Monday, January 25, 2021 T 2305/14 - claim covers not-enabled embodiment

A seismic survey vessel (10) towing an array of streamers (12), each with a a plurality of streamer positioning devices (18) ('birds') 

The fourth request in this opposition comprises the feature:

towing an array of streamers with the seismic survey vessel, each streamer having a plural­ity of streamer positioning devices there along, each of the streamer positioning devices having a wing used to control the vertical and lateral position of the streamer positioning device

In particular, the the streamer positioning devices (the 'birds')  may each have a single wing. The Boards does not consider this option enabled by the description. 

 

Thursday, October 15, 2020 T 421/14 - Sufficiency for a composition with non-responders

No response for a subpopulation

How credible should evidence for a composition be? In this case, the opponent argued that the initial analysis of therapeutic efficacy lacked statistical significance. Only a post hoc analysis revealed a  significantly better response for a treatment group compared to a placebo group. Moreover, the effect only occurred in a subpopulation of responders, not for the general population. Is one allowed to claim a composition for a general group even if the majority are non-responders, or should one disclaim the non-responders?  

Another issue, was the public availability of two documents C30 and C31.  C30 was poster and C31 a slide show, both allegedly displayed at a public conference by the proprietor. Both were also included in the IDS statement for a corresponding US patent. Who should prove the public availability in this situation, and what is the appropriate standard?

A related case T 799/16 sharing some of its reasons with the present decision has also been decided. 

Wednesday, August 26, 2020 T 2210/16 - Careful with predetermined values

This patent was opposed as not disclosing the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Claim 1 as granted states (in my translation)

Method for reducing microphone noise (feature A) in an input signal (x) of a hearing aid (10, 46) by filtering the input signal (x) by means of a Wiener filter (26) if a Noise Performance (NPSD) determined from the input signal (x) is less than a predetermined limit value (G) (feature C1) and deactivating the Wiener filter (26) if the Noise Performance (NPSD) is greater than or equal to the limit value (G) (feature D1).

The problem that was raised is that if the skilled person happened to select a microphone with good Noise Performance and a high predetermined limit value, then the Wiener filter would never be activated and the aim of reducing microphone noise would not be realized. 

Below is a translation of the German decision, with help from the DeepL Translation tool. Below the cut is the German original.  

(...)

3.7 For the, in the field of hearing aids, realistic case  that already the noise power of the microphone noise is higher than the claimed "predetermined limit" according to features C1) and D1), the Wiener filter remains deactivated. Thus, in the opinion of the Board, the hearing aid professional cannot achieve the "reduction of microphone noise" on the basis of the original disclosure of the patent in dispute.

3.8 In particular, the following two aspects would, in the opinion of the Board, present the person skilled in the art with insurmountable difficulties in the execution of the claimed invention

3.8.1 Firstly, with regard to feature A), it should be noted that neither the description nor claim 1 of the patent in suit contain an explicit or implicit reference to limit the claimed process to a microphone with low microphone noise - however "low" should be defined.

3.8.2 On the other hand, the wording of the claim regarding feature C1) in no way indicates a setting of the "predetermined limit value" dependent on the microphone noise, as claimed by the respondent. Accordingly, the argument put forward by the respondent with reference to paragraph [0031] (in particular page 5, lines 33-38 and paragraph [0039]) of the patent specification, that the realization that the setting of the limit value is the "only possible adjustment screw" of the claimed method, which would cause the skilled person to set the limit value appropriately under consideration of the microphone noise to be reduced, cannot be applied in this generality.

3.9 With regard to the feasibility of these two aspects, i.e. the microphone with low self-noise and the selection of the predetermined limit value, the patent in dispute teaches that the microphone should be designed in the form of a condenser microphone and that the limit value should be set at 30 dB (see page 2, lines 16-31; page 10, lines 31-32 in connection with Figs. 2 and 3 of the original application).

