T 2017/07 – Extending Limitation

This decision presents an intriguing case: the Board found that what may appear to be a limitation of the claim under consideration in reality lead to an extension of the scope or protection conferred by the claim.

The granted patent had the following claim 1:

1. A hair dye composition which comprises (A) an acid dye and (B) an alkylene carbonate having 3-5 carbon atoms in total, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate having 3-5 carbon atoms in total is 0.5-50 % by weight and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol.

The Opposition Division maintained the patent in amended form. New Claim 1 read:

1. A hair dye composition which comprises (A) an acid dye and (B) alkylene carbonate having 3-5 carbon atoms, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate is 0.5-50 % by weight, the alkylene carbonate being propylene carbonate, and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol.

Here is what the Board had to say:

[2.2.1] A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is characterized by the feature which requires the presence of the component within that range, as well as by the implicit proviso which excludes the presence of that component in an amount outside of that range.

Consequently, the amount of that component present in the composition must not exceed the upper limit of the numerical range indicated. Ignoring that proviso defining the composition would deprive the indication of an upper limit of sense. The above proviso does not have an impact on the scope of the subject-matter claimed as long as the amount required by the numerical range is present in the composition.

[2.2.2] An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of no longer requiring the presence within that numerical range of those chemical compounds no longer encompassed by the restricted definition of that component and, thus, of limiting the scope of this implicit proviso.

[2.2.3] A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. Thus, in a claim directed to an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (A 123(3)).

[2.3.1] Claim 1 as granted is directed to a hair dye composition requiring inter alia a content of from 0.5 to 50 % by weight of alkylene carbonate having 3-5 carbon atoms. Thus, the content of the alkylene carbonate having 3-5 carbon atoms in the composition according to the claim as granted must not exceed 50% by weight, which finding has never been contested by the [patent proprietor].

Hence, a composition according to claim 1 as granted is subject to the implicit proviso that it contains at most 50% by weight of ethylene, propylene and/or butylene carbonate, i.e. an alkylene carbonate having form 3 to 5 carbon atoms.

[2.4] Claim 1 as amended is directed to a hair dye composition “wherein the content of the alkylene carbonate is 0.5-50% by weight, the alkylene carbonate being propylene carbonate”. The fresh feature in that claim now requires that the content of propylene carbonate to be present in the composition should be in the range of 0.5 to 50% by weight, and no longer defines the content of alkylene carbonate having 3 to 5 carbon atoms in the claimed composition. Thus, claim 1 as amended no longer requires that the composition contains at most 50% by weight of alkylene carbonate having 3 to 5 carbon atoms, since the definition of the composition in claim 1 is “open” due to the characterization by the term “comprising”.

Therefore, the composition of claim 1 as amended may comprise in addition to an acid dye and propylene carbonate components including other alkylene carbonates having 3 to 5 carbon atoms, i.e. ethylene carbonate and/or butylene carbonate, in any amount with the consequence that the granted upper limit of 50% by weight of alkylene carbonate having 3 to 5 carbon atoms may be exceeded.

[2.5] Thus, claim 1 as amended encompasses compositions having a content of more than 50% by weight of alkylene carbonate having 3 to 5 carbon atoms, which embodiment was excluded from the compositions according to granted claim 1.

[2.6] The [patent proprietor] argued that the composition of claim 1 excluded the presence of any other alkylene carbonate having 3 to 5 carbon atoms, i.e. ethylene and butylene carbonate, on account of two independent definitions, which required on the one hand that the content of alkylene carbonate be in the range of 0.5 to 50% by weight and on the other that the alkylene carbonate be, at the same time, propylene carbonate. However, by arguing so, the [patent proprietor] gives two different meanings to the same term, which is the alkylene carbonate having 3 to 5 carbon atoms. When this feature defines its chemical structure, the alkylene carbonate, in the view of the [patent proprietor] takes the exclusive meaning of propylene carbonate, but in the definition of its content in the composition, the same term covers any alkylene carbonate having 3 to 5 carbon atoms, not exclusively propylene carbonate. Giving two different readings for the same term in claim 1, just as they match the [patent proprietor’s] needs, is arbitrary. Such an interpretation of the claim goes against any sensible reading, since the meaning of a term in a claim may not be changed depending on the reader’s whim, and thus cannot be accepted by the Board.

[2.7] Nor can the finding that claim 1 as amended encompasses compositions having a content of more than 50% by weight of alkylene carbonate having 3 to 5 carbon atoms be rebutted on the basis of the description adapted to the claims filed on 19 October 2007, which would allegedly prohibit any alkylene carbonate having 3 to 5 carbon atoms other than propylene carbonate be present in the claimed composition.

The [patent proprietor’s] interpretation of claim 1 in the light of the description adapted to the claims is inconsistent with the fact that the very same adapted description still comprise the compositions of examples 2 and 5 as falling within the invention, which compositions comprise, in addition to propylene carbonate, also ethylene carbonate, thus disclosing that the compositions claimed may comprise alkylene carbonates other than propylene carbonate.

Moreover, paragraph [0006] of the description, which addresses the hair dye composition comprising a component (B) being an alkylene carbonate having 3 to 5 carbon atoms in total, wherein the content of the alkylene carbonate having 3 to 5 carbon atoms in total is 0.5 to 50% by weight, has been modified to further stipulate that “the alkylene carbonate is propylene carbonate” in order to be in line with claim 1 of the main request; and particularly paragraph [0010] has been amended to read “the component (B) used in the present invention is propylene carbonate.” These two adapted paragraphs make plain that the composition as amended comprises 0.5 to 50% by weight of propylene carbonate as component (B). Contrary to the [patent proprietor’s] allegation, they do not stipulate that the composition does not contain alkylene carbonates other than propylene carbonate.

Irrespective of the fact that the adapted description does not support the [patent proprietor’s] allegation, the Board observes furthermore that an interpretation of claim 1 in the light of the description would amount to a reference to A 69(1), the first sentence thereof, however, stipulating that the extent of protection conferred by a European patent shall be determined by the terms of the claims. While it is true that A 69(1) second sentence states that the description and drawings shall be used to interpret the claims, this does not make it legitimate to read into the claim features appearing only in the description and then relying on such features to provide additional requirements. This would not be to interpret claims but to rewrite them, thereby depriving the claims of their intended function (see T 881/01 [2.1]; T 1208/97 [4]). 

[2.8] Furthermore the [patent proprietor’s] interpretation that propylene carbonate is the sole alkylene carbonate having three to five carbon atoms to be present in the composition has no basis in the application as filed. Hence, the [patent proprietor’s] argument that no alkylene carbonate other than propylene carbonate is present in the claimed composition is not based on a sensible interpretation of claim 1 and, thus, fails for that reason as well. […]

[2.9] Hence, the Board comes to the conclusion that the presence of ethylene and/or butylene carbonate is not excluded from the composition of claim 1 of the main request.

[2.10] Accordingly, the amendment carried out in claim 1 which results in including compositions having a content of more than 50% of alkylene carbonate having 3 to 5 carbon atoms has the effect to broaden the scope of protection of that claim vis-à-vis to that of claim 1 as granted with the consequence that claim 1 of the main request has been amended in such a way as to extend the protection conferred by the granted patent (A 123(3)). Hence, this request must be rejected.

