tag:blogger.com,1999:blog-8990057754240336385.post2560811859757943448..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 1441/13 - The difficulty of disclaimingDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-8990057754240336385.post-84039876225972266162015-01-05T14:13:19.134+01:002015-01-05T14:13:19.134+01:00That the disclaimer was added for one of the reaso...That the disclaimer was added for one of the reasons discussed in G 1/03 is, in my view, another reason that G 2/10 should not be relevant. But this is contradicted by point 4.7 of G 2/10 which sort of undoes G 1/03. It would be interesting to know how the board would have dealt with aux 1 if non-destructive methods had been common general knowledge. This was probably your original point: reinterpreting G 2/10 as an Art. 83-test would leave G 1/03 intact. I agree with you that G 2/10 creates a problem in situations for which G 1/03 intended to give a way out.<br /><br />Regarding G 1/03, it is true that the exception to Art. 123(2) does not apply if the disclaimer is relevant for Art. 83. However, I understand this to mean that a G 1/03-disclaimer cannot be used to disclaim non-working embodiments (see G 1/03, point 2.5.3, point 2.6.1, "relevant for accepting ... sufficiency of disclosure", and point 2.6.2, "removes a deficiency under Article 83 EPC"). So if without the disclaimer there is an Art. 83 problem and adding the disclaimer overcomes this problem, then G 1/03 cannot be used to justify the disclaimer in the sense of Art. 123(2). In the present case the inclusion of the disclaimer created an Art. 83 problem. I guess one could take the literal wording of headnote II.3 of G 1/03 and conclude that Art. 123(2) is infringed (in my view this takes headnote II.3 a bit out of context). But there is really no reason not to refuse aux 1 for the real problem it has: Art. 83.<br /><br />I do not consider that the range 3-5 derives directly and unambigiously from 2-6, since 3-5 is the "totality of values between 3 and 5 considered as one whole" and 2-6 is the "totality of values between 2 and 6 considered as one whole". The totality of values between 3 and 5, as a single cloud of embodiments, is encompassed but not disclosed by the totality of values between 2 and 6, as a single cloud of embodiments. I hope this makes my position clearer.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-52408205303786890312015-01-04T23:45:49.859+01:002015-01-04T23:45:49.859+01:00it could have be refused under art.83 ... or it co...it could have be refused under art.83 ... or it could have been refused because the undisclosed disclaimer became relevant for sufficiency of disclosure (thus not in compliance with G1/03 in the first place).<br />Not too sure about the reasoning by set of embodiments proposed above (Anon 01:23) however; with this approach, the range 3-5 would derive directly and unambiguously from 2-6, because all its embodiments are encompassed by the broader range. Or not?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-89331893323395667142015-01-04T01:23:13.885+01:002015-01-04T01:23:13.885+01:00G 2/10, and therefore its test, is about Art. 123(...G 2/10, and therefore its test, is about Art. 123(2) and not about Art. 83. There is no need to incorporate the criteria of Art. 83 into the test of G 2/10 as is done in this decision, since Art. 83 can be applied directly anyway.<br /><br />The outcome of T 1441/13 is likely correct, but it should have been based on Art. 83 and certainly not on Art. 123(2) in combination with a confused interpretation of G 2/10.<br /><br />I don't think the test of G 2/10 leads to logical problems. For a claim to comply with Art. 123(2), its subject-matter, i.e. the totality of the embodiments it encompasses, should be directly and unambiguously derivable from the application as filed (as a totality, not as individual embodiments). If the claim includes a disclaimer, then the claimed totality consists of the embodiments encompassed by the claim without the disclaimer minus those embodiments excluded by the disclaimer. In other words: the totality of "remaining" embodiments. G 2/10 states that this totality, as a whole, has to be directly and unambigiously derivable from the application as filed. Or put more simply: just apply Art. 123(2) without any tricks (keeping in mind that Art. 123(2) is not about the wording of the claim but about its technical subject-matter).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-27316709486915604582014-12-30T13:38:56.531+01:002014-12-30T13:38:56.531+01:00So what exactly is the test of G2/10 when applied ...So what exactly is the test of G2/10 when applied to undisclosed disclaimers? The remaining subject-matter should encompass a disclosed embodiment (sort of Art. 83)? Or the remaining subject-matter as a whole should derive directly and unambiguously from the application as filed (Art 123(2))? From the wording of G2/10, it should be the 2nd (e.g. T748/09), but this leads to logical problems (how do you find a disclosure for a claim containing an undisclosed disclaimer?... see T1870/08, r.4.4.7). This decision, with others, seems to suggest that G2/10 did not mean to say what is said.Anonymousnoreply@blogger.com