In this context, the Board cannot share the respondent's view that the value of 28 dB used by the appellants in an illustrative example represents the absolute limit for the inherent noise of a microphone. For example, the Shure condenser microphone "Beta 98A", available before the priority date of the patent in dispute, has a microphone noise of 30 dB. The microphone noise of its predecessor "Beta 98" is even 5 dB higher. Consequently, within the scope of the patent in dispute, it would be quite plausible and realistic for the skilled person to apply the claimed method in a microphone with high microphone noise, for example with a microphone noise of about 30 dB. According to features D) and D1) of claim 1, however, the Wiener filter is permanently deactivated for such a microphone with a microphone noise in the range of the limit value (e.g. 30 dB) and therefore cannot be used to reduce the microphone noise according to feature A).

Friday, June 19, 2020 T 2133/14 - Skilled person resolving a clarity problems in the claim

Sending an interrogation signal

How much can the skilled person bring to the table when establishing the meaning and enablement of a claim? This application was refused by the Examining division for being neither clear nor sufficiently disclosed. But the board has a higher opinion of the skilled person, and consider him capable enough to bridge the gaps.

The claims relate to a first device that stores 'multiple versions of application software'. The first device want to communicate with a second device, but its software may not be compatible. This is solved according to Claim 1 by sending 'an interrogation signal' to the second device and receiving back 'identification information'. The first device's method then comprises, based on the identification information:

correlating (225) thereto a version of the application software from among the multiple versions of application software associated with the first electronic device that is compatible with the recognized version of the application software currently being utilized by the second electronic device, wherein the correlating step utilizes a look-up-table."

An auxiliary request restricts claim 1 to a control device and an implantable medical device. Although the board reverses the Examining division on clarity and sufficient disclosure, in the end the claims are found to be non-inventive. 

Reasons for the Decision

The invention

1. The application is concerned with ensuring the compatibility of application software running on two communicating electronic devices, preferably an implantable medical device such as a cardiac pacemaker and an associated control device (see paragraphs 1 and 15).

1.1 More specifically, it is observed that the application software running on the implantable device (the "second" device in claim 1 of the main request) may be updated during its lifetime and stated that, for proper operation, the control device (the "first" device) will need to run a "compatible version of application software" (see paragraph 17).

1.2 According to a prior art solution, discussed in paragraph 4 (U.S. patent application 5,800,473), if it is detected that the implant runs a more recent version of the application software than the control device, then the more recent software "objects" are downloaded from the implant to the control device. In the application, this solution is stated to require an undesirably complex implantable device, too much energy and time, and to have the further disadvantage that the control device will at any point in time only run a single version of the application software, which may not be compatible with all implantable devices (see paragraph 4, lines 11-15, and paragraph 5). The invention is intended to overcome these disadvantages (see paragraph 9).

1.3 As a solution, it is proposed that a control device for communicating with a specific implantable device generate and transmit an "interrogation signal" to the implantable device. In response, the latter generates and transmits a "response signal" to the control device, the response signal comprising "identification information" including one or more of its type and a "unique identification number" and the version of the application software installed on it (see paragraphs 10, 20 and 23-30). The control device stores "multiple, preferably all, updates, versions or generations of the application software for the control device" in question (see paragraphs 16 and 34). Based on the received "identification information", the control device "correlates or maps" to the implantable device a compatible version of the application software using a lookup table (see paragraphs 21 and 22). Subsequently, the control device uses the so-determined compatible version (see para­graph 33). The procedure is depicted in figure 2.

Clarity and sufficiency of disclosure,

Articles 84 and 83 EPC

2. The examining division found the independent claims of both requests to be unclear for the following reasons (see the decision, points 19-22 and 25).

2.1 It was left open what kinds of interrogation and response signals could be processed by all possible electronic devices. At least for some pairs of elec­tronic devices, it would require inventive skill to provide suitable interconnection signals, while the description did not disclose further details. As a consequence, the independent claims were not supported over their full breadth by the description, Article 84 EPC, and, because "said clarity objection" could not be resolved using the description, their subject-matter was insufficiently disclosed, Article 83 EPC (see esp. the recitation of section 9.1.1.2 on pages 6 and 7 of the decision).