In an earlier post I have discussed the remedies against an extension of the scope of the patent in limitation proceedings. An anonymous reader wondered how a limitation could possibly extend the scope of protection. If the Board has it right, the present case provides an example of such a limitation. If I had been an Examiner dealing with a request for limitation based on the amendment discussed here, I guess I would not have realized that the amendment violates A 123(3).

NB: To my best knowledge, EQETools has been the first to report this decision.

To read the whole decision, click here.

T 1042/06 – Common Denominator of 54, 87, and 123

The present decision is also interesting because it shows the analogies and dissimilarities between the concepts of novelty, priority and inadmissible extension. The EPO case law uses the same criterion (“clearly and unambiguously”) for these concepts, but there are subtle differences.

[3.2.3] The board agrees with the respondent that the criterion which has to be applied for the assessment of novelty is in principle the same which has to be applied when deciding on the allowability of amendments within the meaning of A 123(2), namely as to whether or not the claimed subject-matter is clearly and unambiguously derivable from the prior art and the application as filed, respectively.

In the present case, however, the application of this criterion leads to different results regarding the assessment of the amendments of the claims and novelty.

As regards the amendments in Claim 1 of the main request, the board has come to the conclusion that the combination of features in amended Claim 1 of the main request is clearly and unambiguously derivable from the application as filed, because that combination is hinted at by the general presentation of the individual features in the application as filed and by Example 6 in the application as filed.

By contrast, neither G2 nor G19 provide such pointers to the claimed subject-matter. Thus, the respondent’s allegation that in the present case a positive finding on the allowability of the amendments to Claim 1 of the main request would entail a finding of lack of novelty over G2 and G19 cannot be accepted.

[3.2.4] The respondent alleged that the subject-matter of Claim 1 of the main request also lacked novelty over G22 (filed on 10 June 1993 and claiming priority from two Japanese applications of 10 June 1992 and 12 October 1992), since the subject-matter of Claim 1 of the main request was not entitled to the claimed priority date of 5 March 1992. The priority of the initial Japanese application was incorrectly claimed for the reason that the combination of features as set out in Claim 1 of the main request could not be directly and unambiguously found in the priority document. However, the features of Claim 1 of the main request are presented in the priority document in a similar way as in the application as filed and can be found in Claim 1 of the first priority document (basically identical to Claim 1 as filed), paragraph [0020] (upper limit for the molecular weight of the cross-linking agent), Claim 4 (0.03 to 0.2 mol% of cross-linking agent), Claim 9 (heat treatment in the presence of a second cross-linking agent), paragraph [0013] (definition of the water-soluble monoethylenically unsaturated monomer), paragraph [0029] (polymerization in aqueous solution), and paragraph [0039] (mixing of the second cross-linking agent with the polymer and reaction).

As regards the basis for the combination of these features, the same argumentation given in connection with A 123(2) in point [3.1.2], above, equally applies to priority except that in the priority document Example 5 ((which corresponds to Example 6 of the application as filed) supports the claimed combination of features.

It follows from the above that the subject-matter of Claim 1 of the main request can be clearly and unambiguously derived from the priority document, i.e. there is a full disclosure of “the same invention” in the priority document. Therefore, the priority claim is correct.

Since the claim to priority is valid, there can be no lack of novelty in view of the later document G22 whose earliest priority date (10 June 1992) is later than the priority date of the patent in suit (5 March 1992).

To sum up, one may say that A 87 and A 123 (and A 76, for that matter) function in the very same way. A priority is valid if the subject-matter of the claim claiming priority can be derived directly and unambiguously from the priority document. If we consider, for the sake of the argument, that the first application (the priority of which is claimed) is an EP application, for the priority claim to be valid for a claim of the second application (claiming the priority), it must in principle be possible to obtain this claim by amending the claims of the first application without infringing A 123(2). Things are a little bit different for novelty. A claim lacks novelty if its subject-matter can be derived directly and unambiguously from a document of the prior art.

To read the whole decision, click here.

T 1042/06 – He Who Won The War May Still Claim Lost Battles

[2.1] The [patent proprietor] has argued in its written submissions, that objections under A 123, A 84 and A 54 could no longer be raised against the claims of the main request, since the opposition division (OD) had already acknowledged that these claims met the requirements of these articles and the opponent had not appealed against this decision.

Although this argument was no longer pursued at the oral proceedings before the board, it appears appropriate to point out at this juncture that the OD has revoked the patent in suit, and that the [opponent] was not adversely affected by this decision within the meaning of A 107, first sentence, because that decision was in conformity with the respondent’s request for revocation of the patent in its entirety.

Furthermore, as pointed out in G 9/92 [8 and 11, second §]:

“A non-appealing party as a respondent has the opportunity to make what it considers to be appropriate and necessary submissions in the appeal proceedings to defend the result obtained before the first instance.”

Thus, when a decision revoking a patent pursuant to A 101(2) has been taken, it is open to a respondent to re-argue matters which had already been on issue before the OD. If a respondent wishes to contend in the appeal proceedings that a particular issue in the decision under appeal was wrongly assessed, even though the overall result of said decision was in its favour, there is nothing in the EPC which could prevent the respondent from doing so (in this context see e.g. T 169/93 [2] and T 542/96 [2]).

Hence, the scope of the present appeal proceedings embraces the objections, in particular with regard to A 123 and A 54, raised by the [opponent] against the claims of the main request.

To read the whole decision, click here.

T 877/06 – Differences Avert Double Patenting Issue

[5.1] The objection of possible double patenting was raised by the respondent with respect to the auxiliary requests submitted by the appellant with letter of 30 October 2009.

In this regard, the respondent drew in particular attention to divisional application EP 1 795 246, in the name of the appellant.

[5.2] Granted claim 1 of said European patent EP-B-1 795 246, which stems from a divisional application of the application underlying the patent in suit, is directed to an air cleaner including a housing having a housing compartment and a removable cover and further comprising a removable and replaceable filter element arrangement positioned in the air cleaner housing comprising a coiled media construction, a seal member and a frame arranged around one of the first and second ends of the coiled media construction; the frame having a depending lip, further including a projection having a tip portion projecting axially from one of the first and second flow faces, and including a step providing a transition area between the cross-sectional width of the depending lip and the smaller cross-sectional width of the tip portion; the tip portion of the frame having an outer circumferential surface; the tip portion of the frame being an annular sealing support for the seal member; the seal member being positioned on, and being supported by, the tip portion of the frame (highlighting by the board).

The subject matter claimed in claim 1 of said European patent EP-B-1 795 246 thus differs from the subject matter in accordance with claim 1 of the main request of the patent under appeal firstly in that it relates to an air cleaner, and not to a filter element arrangement; and secondly, as regards the filter arrangement which forms part of the said air cleaner, at least by the claim features highlighted above.

