comments (don’t miss the one reporting a - hopefully rare - case of renvoi during first instance proceedings).

T 4/05 – Doubts Are Not Enough

** Translated from the German **

[2.1] The [patent proprietor] pointed out that the opposition was inadmissible because the identity of the opponent could not be determined without any doubt.

In the notice of opposition filed on July 8, 2002, the opponent is unambiguously identified as “3M Company” having the postal address “PO Box 33427, St Paul, Minnesota, 55133-3427, USA”. The trade name “3M Company” designates the opponent in an unambiguous way and does not leave any room for interpretation.

[2.2] The [patent proprietor] submitted that the opposition had been filed in the name of the “3M Company” having the above postal address, but that the patent register entry of the opposed patent indicated that the opponent was the “Minnesota Mining and Manufacturing Company”. An extract of the patent register was filed as evidence together with the statement of grounds of appeal. Moreover, the power of attorney that was filed before the proceedings before the Board of appeal gave a different postal address and, therefore, also a different registered office (Firmensitz), i.e. “3M Center, Saint Paul, Minnesota 56144, USA”. Also, three companies (“Minnesota Mining and Manufacturing Company”, “3M Innovative Properties Company” and “3M Innovative Properties Company Office of Intellectual Property Counsel”) had the same postal address. Evidence for this was provided in the form of extracts from the patent register filed together with the statement of grounds of appeal. The use of different company names suggested that the designation “3M Company” was an acronym behind which several legal persons could be expected. Therefore, the real identity of the opponent at the time of filing the opposition was unclear. The [patent proprietor] also referred to decisions G 3/99, G 3/97 and G 4/88 as support for his argumentation.

[2.3] However, it is not sufficient to submit doubts concerning the identity of an opponent in order to negate the admissibility of the opposition. What is needed are factual submissions together with cogent evidence that corroborate them. Nothing of that kind has been filed in the present case.

The entry into the patent register, an extract of which has been filed by the [patent proprietor] has been made by the EPO alone and cannot be imputed to the opponent, irrespective of whether it identifies the opponent correctly or not. Therefore, this entry cannot affect its party status.

The general power of attorney # 33692, issued on February 22, 2001, only concerns the powers of the professional representative but does not affect the party status of the opponent. Moreover, the professional representative is sufficiently authorised by the General Power filed by the 3M Company on September 12, 2005.

The [patent proprietor] has not filed the extract from the commercial register which, according to its submissions during oral proceedings (OPs) before the Board, showed a different company name. Consequently, this cannot be considered as evidence showing that the opponent’s identity was unclear – as indeed the [patent proprietor] acknowledged at the OPs.

The [patent proprietor’s] objection that two other companies were trading at the same address also has to fail because this is a mere observation and cannot affect the party status of the opponent, who had been unambiguously identified, in the proceedings.

The decisions cited by the [patent proprietor] concern the party status in common oppositions (G 3/99), the transfer of an opposition to a third party (G 4/88) and the filing of an opposition by a straw man (G 3/97). Therefore, they deal with questions that are different from the present case and, consequently, are not relevant.

For the reasons given above, the Board comes to the conclusion that the opposition complies with the requirements of A 99(1) EPC 1973 and R 55a) EPC 1973, which were in force at the time when the opposition was filed and, therefore, are to be applied (see T 1366/04 [1.2]).

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T 1049/07 – Licence To Delete

When a claim as granted contains a misleading feature, can you eliminate it without infringing A 123(3)? In the present case, such an amendment was found to comply with A 123.

Claim 1 as granted read:

1. A substantially boron-free glass composition comprising the following by mole percent:

62-68% SiO2 / 2-6% Al2O3 / 10-16% Na2O / 0-6% K2O / 3-10% CaO / 0-8% MgO / 0-3% BaO / 2-6% ZnO / 0-2% TiO2 / 0-2% F2

wherein the total amount of Na2O and K 2O is less than 18 mol% and wherein the composition further contains Li2O in an amount no greater than 8 mol% and in an amount sufficient to render the HTV of the glass composition between about 1010°C (1850°F) and about 1204°C (2200°F), the liquidus temperature of the glass composition being at least 139°C (250°F) below said HTV, said HTV being defined as the temperature at which glass viscosity is 100 Pa•s (1000 poises).