2.2 The claimed invention presupposed that the different software versions all had different interfaces. Because this was an unrealistic assumption, the intended "system context" was unclear (see the recitation of sections 9.1.1.3 to 9.1.1.5 on page 7 of the decision).

2.3 The claims left open how the control device was meant to be "'equipped with multiple software versions initially' for all diverse types of 'second electronic devices', [and] for all their respective versions of software", and how it was avoided that the first electronic device had to be modified whenever the application software was changed (i.e. continuously or frequently). Also, for combinatorial reasons it was unrealistic to assume that each first electronic device could store all versions of the application software for all types of second electronic device. This rendered the claims unclear, Article 84 EPC, and meant that their subject-matter was insufficiently disclosed, Article 83 EPC, because "said clarity objection" could not be resolved using the description (see the recitation of sections 9.1.2.1 to 9.1.2.5 on pages 9 and 10 of the decision).

2.4 "Correlating" a version of the application software to the second device did not have a clear technical effect, since the "correlated version of [the] application software" was neither loaded nor used for communication (see esp. the recitation of section 9.1.3 on page 11 of the decision).

The board's view on clarity and sufficiency

3. The board does not share the conclusions of the examining division on clarity of the independent claims.

3.1 While the board agrees with the examining division's view that "correlating" has no clear technical effect (see point 2.4 above), this alone does not imply a lack of clarity.

3.2 The board also agrees with the examining division that the claims do not specify any details about the inter­rogation or response signals, or what it would mean for two devices to be compatible or incompatible. The claims further do not include any feature that would allow an estimate of the number of versions the first electronic device would have to store and when or how the first electronic device would have to be updated.

3.3 None of these omissions however implies, in the board's view, a lack of clarity - or an insufficiency of disclosure, for that matter.

3.3.1 The board considers that the skilled person would have no technical difficulty in implementing a form of interrogation/response-protocol in devices even in a "non-standard scenario" such as a smartphone communicating with a cardiac pacemaker (see paragraph bridging pages 6 and 7 in the decision).

3.3.2 The skilled person would interpret the notion of "compatibility" as used in the claims broadly. In the broadest reasonable sense, two pieces of software would be considered "compatible" if they are intended - and can, thus, be assumed - to interoperate properly. Apparently, this would not be the case if their interfaces did not match. However, even software with matching interfaces might not properly interoperate, for various reasons apparent to anyone skilled in the art of programming. The skilled person would understand that, effectively, "compatibility" is what the "correlating" step establishes, and - for the purposes of the claimed subject-matter - two pieces of software are compatible if the look-up-table "says so".

3.3.3 It would have been evident to the skilled person that the memory requirements on the first electronic device grow with the number of versions of the application software to be stored. The board also agrees with the examining division that this number might well be larger than what a typical such "first electronic device" can actually store (see also "all possible versions" in claim 2). However, while it might be undesirable or impracticable for various reasons, it would not be technically difficult to either enlarge the memory of the first electronic device or to limit the number of versions to some (the most recent say, or only those needed for some "second" device types) to the detriment of others.

3.4 The board takes the view that the skilled person would not need any explicit statement in the application to be able to handle the mentioned situations properly. Hence, in the board's view, the independent claims are neither unclear in the mentioned respects, nor insufficiently supported. Their subject-matter is also not insufficiently disclosed.

4. The findings in point 3 are further corroborated by the following considerations.

4.1 An objection that a claim is too broad to be supported by the description over its full breadth can be addressed by limiting the claim to a breadth which is. For that reason, the limitation of a claim covering standard and non-standard scenarios (claim 1 of the main request) to only the standard scenario of a control device and an implantable medical device (see the auxiliary request) is a valid attempt to overcome at least one of the objections regarding incomplete support by the description labelled "9.1.1.2" (see paragraph bridging pages 6 and 7 of the decision).