[5.3] In decision T 1391/07 [2.6-7], the board saw no basis for extending the practice of prohibition of “double patenting” to cover claims not defining the same subject-matter but conferring a scope of protection overlapping with each other only partially in the sense that some, but not all of the embodiments notionally encompassed by one of the claims would also be encompassed by the other one of the claims. The lack of legitimate interest of an applicant in obtaining two patents for the same subject-matter - as invoked by the Enlarged Board of Appeal in decisions G 1/05 and G 1/06 - could not be invoked when the scopes of protection conferred by the respective subject-matters overlap only partially with each other as there was no manifest objective reason to deny the legitimate interest of the applicant in obtaining a protection different from - although partially overlapping with - that of the parent patent already granted. Accordingly, the board concluded that the mere fact that the scope of protection notionally conferred by the claim in suit would partially overlap with that of the granted parent patent did not prejudice the grant of a patent.

[5.4] In view of the substantial differences identified under point [5.2] above resulting in, if at all, only a partial overlap in the respective scopes of protection conferred by EP-B-1 795 246 and the opposed patent, the board concludes that no issue of double patenting arises with respect to the claims of the main request.

I for one am happy to see that T 307/03 (where the Board held that a double patenting objection can be raised also where there is only an overlap of the subject matter claimed in distinct applications) appears to be more and more isolated. Some more decisions of the present kind, and we will be able to say that T 307/03 was a “one off” decision.

To read the whole decision, click here.

T 877/06 – The Limits Of Reformulation

[4] Inventive step

The patent in suit relates to a filter arrangement for use in an air cleaner housing, comprising a coiled media construction and a sealing system.

[4.1] Closest prior art

The closest prior art is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common. Document E1 reveals all the features of claim 1 in accordance with the main request except for claim item (b)(i). The parties have identified E1 as the document representing the closest prior art. The board concurs in choosing document E1 as the starting point for assessing inventive step.

[4.2] Technical problem

[4.2.1] The objective of the patent in suit is the removal of particulate material from an air flow upstream of e.g. an engine, a turbine or a furnace.

[4.2.2] The appellant defined the problem underlying the opposed patent as proposing means and methods of filtering air which allowed for an optimal volume of fluted media per available housing volume, protected said media from external forces and allowed the designer of air cleaners more freedom of design […]. The respondent agreed with this formulation of the technical problem.

[4.2.3] Document E1 is concerned with the technical problem of avoiding the bulging of the filter media which is caused by the pressure applied to its periphery by the housing and the seal upon fastening of the cover […]. Compared with this closest prior art, the technical problem of protecting the filter media from external forces, although not explicitly stated in the opposed patent, becomes immediately apparent. Said part of the technical problem is deducible from the application as filed taking into account the features described in the figures and the effects and advantages clearly associated with them. The reformulation of the technical problem is therefore allowed, in line with the principle laid down in decision T 818/93 [5.2, 4th §].

The optimization of the volume of fluted media per available housing volume is, in the board’s view, a technical problem which the skilled person always takes into consideration because of the space restrictions prevailing in the places where such filter arrangements are used (generally engines of vehicles, buses, trucks, boats etc […]). Therefore, said part of the technical problem is taken into account, even if it is not explicitly mentioned as such in the application as filed.

[4.2.4] However, the board observes that the part of the above defined technical problem relating to the “freedom of design” is not addressed in the application documents as filed. In this respect, it was stated in T 13/84 [11] that a reformulation of the technical problem was not precluded by A 123(2) if the problem could be deduced by the skilled person from the application documents as filed when considered in the light of the closest prior art. It follows that reformulation of a problem is prohibited if the problem so modified is neither disclosed in the originally filed application itself nor deducible when the application is considered in the light of the closest prior art. Hence, having regard to the fact that E1 (or, for that matter E3) does not address such a design problem either, the board concludes that the part of the technical problem relating to the “freedom of design” aspect cannot be deduced from a comparison of the opposed patent with the closest prior art. Said part of the technical problem is, therefore, not taken into consideration for the assessment of inventive step.

[4.2.5] Therefore, the board concludes that the problem underlying the patent in suit in the light of document E1 is to protect the filter media from external forces and to optimize the volume of fluted media per available housing volume.

To read the whole decision, click here.

T 229/07 – Bits’n Pieces

From time to time I dedicate a post to a decision which as such is not major in any way but which contains several interesting bits and pieces.

The present decision has something to teach us on an unexpected effect of how documents are cited in an application:

[3.1] Document D6 was first cited during the oral proceedings (OPs) before the opposition division (OD) and was not admitted into the proceedings.

[3.2] The Appellant was of the opinion that this document already formed part of the proceedings as it is cited in the patent in suit (see T 541/98). In T 541/98 [2.1], a document - a reference to which was inserted into the description on request of the examining division and which was considered to represent the closest prior art - was deemed to form part of the opposition proceedings.

In contrast to this, document D6 is cited as one of seven documents in the application as filed in a way that it is not clear whether it might be the closest prior art. The present situation being different from that of [T 541/98], the Board sees no reason to assume that document D6 already formed part of the proceedings.

[3.3] Hence, it was within the discretion of the Board to decide whether or not to admit document D6 to the proceedings (see Article 12(4) RPBA).

One of the possible criteria which might be taken into account when exercising this discretion is the relevance of the document. The patent in suit relates “to compositions useful as surgical hand preparations and antimicrobial hand lotions.” […] Whereas neither of the documents D1 to D5 share this objective with the patent in suit, document D6 does […]. Hence, document D6 is more relevant than the documents previously cited.

Therefore, the Board admitted it into the proceedings.

There is also an interesting statement on clarity:

The requirement of clarity of the claims cannot be subsumed under any ground for opposition (see Article 100 EPC). In opposition appeal proceedings a lack of clarity thus may only prejudice the maintenance of the patent if it is caused by amendments with respect to the claims as granted, namely if such amendments render the claims less clear.

[5.1] The claims as granted specify the method for measuring the viscosity only by a temperature of 23°C. The present claims give further details as to the type of viscometer to be used and to the method of measurement. The Appellant criticised that these details were not clear [because the viscosity could not be measured in a reliable and unambiguous way according to the method now incorporated into the claims]. Whether this is true or not is not relevant since they further specify the method of measurement, thus rendering the claims clearer than the ones as granted. […]

[5.3] Hence, the amendments made in the claims after grant do not render the claims unclear.

Unsurprisingly, the viscosity issue also surfaced in the discussion of sufficiency of disclosure (A 100 (b)):

[6.2] The method for measuring the viscosity is specified in paragraphs [0099] and [0100] of the patent in suit […]. It determines the temperature (23°C), the viscometer (Brookfield LVDV-I+ equipped with a certain heliopath), the spindles to be used […] and the moment at which the viscosity is to be determined (“as the highest relatively stable reading achieved on the first path the spindle traversed using the heliopath adapter”).

The Appellant has shown in the test report (D9) that the viscosities of thickened hydroalcoholic compositions can be determined by this method […]. Although the individual viscometer readings vary to some extent (see the first table on page 6) the decrease of the average values with time is small (see table 1 on page 5; 0.5% decrease for sample V and 2.9% decrease for sample W from 5 to 360 seconds). Hence, the viscosity was determined according to the method disclosed in the patent in suit with acceptable accuracy by Mr Gehm, the author of document D9 who is an expert in the field of rheology. This fact does not exclude that the person skilled in the art may have less expertise in measuring viscosity than Mr Gehm and may not be able to determine the viscosity of the claimed composition with an acceptable accuracy. This, however, was not shown by the Appellant.

[6.3] Hence, no grounds under A 100(b) prejudice the maintenance of the patent.

