Tuesday 4 October 2011

T 2230/08 – Trapped


Claim 1 of the application as filed covered a method of regenerating a devitalized absorber comprising the steps of providing a stream of regenerating gas and passing it over the absorber, at an effective temperature. Claim 2 added the feature that the temperature was in the range of 250°F to 750°F.

Claim 1 as granted covered a method of method of regenerating a devitalized absorber comprising the steps of providing a stream of regenerating gas within a temperature of 250°F to 750°F and passing it over the absorber. As a matter of fact, the temperature condition now applied to the gas rather than to the absorber.

The Opposition Division revoked the patent. According to the decision, the subject-matter of claim 1 of the sole request on file extended beyond the content of the application as filed, as the latter did not disclose a method of regenerating a devitalized catalyst/absorber that comprised the step of providing a stream of regenerating gas with a temperature in the range of 121°C to 399°C.

The patent proprietor tried two strategies in order to get out of the inescapable trap: requesting a correction under R 139 and invoking G 1/93 (“no technical contribution”). Unsurprisingly, none of them succeeded.

Main Request

[3] Claim 1 according to the main request comprises in comparison to claim 1 as granted several amendments, in particular that the temperature range of 121°C to 399°C (250°F-750°F) defines the temperature at which regeneration takes place, in line with the application as originally filed, and not the temperature of the incoming stream of reducing gas. This amendment is considered by the [patent proprietor] to represent a mere correction under R 139 of the wording of claim 1 as granted.

[4] R 139 (former R 88 EPC 1973) provides in its second sentence that a correction of errors in documents filed with the EPO that concerns the description, claims or drawings can only be allowed if the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as correction. In decision G 3/89 [5], the Enlarged Board of Appeal (EBA) considered that, for a correction under R 88, second sentence EPC 1973, that concerns the disclosure of a European application or a European patent to be allowed, the respective parts of the disclosure for which a correction is requested must, either on the date of filing or following an amendment under A 123, contain such an obvious error that a skilled person would be in no doubt that the information concerned could not be meant to read as such. According to point [2] of the reasons of that decision, the skilled person must be in a position objectively and unambiguously to recognise the incorrect information using common general knowledge. If, on the other hand, it is doubtful whether that information is incorrectly defined, then a correction is ruled out. The same applies if incorrect information only becomes apparent in the light of the proposed correction (see point [5] of the reasons).

[5] In the present case, the range of 121°C to 399°C (250°F-750°F) is clearly defined in claim 1 as granted as the temperature of the incoming stream of regenerating gas. The step of providing a gas at a specific temperature is technically sensible for the skilled person, as it could be used for example as a means to provide or adjust the temperature at which regeneration takes place.

The [patent proprietor] argued that the only temperature that matters was not that of the incoming stream of regenerating gas, but the temperature at which regeneration is carried out, which is the temperature of the catalyst/absorber. They argued that the temperature of the regenerating gas was of no significance for the regeneration of catalysts in turbine power plants – it was not even measured- because the regeneration temperature in that case was imposed by the temperature of the huge mass of ceramic supporting the catalyst/absorber. Claim 1 as granted, however, does not contain any limitation in respect of turbine power plants, the method of the invention being also for example applicable to the regeneration of vehicle exhaust catalysts as indicated by the [patent proprietor]. In the latter field, it is not uncommon as was argued by the [opponent] to pre-heat the regenerating gas before regeneration takes place. That point was not disputed by the [patent proprietor]. Therefore, the [patent proprietor’s] argument that the only temperature that matters in the method according to claim 1 of the patent in suit is the reaction temperature fails to convince. Thus, the skilled person would not have any reason in the absence of any limitation to turbine power plants to doubt the information provided in claim 1 as granted when taken at face value. 

[6] Moreover, the description of the patent in suit does not provide any indication that another meaning could have been intended for the range of temperatures defined in claim 1. There is no disclosure in the patent as granted that the only temperature that matters is the reaction temperature and not that of the gas. On the contrary, the temperature of the regenerating gas is defined in paragraph [0014] of the specification in the same manner as in claim 1 as granted and the temperature of the regeneration reaction is stated in paragraph [0019] to be preferably in the range of 121°C to 399°C, i.e. possibly in the same range but not necessarily in that range, in line with the absence of any definition of the reaction temperature in claim 1 of the granted version. The information presented in claim 1 as granted is therefore for the skilled reader coherent with that provided in the description. Thus, the definition of the range of temperature for the incoming stream of regenerating gas in claim 1 does not appear to the skilled person as an error, even less as an obvious one.

[7] The [patent proprietor] argued that a correction under R 139 should be allowed as the skilled reader comparing the wording of claim 1 as granted and of claim 1 as originally filed would immediately realise that the range of temperature as defined in claim 1 as granted was meant to be that of the regeneration reaction as in claim 1 as originally filed. A correction under R 139 in a document filed with the EPO is an instrument available to rectify an error of transcription against the true intention of the person filing the document or on whose behalf it was filed. There is however no evidence that such an error of transcription occurred in the present case. On the contrary, the fact that the same amendment was carried out while adapting the description to amended claim 1 and that the temperature of the regeneration reaction was not amended in the description, i.e. remained preferably, but not necessarily, in the range of 121°C to 399°C, rather indicates that the intention of the applicants was to attribute this temperature range to the stream of incoming gas, but not to the reaction temperature.

[8] Consequently, the request for correction under R 139 is rejected and the range of temperature from 121°C to 399°C (250°F-750°F) in claim 1 as granted is read by the skilled person as to define the temperature of the incoming stream of regenerating gas, but not that of the regeneration reaction.

