T 59/08 – More On Sufficiency

This is a revocation appeal.

The independent claims on file read:

1. A multimodal polyethylene composition for pipes, which multimodal polyethylene has a density of 0.930-0.965 g/cm³ and an MFR5 of 0.2-1.2 g/10 min, characterised in that the multimodal polyethylene has an M_n of 8000-15000, an M_w of 180-330 x 10³, and an M_w/M_n of 20-35, said multimodal polyethylene comprising a low molecular weight (LMW) ethylene homopolymer fraction and a high molecular weight (HMW) ethylene copolymer fraction, said HMW fraction having a lower molecular weight limit of 3500, and a weight ratio of the LMW fraction to the HMW fraction of (35-55) : (65-45).

12. A pipe characterised in that it is a pressure pipe comprising the multimodal polymer composition according to any one of the preceding claims, which pipe withstands a pressure of 8.0 MPa gauge during 50 years at 20°C (MRS8.0).

[2] The question to be answered when assessing sufficiency of disclosure is whether the invention as defined in the claims can be performed by a person skilled in the art throughout the whole area(s) claimed without undue burden, taking into account the information given in the patent in suit and using common general knowledge.

[2.1] The invention of which the sufficiency of disclosure has to be judged is the object defined in present claim 1 by the combination of the following features:

(i) a multimodal polyethylene composition suitable for pipes,

the multimodal polyethylene having

(ii) a density of 0.930-0.965 g/cm³,

(iii) a MFR5 of 0.2-1.2 g/10 min,

(iv) a M_n of 8000-15000, a M_w of 180?330 x 10³ and a M_w/M_n of 20-35,

and comprising

(v) a low molecular weight (LMW) ethylene homopolymer fraction and a high molecular weight (HMW) ethylene copolymer fraction in a weight ratio of the LMW fraction to the HMW fraction of (35-55) : (65-45)

(vi) said HMW ethylene copolymer fraction having a lower molecular weight limit of 3500.

[2.2] The contested decision nor the parties on appeal addressed the question whether the present patent specification disclosed a technical concept fit for generalisation and whether it made available to the skilled person, with his common general knowledge, compositions suitable for pipes meeting the combination of parameters defined in claim 1, as well as the pipes according to claim 12. The questions addressed were rather which meaning should be attributed to the feature “lower limit of the high molecular weight (HMW) ethylene copolymer fraction” and whether, in the absence of any mention in the patent with respect to the measurement methods for determining M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, the skilled person would know which measurement method was to be employed.

[2.3] Following the normal rule of claim construction according to which terms used in a claim should be given their ordinary meaning in the context of the claim in which they appear, the lower molecular weight limit of the HMW ethylene copolymer fraction defined in claim 1 designates the lowest molecular weight of any of the molecules of the HMW fraction. This view is supported by the statement provided in the specification on page 3, lines 9-12 and was not disputed any longer during the oral proceedings.

[2.4] In the absence in the claim of any indication of a method for determining M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, the claim has to be read as allowing any method of measurement, including any setting, that can be said to be standard in the art concerned; in other words, any ordinary method within the context of the present claim. In this respect, the parties do not dispute that different methods (for example GPC), including different settings, would be available to determine values for those parameters, nor that the choice of the measurement method for determining said parameters has an influence on the values obtained.

[2.5] The notions of “true value” and closeness to that “true value” in relation to M_w and M_n parameters, to which the [patent proprietor] referred, are however not only vague, but also not reflected by the information provided in the patent in suit.

If a patent proprietor wishes to argue that a parameter range in a claim should be read in a special way or needs to be measured in a particular manner because several possibilities are available, then for that argument to be accepted it is necessary to limit the claim to this method of measurement by way of amendment, provided that this can be done meeting the requirements of A 123(2). It is not enough to argue that the claim should be read in a particular way when the wording of the claim does not require this.

For lack of information to that effect, it is not apparent that the skilled person would try to determine the “true value” of M_w and M_n, as it is at least equally credible that he would choose any standard method meeting his needs in the context of the technical circumstances of the case, i.e. also taking into account the convenience and reproducibility of that method.

[2.6] Therefore, the present claims should be read as to encompass any composition or pipe that meets the defined values of M_w, M_n and “lower limit of the high molecular weight (HMW) ethylene copolymer fraction” using any method that can be considered to be standard in the art in the technical context of the present claims as the method of measurement for those parameters.

[2.7] Such a reading of the claim may on the one hand result in a larger number of compositions or pipes meeting the claimed values than when one specific method were used, and therefore in less difficulty to obtain compositions or pipes as defined by the claims, i.e. in less stringent requirements for assessing sufficiency of disclosure of the claimed combination of features. In that case it may on the other hand require stronger arguments in favour of novelty and inventive step, in particular if the claimed values were held to distinguish the claimed subject-matter from the prior art and to be considered essential for providing a technical effect vis-à-vis the prior art.

[3] The [opponents’] argument that the conventional methods for determining M_w and M_n led to different values out of which a lack of guidance resulted for the skilled person wishing to obtain the result defined in the patent specification […], namely to obtain a pressure pipe with a desired combination of good processability and good strength, cannot be accepted as an argument pertaining to sufficiency of disclosure of the invention, as those results or effects are not features of the present claims. This follows from the consideration that - in accordance with R 43(1) – the invention in the European patent application is defined by the subject-matter of a claim, i.e. the specific combination of features present in the claim, as is reminded in opinion G 2/98 [2] of the Enlarged Board of Appeal. Whether the result defined in the present patent specification […], is achieved or not, may, however, become relevant under the requirement of inventive step, for assessing the technical problem which can be held to be successfully solved by the combination of features claimed.

[4] The uncertainty about which method the skilled person would select to determine M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, which was the central issue addressed by the parties both in opposition and in appeal proceedings, is in the present case not adequate to make a case against sufficiency of disclosure.