To read the whole decision, click here.

T 1814/06 – Non Obvious Choice Among Three

[3.1] The document D19 represents the closest prior art for the present claim 1, and describes a vacuum valve including all of the technical features of the preamble of this claim, so that the claimed vacuum valve is distinguished from the known device solely in that a recess portion [8a] is formed in a central portion of the contact surface of the fixed electrode [8] only, whereas that of D19 does not have a recess on either electrode. This conclusion is not disputed by either party.

[3.2] In order to identify the objective technical problem, it is necessary firstly to establish the technical effect arising from this difference. From the description of the patent it is apparent that the difference comprises two aspects, associated with two different effects.

Firstly, provision of a recess on one of the electrodes results in displacement from the central axis of the initial arc and thus of any welding imprint.

Secondly, the selection that this one electrode should be the fixed electrode results in suppression of arcing from the edge of the recess to the shield, which would be more likely to occur if the recess were on the movable electrode, because of the combined effects of the distortion of the electric field by the edge of the recess and the inevitable sideways movement of the movable electrode.

Thus the first aspect of the difference can be seen as addressing the technical problem of reducing welding effects, whereas the second addresses the technical problem of preventing damage to the shield.

[3.3] The document D3 is at least partially concerned with both of these problems, so the skilled person would consider its teaching to be relevant. The description of D3 addresses the technical problem of reducing welding effects due to arcing on the central axis, and does so by providing a recess in the central portion of one of the electrodes, which causes the arc generated on electrode separation to form away from the central axis, so that magnetic effects then cause it to move, as a result of which welding would be less likely to occur. From this description it is not clear whether the electrode illustrated is the fixed or the movable one, or whether a similar recess should also be provided on the other electrode, and the corresponding claim of D3 merely states that a recess is formed on at least one of the electrodes. Thus the document suggests three alternative implementations, namely a recess provided on the fixed electrode, or on the movable electrode, or on both. 

[3.4] The document D3 also discusses the issue of the sideways movement of the movable electrode and the problem of arcing from an electrode to the shield. However, the solution to this problem described in D3 (the main invention of that document) is to provide the electrodes with a chamfered edge, which keeps the arc away from the electrode periphery, so that it is less likely to transfer to the shield. Moreover, the description of the embodiment with the central recess says nothing about any possible influence of the recess on arcing to the shield.

[3.5] Thus D3 provides clear teaching concerning the first aspect of the difference identified in section 3.2 above and the corresponding technical problem, and suggests the solution of providing a central recess on at least one of the electrodes. However, as regards the second aspect of the difference, D3 merely provides various elements of relevant teaching without suggesting the link between them, and in particular it does not suggest any link between the provision of the recess (or recesses) and the problem of arcing to the shield. Moreover it provides no teaching that the provision of a recess results in changes to the electrical field which need to be taken into account when choosing whether to use one or two recesses, and if only one, where to place that recess.

Thus the board concludes that the skilled person, without hindsight, would not be able to derive from the teaching of D3 that he should select, from the three alternatives available, the one which is defined in the present claim 1. […] 

[3.7] The above conclusions do not diverge from the case law referred to by the appellant.

[3.7.1]The appellant argued that the selection of one of the three options for the recesses would be obvious if decision T 400/98 were followed. The board is of the opinion that this decision is not applicable to the present case, since it was based on the premise that the available alternatives “were equally promising candidates” for solving the technical problem (see Reasons 4.4.6). In the present case, the three alternatives are only equally promising to the extent that the technical problem concerns the prevention of on-axis arcing, which is the problem addressed by providing central recesses as such, whereas the technical problem addressed by the specific selection of which electrode should be provided with the recess is that of preventing arcing to the shield, and as discussed in paragraph 3.2 above, the specific selection defined in claim 1 is superior to the other two options in this respect.

[3.7.2] The appellant argued further that, even if the decision T 400/98 could not be applied, the selection as claimed would nonetheless be obvious to the skilled person, because it would result from carrying out obvious tests, in line with the decision T 308/99. The board does not find this argument convincing, since decision T 308/99 [8.3-4] concluded that the selection was obvious because the prior art already directed the skilled person towards the claimed use, and because all that was then necessary was to carry out routine tests to confirm the expected result, whereas in the present case the prior art provides no suggestion to the skilled person that there is a link between the electrode recesses and the problem of arcing to the shield, so does not direct him towards any tests which might lead him to make the claimed selection. […]

[3.8] In summary, the board considers the objections of lack of inventive step raised by the appellant with respect to the present claim 1 to be based on an ex post facto analysis. Thus, having regard to the cited state of the art, the device defined by claim 1 of the patent as maintained by the opposition division is not obvious to a person skilled in the art. The board concludes therefore that the subject-matter of this claim involves an inventive step in the sense of A 56. 

To read the whole decision, click here.

T 549/08 – Impossible Combination

If in a patent as granted one of the dependent claims cannot be combined in a meaningful way with the main claim, is this a matter of clarity ? Or rather of insufficiency ?

Claims 1 and 5 as granted read as follows:

1. A multi-layered moulding material [1] forming a preformed prepreg adapted for use in multiple layers, said multi-layered moulding material comprising a layer [2] of resin material, characterised in that the layer of resin material comprises a first fibrous layer [4] conjoined to the upper surface thereof and a second fibrous layer [3] conjoined to the lower surface thereof by contacting the resin layer and the respective fibrous layers, whereby the outer surfaces of the moulding material are free from resin and dry to touch to allow entrapped air to pass out of said multi-layered moulding material during processing of the material.

This claim is not extremely clear, to say the least. The numerical references are absent from the claim as granted.

5. A multi-layer moulding material according to any one of claims 1 to 4, characterised in that a tackifier and/or a binder is applied to one or both outer surfaces of at least one fibrous layer.

During the oral proceedings, the Board raised an insufficiency issue that had not been raised by the opponents. According to the Board, claims 1 and 5 cannot be combined in a meaningful manner.

[5.1.3] The Board concludes that the invention according to claim 1 […] fulfils the requirements of A 83.

[5.2] In the particular realisation of the invention according to claim 5 of the main request and the (first) alternative request, which is dependent on claim 1, a tackifier and/or a binder is applied to one or both outer surfaces of the at least one fibrous layer.

[5.2.1] The question which has to be answered in the context of A 83 is therefore the following: how can the skilled person putting into practice the invention as claimed by the subject-matter of claim 5 manufacture a multi-layered moulding material which has simultaneously both outer surfaces of the fibrous layers free from resin and dry to touch and enable the evacuation of entrapped air from the multi-layered moulding material during its processing. The Board remarks that this is technically not possible. Consequently essential features of the claimed invention, structural and functional, cannot be put into practice. 

[5.2.2] The Board disagrees with the patent proprietor, who argued that the objection of the board boiled down to a clarity objection - which is not a ground of opposition.

To the Board’s understanding the dependency of claim 5 on claim 1 does not simply introduce an inconsistency or contradiction in respect of the structural properties on the surface(s) of the fibrous layers – “free from resin” and “dry to touch”. On the contrary this dependency introduces a more severe defect since besides the essential structural features the skilled person is not also able to realize the functional feature of the air evacuation during processing of the multi-layered moulding material. 