Claim 1 of the request as maintained by the Opposition Division (OD) read:

1. A substantially boron-free glass composition comprising the following by mole percent:

62-68% SiO2 / 2-6% Al2O3 / 10-16% Na2O / 0-6% K2O / 3-10% CaO / 0-8% MgO / 0-3% BaO / 2-6% ZnO / 0-2% TiO2 / 0-2% F2 

wherein the total amount of Na2O and K2O is less than 18 mol% and wherein the composition further contains Li2O in an amount no greater than 8 mol%, the glass composition having an HTV of between about 1010°C (1850°F) and about 1204°C (2200°F), the liquidus temperature of the glass composition being at least 139°C (250°F) below said HTV, said HTV being defined as the temperature at which glass viscosity is 100 Pa.s (1000 poises).

The opponent filed an appeal and pointed out that this claim violated A 123(3). The Board does not agree:

[1.2] The [opponent] held claim 1 as maintained in the contested decision to contravene A 123(3).

In this respect, it argued that the feature:

“the composition further contains Li2O in an amount no greater than 8 mol% and in an amount sufficient to render the HTV of the glass composition between about 1010°C (1850°F) and about 1204°C (2200°F)”

in granted claim 1 had been replaced in claim 1 as maintained in amended form by the following allegedly non-equivalent feature reading: 

“the composition further contains Li2O in an amount no greater than 8 mol%, the glass having an HTV of between about 1010°C (1850°F) and about 1204°C (2200°F)”.

Consequently, claim 1 as maintained encompassed compositions which were not covered by claim 1 as granted, in particular compositions containing almost no Li2O and wherein the HTV parameter was regulated by other oxides such as Na2O.

It argued in particular that in claim 1 as maintained the amount of Li2O could be chosen freely between 0% and 8 mol%, whereas in accordance with claim 1 as granted, the amount of Li2O was functionally linked to the achievement of an HTV in the claimed range. Hence, it had necessarily to exceed the lower limit of 0%. Consequently, claim 1 as granted excluded glass compositions having 0% Li2O, whereas the claim maintained by the opposition division allowed such compositions. The scope of protection conferred by the claims had thus been extended.

[1.3] The board does not share the [opponent’s] view for the following reasons.

[1.3.1] According to A 123(3),

“the European patent may not be amended in such a way as to extend the protection it confers”.

Therefore, in assessing whether claim 1 at issue meets the requirements of A 123(3), the extent of protection conferred by claim 1 as granted has to be compared with that of claim 1 as maintained.

[1.3.2] In the present case, it is observed that both claims under dispute (i.e. claim 1 as granted and as maintained) contain the feature “the composition further contains Li2O in an amount no greater than 8 mol%”. Although a lower limit is not explicitly stated in the claim(s), this feature clearly indicates that Li2O is a mandatory constituent. As a logical consequence, in both glass compositions claimed the lowest possible amount of Li2O cannot be zero, as alleged by the [opponent].

As regards the lowest possible amount of Li2O in claim 1 as maintained, the board - in the absence of any convincing counter-argument - accepts the respondent’s argument that this amount has to be set as being “above the analytical detection limit for Li2O”.

In claim 1 as granted, the amount of Li2O is not only defined as being “no greater than 8 mol%” - as in claim 1 as maintained - but also as being “sufficient to render the HTV of the glass composition between about 1010°C (1850°F) and about 1204°C (2200°F)”.

The board recognises that on reading this claim version, the skilled person might be misled to assume the presence of an exclusive functional link between the amount of Li2O in the glass composition and the HTV being between about 1010°C and about 1204°C. However, the study of the description - which in the present case is necessary for the detailed assessment of the extent of protection of this claim - reveals that no such link (or at least not an exclusive one) in fact exists, for the following reasons.