The argument that the choice of the measurement method for determining M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction had an influence on the values obtained and that therefore the skilled person would not know whether he had obtained something falling within the ambit of the claims – as it was argued by the [opponents] as well as in the decision under appeal – boils down to the argument that the boundaries of the claims are not clearly defined, which is a matter of A 84, not sufficiency of disclosure. Such an objection under A 84 cannot be successful as it would not arise out of any amendment made in opposition or appeal proceedings.

[5] For assessing the requirement for sufficiency of disclosure the question should be answered whether the skilled person, following the teaching provided in the patent specification […], and also taking into account his general knowledge, would be able to obtain without undue burden multimodal polyethylene compositions meeting all criteria defined in claim 1 of the patent in suit […] and the pipe according to claim 12.

[5.1] In this respect, points raised before the opposition division […], which in particular relate to the process conditions that are needed to obtain the combination of technical features defined in the claims, and which appear to be essential to assess the sufficiency of the disclosure, should also be considered.

[5.2] However, none of those issues was decided by Opposition Division, nor argued by the parties before the Board.

[6] Under those circumstances, as the essential issues to be addressed in respect of sufficiency of disclosure have not been dealt with in the contested decision, the Board exercises its discretion under A 111(1) to remit the case to the first instance for further prosecution.

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Interpretational Spotlight: “Half Dried”

In this revocation appeal, claim 1 of the main request before the Board read:

A production process of a hydrophilic crosslinked polymer, comprising the steps of polymerizing an aqueous solution including a hydrophilic monomer and a crosslinking agent to obtain a hydrogel crosslinked polymer, and drying the hydrogel crosslinked polymer, thus obtaining the hydrophilic polymer, with the step of drying the hydrogel crosslinked polymer comprising the steps of:
(i) carrying out a first-step drying of hydrogel crosslinked polymer obtained by the polymerization in a static state to obtain a half-dried product, until it becomes possible to disintegrate an aggregate of the particulate hydrogel crosslinked polymer; then
(ii) disintegrating the half-dried product obtained by the first-step drying into a particle size of 20 mm or less; and then
(iii)carrying out a second-step drying of the half-dried product having a particle size of 20 mm or less in a stirred state and/or a fluidized state.

The Board dealt with the question whether this claim was based on an inadmissible extension:

[2] Claim 1 of the main request corresponds to claim 1 as granted, which, apart from the insertion of the term “half-dried”, resulted from a rewording of claim 1 as originally filed. It is not disputed that any difference in meaning between claim 1 as granted and claim 1 as originally filed could only result from the definition that the product resulting from drying step (i) is a “half-dried” product. It is also not disputed that the term “half-dried product” as such is only disclosed in the examples of the application as filed, the details of which are not given in claim 1 as granted.

Hence, the question to be answered is whether the introduction of the term “half-dried product” into claim 1 results in technical information that could not be directly and unambiguously derived from the application as filed.

In particular whether the introduction of the term “half-dried” amounts to an undue generalization of the disclosure of the examples of the application as filed, as found by the Opposition Division and argued by the [opponents].

[3] Normally, terms used in a claim should be given their ordinary meaning in the context of that claim; in case of unclarity, the disclosure of the patent may be taken into account, ruling out interpretations that are illogical or do not make technical sense.

The wording “half-dried” by its nature does not provide an exact quantitative definition of the proportion of water removed after the first drying step, in particular it does not indicate that exactly 50 % of the water has been removed. It rather expresses the general idea that the first drying step leads to a product which is semi-, partly, not fully dried.

[4] From the context of claim 1, according to which the boundary between the first drying step (i) and the disintegration step (ii) is defined as the point at which it is possible to disintegrate the aggregate of the hydrogel crosslinked polymer resulting from drying step (i), it is also clear that the above indicated meaning of “half-dried” does not provide any precise restriction on the claimed subject-matter with regard to the proportion of water removed during the first drying step. This view is supported by the disclosure of the invention in the paragraph bridging pages 4 and 5, on page 5, lines 25-27 and in the first paragraph of page 7 of the application as filed.

[5] It can be accepted that the amount of water removed until aggregates have formed and can be disintegrated may depend on many factors, in particular on the chemical nature of the polymer and its structure, and therefore will not necessarily be exactly 50% of the water originally present. This is consistent with the information provided in the first full paragraph of page 5 of the original application, according to which the water content of the hydrogel crosslinked polymer subjected to the first drying step usually has a water content in the range of 50-80 wt%. It can also be deduced from the information given in the paragraph bridging pages 5 and 6 of the application as filed, where it is indicated that hydrogel crosslinked polymers obtained in the course of the first drying step should not have a water content higher than 25 wt.%, as it would result in a difficult disintegration of the polymer particles.

[6] The above indicated interpretation of the term “half-dried” is also consistent with the use, on page 5, line 10 of the application as filed, of the expression “in the midway of drying” which describes the point in time in the process of drying when aggregates are formed. It is also in line with the use of that term in the various examples and comparative examples of the application as filed for describing different situations, corresponding to various proportions of water removed after the first drying step, which are all much higher than 50%.

[7] It follows from the above that the term “half-dried product” as used in the examples of the application as filed merely expresses the general idea that the first drying step leads to a product that is semi-, partly, or not fully dried, or, in other words, still contains some noteworthy amount of water, and that it is not associated with any specific water content of the polymer.