[5.2.3] Under these circumstances the Board considers that the invention according to claim 5 […] does not meet the requirements of A 83. 

The Board apparently considers that the presence of a tackifier and/or binder is irreconcilable with air evacuation. It explicitly excludes the understanding (which would also be mine) that the real problem is that it is contradictory to have a surface to which a tackifier is applied and which is “dry to touch”.

Be that as it may, the Board concludes that this difficulty induces not a mere lack of clarity but a lack of sufficiency of disclosure which is a valid ground for opposition.

The patent proprietor then deleted claim 5 and had the patent granted.

To read the whole decision, click here. 

NB: This decision has also been commented by Laurent Teyssèdre on his blog. He points out that one outcome of this decision is that a dependent claim can be insufficiently disclosed although the main claim is not.

T 286/09 – Composition vs. Ingredients

The present decision deals with the patentability of a second medical indication. It provides an interesting complement to T 254/93 where the Board had come to the conclusion that the mere explanation of an effect obtained when using a compound in a known composition - even if the effect was not known to be due to this compound in the known composition - could not confer novelty on a known process if the skilled person was already aware of the occurrence of the desired effect.

Claim 1 of the main request read:

1. Use of at least one prebiotic in the manufacture of a medicament for decreasing inflammatory process in an elderly human.

[2.3.1] Document D7 discloses a composition which comprises a source of protein, a source of carbohydrate, a source of fat, a probiotic lactic acid bacterium and additionally FOS (fructo-oligosaccharides) and/or inulin. This composition is used in the manufacture of a functional food or a medicament for the prevention or treatment of an immune condition, particularly in elderly patients. Such condition is further defined as including inter alia “conditions associated with aging and leading to an increase of inflammatory responses” […].

Thus, document D7 disclosed the administration of a composition including among others a prebiotic (FOS and/or inulin) to persons (by implication elderly persons) with an immune condition associated with aging and leading to an increase of inflammatory responses. It does not however disclose that the prebiotic as such, or any other ingredient of the composition, has any effect per se in alleviating the condition.

This is to be contrasted with the subject-matter of claim 1, which concerns the effect of a prebiotic for decreasing the inflammatory process. This effect of the prebiotic is moreover shown in the description of the patent is suit which includes a report of a study where the diet of elderly persons was supplemented by a prebiotic (FOS) and a clear effect was observed in terms of decreasing the inflammatory process that could only be attributed to the FOS. Accordingly, the subject-matter of claim 1 of the main request is novel vis-à-vis document D7.

[2.3.2] The Board does not agree with the respondents’ submissions that the skilled person reading document D7 would deduce that FOS and/or inulin were the active ingredients merely because they were specifically mentioned in the composition, whereas the other ingredients were mentioned in more generic terms, or because they would arrive at that conclusion by default since they know that fat and protein are there as bulk food and the prebiotic for preventing diarrhea […], so that the remaining ingredients, namely the probiotic FOS and/or inulin, must be the ones having the effect of decreasing inflammatory process.

In fact, document D7 discloses […] that FOS and inuline “may” be added to the composition and that they provide up to 5% of the energy of the composition.

Thus, contrary to the respondents’ view, in the light of the above passage in document D7, the skilled person can only conclude that the overall composition disclosed in the description is effective in the prevention or treatment of an immune condition, including conditions associated with aging and leading to an increase of inflammatory responses, since each ingredient taken alone plays a different role in the compositions which has no link with inflammatory process.

As to the argument relating to selecting from a single list of ingredients, the Board cannot agree with the respondents either. In fact, as discussed above, document D7 does not disclose a list of several ingredients having each an effect on the inflammatory process, but a composition of several ingredients wherein the effect can only be understood as being the result of the combined effect of all of the ingredients.

Finally, the present situation is to be distinguished from the one in T 254/93.

Indeed, in T 254/93, contrary to the present case, the prior art formulation comprises two ingredients, namely a corticosteroid, well-known for inducing skin atrophy, and a retinoid. Moreover, it was accepted that skin atrophy induced by corticosteroids was accompanied by such strong symptoms that the fact that skin atrophy did not occur when using this prior art composition containing the second ingredient, namely the retinoid, could not be overlooked by the medical practitioner.

Under these circumstances, the Board decided that, although not mentioned expressis verbis in the prior art , the effect of the retinoid on the prevention of skin atrophy caused by corticosteroids could not be regarded as novel because the skilled person was already aware of the occurrence of the desired effect, i.e. he knew from the prior art that the retinoid must have had the effect of preventing skin atrophy (point 4.8).

The present situation is different since, as discussed above, the skilled person could not be already aware of the occurrence of the desired effect, i.e. the skilled person could not know from the prior art that the prebiotic had an effect on inflammatory process because the prior art advocated the use of the prebiotic for a specific purpose, namely to “provide up to 5% of the energy of the composition” […].

The request to refer a question of law to the Enlarged Board of Appeal […] does not need to be considered since in the present case no contradiction to decision T 254/93 occurs since the situation underlying the present case can be distinguished from the situation forming the basis for the decision T 254/93.

To read the whole decision, click here.

T 1281/06 – Cack-handed Lexicography

The present decision is of interest to writers of patent applications who act as their own lexicographers by defining some of the claimed terms in the application.

[...] The reference in independent claims 1 and 5 to a current color mapping function having upper and lower knee points is not clear because the term “knee point” does not have any generally recognised meaning in the field of image processing.

The Board does not accept, in this respect, the appellant’s argument that a definition of this term in the description suffices to render the definition of the claimed subject-matter clear; as a general principle, the meaning of the terms of a claim should be clear from the wording of the claim alone.

As already stated in a previous decision of the present Board (in a different composition), “The Board is aware of the jurisprudence which acknowledges that an exception to this principle may exist in situations in which a patent description would provide unambiguous definitions of certain terms and would also make clear that such definitions apply throughout the complete application, so that, when interpreting the wording of claims, the patent specification would constitute its own dictionary” (cf. T 1271/05 [4.3]).

The Board observes, however, that these conditions are not met under the present circumstances since the current description does not contain any statement which would imply that the term “knee point” should be given a specific meaning applying throughout the entire application.

The passage on page 9, line 23-33 of the original application, referred to by the appellant in the statement of grounds, merely refers, in association with Figure 3, to one particular illustration of a color mapping function having upper and lower knee points. It fails, however, as such, to give a clear statement which could be identified as a definition.

The following passages of the description on page 9, line 33 to page 10, line 34, admittedly, provide additional information as to the parameters which enable a determination of said knee points.

Similarly, the passage on page 3, line 30 to page 4, line 32, suggests that the knee points constitute specific points of the color mapping function fulfilling certain conditions.

In addition, the indications in dependent claims 2 and 6 regarding the form of the color mapping function could be regarded as an alternative definition of the concept of “knee points” within the meaning of the present application.

However, the description does not specify whether any of these various indications should apply to the entire application.

Instead, the passage on page 11, lines 12- 18, also cited by the appellant, discloses that the positions of the knee points can, alternatively, be determined by the host computer based on user selected inputs such as, for example, the system color flow gain setting or the dynamic range setting. This non-exhaustive list of parameters suggests in effect that any parameter indirectly relating to the Doppler imaging data could be validly relied on to define knee points.