Although paragraph [0027] of the patent in suit indicates that Li2O acts as a glass viscosity reducer, it can be seen from paragraphs [0023], [0024] and [0025] that Li2O is not unique. Other components, such as fluorine, TiO2, CaO and MgO, are also disclosed as having this property of reducing glass viscosity. Since Li2O is thus not the sole viscosity-reducer in the glass composition claimed, it is impossible to estimate its contribution to the viscosity and what the contribution of the other components is. For the same reason, it is impossible to assess whether Li2O contributes to the high temperature viscosity (HTV) and what that contribution is.

In fact, the contested patent itself confirms that Li2O does not automatically lead to an HTV of between about 1010°C and about 1204°C, since Example 1 of the contested patent discloses a glass composition not containing Li2O but having a HTV within that range.

[1.3.3] For the above reasons, the board is convinced that the patent has not been amended in such a way as to extend the protection it conferred in its version as granted.

Therefore claim 1 as maintained, and independent claims 6 and 12 - amended in the same way as claim 1 - fulfil the requirements of A 123(3).

Strange, isn’t it?

Anyway, it is interesting to see that the feature “in an amount no greater than 8 mol%” is understood to exclude an amount of 0 mol%. That the minimum amount is set to be equal to “the analytical detection limit” is somewhat problematic as it will necessarily change as a function of the progress of analytical methods.

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Interpretative Spotlight: « Angle Sensor »

When expounding claim features in the specification, one often tries to draft very general statements, so as to cover a great variety of embodiments. This practice is not without risks. Should the feature become critical to patentability, the Boards will, as a rule, not accept restrictions with respect to what had been disclosed in the application as filed.

In the present case, the patent proprietor appealed against the revocation of its patent by the Opposition Division (OD).

Claim 1 of the main request read:

Method for operating a milking installation (1) with at least two milking stations (3), arranged on a movable platform (2), in which a change of position of the platform (2) is determined relative to a reference point by means of a position detection unit (8, 15) with the aid of at least one angle sensor (20).

One of the crucial points before the Board is the interpretation of the term “angle sensor”. The description contains some statements on this item:

*** Translation from the German ***

[0026] The angle sensor is preferably a shaft encoder. Here, absolute shaft encoders, but also incremental encoders, can be used. Multi-turn shaft encoders can also be used.

[0027] Preferably, the angle change is determined with at least one angle encoder, especially with an absolute angle encoder. The angle encoder can also be an incremental angle encoder.

[0028] The angle output can be analogous or digital. Angle encoders are advantageous, while in the analogous method, time changes of the signal are possible.

[0029] For example, an optical sensor can also be considered (denkbar) for position determination. For example, on the outer periphery of a carousel, a periodic, for example, sinusoidal or saw tooth thin line can be present, where the local height of the line and angle on the carousel can be assigned unequivocally. By determination of the height of the line with the aid of an optical, magnetic or other sensor, in such a case, an essentially unequivocal assignment of the angle from a measuring signal can be performed.

[2.1] The [patent proprietor] has submitted that the claimed “angle sensor” was defined in paragraphs [0026] to [0028] of the opposed patent and could only be a sensor where the output is an angle. The sensors for position determination mentioned in paragraph [0029] referred to embodiments that were not claimed any longer and did not qualify as angle sensors within the meaning of claim 1.

The Board cannot endorse these explanations. Paragraph [0029] starts with the words “For example, an optical sensor can also be considered (denkbar) for position determination …”; moreover, it is said that “the local height of the line and angle on the carousel can be assigned unequivocally”, and the last sentence adds “By determination of the height of the line with the aid of an optical, magnetic or other sensor, in such a case, an essentially unequivocal assignment of the angle from a measuring signal can be performed.”

It follows, for those skilled in the art, that the sensors mentioned in this paragraph refer to a carousel milking facility and that an angle sensor within the meaning of the claimed invention does not have to directly determine the angle but only has to assign an angle to a measured signal.