[8] The [opponents’] argument that comparative example 1 of the patent in suit would now fall within the ambit of claim 1, as the term half-dried also allows content of water after the first drying step as high as 20,9 wt%, fails to convince. In view of the use of the same expression “half-dried product” in the examples and comparative example 1 of the application as filed, and the indication in the various passages on pages 5 and 6 cited above of the amounts of water usually present in the hydrogel crosslinked polymer before and after the first drying step, it is already apparent that the very use of the expression “half-dried” in the application as filed is not decisive in determining whether an embodiment falls within the ambit of original claim 1 or not. The decisive point is the formation of aggregates that may be disintegrated, which information was present both in the original claims as well as in the claims as granted, and which is therefore not open to clarity objections as raised by the [opponents]. The method described in comparative example 1 does not qualify as an embodiment of either claim 1 as filed or claim 1 as granted by virtue of the fact that the “half-dried” polymer was not disintegrated and dried according to steps ii) and iii) of present claim 1.

[9] It follows from the above that the result of the introduction of the term “half-dried” in claim 1 as originally filed is not a claim 1 as granted that comprises technical information not directly and unambiguously derivable from the application as filed. It does not change the meaning of the claim and it does not allow scope for any interpretation extending beyond the teaching of the application as filed.

Decisions T 792/94 and T 1067/02 cited by the [opponents], which concern a situation where the meaning of the claim could be held to have been changed by insertion of an ambiguous feature, are therefore of no relevance for the present case. 

[10] Hence, the Board comes to the conclusion that the subject-matter of claim 1 as granted, i.e. claim 1 of the present main request, does not extend beyond the content of the application as filed.

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T 677/11 – Filling In The Blanks

This is a revocation appeal in a case where there were no less than four opponents.

Claims 1 and 2 of auxiliary request 2 read:

1. Use of an enzyme resistant sugar polymer,

wherein the enzyme resistant sugar polymer is polydextrose,

for manufacturing an appetite suppressing medicine, which comprises a food intake suppressing amount of said enzyme resistant sugar polymer.

2. Non-therapeutic use of an enzyme resistant sugar polymer,

wherein the enzyme resistant sugar polymer is polydextrose,

for suppressing the appetite of a mammal. (my emphasis)

In what follows, the Board tries to understand what exactly “appetite suppression” is supposed to mean.

[3.1] The subject-matter of claims 1 and 2 of auxiliary requests 2 and 3 is directed to the appetite suppressing effect of an enzyme resistant sugar polymer, namely polydextrose (PDX). Since the claims do not explicitly require that the appetite suppressing effect be on satiation, on satiety or on both, it is necessary to define the meaning of the terms “appetite suppressing medicine” as used in claim 1 and “for suppressing the appetite” as used in claim 2. In the following these terms will be examined together by reference to the term “appetite suppression”. The interpretation of this term - be it narrow and concerning the combined effect on satiation and satiety, or be it broad and concerning each of them independently or in combination – has been at the core of the dispute between the [patent proprietor] and the [opponents].

Regarding the definition of the terms “satiation” and “satiety”, reference is made to E63-Exh1, the affidavit of Prof. Blundell, an eminent expert in the field of nutrition:

“9. Satiation develops during the course of eating and eventually brings the period of eating to a close. Accordingly, satiation can be defined by the measured size of the eating episode.” (emphasis added)

“10. Satiety is the state in which further eating is inhibited and follows the end of an eating episode. I am aware that a procedure used to assess the action of a food on satiety is the preload strategy, where precisely prepared foods are consumed in a “preload”. Effects on later food consumption are then measured over varying periods of time by visual analogue scales, and sometimes by additional eating tests, if appropriate.” (emphasis added)

These definitions confirm what the two terms were generally considered to mean in this field at the priority date of the patent in suit […].

Interpretation of the term in the light of the patent itself

[3.2.1] The [opponents] have pointed out that the patent specification does not contain any explicit narrow definition of the disputed term and the [patent proprietor] has not contested this fact during the oral proceedings. The board acknowledges that the patent uses interchangeably a number of terms related to appetite suppression without attaching particular meaning to any one of them and without any consistency or precision. Terms employed include: suppress appetite, reduce appetite, control appetite, control food intake, reduce food intake, suppress food intake, provide a feeling of fullness, control hunger, provide fullness sensation, suppress hunger, reduce hunger, induce fullness, appetite is depressed, curb the appetite, decrease the intake of food, provide feeling of satiation, give a significant calorie reduction, reduce caloric intake.

All these terms are neither necessarily correlated nor necessarily combined. Therefore there is no basis in the patent for a narrow construction of the term “appetite suppressing” requiring an obligatory cumulative effect on satiation and satiety as alleged by the [patent proprietor].

[3.2.2] In fact the contrary is true. The patent specification […] provides ample evidence that the term “appetite suppression” as used in the claims means a suppression of hunger (satiety induction) or induced fullness (induction of satiation).

Paragraph [0035]:

“By taking the satiety agent, … before a meal or snack for a sufficient time for the satiety agent to be effective in suppressing hunger and/or inducing fullness, the animal, e.g. mammal, will be ingesting less food between meals and/or during meals” (lines 15-17);

“...as the satiety agent … will act to curb the appetite” (lines 22-23);

“Typically, then the satiety agent, … will be taken sometime in a period prior to a meal or at the time a usual meal is eaten, and this will serve to decrease the intake of food at a meal or may even eliminate the meal altogether, as the satiety agent, e.g. polydextrose, … may provide a sufficient feeling of satiation to eliminate some normally eaten meals or snacks” (lines 23-27).

Paragraph [0052]:

“… it was possible to determine the satiating effect (i.e. suppression of hunger, or increase in fullness)”.

Paragraph [0070]:

“Furthermore, the sugar polymer, including the hydrogenated polymer, either alone or in combination, act with xylitol or other sugar alcohol in synergism to control the appetite of the animal and/or provide fullness”.

Thus the patent itself discloses that either an effect on satiation or an effect on satiety or both is to be considered as being an effect on appetite suppression.