The passage on page 12, lines 4-32, adds to the confusion in that it specifies that the knee points could be moved by the user through the operator interface by moving a graphical symbol to a selected position. In the absence of any limitation as to these selected positions, this embodiment suggests that the knee points can be selected in an essentially arbitrary manner, i.e. even without consideration of the parameters previously referred to.

As a consequence, the Board is unable to recognize a unique and unambiguous definition of the term “knee point” in the description which would also apply to the claims. It is hence not possible, in line with decision T 1271/05, to associate to the features of the lower and upper knee points recited in independent claims 1 and 5 any specific meaning which would distinguish said points from any point defined by the color mapping function. [2.1]

The aspect regarding the definition of the knee points is considered essential under the present circumstances in view of the technical problem which the claimed invention intends to solve. As indicated on page 3, lines 17-28, of the original application, the mapping functions known from the prior art "do not allow the user or the system to optimize the image information".

The solution of this problem resides in the selection of a color mapping function having the optimal form […], which form presents a segment of increased slope in order to better visualize the actual distribution of power densities for a predetermined range of Doppler flow powers.

This finding implies that essential information for the definition of the claimed system and method is lacking from independent claims 1 and 5. More specifically, the information as to the criteria to be used for establishing the optimal form and to determine the analyzing steps to be made are missing from independent claims 1 and 5, respectively. [2.2]

[…] For the reasons developed above, the Board concludes that the requirements of A 84 EPC 1973 as to clarity are not met. [2.4]

So when you define terms in the application, be sure to make clear that the definitions concern the application as a whole.

To read the whole decision, click here.

T 413/08 – Repudiate Quickly

This decision deals with an appeal against the revocation of a European patent. When filing its appeal, the patent proprietor pointed out that the machine described as prior art in the patent at paragraphs [0002] to [0006] did not belong to the prior art. It later explained that the machine was mentioned in error and should not have been referred to as being conventional. The opponent did not agree and requested the Board to refer the following questions to the Enlarged Board (EBA):

1. Insofar as an applicant or patent proprietor indicates that a state of the art is known in the description of an application and it constitutes the closest prior art on which the technical problem to be solved is based, is it admissible to consider that this state of the art forms part of the state of the art in the sense of A 54(2)?

2. If the answer to this question is no, how should the state of the art acknowledged by the applicant or patent proprietor as well as the technical problem to be solved based on this prior art be regarded?

Here is what the Board had to say:

[2] In the written grounds of appeal, the appellant resiled from the indication of background art as set out in the patent in suit. The Board is of the opinion that, under these circumstances, and in the absence of any evidence to the contrary, the printing machine described in the patent in suit in paragraphs [0002] to [0006] cannot be regarded as having been made available to the public before the priority date of the patent in suit.

Nevertheless, it is not considered necessary or appropriate to refer the questions to the EBA in accordance with A 112(1)(a) as requested by the [opponent].

As stated in decision T 730/05 [3.2, last sentence] and in decision T 1554/05 [2.1, penultimate sentence] “the other relevant cases of which the board is aware, dealing mainly with the question of whether an applicant is allowed to resile from its indication of background art, either implicitly or explicitly take the view that, if not resiled from or clearly not prior art for other reasons, it may be relied upon as prior art (see T 654/92, T 691/94, T 1449/05 and T 211/06).”

The [opponent] relied upon two cases in particular. In case T 1554/05 [2.1], the [patent proprietor] did not resile from the indications of background art in the description. In case T 1449/05 [2.8], the patent proprietor attempted to resile from his admission of prior art nearly at the end of oral proceedings (OPs). Admission of this resilement would have required the adjournment of the OPs to allow the appellant opponent to search for adequate evidence that substantiates his allegations. The present case is thus distinguished from these cases in that the appellant resiled from an admission of prior art at an early point in the appeal proceedings.

In the present case, the [patent proprietor] stated in his grounds of appeal in reaction to statements contained in the decision under appeal, that “document D0 does not belong to the prior art according to A 54(2)” and stated that there was no objective evidence that the content described in document D0 was made available to the public before the date of filing of the patent in suit. It was suggested on behalf of the respondent that it was only at the OPs before the board that the appellant properly resiled from the indication of background art in the description. This is not accepted. The statements by the appellant under point (2) of the reasons contained in the written grounds of appeal are considered to constitute an unambiguous statement that the information concerning printing machine contained in paragraphs [0002] to [0006] of the patent in suit was not available to the public before the date of filing.

There is thus no contradictory case law in respect of the status of an acknowledgement of prior art. In the absence of any indication to the contrary, an acknowledgement of prior art by a patent proprietor may be accepted at face value. If a patent proprietor resiles from an acknowledgement of prior art at a point in time which does not give rise to any procedural problems, the acknowledgement may no longer be relied upon.

In the present case, the patent proprietor has resiled from its indication of background art in due time, so that, in the absence of any evidence to the contrary, it cannot be assumed that the acknowledged device was, in fact, made available to the public before the priority date of the patent in suit. Consequently, the printing machine described in the patent in suit in paragraphs [0002] to [0006] does not form part of the prior art.

To read the whole decision, click here.

NB: This decision has already been reported on Laurent Teyssèdre’s blog.

T 66/07 – Extracting Limits From Examples

I have the impression that the question of intermediate generalisation is more and more present in recent decisions of the Boards. The present decision is far from spectacular but it allows to study a nice case involving temperature ranges.

[2] In the decision under appeal, two different reasons were given for the revocation of the patent in suit, namely that the amendment of the temperature ranges, i.e. the replacement of the range of “50 -120°C” at all occurrences in the independent claims to the process and to the polymer per se of both former requests under consideration at that time by the new range of “100-120 °C”, did not fulfil the requirements of A 123(2). […]

[5.3] As regards the question of whether the lower limit of the range of 100 to 120°C […] has directly and unambiguously a clear basis of the disclosure in the examples must be considered separately and in detail herein below.

[5.3.1] The [patent proprietor] referred to T 962/98 [2.5] according to which the use of a feature taken from the examples for restricting the scope of a claim would be allowable, if a skilled person could recognise without any doubt from the application as filed that this feature was not closely related to the other characteristics of the worked examples and could be applied directly and unambiguously to the more general context (T 962/98, which followed T 201/83). The [patent proprietor] saw these prerequisites fulfilled in the present case, so that the value of 100°C disclosed in each of the examples in the context of the boiling point of each reaction mixture would, therefore, form an allowable basis for the amendment of the polymerisation temperature in each of Claims 5 and 8 of the Main Request.

[5.3.2] By contrast, the [opponents] took a different view and argued that the extraction of the value of 100°C from the examples did not comply with the above requirements as formulated in T 962/98.

[5.3.3] In the case underlying decision T 962/98, each Claim 1 in question had been amended with reference to the argument that the amendment was properly supported by the disclosure of one example. The claims referred to a method comprising the dilution of a concentrate composition “with a diluent”, wherein the composition comprised “a carrier” comprising, besides a conveyor lubricant comprising four specific chemical compounds identified by their chemical names, effective amounts of “a quaternary ammonium cationic compound” and “an amphoteric surfactant” (T 962/98 [V]).

