T 872/09 - Choosing too late
Catchwords
1. Novelty
The claimed
sensor is defined by reference to characteristics of its response when used in
a measurement set-up. Since none of the determining aspects of the measurement
set-up is defined in claim 1, the technical features of the claimed sensor
which are responsible for providing the measurement referred to in the claim
remain obscure.
Legal
certainty requires that a claimed subject-matter cannot be regarded as novel
over the prior art on the basis of an ambiguous feature. Hence, defining a
functional feature of the claimed sensor under undefined operating conditions
is not appropriate to provide any distinction of the claimed sensor over the
prior art sensors (see points 1.2 and 1.3 of the Reasons)
2.
Admittance of auxiliary requests
None of the
patentee's auxiliary requests were admitted into the proceedings because the
patentee, during the first-instance opposition proceedings, deliberately chose
not to defend any single auxiliary request, even though it was aware of the
fact that its main request had not been found allowable by the opposition
division (see points 2 and 3 of the Reasons).
Reasons for
the Decision
1. Main
request
1.1
According to the appealed decision, the sensor of D1 anticipates all the
features of claim 1. The patentee did not contest this finding except for the
following feature F of claim 1: "wherein the sensor provides a measurement
that correlates with the amount of analyte in a period of 10 seconds or
less".
1.2
Construction of claim 1
Claim 1 is
directed to a sensor as such, characterized amongst other features, by feature
F.
Firstly,
feature F is not worded as a structural feature but as a functional feature of
the claimed sensor: "... the sensor provides a measurement ...".
However, a sensor in itself provides a signal as such but cannot provide a
measurement. It is the whole measurement set-up, using inter alia the sensor's
output signal, which provides the measurement that correlates with the amount
of analyte in a period of 10 seconds or less.
Furthermore,
the functional feature F refers to a numerical parameter: "... a period of
10 seconds or less". However, whether a measurement correlates with the
amount of analyte within the claimed range or not, depends not only on the
sensor but on the whole measurement set-up involved in the measurement.
Still
further, the functional feature F does not simply include language to the
effect that a measurement of the amount of analyte is provided within a certain
period of time but that the measurement correlates with the amount of analyte.
The term "correlate" generally means that the relationship between
the measurement provided and the amount of analyte to be measured is not as
expected on the basis of randomness alone. However, the degree of correlation
largely depends not only on the sensor but on the whole measurement set-up
involved in the measurement.
The
measurement set-up providing a measurement that correlates with the amount of an
analyte within a predetermined period of time includes the following aspects:
- the type and the concentration of the analyte to be measured by the claimed sensor,
- the constitution of the liquid sample containing the analyte, e.g. the nature and the concentration of the perturbating interferants contained in the liquid sample,
- the constitution of the reagent layer for producing an electrochemical reaction with the analyte to be measured, e.g. the type of enzyme, the mediator,
- the material, size and geometry of the working electrode and the reference electrode,
- the voltage profile applied to the sensor as described, for instance, in paragraph [0032],
- the exact starting time of the measurement.
Each of the
above aspects of the measurement set-up influences the final measurement result
to a large extent.
Since none
of these aspects of the measurement set-up is defined in claim 1, the relevant
technical circumstances, under which the measurement referred to in the claim
is provided within 10 seconds or less, remain undefined. It follows that the
technical features of the claimed sensor which are responsible for providing
that measurement remain obscure, too.
1.3 Legal
certainty requires that a claimed subject-matter cannot be regarded as novel
over the prior art on the basis of an ambiguous feature (see T 1049/99, reasons
4.4). Hence, defining a functional feature of the claimed electrochemical
sensor under undefined operating conditions is not appropriate to provide any
distinction of the claimed subject-matter over the prior-art electrochemical
sensors, all the more so if these conditions influence the obtained result to a
large extent, as in the case at hand.
In view of
the fact that feature F does not delimit the claimed sensor from the sensor of
D1, it follows that the sensor of D1 anticipates the subject-matter of claim 1
(Article 54(1) and (2) EPC 1973).
[…]
2. First
auxiliary request
The board
holds that the first auxiliary request is not admissible under Article 12(4) of
the Rules of Procedure of the Boards of Appeal ("RPBA", OJ EPO
2007,537).