Interpretation of the term in the light of the common general knowledge

of the person skilled in the art at the priority date of the patent in suit

[3.3.1] The [patent proprietor] did not dispute that the patent in suit allowed the term “appetite suppression” to be broadly interpreted. Rather, it argued that it was in the “mental furniture” of the average skilled person that when using the term “appetite suppression” he understood that both satiety and satiation must be affected. In other words, despite the broad meaning given to the term “appetite suppression” in the patent in suit, the skilled person would nevertheless give it a narrow interpretation.

Thus the interpretation of the term “appetite suppression” boils down to the question of what interpretation the average skilled person in the art would have given to this term at the priority date of the patent in suit, which is incontestably 9 April 2001. Regarding the average skilled person in the art, the board concurs with the [patent proprietor] that he should be the practitioner in the field of nutrition of mammals, in particular humans. Regarding the question as to whether Prof. Blundell should be considered as the average skilled person in the art, the board considers that Prof. Blundell is an eminent specialist with an extraordinary technical knowledge in this field and cannot represent the average skilled person. According to his curriculum vitae […] he has spent many years working in the field of nutrition and has extensively studied the effects of various foodstuffs on human appetite. Thus the statements in his affidavit (E63):

“19. It is my opinion that it is not satisfactory to assume that because a particular food has an effect on satiety it necessarily also has an effect on satiation. As a consequence and in the absence of an inevitable link between the two both must be independently affected in order to exert an effect on appetite control.”

“21. In summary, it is my opinion that the understanding of a claim about appetite suppression requires an affect on both the satiety and satiation of a subject.”

cannot be considered to represent the general technical knowledge of the average practitioner at the priority date of the patent in suit. Furthermore, E63 expresses a personal opinion on the date of 19 May 2011, i.e. ten years after the priority date of the patent in suit.

[3.3.2] Thus the board agrees with the [opponents] that the skilled person trying to assign a meaning to the term “appetite suppression” would start from the natural meaning to the term “appetite”, which is to be found in E61 (a dictionary). According to E61 the term “appetite” as used in everyday language expresses “the desire or wish for food”. Naturally “appetite suppression” can only mean suppression of this desire, whatever the mechanism involved is, irrespective of the extent and duration of appetite suppression. This is the literal and clear meaning of the claims for the skilled person and there is no reason to deviate from this definition, in particular as the patent specification does not attribute a different meaning to the term “appetite”.

On this basis the term “appetite suppression” would be understood by the skilled person as “the suppression of the desire or wish for food”, regardless how this effect is achieved, be it by acting on satiation or satiety or even on both.

It has not been disputed that two different mechanisms were known at the priority date of the patent which influence the appetite of a subject, namely satiation and satiety which, whilst closely related, can operate independently of each other […].

Nevertheless, an appetite suppressing effect of a compound could be evaluated by measuring of either its satiation effect or its satiety effect, with the combination of both satiation and satiety being the most effective alternative. Indeed the prior art uses interchangeably a plethora of different terms to designate the same concept: reduction of satiation, satiety, food intake suppression, satiating effect, satiation, energy intake suppression, and appetite suppression. The interchangeable use of “satiety” and “satiation” indicates that the interpretation of the term “appetite suppression” as only a combination of both satiation and satiety, as alleged by the [patent proprietor], was not well established in the state of the art at the priority date of the patent in suit. For illustration, reference is made to the following documents:

• E1 […] discloses the use of carbohydrates for suppressing appetite, whereas only the low decrease of the insulin peak was monitored, thus revealing an effect on satiety (i.e. less hunger between meals and less snacking);
• E2 discloses a method to retard the food’s digestion resulting in glucose being released into the bloodstream at a slower rate over a long period of time […] providing a feeling of prolonged satiety and helping to prevent snacking between meals […] and finally leading to the suppression of appetite […].
• E32 […] discloses real appetite-suppressant compositions and recites under the title “Satiety” that “Perception of satiety (hunger, satiety, fullness, desire to eat, appetite estimation of how much one could eat, and thirst) was scored on anchored 100 mm visual analogue scales at day 4 during baseline and day 11 during each intervention period. … To characterize the development of satiation during a meal, questions on hunger, satiety and pleasantness of taste were answered on 100 mm visual analogue scales every 2 min during dinner consumed on the same day.” (emphasis added);
• E35 (column 1, lines 58-62) mentions that “… the [xanthan] gum per se taken well before meals and without food will act to suppress the appetite, perhaps through a bulking phenomenon which possibly causes a signal of satiety, diminishing the desire for further food intake.” (emphasis added);
• E64 discloses that Quorn® (a high protein, dietary fibre combination) has an appetite suppressing effect by having a strong impact on late satiety […].
• E65 […] discloses that the modulation of appetite involves quite a variety of alternative possibilities (enhancing satiety and or inhibiting hunger or altering food selection) which do not have to be present in a cumulative way.

[3.3.3] Certainly, the state of the art at the priority date of the patent in suit discloses also the cumulative effect of satiation and satiety for the control of appetite. Reference is made to E63-Exh5 […], and the affidavit of Prof. Blundell […] confirms this fact. Nevertheless, the cumulative effect concerns the “optimum situation” for the suppression of appetite. The patent in suit […] incidentally defines the “effective” appetite suppression as a 20 to 30% reduction of food intake, although the highest exemplified reduction in food intake is only 16.8% […]. The fact that there is an optimum situation does not cast doubt on the fact that the state of the art cited above discloses also a less ideal suppression of appetite by affecting either satiation or satiety. The technical evidence of the patent in suit discloses […] values for food intake reduction such as 7.2%, 9.9%, 16.8% and 10.9%, which are much lower than the effectively reduced appetite suppression of 20-30% […].

[3.4] The board thus concurs with the [opponents] that the [patent proprietor’s] narrow interpretation of the term “appetite suppression” to require both satiety and satiation is an assertion made “a posteriori”, that is, in view of the [opponents’] various objections during the opposition and appeal proceedings before the EPO. The [patent proprietor] cannot be permitted to fill in the blanks after the priority date and provide now, when the granted patent is challenged, a new and completely unsupported interpretation of the patent language and maintain that this narrow interpretation is the only interpretation that the person skilled in the art would contemplate upon reading the patent.