The example which, in the [patent proprietor’s] opinion supported its amended method claims, concerned a concentrate composition comprising, besides all of the above four specific chemical compounds as the conveyor lubricant component, distilled water, isopropanol, acetic acid, the monosodium salt of lauryliminodipropionic acid and coco-alkyldimethylbenzylammonium chloride.

The Board found that

“It is, therefore, not possible to conclude without any doubt whether or not, those four surfactants either

(a) can be singled out of the composition of Example 1D and used with other carriers than a mixture of water and isopropyl alcohol, with an antimicrobial agent other than cocoalkyldimethylbenzyl, ammonium chloride or with an amphoteric surfactant other than lauryliminodipropionic acid monosodium salt or, to the contrary, whether they

(b) are only adapted to the specific composition disclosed in Example 1D.

The skilled reader is given no guidance, either in Example 1D itself, or in the more general description as to which components of Example 1D should be retained unchanged, and which can be varied at will. He will know that it will be possible to vary the example, but there is no clear guidance as to within what limits such variation will be possible. Certainly there is nothing to tell him that just the four surfactants recited in claim 1, but not other components recited in Example 1D, are essential.”

and that

“This situation of doubt is in contradiction with the requirement that an amendment be directly and unambiguously derivable from the application as filed.” 

Consequently, it did not allow the requested amendment and dismissed the appeal.

[5.3.4] The present situation is comparable with the circumstances in that case, in that, as pointed out by the [opponents], the boiling point is clearly linked to the particular composition of a given example. The [patent proprietor] has, however, amended its claims on the basis of a generalisation of the boiling temperatures of the examples, irrespective of their further particulars, by applying this generalised value to the full scope of the claims.

[5.3.5] Thus, whilst the examples related to the preparation of polyacrylic homopolymers with the only exception in Example A-6 concerning a copolymer of acrylic and methacrylic acids in a 6/4 molar ratio, the general description of the polymerisation mixtures encompasses the possibility that originally up to 50 weight % of the monomer composition (now restricted to 10 weight % […]) are monomers other than (meth)acrylic acid or their salts (see the long list of different types of comonomers, such as e.g. vinyl acetate and vinylsulfonic acid […]). Furthermore, the (meth)acrylic acids and some acidic comonomers may be used in their neutralised form as salts with mono- or divalent metal ions […].

Moreover, a further particular of all those examples, on which the [patent proprietor] relied in order to justify the suggested amendment, is the fact that, in all the examples in Table 1 […], no monomer had initially been charged, but 100% of the monomers component had gradually been supplied to the reaction mixture. However, neither of Claims 5 and 8 includes such a requirement. Instead, the last paragraph of each of these claims requires 70 weight % or more of the total amount of the monomer component to be gradually supplied to the reaction system. In other words, up to 30 weight % of this component may be initially charged.

That the boiling point is not independent from the composition of the reaction system, e.g. from the amount of the monomer component, is illustrated by Comparative Example A-3 wherein part of the monomer component had initially been charged.

[5.3.6] Moreover and in particular, it must be noted that all examples relate to the polymerisation in ion-exchanged water, whilst in the claims reference is made to “an aqueous medium”, in general […]. It clearly includes “water alone; mixed solutions of water and water-soluble solvents” […]. Moreover, according to a preferred elaboration […], the water content is 40 weight % or more of the mixed solution, which means, that, in this preferred elaboration, the solvent may be present in an amount of up to 60 weight % of the aqueous medium […].

The water-soluble solvent which may thus even be the predominant component of the aqueous medium affects, of course, the boiling point of the “aqueous medium”.

[5.3.7] In view of these findings, it is evident to the Board that each of the temperature values in column (6) of Table 1, as further confirmed by the wording in the descriptions of each of the examples, refers to the individual “boiling point (…) of the system” of the respective given example. The accidental identity of the boiling temperatures in different examples does not disprove this finding.

In other words, the initially charged reaction systems e.g. of Examples A-2 and A-7, containing only ion-exchanged water, or Example A-1 containing only ion-exchanged water and about 2 weight % of sodium hypophosphite monohydrate […] had a boiling point of 100 °C, and the temperature was then “kept” in these examples at the individual boiling point of the respective specific reaction system lying somewhere between 100 and 105°C (in other cases, up to between 103 and 107°C) apparently by controlling the feed of the various reaction components, i.e. of the monomer(s), sodium persulphate and hypophosphite monohydrate in distinct concentrations dissolved in ion-exchanged water, to the reaction system. “After the end of dropping, the temperature was kept at the same temperature for 5 minutes to complete the aging.” The comparison of the identical statements in Examples A-1, A-2, A-7 […] and, moreover, in Comparative example A-3 […] makes it clear for the Board that that the formulation concerning the boiling point expressed in terms of e.g. “(100-105 °C)”, “(100-107 °C)” or “(103-105 °C)” (Comparative Example A-3) in Tables 1 and 2 refers in each case to the respective individual boiling temperature of the individual reaction system.

These findings are, for the Board, valid for the polymerisation reactions in all the examples, which were also conducted in a similar way as confirmed by formulations such as e.g. “A polyacrylic acid (…) was obtained by the same polymerization as of Example A-2 (or A-1) except that …” […]. The above values given in the individual examples cannot, therefore, be considered as referring to a temperature range or to a lower or upper limit of a temperature range which would be valid for the generality of all conceivable elaborations encompassed by the operative claims.

[5.3.8] Therefore, as held in T 962/98, it is also, in the present case, neither clearly and unambiguously nor directly derivable from the disclosure in the examples that the lowest temperature value provided in Table 1 would also be valid for the other reaction systems comprising other aqueous media and other monomer compositions as encompassed by Claims 5 and 8 under consideration.

[5.3.9] Consequently, the Board takes the view that the conditions for an admissible and allowable generalisation of the temperature value of 100°C for amending the lower limit of the two occurrences of a temperature range to “100-120 °C” in the last paragraph of each of Process Claim 5 and Product Claim 8 are not met. Rather, the amendment of these two claims does not fulfil the requirement for the allowability of an amendment taken from an example, as referred to in section 5.3.1, above, but extends beyond the content of the application as filed.

To read the whole decision, click here.

T 1224/06 – Would You Please Hide The Bloodshed

Claim 1 of the main request read:

A method of extracorporeal blood processing for collection of blood components from blood from a donor, said method comprising: providing a blood processing vessel containing blood; separating platelets from said blood within said blood processing vessel; collecting at least a portion of said platelets in a platelet collection reservoir separate from said blood processing vessel; separating red blood cells from said blood within said blood processing vessel; collecting at least a portion of said separated red blood cells in a red blood cell collection reservoir separate from said blood processing vessel, wherein said platelet separation and collection steps are completed separate from said red blood cell separation and collection steps.

[2] Claim 1 as originally filed has been amended by replacing the words “flowing blood into a blood processing vessel” in original claim 1 by the words “providing a blood processing vessel containing blood” in new claim 1. This amendment was effected in order to remove the step of flowing blood into a blood processing vessel which the examining division (ED) considered to be a surgical step.

The gist of the invention is in the separate collection of red blood cells and platelets from blood within a blood processing vessel. The entire process is performed outside of the body, as is made clear by the word “extracorporeal” in claim 1, and the manner in which blood is supplied to a blood processing vessel in order to carry out the claimed method is irrelevant to the invention. Therefore, the step of flowing blood into the blood processing vessel is not an essential feature of the invention and the amendment does not require any modification of the other steps. The amendment is not objectionable under A 123(2), accordingly. 

