Friday, 29 April 2016

T 2523/11: attempt to voluntarily reduce scope of protection without support in application as filed



In opposition the patent was revoked because there was no support for a range of "0.2mm to 0.8mm diameter for warp and weft yarns". The patent application as filed has support for: "warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm". Thus, the proprietor reduced the scope of protection by giving up the diameter range from 0.8mm to 1.0mm for the weft yarns. 

During the Opposition procedure the proprietor used G 1/93 to argue that the scope of protection of features without a technical contribution may be reduced without violating Art. 123(2). The Opponent and the Opposition Division did not share that opinion. 


An appeal was filed with several requests in which the proprietor tried several strategies to overcome the A.123(2) and (3) problem. In the main request a correction of an obvious error was requested (change 1.0 to 0.8mm). In the auxiliary requests several variations of (undisclosed) ranges / values were requested. The outcome of the appeal procedure is that the scope of protection is now reduced to "infinitely small".



Summary of Facts and Submissions
I. European patent No. 1 448 820 was revoked by the opposition division by way of its decision posted on 19 October 2011.
II. The opposition division held that the ground of opposition under Article 100(c) EPC was prejudicial to maintenance of the patent since the subject-matter of claim 1 as granted did not meet the requirement of Article 123(2) EPC, as no clear and unambiguous disclosure in the originally filed application could be identified for the feature of "warp yarns and weft yarns having a diameter in the range of 0.20 mm to 0.80 mm".
III. On 12 December 2011 the appellant (patent proprietor) filed an appeal against this decision and paid the appeal fee.
[...]
X. Claim 1 of the main request reads as follows:
"Apparatus for production of spun-bond webs comprising a fabric for collecting stretched filaments intended to form a spun-bond web, characterized in that said fabric is woven such that air flow through said fabric is prevented in a direction substantially perpendicular to the surface plane of said fabric with warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm, where said fabric has a 4-shed double layer with support shute weave design in order to be woven in an 4B pattern with a stuffer yarn in the center and where said woven fabric has a permeability in the range of 0.18876 m**(3)/s to 0.37752 m**(3)/s."
The first auxiliary request corresponds to the granted patent, whereby claim 1 differs from claim 1 of the main request in that the feature concerning the diameter of the warp and weft yarns reads as follows:
"warp yarns and weft yarns having a diameter in the range of 0.20 mm to 0.80 mm".
In claim 1 of the second auxiliary request, the aforementioned feature is amended to read:
"warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter of 0.20 mm, 0.30 mm, 0.40 mm, 0.50 mm, 0.60 mm, 0.70 mm, or 0.80 mm".
In claim 1 of the third auxiliary request, this feature is amended to read:
"warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter of 0.20 mm".
[...]
Reasons for the Decision
1. Main Request - Request for correction
1.1 Claim 1 includes the feature:
"said fabric with warp yarns having a range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm".
1.2 The appellant argued that the granted wording "said fabric with warp yarns and weft yarns having a diameter in the range of 0.20 mm to 0.80 mm" was an obvious error which was correctable, under Rule 139 EPC, to the form as stated in item 1.1. above.
1.3 Leaving aside the issue of whether an error in a granted patent may at all be corrected under Rule 139 EPC after the issue of G 1/10 (see reasons, 9 to 11), in order for a correction to be allowable under Rule 139 EPC and in accordance with G 3/89, the respective criteria for correction of an error have to be met.
1.4 Pursuant to G 3/89 (see reasons, 3 and 6) the parts of a European patent relating to the disclosure can be corrected only within the limits of what the skilled person would derive directly and unambiguously, using common knowledge and seen objectively and relative to the date of filing, from the whole of these documents as originally filed. No correction is possible, if there is any doubt as to whether a mistake existed, or whether nothing else could have been intended other than what was offered as the correction. If it is doubtful whether the feature was incorrectly defined, then a correction is ruled out.
1.5 Whilst the range in claim 1 may not necessarily have been what the appellant now wishes to pursue and even if this may indeed have been unintentional, the error itself is not obvious, since the wording of claim 1 is clear and understandable, no inconsistency with regard to the description exists, the range falls within the range as originally disclosed and it makes perfect technical sense. Hence, the skilled person would not have any reason to doubt that it was anything but the limited range which was intended to be pursued.
1.6 The Board had already given its provisional opinion in its communication to the parties prior to the oral proceedings, stating inter alia that the criteria set out in G 3/89 for making a correction did not appear to be met. The appellant filed no response to this communication and thus the Board sees no reason to alter its provisional opinion.
1.7 The appellant cited decisions T 200/89, T 946/91, T 962/92 and T 438/98 in support of its interpretation of Rule 139 EPC. However, these decisions do not alter the foregoing conclusions:
1.7.1 T 200/89 confirms (see headnote V and reasons, 3.4) that the obviousness of an error in a patent was an objective matter which had to be established by reference to the patent text in its entirety, but in isolation, and thus without reference to the file history. No such obviousness of an error can be established in the present case, as explained above.
1.7.2 In T 946/91, the requested corrections were partly considered allowable as being obvious with regard to examples and tables in the description of the patent. No such consistent description is present in the current case, there merely being one quotation of the diameter range of the weft yarns, within which the claimed range falls.
1.7.3 T 962/92 concerns an appeal against a refusal of the examining division. No considerations concerning a granted patent are made.