[3.5] In summary, the contested term has to be interpreted as deriving from the control of satiation or satiety or both.

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T 2319/11 – Spirit Of 69

This is an examination appeal.

Claim 1 of the main request on file read:

A spiral-link belt, comprising:

• a belt body formed of a series of cross-machine direction (CD) spiral coils (201, 202, 204, 206) linked by pintles (203, 205, 207) in the CD to form an endless loop; and

• a plurality of CD drive bars integrated into said belt body;

wherein each CD drive bar is formed of a first spiral coil (204) attached to a second spiral coil (202) in the belt body and of a third spiral coil (206) attached to a fourth spiral coil in the belt body; the first (204) and third (206) spiral coils being linked together out of the plane of the belt body. (my emphasis)

There was some discussion on the interpretation of the expression “linked together”. According to the applicant, the expression was ambiguous so that the description had to be used in order to interpret it in accordance with A 69(1). The criteria used by a judge in litigation cases should be applied and the Board was compelled to do the same by the provision of A 69 and its protocol in the EPC. Therefore, claim 1 was to be seen as being limited to the embodiments of the description (first and third coils attached using one pintle as in figure 2 or using only two additional spiral coils as in figure 3). Since these specific embodiments were not disclosed in D1, novelty had to be acknowledged.

This argument was doomed to fail:

[1.1] Document D1 discloses a spiral-link belt (“Förderband” (1)), comprising:

• a belt body formed of a series of cross-machine direction (CD) (“quer zur Förderrichtung P”) spiral coils (“Drahtwendeln” (3)) linked by pintles (“Verbindungsstäbe”, “Verbindgungsstücke”, “Verbindungsdrähte” (4)) in the CD to form an endless loop; and
• a plurality of CD drive bars (“Mitnahmerippen” (2)) integrated into said belt body;

wherein each CD drive bar is formed of a first spiral coil (“Drahtwendel” (5)) attached to a second spiral coil (“Drahtwendel” (3)) in the belt body and a third spiral coil (“Drahtwendel” (5)) attached to a fourth spiral coil (“Drahtwendel” (3)) in the belt body; the first and third spiral coils (“Drahtwendeln” (5)) being linked together out of the plane of the belt body (column 3, lines 14-31; claims 1, 3; figures 5-8).

Therefore, all features of claim 1 are disclosed for the belt of D1 and, hence, its subject-matter lacks novelty over D1 (A 54(1)).

[1.2] The Board is of the opinion that the expression “linked together” used in claim 1 leaves open how the first and third spiral coils are to be connected. As exemplified for instance by figure 3 of the application, the connection can be performed via other spiral coils, two in that case, so the connection does not need to be direct.

Contrary to the appellant’s opinion, claim 1 cannot be regarded as being limited to the embodiments of the description (first and third coils attached to each other using one pintle as in figure 2 or using only two additional spiral coils as in figure 3).

Indeed, as a general principle, when performing substantive examination, the terms used in the claims are considered with their broadest meaning in accordance with the understanding of the person skilled in the art; the specific embodiments discussed in the description not necessarily being foreseen to limit the claims. Therefore, the applicant’s arguments with respect to the scope of claim 1 being limited by the two embodiments of the description in application of A 69 and its protocol are not convincing.

Consequently, the embodiments of D1 in which the connection of the first and third spiral coils is performed via three (figures 5-6) or four (figures 7-8) additional spiral coils fall completely within the terminology of claim 1 of the main request.

[1.3] Contrary to the appellant’s statements, the Board has never expressed the opinion that the expression “linked together” is ambiguous or unclear. The Board merely considers the expression as being broad such that, as discussed under point 1.2 above, it encompasses other options, including the disclosure of D1.

Furthermore, in case of an ambiguity or a lack of clarity resulting from an expression in a claim, in examination proceedings this issue has to be raised and solved before grant entirely under the provision of A 84. The scope of protection conferred by a patent is indeed determined by the claims and, hence, the latter should be clear when the patent is proposed for grant. This is all the more true since lack of clarity is not a ground of opposition. Consequently, if the expression “linked together” would have been regarded by the Board as being ambiguous, as suggested by the appellant, claim 1 would in any case have had to be amended for clarification in order to fulfil the requirements of A 84.

This alleged objection of ambiguity has not been raised, neither in the impugned decision, nor by the Board, which has instead chosen to interpret the expression in its broadest normal meaning, as would the skilled person do.

[1.4] All the decisions cited by the appellant with respect to the application of A 69(1) relate to opposition proceedings dealing with lack of clarity objections and/or different interpretations of feature(s) by the parties (T 488/97 [2.2.1]; T 23/86 [2]; T 16/87 [6]; T 476/89 [2]). In such cases, the Board agrees that it may indeed be necessary to use the description and/or drawings for determining what is the subject-matter claimed, so that substantive comparison with the prior art can follow. This, however, does not apply to the present examination case.

As a consequence, contrary to the appellant’s opinion, the criteria established by A 69 and its protocol and applied by a national court in litigation cases do not apply to substantive examination before grant.

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T 738/10 – A Missing Verb

This appeal was filed after the Opposition Division had rejected the opposition against the patent under consideration.