4.2 Moreover, the board does not agree that the subject-matter of a claim which is not supported over its full breadth by the description or which is unclear is ipso facto insufficiently disclosed, as the examining division suggests (loc. cit.). Accordingly, the board considers that the objection under Article 83 EPC is not correctly reasoned in the decision.

5. In the following, the board takes the view that the skilled person would construe claim 1 of the auxiliary request as follows. The first electronic device (the control device), storing multiple versions of some application software, asks the second electronic device (the implantable medical device) for identification information which, inter alia, identifies the version of the application software it runs. This information is then used to identify a preferred version of the software to be run on the first electronic device. This version is identified using a look-up table and referred to in the claims as "compatible".

(...)

This decision T 2133/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T213314.20200603. The file wrapper can be found here . Image by Stafford Green (staffordgreen0) obtained under the Pixabay license

Friday, September 14, 2018 T 2489/11 - panning once, continuous panning or scrolling

This appeal was filed against a decision of the Examining Division to refuse the application for violating Art. 84, EPC and Art. 83, EPC.

The applicant filed a main and seven auxiliary requests in support of the statements of the grounds of appeal.

Claim 1 of the main request is directed to a device comprising a touch interface. The claim  attempts to distinguish a 'click' touch from a 'panning' touch merely based on a duration of the touch measured in the device.

The Board does not admit the main request  (Art. 12(4), RPBA) because the applicant attempts to broaden claim 1 by unjustifiably returning to the claim 1 as filed. Original claim 1 was limited during the early stage of examination in that the distinction between 'click' touch and 'panning'  touch was not only based on the duration of the touch but also on a position of the touch. 

All other requests introduce the position of the touch in the claims but further attempt to distinguish a 'continuous panning' from 'panning once'  and/or 'panning' from 'scrolling' which the Board finds unclear (Art. 84, EPC) or not sufficiently described with examples in the description (Art. 83, EPC, Rule 42(1)(e), EPC).

Wednesday, September 05, 2018 T 383/14 - Sufficiency of "only"

This opposition concerns a sorting table for sorting out the foreign bodies from harvested small fruit. The table has openings that will only let the small foreign objects pass through (de façon à laisser passer uniquement les petits corps étrangers). Elsewhere, there are openings that permit only berries to pass through (permettre le passage et la chute des baies de raisin à trier seulement).

The opponent questioned the sufficiency of the description with respect to  these features. The means shown in the description will at times also allow unintended objects to pass through; hence the shown means neither satisfy the 'uniquement' nor the 'seulement' requirement. Moreover, these terms are perfectly clear, so no interpretation based on the description should be allowed for them.

The board explains that the skilled person will try to reach an interpretation of the claims that makes technical sense, and that takes into account the whole of the disclosure of the invention in the patent. The sorting table allows sorting of foreign bodies that are either smaller or larger than the berries. That it is not "only" the grape berries that pass through the openings, did not convince the Board . This is not the realistic situation in which the reproducibility of the sorting needs to be shown, but rather that of an occasional failure perfectly foreseeable for a sorting machine. The claim is thus sufficiently disclosed.

That the disputed terms are clear in themselves is no objection, as they are used in claim which is to a certain point abstracted to an ideal situation. The skilled person will understand this. 

Wednesday, May 09, 2018 T 2070/13 - When is routine work an experimental programme?

An experimental programme

Claim 1 in this opposition appeal requires a combination of  a viscoelastant material and an anti-adherent material. A large number of possibilities for the anti-adherent material is claimed, while the anti-adherent property is not very well defined. The Board found that this is too much for the skilled person. Reasons 1.11 discusses where the burden of proof lies in this case. 