1.7.4 T 438/98 (reasons, 3.1) concerns an appeal against a decision of an opposition division. It underlines that a correction corresponds to an amendment which must both correspond to the correction of an obvious clerical error and satisfy the requirements of Article 123(2) EPC. This does not alter the foregoing conclusion.
1.8 Hence, since in the current case the skilled person would not recognise that an obvious error with regard to the range for the diameter of the weft yarns was present, the request for correction in accordance with the main request is not allowable.
2. First auxiliary request
2.1 This request concerns the claims as granted, claim 1 including the feature of "warps yarns and weft yarns having a diameter in the range of 0.20 and 0.80 mm".
2.2 The disclosure in the application as filed does not include an end point of 0.80 mm with regard to the range of the diameter of the weft yarns. The originally filed disclosure on page 5, line 1 is specific in defining the diameter of the weft yarns in the range from 0.20 mm to 1.00 mm, and originally filed claim 5 specifies the diameter of the weft yarns consistently in this range.
2.3 The appellant argued that the limitation of the range was merely a restriction of the scope of protection and that it did not contribute any further technical information or a supplementary technical effect and thus would not provide any other technical contribution when compared with the originally claimed range.
However, the Board finds that the limitation of the range indeed changes the technical information and provides another technical contribution when compared with the originally claimed range by creating a particular selection of a range. In particular, when related to the claimed range for the permeability, the combination of the diameter of the weft and warp yarns is clearly a matter of consideration to a skilled person. When changing the diameter range for the weft yarns, it is not unambiguously disclosed whether the diameter range for the warp yarns and the range for permeability can remain unamended. More particularly, there is no basis in the application as filed for allowing the selection of a different range for the weft yarns to be combined with the entire range disclosed for the diameter of the warp yarns together with the entire range disclosed for the permeability of the fabric. Hence, the requirement of Article 123(2) EPC is not met and for this reason the request is not allowable. Again, the appellant filed no response to the Board's provisional opinion, such that the Board also here sees no reason to alter that provisional opinion.
3. Second auxiliary request
3.1 Claim 1 includes the feature in dispute by means of the wording:
"said fabric with warp yarns having a range of 0.20 mm to 0.80 mm and weft yarns having a diameter of 0.20 mm, 0.30 mm, 0.40 mm, 0.50 mm, 0.60 mm, 0.70 mm or 0.80 mm".
3.2 The appellant submitted that the claimed point values would be "implicitly, directly and unambiguously disclosed in the application as filed", since they were contained within the range.
3.3 However, there is no disclosure of the entire set of individual values in the application documents - neither when considering the specific values themselves nor when considering the subject-matter arising from the combination of these individual values with the whole range of the diameter of the warp yarns and the whole range for the permeability (see also point 2.4 above). Whilst a value may be contained within a range, it is established case law of the boards of appeal that a selection of a value from within a range is not disclosed merely by the disclosure of the range per se. As with the previous requests, in response to the Board's provisional opinion, the appellant filed no comments, such that the Board also here sees no reason to alter that provisional opinion.
Hence, the requirement of Article 123(2) EPC is not met and the request is not allowable.
4. Third auxiliary request
4.1 The disputed feature in claim 1 is limited to the diameter of the weft yarn being 0.20 mm.
4.2 It is evident, since the value of 0.2 mm is an end point of the range originally disclosed for the weft yarn diameters, that the selection of the end point of the weft yarn diameters per se is disclosed. This is also established case law of the boards of appeal. However, there is no disclosure in the application as filed that the diameter of the weft yarns may be restricted to the value of exactly 0.20 mm while at the same time keeping all other values in the claim unchanged to arrive at the subject-matter defined in the claim. No disclosure is present for example where the diameter of the warp yarns varies over the whole range of from 0.20 mm to 0.80 mm and the diameter of the weft yarns is 0.20 mm for the entire diameter range of warp yarns, even less so in combination with the claimed range for the permeability of the fabric (see also points 2.4 and 3.3 above). The appellant was informed of the Board's provisional opinion that no disclosure of the combination of features in claim 1 could be identified and filed no response thereto.
4.3 Hence, the Board confirms its provisional opinion herewith for the reasons given above that there is no disclosure of the specific combination of features as defined in claim 1. Accordingly, the requirement of Article 123(2) EPC is not met, whereby also auxiliary request 3 is not allowable.
5. Request for correction of the minutes
The appellant's request for correction of the minutes has been noted. In its letter following the notice of appeal, the appellant argued that the following arguments presented by the appellant's representative during the oral proceedings before the opposition division had been omitted from the minutes:
- not denying the fact that the end point of 0.8 mm was not explicitly stated in the application with regard to the weft yarns;
- maintaining the argument that the subject-matter contained inside the narrower range (0.20 mm; 0.80 mm) was directly and unambiguously disclosed in the application as filed in the sense of G 2/10.
As the appellant was already informed with the Board's provisional opinion on the case, it is the department before which oral proceedings had been held (in the case at issue the opposition division) which is competent and responsible to correct its minutes. There is no provision which would enable the Board to compel the opposition division to discharge its obligation concerning such a request (see also T 508/08, reasons, point 2).
It is nevertheless noted that in the current case the requested amendment would not alter the outcome of the appeal proceedings in the present case, since the statements have no impact on the Board's decision.
Order
For these reasons it is decided that:
The appeal is dismissed.