Claim 1 of the main request (identical to claim 1 as granted) read:

A process for preparing a 3-functionalized propylsilane by addition of an allyl compound of the general formula

H₂C=CH-CH₂X

where X is selected from the group consisting of Cl, Br, I, F, CN, SCN, SH, SR, OH, NRR¹ and OR and R and R¹ are each independently (C₁-C₆)-alkyl or (C₃-C₇)-aryl, onto a silane of the formula

R²R³R⁴SiH

where R², R³ and R⁴ are each independently selected from the group consisting of hydrogen, halogen, (C₁-C₆)alkyl, (C₁-C₆)-haloalkyl, (C₃-C₆)-allyl, (C₁-C₄)-alkoxy, phenyl, aryl and aralkyl,

at a reaction temperature in the range from 0°C to 200°C and at a pressure in the range from 200 m bar to 10 bar in the presence of a catalyst, characterized in that the catalyst is a supported multi-element catalyst [? – the verb is missing from the German claim] an activated carbon, coke or graphite support, platinum and at least one further element selected from the group consisting of titanium, zirconium, hafnium, vanadium, chromium, molybdenum, tungsten, manganese, rhenium, iron, ruthenium, osmium, cobalt, rhodium, iridium, nickel, copper, silver, gold, cobalt, zinc, aluminium, gallium, indium, tin, lead, antimony, bismuth, samarium and sulphur.

Board 3.3.01 had to examine compliance with A 100(c):

*** Translation of the German original ***

[3.1] According to the communication of grant dated October 11, 2004, the verb “containing” is absent from the specification of the patent in suit. The OD has expressed the opinion that, considering the entire text of the claim as well as paragraph [0009] of the patent in suit, the missing verb was to be read as “containing”. Moreover, it has referred to passages in the application as filed which provide support for the claims of the patent in suit, including the verb “containing”.

[3.2] The [opponent] has criticised this opinion of the OD concerning the addition of the verb “containing” as a violation of A 100(c). It referred to the written submission of the [patent proprietor] dated June 3, 2003, and pointed out in this respect that the [patent proprietor] itself had declared during the examination proceedings (Erteilungsphase) that claim 1 as maintained found its support in original claims 1 and 2. According to original claim 2 the further elements were limited to the elements cited in this claim. Further elements were excluded. This limitation corresponded to the intention of the [patent proprietor] on which third parties could rely, and which ought not to be ignored.

[3.3] The Board shares the opinion of the OD as to how claim should be read, in particular in view of paragraph [0009] of the patent in suit which has the very same wording as claim 1 as granted, plus the missing verb, which, according to the Druckexemplar is the verb “containing”. The way in which claim 1 is drafted also requires a verb such as “containing” rather than “being” or “consisting” at the end of the characterising part.

[3.4] Claim 1 is supported by claim 1 as filed in connection with page 4, lines 5 to 17 and page 5, first paragraph, of the original description.

Original claim 1 refers to a process characterised by the presence of a supported multi-element catalyst one element of which is platinum. This claim does not contain any further limitation. In comparison claim 1 as granted is limited to a supported multi-element catalyst containing certain supports, platinum and at least one further element from a list of elements […]. The definition of the catalyst is found in page 4, lines 5 t 6 of the original description:

“The catalyst of the process according to the invention contains a support, platinum and at least one further element.” (emphasis by the Board)

The possible identity of the “further elements” at least one of which is contained is disclosed on page 5, first paragraph, of the original application.

“As further elements … can be applied. … The elements in addition to platinum can be applied alone (einzeln) or in any combination.”

This paragraph does not teach that further elements are excluded, be it only because the verb “can” is used. The limitation regarding the support material has its basis on page 4, lines 7 to 17 of the original description.

[3.5] Moreover, the Board notes that in its letter of June 3, 2003, the [patent proprietor] not only refers to the original claims 1 and 2 but also to the original description. It is true that the page number is missing, but the reference to the line number makes it clear that the reference has to be to the above mentioned passage on page 4 (lines 5 to 6) of the description. Moreover, the set of claims enclosed with the letter, according to which the catalyst [is a catalyst] “containing at least one further element selected from the group of …” shows that the [patent proprietor] did not at all intend to limit the claims in the way suggested by the [opponent].

[3.6] Thus the Board comes to the conclusion that the subject-matter of the patent in suit does not extend beyond the [subject-matter disclosed in] the original application documents and, therefore, that the ground for opposition based on A 100(c) does not make it impossible to maintain the patent in suit.

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Interpretative Spotlight: “Certified”

This is a revocation appeal.

Claim 1 of the main request before Board 3.3.04 read:

1. Use of a cross-linked matrix for promoting meningeal tissue growth to replace a damaged meningeal tissue, said matrix comprising:

certified collagen prepared by a process certified to provide physiologically compatible collagen which is free of effective amounts of active viruses and prions, and

pores having a diameter of 10-500 micrometers that permit growing meningeal tissue to infiltrate said matrix,

said matrix being substantially free of non-collagenous proteins and adapted to contact said damaged meningeal tissue to promote meningeal tissue growth through said matrix, and to be resorbed, wherein said certified process comprises:

• cleaning extraneous matter from a native source of Type I collagen;
• washing said cleaned collagen containing material;
• comminuting said washed collagen containing material;
• digesting said comminuted collagen containing material with a proteolytic enzyme to substantially remove elastin and non-collagenous impurities which can cause antigenic activity and to swell said collagen;
• inactivating said proteolytic enzyme;
• washing said enzymatically digested collagen containing material to substantially remove excess enzyme and non-collagenous protein impurities;
• alkalinizing said collagen containing material to a pH of about 13 to about 14, at a temperature of about 25ºC to about 30ºC for a period of about 35 to about 48 hours, to substantially remove contaminating glycoproteins and lipids;
• neutralizing said alkalinized collagen containing material with an acid;
• washing said neutralized collagen containing material;
• acidifying said washed and neutralized collagen containing material to a pH of about 2 to about 3 to further swell said material, wherein said acidifying does not employ an acid that causes substantial cross-linking of collagen;
• homogenizing said acidified collagen containing material;
• filtering said homogenized collagen containing material to remove unswollen, non-collagenous material from collagen fibers; and
• collecting said filtered collagen fibers for use in said matrix,

in the manufacture of a medicament for promoting meningeal tissue growth to replace a damaged meningeal tissue. (my emphasis)

The interpretation of the term “certified” was decisive for the outcome of the appeal:

[5] It is not disputed by the [patent proprietor] that the application as filed does not contain the term “certified”, neither to qualify “collagen” nor to qualify a “process of preparation” therefor.

