Tuesday, 8 September 2015

T 2371/10 - How not to write a claim



Sometimes one may wonder why parties bother to start an appeal procedure (or worse, write a claim and file an application). In this particular case, the applicant did not get past the Examining Division because a severe lack of clarity under Art 84 EPC. The Board did not think differently and the applicant (appellant) did not attend the oral proceedings. Just a good example of how one should not draft a claim. You can read the frustration of the Board in the decision text, and it took them 15 minutes to come to their decision. If someone knows how this HIFU system works, feel free to comment.


Summary of Facts and Submissions
I. The European patent application was refused by a decision of the examining division for reasons of lack of inventive step (Articles 52(1) and 56 EPC 1973) of the subject-matter of claim 1 of each of a main request and three auxiliary requests then on file and of lack of clarity (Article 84 EPC 1973) of claim 1 of the main request.
II. The applicant lodged an appeal against the decision.
The appellant requested that the decision be set aside and that a patent be granted on the basis of a new set of claims 1 to 10 filed with the statement setting out the grounds of appeal. Furthermore, an auxiliary request for oral proceedings was made.
III. The appellant was summoned to oral proceedings to take place on 23 July 2015.
In a communication pursuant to Article 15(1) RPBA the Board commented on the issues to be addressed during the oral proceedings. In this context, the Board pointed inter alia to a variety of clarity problems with the request on file.
IV. The appellant did not reply to the Board's observations nor did it file any further amendments. Instead, the appellant withdrew its request for oral proceedings by letter of 23 June 2015 and informed the Board that it would not attend or be represented at the oral proceedings. In addition, the appellant requested a decision on the state of the file.
V. Oral proceedings were held in the absence of the appellant.
VI. Independent claim 1 of the appellant's request reads as follows :
"1. A high intensity focused ultrasound (HIFU) system for scanning and treating tumor, comprising a combined probe, a high frequency electric power source, a B-mode ultrasound scanner, a multi-dimensional motional apparatus, a vacuum degasser, a therapeutic bed, and a computer operating system, wherein the combined probe comprises:
- a therapeutic head which generates high intensity focused ultrasound; and
- an image-displaying probe of the B-mode ultrasound scanner which is integrated with the therapeutic head,
wherein the combined probe is mounted on the multi-dimensional motional apparatus which comprises a three-dimensional rectangular coordinate and one- or two-dimensional rotational coordinate, the upper end of the combined probe being connected to a central hole of the therapeutic bed through an open water bag;
wherein the open water bag is mounted on the central hole;
wherein the lower end of the open water bag (2) is connected to the head of the combined probe (3);
wherein the combined probe (3) is further connected to the high frequency electric power source (6);
wherein the B-mode ultrasound probe is connected to the B-mode ultrasound scanner;
wherein the motional system (4) is connected to the digit-controlled scanning system;
wherein the open water bag (2) is connected to the vacuum degasser (5); wherein the computer operation system (9) is connected separately to the high frequency electric power source (6), B-mode ultrasound scanner (7), digit-controlled scanning system (8) and the vacuum degasser; and
wherein the therapeutic head can cause a temperature greater than 70 degrees centigrade in a focal region."
Claims 2 to 10 are dependent claims.
Reasons for the Decision
1. The appeal is admissible.
2. Clarity - Article 84 EPC 1973
In its communication, the Board raised a number of objections concerning the lack of clarity in the definitions of the claims of the request on file.
2.1 The claim definitions suffer from an unclear terminology.
For instance, the terms "multi-dimensional motional apparatus" and "digit-controlled scanning system" in claim 1 on file have no clear meaning.
Other terms, such as the term "computer operating system" in claim 1, are misleading. The conventional meaning of the term operating system as referring to the basic software on which a computer operates does not make sense when used for indicating a component of an ultrasound system.
2.2 As regards the feature in claim 1 on file "wherein the therapeutic head can cause a temperature greater than 70 degrees centigrade in a focal region", essential features are missing by which the actual temperature level could be verified, so that it is even doubtful whether the claimed ultrasound system could be successfully operated.
2.3 Moreover, present claim 1 does not provide a comprehensible definition of the elements and the structure of the claimed system.
In particular, it is not conceivable how "an image-displaying probe of the B-mode ultrasound scanner" can be "integrated with the therapeutic head" (and thus be part of the "combined probe"), when at the same time the "combined probe" and the "B-mode ultrasound scanner" are listed as separate system elements. Which structure is intended to be defined in this context by the instruction "wherein the B-mode ultrasound probe is connected to the B-mode ultrasound scanner" is not comprehensible.
In the absence of a clear definition of the mutual arrangement of the various system elements, indications such as "upper" and "lower" remain obscure.
The intended arrangement of the "open water bag" when this is "mounted on the central hole" is not comprehensible, either.
3. Although having been informed about the above deficiencies by the Board's communication, the appellant did not present any comments nor propose any amendments.
4. Consequently, the appellant's request is not allowable.
Order
For these reasons it is decided that:
The appeal is dismissed.
This decision has European Case Law Identifier: ECLI:EP:BA:2015:T237110.20150723 and can be found here. The file wrapper can be found here. Photo 'Clarity, not really' by G. Hateboer.

6 comments :

  1. Something may have been lost in translation; the original PCT application was filed in Chinese.

    Outside of Europe, this application did better. It was granted in Canada en the US (US 6,685,639). The claims of the US grant are quite different and make a much better impression.

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  2. I think the representative involved in the case as done what he could in view of what he got from the applicant. That he did not turn up at oral proceedings might simply be due to the fact that he was not getting paid.
    On the other hand, it would have been strange for EPO to grant a patent for a machine which is capable of delivering temperatures of 70°C in order to kill the tumour, but that the tumour could be left in the body in necrosed state, see § 017 of the application in English. All of this without injuring normal tissue! It is even said that the tumour left in the body would strengthen the immunity and that the tumour will eventually be absorbed.
    The representative has referred during examination that -from the applicant's point of view- some conclusions could be drawn.
    I would not have been so harsh with a colleague.

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    1. There is no intention to be harsh with a colleague. It may very well be that the representative had nothing to do with the decisions regarding the translations, the new claims and not showing up at the oral proceedings. I simply agree with the Board that the claims as they were put forward during appeal had some 'difficulties' under Art 84 EPC.

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    2. It is clear that the claims filed had problems, but why then the comment at the beginning of the blog? Sorry for the pun, but it difficult to see anything else than a clear and harsh criticism of the representative in charge of the file.

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  3. PCT filed in 1998 (!) Entry EP phase in 2000. Suppl. ESR in 2007 (!). Apparently the translation of the IPER had not been filed and EPO took no action at all. Refusal in 2010. Board 3.4.01 seems to have 5 year pend. Does not seem a case to be proud of for the EPO either.

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  4. When you at the subject-matter of the file, there is no surprise that it was not one those which would be given a high priority.
    On the other hand, the time in dealing with the application was certainly too long.
    As far as the Boards are concerned, there should be no surprise as the number of vacant posts in the Boards is constantly rising. This is the President's revenge and aim of increasing the production/productivity of the Boards of Appeal.

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