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T 1284/09 – Payback Revisited

When an opponent and its legal successor both file appeals against the decision of the Opposition Division (OD), and later on withdraw the appeals, will the EPO reimburse at least one of the appeal fees?

In the present case, the OD rejected the opposition - against a patent concerning bandages containing maggot secretions (!) - on March 30, 2009. On June 8, the opponent (Bro Morgannwg NHS Trust) filed an appeal. On the very same day, another company (Zoobiotic Ltd.), which declared itself to be the “opposition assignee”, also filed an appeal. On July 31, 2009, both appellants filed identical statements of grounds of appeal. On August 5, 2010, both appellants withdrew their appeals and requested reimbursement of the appeal fee “to the extent possible”.

*** Translated from the German ***

[3] The appellants have not given any reason why one or both appeal fees should be reimbursed. The Board does not see any such reason.

[4] As the appeal proceedings were initiated only after the entry into force of the EPC 2000, A 108 in its revised version is to be applied. Thus for the reimbursement of the appeal fee, R 103 EPC 2000 is to be applied instead of R 67 EPC 1973 […].

[5] Boards of appeal order the reimbursement of the appeal fee if:

(i) the appeal is deemed not to have been filed pursuant A 108, second sentence, because the appeal fee has not been paid in due time,

(ii) interlocutory revision is granted or when the Boards of appeal deem an appeal to be allowable and such reimbursement is equitable by reason of a substantial procedural violation (R 103(1)(a)), or

(iii) the appeal is withdrawn before the filing of the statement of ground of appeal and before the period for filing that statement has expired (R 103(1)(b)).

[6] None of these alternatives applies here:

As the appeal fees have been paid in due time, this is no situation according to (i).

The appeals were withdrawn before the Boards had the possibility of deeming them allowable. There was no possibility of interlocutory revision in opposition appeal proceedings (A 109(1), second sentence). Thus reimbursement under (ii) is excluded as well.

The appeals were withdrawn after the time limit for filing the statements of grounds of appeal had expired and after the filing of those statements. Therefore, reimbursement under R 103(1)(b) (point (iii) above) is not an option either.

When a situation does not correspond to R 103(1)(b), the (full or partial) reimbursement of the appeal fee cannot be triggered by a withdrawal of the appeal ( R 103(1)(b) e contrario; T 372/99, T 1142/04 ; T 1216/04).

[7] Reimbursement of fees is also ordered when there has been a payment without legal justification (ohne Rechtsgrund), e.g. when a payment has been made by error or when too high an amount has been paid (cf. Article 12 RRF e contrario […]).

[8] Appellants I and II both filed an appeal against the same decision of the OD and both paid one appeal fee. Even if the appeals were directed against the same decision and if one appeal was filed by the original opponent and the other by a possible successor, in the case of two appeals two appeal fees become due (G 2/04 [3.2.5(a)]). The filings and the payments were made before the time limit under A 108, first sentence, together with R 126(2) […] had expired. Therefore, the payment of two appeal fees had become due and there was no payment without legal justification.

[9] As a consequence, the request for reimbursement of the appeal fees cannot be granted.

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T 1829/06 – New Jobs For Straw Men

Straw men not only file oppositions, they also engage in commercial activities as the present decision shows.

[3.1] The opponent contended that a photovoltaic module produced by the company EPV Energy Photovoltaics Inc., Princeton (US) (“EPV-module” hereinafter) and supplied to the EPO as evidence had been made available to the public by use before the priority date of the application in suit and thus was comprised in the state of the art, pursuant to A 54(2).

In particular, the [opponent] contended that the EPV-module number 326-17, supplied to the EPO as evidence, had been produced by EPV on 15 January 1999. As confirmed by the declaration of Mr. G., executive vice president of EPV Solar, the successor of EPV [...] the date “01-15-99” engraved in the module corresponded to the manufacturing date, the number “326” to the run number and the number “17” to the serial number of the plate in the run. Document A3 was an accompanying data sheet relative to I/V measurements performed by EPV on this module no. 326-17 [...].