First-instance
opposition proceedings
2.1 At the
end of the first-instance oral proceedings, the patent was revoked for lack of
novelty of the claimed subject-matter with respect to D1. In advance of those
oral proceedings the patentee had filed a first auxiliary request whose claim 1
defined subject-matter which undisputedly overcame the novelty objection at
stake. This first auxiliary request then on file was identical to the first
auxiliary request being the subject of the present decision. However, after the
patent according to its main request had been revoked during the oral
proceedings, the patentee deliberately decided to either withdraw that
auxiliary request, or at least not to pursue it any further during the
first-instance proceedings. As a consequence, the decision of the opposition
division dealt only with the issue of novelty of a single independent claim,
i.e. claim 1 of the patent as granted, with respect to a single prior art
document D1. In particular, the opposition division was not in a position to
decide on any of the other numerous novelty and inventive step objections
raised by the opponent in its notice of opposition. These objections had a wide
scope since the subject-matter of claim 1, as well as that of various dependent
claims, according to the opponent's submissions, was anticipated or at least
rendered obvious by various prior art documents other than D1.
2.2 Due to
the patentee's course of action, the opposition division was effectively
prevented from taking a reasoned and sufficiently comprehensive decision on the
patentability of the claimed subject-matter over the cited prior art. This
issue was largely left unresolved given that the examination of the grounds for
opposition was limited to the mere novelty assessment of claim 1 as granted
with respect to D1. This is contrary to the purpose of Article 12(4) RPBA,
namely of encouraging parties to complete their relevant submissions during the
first instance opposition proceedings (see T 23/10, reasons 2.4 and 2.7).
Moreover,
the board is convinced that the patentee could easily have defended the first
auxiliary request in the first instance proceedings. Indeed, this auxiliary
request was not only filed in preparation of those oral proceedings, but also
did its claim 1 incorporate a straightforward amendment, which would have
undisputedly overcome the objection of lack of novelty at stake, as it merely
combined claim 2 as granted with claim 1 as granted.
2.3 If the
board decided to admit the first auxiliary request into the proceedings, it
would either have to assess the compliance of a set of claims with the
requirements of the EPC for the first time during opposition proceedings or to
remit the case to the opposition division. None of these two options is
satisfactory, be it due to the parties' general interest in having their case
heard by two instances or their general interest in the proceedings being
conducted in an efficient and foreseeable manner.
2.4 The
patentee, in deliberately choosing during the first-instance opposition
proceedings not to defend the patentability of the first auxiliary request then
on file, deprived itself of the possibility of having the request admitted into
the appeal proceedings (see T 144/09, reasons 1.9 and 1.14; T23/10, reasons
2.8).
2.5
Therefore, the board decides to exercise its discretion under Article 12(4)
RPBA in not admitting the first auxiliary request into the proceedings.
2.6 The
patentee presented the following arguments in favour of admissibility:
2.6.1 The
patentee did not withdraw the auxiliary request 1 at the first instance oral
proceedings. As explained in the patentee's letter dated 3 March 2014, the
patentee's representative, at the first instance oral proceedings, "stated
that he would not argue for the novelty of auxiliary request 1, but instead
reserve the right to reintroduce this auxiliary request in appeal
proceedings" and, as a response to a question by the chairman of the
opposition division, the patentee's representative "explicitly stated that
it was not to be withdrawn".
[…]
Whether or
not the patentee explicitly withdrew auxiliary request 1, however, is of no
fundamental importance to the present situation. The undisputed statement by
the patentee's representative in the oral proceedings before the opposition
division that "he would not argue for the novelty of auxiliary request 1,
but instead reserve the right to reintroduce this auxiliary request in appeal
proceedings" means in any case that it did not defend that request in
those oral proceedings. This approach amounted to the acceptance that the
patent be revoked by the opposition division without trying to defend it at
that stage.
It appears
that the patentee did not argue in favour of the novelty of auxiliary request 1
before the opposition division in the firm belief that the novelty debate would
automatically be taken up in the appeal proceedings in case the main request
would not be allowed. However, no legal basis for such an assumption exists. On
the contrary, admissibility of new requests depends on the board's discretion
aiming at fair proceedings for both parties, especially in the present case
where the facts and submissions had not changed from the beginning of the
opposition proceedings. Neither were new objections raised nor were new prior
art documents introduced into the proceedings by the opponent.
This
decision has European Case Law Identifier:
ECLI:EP:BA:2014:T087209.20140408.
The whole decision can be found here.
The
file wrapper can be found here.
Photo by
John R. Southern obtained from Flickr.
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