"A topical viscoelastic fluid modifying composition for topical application to the skin and hair in the perianal and/or labial areas comprising at least one viscoelastant material and an anti-adherent material, wherein the composition comprises between 0.01% to 25% by weight of the viscoelastant material and between 0.01% and 25% by weight of an anti-adherent material; wherein the viscoelastant material comprises a material selected from the group consisting of enzymes, linked enzymes, alkyl polyglycosides having 8-10 carbon atoms in the alkyl chain, bovine lipid extract surfactant, dextrans and dextran derivative; and wherein the anti-adherent material comprises a material selected from the group consisting of casein, farnesol, flavones, fucans, galactolipid, kininogen, inulin, iridoid glycosides, perlecan, poloxamer 407, sulphated exopolysaccharides, and combinations thereof."

Wednesday, May 02, 2018 T 1050/12 Public availability, enablement for medicines

Public availability
In this opposition appeal, a discussion took place on when a document was seen as being publically available when made available in a library. The opponent/appellant cited T 834/09 in support of arguments concerning the public availability of documents D3 and D7, The proprietor saw this decision as being divergent from the earlier case law and represented a conceptual shift by promoting the librarian to a member of the public (and not just a person making it available to the puiblic by putting it in the library at a possibly later moment). 

The board  comes to the conclusion that there is evidence on file supporting the conclusion that the document was made available to the public in general (i.e. the users of three libraries) before the priority date. This was the case regardless of whether or not the librarian was a member of the public. Accordingly, even if the board were to come to the conclusion that there was divergent case law as regards the status of a librarian as a member of the public, it would still be able to reach a decision in the present case without the need for an answer on this point from the Enlarged Board of Appeal.

Level of proof
The Board does not want to go into a discussion on which level of proof is most appropriate in this case ('on the balance of probability'  or 'up to the hilt') but applies the concept that what matters is whether or not the deciding body, is - having regard to all evidence and arguments put forward by the parties - convinced that the alleged facts, i.e. the public availability of the documents prior to the priority date, have indeed occurred.  

Enablement for medical use claims.

The proprietor argued that D3's disclosure was not enabling for the claimed medical use, because it only disclosed preliminary experiments for which it lacked many details, and it only hypothesised on a therapeutic effect. Contrary thereto, the patent provided data which made the therapeutic effect plausible. The board notes that enablement of disclosure for medical uses does not require that a therapeutic effect is demonstrated in vivo but rather that it is made plausible (T 609/02, reasons 9). The Board concluded that, while D3 does indeed not show that injected myoblasts as claimed do exert a therapeutic effect in the context of stress urinary incontinence, it nevertheless does provide data and information which render said therapeutic effect plausible. 

Catchwords:
Meeting abstracts published in a supplement to a regular volume of a scientific journal found to be publicly available before the priority date of the patent on the basis of library date-stamps and accompanying declarations of the librarians.

Tuesday, April 17, 2018 T 2340/12 - What the ... is a space energy implosion unit?

The application in this appeal case refers to a device using "space energy" for therapeutic purposes and foodstuff preparation. It was refused by the examining division for lack of sufficiency and lack of technical character. The ED further objected that the term "space energy" was not clearly defined, and that no method of measuring the energy had been described.

To overcome the deficiencies, the applicant submitted a main request in which "space energy" was replaced with the term "torsion field",  along with a number of articles and internet publications intended to establish the clarity of the new nomenclature. As regards measurement, the applicant argued that it was sufficient to be able to measure the effects of the energy on test subjects, as demonstrated by the experimental data. The ED found the experimental support to be unsatisfactory. 

The applicant also submitted three auxiliary requests - likewise involving a change of nomenclature - which were not admitted into the proceedings because of failure to prima facie address the issue of insufficiency of disclosure.

In appeal, the applicant/appellant contested the findings of the ED and questioned their competence to require experimental evidence. The Board upheld the decision to refuse the application under Art. 83 EPC and the decision not to admit the three auxiliary requests. The Board further commented that while there is no provision in the EPC according to which the grant of a patent depends on the applicant filing satisfactory experimental evidence, the provision of such evidence in order to convince the examining division or board of appeal that its findings are incorrect should be viewed as the applicant's right, rather than his obligation.