The predecessor of the opponent at that time, the company ASE GmbH, became aware of the existence of the EPV-module and was interested in analysing it. However, being a competitor to EPV, it feared that EPV would be reluctant to deliver and thus instructed one of its employees, Mr. G. H., to order the module as a private person, thereby acting as a straw man for the opponent [...].

Thereupon Mr. G. H. contacted EPV and ordered three modules including the above EPV-module no. 326-17, as confirmed by the email exchanges between Mr. G. H. and Mrs. C. from EPV [...], the customer order dated 14 January 1999 [...] and the corresponding invoice dated 17 February 1999 [...].

Mr. G. H. billed ASE for his expenses incurred in the purchase on 3 February 1999 [...]. The modules, including module no. 326-17 were analysed and tested by ASE on 2 February 1999 and thereafter [...].

Accordingly, by the sale of the EPV-module no. 326-17 to Mr. G. H., the module was made available to the public before the priority date of the patent.

[3.2] The [patent proprietor] argued that the sale to a straw man, as in the present case, did not render the module available to the public, as not the whole public had access to it. In particular, the opponent would not have been able to buy the module. Moreover, no evidence was provided of any further sales of the module.

Furthermore, an agreement of confidentiality between EPV and Mr. G. H. had to be assumed as the copies of the e-mail correspondence submitted [...] were incomplete and an early e-mail from EPV stated “We would be happy to work with you”.

Moreover, the evidence provided of the sale contained a number of oddities, casting sufficient doubts for it to be dismissed. In particular, the bill issued by Mr. G. H. was dated earlier than the invoice, it had no receipts annexed to it and there was no apparent reason for the VAT (“MwSt”) to appear on it. Furthermore, it was unclear why the customer order contained handwritten details of the products and who made them. Finally, little was known about Mr. G. who provided a declaration regarding EPV [...].

[3.3] According to established jurisprudence, information is considered to be made available to the public even if only one member of the public had access to it and there was no bar of confidentiality restricting the use or dissemination of such information. The fact that this member of the public acted as a straw man or that the opponent itself may have had difficulties in obtaining the module from EPV is immaterial.

Furthermore, in the board’s opinion, based on the evidence on file there can be no reasonable doubt that the sale of the EPV-module to Mr. G. H. took place before the priority date of the patent and was free of any obligation to maintain confidentiality.

Accordingly, the EPV-module no. 326-17 was made available to the public by use before the priority date of the patent. The EPV-module thus is comprised in the state of the art in accordance with A 54(2).

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T 1435/06 – Down To The Roots

The present decision deals with the refusal of an application by the Examining Division (ED).

Claim 1 of the main request read:

A dental root canal sterilising and sealing kit comprising:

(a) a flowable photosensitiser which is absorbed by bacteria;

(b) an optical fibre (4,20) having a portion (5,21) at or close to the distal end which is shaped to spread radiation around and along a dental root canal (2) said fibre being adapted for introduction into a root canal so that the tip is capable of reaching the apical third of the root canal, said optical fibre being connectable proximally with means (41) for generating laser light capable of being absorbed by the photosensitiser; and

(c) obturating means for sealing the canal (2).

The applicant pointed out that the term “dental root canal sterilising and sealing kit” in claim 1 imported the feature of use in root canals unequivocally as an absolute requirement and a specific, purposively limiting feature, to be distinguished from mere suitability for the stated purpose. D1 only related to the treatment of carious lesions with simple spherical cavities in the dentine, which were entirely different from excavated root canals with many side branches, or laterals. An optical fibre designed for caries treatment was clearly distinguishable from that for an endodontic procedure. The reference to the root canal in D1 was erroneous, as became clear from the first priority document of D1. The fact that the treatment of root caries was also contemplated in D1 did not imply that the disclosed device was actually used in the root canal. The claimed optical fibre was clearly not the same as that of D1. The spherical, isotropic tip disclosed in D1 would provide less than optimum illumination and reduced activation of the photosensitiser in an elongate root canal, unless carefully moved up and down by the dentist during use. Accordingly, the fibre of D1 did not have a portion at or close to the distal end, which was shaped to spread radiation around and along a dental root canal, as defined in claim 1 in suit. With respect to the obturating means, there was no suggestion in D1 that the materials disclosed therein were suitable for sealing the root canal.