[9] Compared to claim 1 as granted, claim 1 according to the main request has been broadened in scope in violation of A 123(3) as it no longer requires that the stream of regenerating gas has a temperature in the range of 121°C to 399°C (250°F-750°F), i.e. claim 1 according to the main request allows a method using a stream of gas which is cooler or hotter than the one defined in granted claim 1. This was not disputed by the [patent proprietor]. Hence, the claims according to the main request are not allowable in view of A 123(3).

Auxiliary request

[10] The question to be answered is whether in view of decision of the EBA G 1/93, the undisclosed added feature defining the temperature of the incoming stream of regenerating gas can remain in claim 1 of the auxiliary request. According to G 1/93 [16], if an undisclosed added feature, although limiting the scope of protection conferred by the patent, has to be considered as providing a technical contribution to the subject-matter of the claimed invention, it would give an unwarranted advantage to the patentee contrary to the purpose of A 123(2). Whether or not a limiting feature is to be considered as added subject-matter within the meaning of A 123(2), can, of course, only be decided on the basis of the facts of each individual case (see G 1/93 [17]).

[11] According to T 384/91 [5], an undisclosed added feature at least should not be considered as merely limiting the protection conferred by the granted patent without providing a technical contribution to the invention as claimed, if it interacts with the remaining features of the claim in such terms that it influences the solution of the technical problem which can be understood from the application as originally filed. The [patent proprietor] citing decision T 553/99 argued that the addition of the disclosed feature of the temperature range for the regeneration reaction deprived the undisclosed feature of the temperature range for the regenerating gas of all technical contribution to the subject-matter of the claimed invention.

[12] According to […] the patent in suit […], the technical problem underlying the present invention is the provision of “a system for regenerating the absorber, rather than removing it, which is easier, simpler, faster, less labour intensive and less expensive than those systems known in the prior art”. The present invention is indicated to be advantageous, because the regeneration of the catalyst/absorber may be carried out in situ, without liquid reagents and also because the by-products of the regeneration can be easily disposed of and the gases used in the regeneration are low-cost and readily available. According to […]the patent in suit […] “a devitalized catalyst/absorber is regenerated, that is, treated to restore the initial activity or to otherwise substantially improve the activity, by passing a regeneration gas over it”.

[13] The fact that the essential temperature is that at which regeneration takes place, as was argued by the [patent proprietor], does not automatically deprive the temperature of the stream of regenerating gas of all technical contribution to the invention as claimed. In the context of the present claimed regeneration method, the pre-heating of the regenerating gas could represent depending on the type of device containing the catalytic system a sensible feature that interacts with the other means used for providing the reaction conditions required for regeneration. The undisclosed modification contained in claim 1 as granted and still present in claim 1 of the auxiliary request would therefore be prejudicial to third parties relying on the invention as described in the application as originally filed, as that undisclosed modification which is technically sensible, might possibly be the basis for a valuable invention.

[14] Claim 1 of the auxiliary request is not restricted to any specific method which would deprive the definition of the temperature of the regenerating gas of all technical contribution within the context of that claim. In the absence of any additional disclosed restricting feature to that effect, the temperature of the incoming regenerating gas is therefore considered to interact with the remaining features of the claim in such terms that it influences the solution of the technical problem which can be understood from the application as originally filed.

[15] It follows that the condition of a missing technical contribution set out in decision G 1/93 on whose basis added matter can be considered as not extending beyond the application as filed are not met in the present case.

Consequently, the subject-matter of claim 1 according to the auxiliary request extends beyond the content of the application as originally filed in violation of A 123(2).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

3 comments:

Anonymous said...

I wonder if the fact that this was post-grant has a bearing on the level of scrutiny given to an R139 appeal.

Does anybody have an example of an appeal to R139 being successful in an opposition?

Anonymous said...

"That's some catch, that Catch-22," [Yossarian] observed.

"It's the best there is," Doc Daneeka agreed.


I could only display Schadenfreude if I were entirely sure of never ever setting foot in the bear trap myself.

On Rule 139 (a.k.a. Rule 88 EPC1973): AFAIK, nope, I'm afraid.

Myshkin said...

In my view a request for correction under R. 139 EPC, even when allowed, cannot change the text of the granted patent. This text is part of the decision, and a decision can only be changed by an (allowed) appeal or by a correction under R. 140 EPC. Not by a request under R. 139 EPC. I find it also inconceivable that the text of a decision would somehow retroactively change by a correction of the application documents.

My view is not in contradiction with the fact that R. 139 EPC is applicable during opposition. I only say that it cannot apply to the text of a decision, hence not to the text of the patent as granted.

(From an earlier discussion on this blog I know that co-commenter Manolis is of the view that the text of the patent as granted is not part of the decision to grant. If that indeed turns out to be the case, then what I say here is incorrect. Maybe G 1/10 will clarify this point.)

Suppose that in the present case the claims that were later granted had been filed together with a letter from which it was clear that the applicant had intended to file claims with a temperature range defining the range at which regeneration took place (i.e. claims that did comply with Art. 123(2) EPC). Then it seems to me that the requirements of R. 139 EPC are fulfilled: there cannot really be a doubt on what the applicant had intended to file. But I cannot imagine that R. 139 EPC could then be used during opposition to change the claims of the granted patent. The result would be a patent on subject-matter very much different from the subject-matter on which the ED granted the patent...

Is it known whether R. 139 EPC applies during limitation? (I would say: yes, but obviously it cannot be used to change the text of the patent as granted.)