[6] The pivotal question in the present appeal is therefore what the technical information embodied in this feature in the context of claim 1 of both requests is and whether this technical information is clearly and unambiguously derivable from the application as filed, account being taken of matter which is implicit to a skilled person in what is expressly mentioned therein.

[7] The [patent proprietor] has referred to the dictionary definition of “certified” contained in document D27 which states: “certified (...) a. Made certain; assured; certainly informed; attested by certificate; furnished with a certificate. (...)”. The board is satisfied that the above dictionary definition reflects the common understanding of the term “certified” and also reflects the understanding of the person skilled in the relevant technical field.

[8] The [patent proprietor] argued that, in the context of the description of the patent and the invention claimed, the skilled person would understand the term “certified” to have the meaning “assured”.

[9] The board notes that the appropriate reference, in the context of A 123(2), is to the application as filed. The passages referred to in the patent are however identical to the corresponding passages in the application as filed. Therefore, for the sake of the [patent proprietor’s] argument in the present case, the board considers the reference to the patent as equivalent to a reference to the application as filed.

[10] It was argued by the [patent proprietor] that, whereas previously used collagen sponges posed health hazards, the invention ensured the elimination of such health hazards and assured the safety of the product […]. The patent provided a dural graft with suitable safety margin to allow for a mass-marketable product enabling commercial scale use. The patent […] stated that:

“(...) the method for producing the product of the present invention makes use of steps that are recognized as the most effective for inactivating viral and prion contamination. This gives the product a very high safety level while eliminating the inflammatory response. That is, the method for producing the product of the invention provides a product that is substantially free of viruses and prions without being physiologically incompatible” (emphasis added by the board).

The subsequent disclosure […] of the patent provided detailed information on two different processes for obtaining such collagen that was assured to be physiologically compatible and substantially free of viruses and prions. Accordingly, it was clear and unambiguous to the skilled person that following the steps of these methods was an assured way to achieve the desired result of obtaining a very high safety level collagen sponge with respect to physical compatibility and inactivation of viruses and prions without there necessarily being any actual certificate to that effect. The patent did furthermore not disclose an additional limitation requiring that some governing body issue a certificate.

[11] The board agrees with the [patent proprietor] that the methods as disclosed in the application as filed (and the patent) may “assure” the skilled person that the collagen produced conforms certain safety (e.g. substantially free of viruses and prions) and physiological (e.g. free of inflammatory response) criteria […].

However, it has not been contested by the [patent proprietor] that the technical field of pharmaceutical products and their production methods - also in the field of neural surgery - is highly regulated and that these products and methods are subject to a multitude of prescribed “good manufacturing practices” and certification schemes ensuring technical compliance. The board therefore considers that a skilled person when confronted with the feature “certified” in the context of the claimed invention would, rather than interpreting the term in the restrictive manner advocated by the [patent proprietor], also consider the two meanings disclosed in document D27 involving a certificate (“attested by certificate” and “furnished with a certificate”).

[12] It is for the present decision irrelevant what the precise nature of a certification is. However, it is evident, as the respondent has argued that a variety of additional parameters can be considered for certification such as those mentioned in […] the patent, i.e. degree of purity, amount of endotoxins, fat content, hydroxyproline content or ash content or e.g. concerning the nitrogen content, the amide content, the amino acid analysis, the particular amino acid content (such as glycine or hydroxylysine content), the heavy metal content, the source of the collagen, the age of the source, the content of non-collagenous proteins etc.

[13] The board concludes that, in the context of claim 1 and with reference to point 7, above, the feature “certified” conveys in itself technical information to the skilled person, including the reference to a certificate, which goes beyond what results from operating the “recognized” methods referred to in the description and which information is not derivable in a clear and unambiguous manner from the application as filed.

[14] In the present circumstances, the board follows the rationale of decision T 1082/02 [3.8] [sic, this should read T 1018/02] that “[a]lthough a claim must not be interpreted in a way which is illogical or does not make any sense, the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader. This also applies if the feature has not been initially disclosed in the form appearing in the claim.”.

[15] Accordingly, the term “certified” introduces into the claims information which the skilled person could not derive directly and unambiguously from the application as filed. Hence, the amendment constitutes added matter (A 123(2) EPC; A 100(c) EPC).

[16] The [patent proprietor] has furthermore argued, with reference to A 69, that a skilled person should try, with synthetical propensity, i.e. “building up rather than tearing down”, to arrive at an interpretation of the claim which was technically sensible and took into account the whole disclosure of the patent (see Case Law of the Boards of Appeal, 6th Edition, Section II.B.5.1). The board agrees that the claims must be interpreted by a “mind willing to understand” and not by “a mind desirous of misunderstanding”. However, this is understood to mean only that technically illogical interpretations should be excluded (see e.g. T 190/99 and T 1408/04). The board furthermore considers that a “mind willing to understand” does not require that a broad term needs to be interpreted more narrowly, but instead that a broad term should be understood to include all technically logical meanings, which for the present case includes those set out in points [12] and [13], above.

[17] In view of the foregoing finding also the [patent proprietor’s] argument that the addition of the term “certified”, as properly construed, did not provide a technical contribution to the invention because it merely referred to a limitation that was otherwise expressly set forth in the claims, i.e. that a process be utilized to ensure physiological compatibility and substantial inactivation of viruses and prions, must fail.