This decision T 2523/11 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T252311.20160412. The file wrapper can be found here. Photo "Mini Loom" by foto76 obtained via FreeDigitialPhotos.net (no changes made).

3 comments :

  1. I like the last line of the comment, but at the same time, the Board made very clear what it thought of the various requests.

    This decision is interesting for a number of reasons
    1) Art 123(2)
    The reasoning of the proprietor with respect to G 1/93 is very interesting and somehow surprising. A good try, but it would have been surprising if the Board had bought this line of arguments. A reduction in scope, whilst allowable under Art 123(3) does not mean that Art 123(2) can be ignored.
    It is nothing new under EP practice that disclosure of a range does not mean disclosure of every single value within the range. For the same token, a range is a range and cannot be reduced to one of its end values.
    But to be told this by the Board in such a way, is certainly not easy to swallow.

    2) R 139:
    An error in the description, the claims and the drawings is only allowable it the error is manifest and the correction as well, on the basis of the information supplied and the common general knowledge.
    In the present case even the first step is not fulfilled, which is not so frequent, see for instance T 829/05.
    Then, the question of the applicability of R 139 in opposition for the documents filed during examination has been doubted by the Board. From the comment in Point 1.3, it seems that the Board, by referring to points 9-11 of G 2/10, would be inclined not to accept the application of R 139 in such situations. In Points 9-11 of G 2/10, the EBA insisted that when accepting grant, the applicant has a duty to check his documents, and he cannot come later and claim he made a mistake. In other words what is valid for R 140, could be valid as well for R 139. May be a decision of the EBA could clarify the matter.
    As the route over R 140 was clearly barred by G 2/10, a try via R 139 was a good attempt.

    3) Correction of minutes before the opposition division
    The Board made it clear that it is not competent to decide upon the content of the minutes, and cannot compel the division to amend those. Beside T 508/08 there are numerous decisions going along this line: T 978/00 (the minutes are not appealable), T 2296/09 (the Board is not the right addressee for such a request), T 1424/09 (the Board is not competent in the matter). In T 1063/02, the Board held however that it could request an amendment to the minutes, should there be massive discrepancies between the content of the minutes and the actual way the procedure went along.
    Last nail in the coffin, the Board noted that the requested amendment of the minutes would not have altered the outcome of the appeal proceedings in the present case……

    ReplyDelete
  2. In my view one does not need G 1/10 to know that R. 139 cannot be used to "correct" the text of a granted patent, i.e. the text of a decision issued by the EPO. It seems wrong to identify the application documents submitted by the applicant with the text that the ED decided to incorporate in the grant decision.

    In theory one could perhaps use R. 139 EPC in a timely filed appeal against a decision to grant a patent. The applicant could request correction of an application document filed by him during the grant proceedings. Allowance of the request for correction would result in the patent not having been granted on the text submitted by the applicant and arguably in a violation of Art. 113(2) (and a remittal to the ED).

    This approach would likely still fail because the applicant normally will have consented to the text proposed by the ED. So while the patent may not have been granted on the (corrected) text submitted by the applicant, it will still have been granted on the text agreed to by the applicant. So still no violation of Art. 113(2).

    ReplyDelete
  3. It is nevertheless noted that in the current case the requested amendment would not alter the outcome of the appeal proceedings in the present case, since the statements have no impact on the Board's decision.

    ReplyDelete

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