[2] Document D1 discloses a dental root canal sterilising and sealing kit comprising:

(a) a flowable photosensitiser which is absorbed by bacteria […]; (b) an optical fibre 4 having a portion 5 at or close to the distal end which is shaped to spread radiation around and along a dental root canal […], said fibre being adapted for introduction into a root canal so that the tip is capable of reaching the apical third of the root canal, said optical fibre being connectable proximally with means 41 for generating laser light capable of being absorbed by the photosensitiser; and

(c) obturating means […] for sealing the canal.

The term “dental root canal sterilising and sealing kit” does not imply any limitations further than that the claimed kit is to be suitable for sterilising and sealing the root canal. The Board considers that the wording “dental root canal sterilising and sealing kit” is in fact equivalent to the wording “kit of parts for use in sterilising and sealing a dental root canal”, employed by the applicant in a previous version of the claim during examination proceedings. This interpretation implies that the intended use of the kit is taken into consideration when assessing novelty, namely to the extent that any kit disclosed in the prior art which is unsuitable for this use is not prejudicial to the novelty of the subject-matter of the claim (T 637/92 [4.5]).

In the present case, the claim is clearly directed to a product, viz. a kit, and the wording “dental root canal sterilising and sealing” before the term “kit” does not change the product claim into a use claim (cf. T 303/90 [3.1.2, 3.2]). Moreover, a mere difference in wording as in the claim in suit is insufficient to establish novelty (see also Case Law of the Boards of Appeal of the EPO, 6th edition 2010, I.C.3.2.1).

There is no reason to believe that the above-cited reference in D1 to the root canal […], is erroneous or does not represent the technical reality intended by its author. On the contrary, there are various references to the treatment of root caries […], indicating that the disclosure of D1 is not limited to the treatment of normal caries in the dentine, but that treatment of the root is also envisaged.

Contrary to the appellant’s assertion, the priority documents of D1 do not belong to the disclosure content of D1 and are not to be taken into account when assessing novelty.

Furthermore, the spherical portion or tip 5 at the distal end of the fibre 4 disclosed in D1 is shaped to spread radiation “around and along” a dental root canal. Since the light is spread around an arc of up to 360° […], a certain portion of the radiation is spread laterally, i.e. radially from the longitudinal axis of the fibre and thus “around a dental root canal”, and another portion forwardly, i.e. in the direction of the longitudinal axis and thus “along a dental root canal”.

This is even more clearly the case when a configuration as described in the penultimate paragraph of page 8 is used, wherein the reflective outer layer of the optical fibre is removed over a certain distance from the distal end, thus forming an isotropic light-emitting tip. For the skilled reader it is implicit that the laterally spread radiation necessarily also reaches any side branches or laterals of the root canal. Moreover, the wording of the claim does not require that the radiation is spread around and along the entire dental root canal.

The fibre 4 as disclosed in D1 is furthermore adapted for introduction into a root canal so that the tip 5 is capable of reaching the apical third of the root canal. This becomes evident from lateral dimensions of the tip (800 microns or less) […], which are the same or even smaller than those mentioned […].

Finally, the obturating means disclosed in D1 are also suitable for sealing the root canal, as defined in feature (c) of claim 1 in suit.

Contrary to the appellant’s assertion, it is not necessary that D1 comprises an explicit suggestion that the materials described there are suitable for use in dental root canals. The evidence provided with the statement of grounds of appeal with respect to distinctions between endodontic procedures and the treatment of dental caries does not reveal any differences that are reflected in the wording of claim 1 in suit.

It follows that document D1 takes away the novelty under A 54(3) of the subject-matter of claim 1.

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