[3] Since claim 1 now clearly does not contain the step of flowing blood into a blood processing vessel, the ED’s objection, that this step inevitably involves removing blood from a donor via a needle and is therefore a surgical step, no longer applies. The remainder of the claim defines only technical steps applied to the blood within the vessel, in order to solve a technical problem, so that the claim is free from objection under A 52(4).

[4] The decision under appeal is based solely on A 52(4), and since the appeal is allowed, it is appropriate pursuant to A 111(1) to remit the case to the ED for further prosecution.

This decision was taken some days before the Enlarged Board issued its decision G 1/07. I wonder if the ED would have taken the same decision in the light of G 1/07. I guess flowing blood into a processing vessel would now be considered to be a “safe routine technique, even [though] of invasive nature” and would not be understood as being of surgical nature within the meaning of the EPC. In any case, it seems difficult to argue that this step is “an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise”.

To read the whole decision, click here.

T 364/08 – Cut-off Relativized

The possibility of re-introducing subject-matter that has been deleted from a European patent or, in other words, the existence of a “cut-off” effect is one of the more delicate questions dealt with in the case law. T 1149/97 has established that there is a “cut-off” for subject-matter that has been deleted in view of A 84 and A 69. T 37/99 has followed this decision. Subsequent decisions appear to have struggled with the findings of T 1149/97. T 241/02 has stated that “the grant of a patent does not necessarily constitute a final and automatic cut-off point excluding any reinsertion of deleted subject-matter” (point 1.4 of the reasons) and that T 1149/97 did not lay down a strict rule (point 2.3.5 of the reasons). T 1481/05 noted that “T 1149/97 itself [did] not consider re-introduction of deleted features - as opposed to deleted subject-matter falling under patent protection - to be inadmissible as a matter of principle” (point 4.7 of the reasons) and re-centred the cut-off effect in A 123(3) by defining a useful test: “Is it possible to identify some subject-matter which did not fall under the scope of protection in the granted version of the patent, but would do so if the amendment in question (the reintroduction of the deleted features) would be allowed?” (point 4.8 of the reasons) If such abandoned subject-matter is identified, the amendment cannot be allowed.

I may be wrong, but my impression is that the Boards are somewhat embarrassed by the undifferentiated wording of T 1149/97 but do not wish to state their disagreement. They rather delimit its domain of application.

The present decision appears to follow the same approach. It pays lip service to T 1149/97 but – if my understanding of the reasoning is correct – it recalls that what really matters is conformity with A 123(3), which is finally very close to what T 1481/05 (which is not referred to) had found.

[1.4] According to A 123(2) the European Patent “may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed” (emphasis added by the Board).

Thus there is no basis for the respondent’s argument that subject-matter based on the originally filed claims 2, 3 and 4, said claims no longer being part of the patent as granted and thus their subject-matter, cannot be reintroduced into the patent.

In this respect the Board concurs with the findings of T 1149/97 [6.1.9-10] that a “cut-off” effect due to the grant of a patent can be seen in the formal restrictions imposed on further amendments to the patent specification by R 80 and R 138 and, substantively only in the restriction imposed by A 123(3).

In the present case, subject-matter of the originally filed claims 2, 3 and 4, can therefore be re-introduced into claim 1, as long as it does not infringe A 123(2) and (3).

To read the whole decision, click here.

T 558/08 - Claims Are Generalizations

Claim 1 of the main request read:

A heating device (510) for use in an internal combustion engine having an intake (512) defining a passage, the intake including an opening in communication with the passage, the heating device comprising: a access panel (511) removably mounted to the intake and closing the opening; a frame (514, 516) coupled at one end to said access panel and extending into the passage, said frame including a first portion positioned substantially parallel to and spaced apart from a second portion; and a heating element (518) coupled to said frame and positioned between said first and second portions, said heating element being positioned in heat transfer relation with the passage to thereby heat combustion air flowing through the passage.

The crucial question for the assessment of novelty was the interpretation of the term “frame”. The patentee argued that this term had to be read in the light of the description, which only shows frames surrounding the heating element.

[2.1] The invention concerns a heating device for heating the intake air of an internal combustion engine. Its central idea is to mount the heating element on an access panel which is removably mounted on the intake to close an opening therein. The element is coupled between first and second portions of a “frame” coupled to the panel.

This type of heating device, referred to as “drop-in”, allows “an end user to install the heater after the intake has been assembled to a vehicle increasing serviceability and ease of installation” […]. These benefits contrast it with “sandwich” type heating devices, where the element is mounted on a flange that is inserted between intake and manifold, requiring a more cumbersome installation and servicing and a more complex construction […].

[2.2] The feature of a “frame” with spaced, parallel “portions” was added to claim 1 prior to grant. It replaces features of a “hanger” and “retainer mechanism” that appeared in corresponding independent claim 16 of the application as published, the first of the claims therein directed at the drop-in concept. 

[2.2.1] The term “frame”, the Board notes, does not appear in the claimed context in the application as filed. The only mention of “frame” is […] a passage used to describe the mounting of prior art heating elements as disadvantageously large and complex vis-à-vis a retainer mechanism 20, see the immediately preceding and following sentence of this paragraph. There its use does not imply any specific shape or mounting of the heating element, other than that it is large and complex.

[2.2.2] Nor does the term itself imply any particular shape in relation to the heating element it supports. In normal usage the term “frame” may mean nothing more than “a structure which serves as an underlying support or skeleton” (Oxford English Dictionary); “the underlying constructional system or structure that gives shape or strength (as to a building)” (Merriam-Webster Online Dictionary), or “the basic structural unit onto or into which other constituents of a whole are fitted, to which they attach, or with which they are integrated” (Webster’s 3rd New International Dictionary). Though it may in some instances also mean, more specifically, “an open case or structure made for admitting, enclosing, or supporting something” (Merriam Webster), it does not necessarily imply encasing of what is supported. The exact meaning will depend on context.

[2.2.3] In the present case the Board has no reason to believe it should mean anything more than in its broadest sense, an underlying support structure. That claim 1 also requires the frame to have spaced apart parallel portions may add some further detail of the shape, but not enough to conclude that it encases the heating element.

[2.2.4] The fact that all embodiments show structures that support and surround the heating element also does not mean that claim 1, read in the light of the description and figures, must relate to encasing structures. By virtue of the fact that claims are directed at the essence of an invention, they are generalizations. Reading “frame” in a broader sense as a generalization of the specific support structures shown in the description is then not inconsistent with or contradictory to the content of the original disclosure.

It rather brings to prominence the features of the “drop-in” design per se, which had hitherto (in the procedure up to grant) been presented as the inventive concept. This may also be the reason why the more specific features of the hanger support and of the retainer mechanism - the latter in particular presented consistently as essential in the application as filed - were dropped from corresponding independent claim 16 of the application as filed and replaced by those of the “frame” in granted claim 1.

[2.2.5] The Board concludes that the term “frame” is to be read in its broadest sense, meaning “an underlying support structure”. 

Unsurprisingly, this broad interpretation led to claim 1 being anticipated by the prior art.

To read the whole decision, click here.