[18] In view of the foregoing considerations the board decided that claim 1 of both the main request and auxiliary request 1 do not comply with the requirements of A 123(2) EPC (A 100(c) EPC).

Should you wish to download the whole decision (T 1582/08), just click here.

The file wrapper can be found here.

Z 3.3.04, Spotlight, Claim Interpretation, A 123(2)

T 1077/10 – Seamless

Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

Claim 1 as granted read:

Glove (1 ), in particular a pilot’s glove, having a lining (2) comprising at least one outer layer (3) made up of several material blanks (4) with a glove outer surface, which outer layer (3) of the lining (2) has no joining point at least on a volar zone (20) and preferably a distal zone (18) in the fingertip region (17) of one or more glove finger(s) (12 to 16), characterised in that the material blanks (4) are made up of at least an inner hand part (7), a top hand part (8), several finger side parts (9) and optionally a thumb part (11) and the inner hand part (7) is joined to the other material blanks (4) to form the at least one glove finger (12 to 16) along an individual, continuously extending join line (5).

In the following passage the Board discusses the novelty of this claim:

*** Translation of the German original ***

[1.1] D3 discloses a glove (1) having a lining comprising at least one outer layer made up of several material blanks (6,7,8) with a glove outer surface (see the figures), which outer layer of the lining has no joining point at least on a volar zone and preferably a distal zone in the fingertip region of one or more glove fingers (at least the middle and the ring finger; see figures and p. 3, l. 24-25), wherein the material blanks (6,7,8) are made up of at least an inner hand part (4,6), a top hand part (3,7), several finger side parts (8) and the inner hand part (6) is joined to the other material blanks (7,8) to form the at least one glove finger (2) along an individual, continuously extending join line (9,10) (see the figures).

[1.2] The patent proprietor argued that the expression “continuously extending join line” (“kontinuierliche Verbindungslinie”) had a functional meaning insofar as the connection along the line was continuous.

The Board does not see any reason requiring this feature to be interpreted in a functional way. The patent discloses in its paragraph [0028] that seams may continuously join two material blanks along a join line. Thus the seams form a join line that is to be considered as continuously extending if it joins the inner hand part and the further material blanks without interruption. Thus the feature “continuously extending join line” is to be understood as a structural feature of claim 1 and – contrary to the opinion of the patent proprietor – not as a functional feature. Figure 3 of D3, where the course (Verlauf) of the seam 9,10 joins the inner hand part 6 and the further material blanks 7,8 without interruption, precisely discloses such a join line. 

[1.3] The patent proprietor further argued that the extraction (Heranziehung) of features from figures of the state of the art was not suitable in the present case to challenge the novelty of claimed subject-matter. It invoked decisions T 896/92, T 241/88, T 204/83, T 161/82, and T 272/92.

However, the figures of D3 contain a clear and unambiguous disclosure of several claimed features, in particular the course of the join line and the form (Ausbildung) of the material sheets in the fingertip region, at least as far as these features are explicitly mentioned in the description, e.g. on page 3, lines 24-25: “The palmar 6, dorsal 7 and lateral 8 panels are sewn in a way that the extremity of each finger is without seams.” Thus D3 discloses a course of the seams, which is depicted in the figures and which is such that there the purpose of having no seams in the fingertip region is achieved. The decisions invoked by the patent proprietor all concern the situation where the content of the disclosure was to be assessed on the basis of the figures only, which is not the case here.

[1.4] As D3 discloses all the features of claim 1, the subject-matter of this claim is not novel (A 54).

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T 2149/11 – No Need To Repeat

Claim 1 of the patent as maintained by the Examining Division read (in English translation; the amendments with respect to the claim as granted are underlined):

Method for manufacturing a clutch cage of a double clutch (1), characterized by the following method steps:

• rolling a toothing system (20) into a sheet metal strip (21 ) by means of two rolls (28,29) arranged on both sides of the sheet metal strip (21), wherein the two rolls (28, 29) have an outer contour (Aussenkonturierung) generating the toothing system (20);
• separating a toothed strip (22) from the rolled sheet metal strip (21 );
• rolling up the toothed strip (22) to form a drum (23); and
• joining the butt ends of the drum (23).

The opponent contested the novelty of this claim, but the Board did not agree:

*** Translation of the German original ***

[2.1] E1 concerns a method for manufacturing a toothed hollow-cylindrical part, e.g. a sprocket (Zahnkranz) […]. The method comprises : rolling a toothing system into a sheet metal strip by means of two rolls arranged on both sides of the sheet metal strip; separating a toothed strip from the rolled sheet metal strip; rolling up the toothed strip to form a drum; and joining the butt ends of the drum.

[2.2] This document does not mention the manufacture of a clutch cage of a double clutch, but the [opponent] is of the opinion that this feature only concerns the use of the method and cannot establish the novelty of claim 1. However, [the Board] cannot share this opinion.

[2.2.1] A claim that is directed at the manufacture of a product concerns an activity comprising one or several method steps the final result of which is precisely this product and which do not only have to be suitable for its manufacture. Thus the step of manufacturing this product is part of the claimed activity, even if the wording of the claim does not repeat this manufacturing step in the list of the method steps. Within the framework of a method for manufacturing a product the manufacture of this very product indeed is a technical feature that can establish the novelty of the claimed method.

The decisions invoked by the [opponent] do not support a different understanding. Quite to the contrary, it clearly follows from G 2/88 [2.5] that the technical features of a claim to an activity are the physical steps which define such activity. None of decisions T 1179/07, T 304/08 and T 1343/04 took the view that the novelty of a claim directed at the manufacture of a product could not be acknowledged on the basis of this manufacture.

[2.2.2] Thus, as already stated by the Opposition Division […], the manufacture of a clutch cage of a double clutch alone distinguishes the claimed method from the method according to E1. […]

[2.4] Claim 1 is, therefore, novel.

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The file wrapper can be found here.