Friday, June 02, 2017 T 1818/12 - On evidence, sufficiency, and effect

This pencil cracked under the pressure

The main claim in this opposition appeal concerns an E. coli host cell sample subjected to non-lysing pressure. According to the opponent the examples in the patent are the only known cell systems that do not lyse under the conditions of the claim, or that give the effect of increased yield. As a result, the claim is neither workable nor inventive over the entire scope claimed. 

The Board has problems with the evidentiary value of the documents cited by the opponent. Furthermore, that there exists an embodiment falling under the scope of the claim that does not show the effect is in itself not enough to deny inventive step. 

Friday, May 12, 2017 T 1811/13 - Can lack clarity imply lack of sufficiency?

Where exactly are the boundaries of the forbidden  area?

Can a lack of clarity in a claim lead to insufficiency of disclosure? The opponent tries to convert a clarity objection into a lack of sufficiency. The argument is that, the impossibility for the skilled person to know whether he is working within the forbidden area entails the impossibility of carrying out the invention.

To support the point a number of T decisions are cited which side with this argument. The board trumps it though with even more T decisions that do not agree. At the end, the board does concede though that in other situations this argument might work. 

Tuesday, April 11, 2017 T 1543/12 - Multiple ranges in claim, are all combinations supported?

Many independent combinations are possible

Claim 1 in this opposition comprises a number of ranges. Individually, each of the ranges is supported by the application, but there may be combinations of the ranges that are not. Is such a claim properly supported over its entire width? The board thinks it is.  

Claim 1 in the pending requests contained a number of ranges:

1. A method for preparing a dry granulated product containing L-lysine and having the following composition:
L-lysine content in solid matter: 40 to 85% by weight equivalent ratio of anion/L-lysine 0.68 to 0.95 moisture content: 5% by weight or less (...)

Reasons for the Decision

(...)

4. Insufficiency of disclosure (Article 100(b) EPC)

4.1 The Appellant objected that the subject-matter of claim 1 could not be carried out over the whole range claimed. The claimed process is directed to the preparation of products covering the whole range of claimed lysine contents. However, it was not possible to produce lysine products having a lysine content of 85% and an equivalent ratio of more than 0.71, although an equivalent ratio of 0.68 to 0.95 was claimed.

4.2 According to Article 100(b) EPC, the European patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person.

4.3 In the present case the process according to claim 1 is characterized to produce a L-lysine product. This product is inter alia characterized by a moisture content up to 5% by weight, of a L-lysine content in the final product of 40 to 85% by weight and an equivalent ratio of anion/L-lysine of 0.68 to 0.95. Therefore, any L-lysine fulfilling these three parameters is a product according to the invention. In order to be carried out over the whole range claimed, it is only necessary that each value within the claimed ranges can be achieved individually. It is, however, not a requirement of Article 83 EPC, that each and every possible combination of all individual limiting values within the claimed ranges can be achieved. The example given by the Appellant is technically impossible, since a product comprising 85% by weight of L-lysine can only comprise 15% by weight of an anion forming compound, which in the present case is hydrochloric or sulfuric acid. It follows that depending on the molecular weight of the acid used in the process the ratio of anion/L-lysine can reach only certain theoretical values within the claimed range. The skilled person knows, that both the L-lysine content in the final product and the achievable ratio of anion/L-lysine are dependent on each other and cannot vary independently over the whole range of values claimed for each of these two parameters.

4.4 Therefore, the Board concludes that the European patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person in the sense of Article 83 EPC.

(...)

This decision T 1543/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T154312.20160419. The file wrapper can be found here. Photo by Bill Ferngren (Braite), via PixaBay under a CC0  license (no changes made).

Tuesday, March 21, 2017 T 0396/14 - Meaningful interpretation of claim by skilled person

What is the upper end of this range?

Granted claim 1 in this case contains the step 'positioning an upper end of the retransmission window'. Unfortunately, the description does not contain a clear definition of what the upper end is, and in fact the term only occurs a few times in the summary of the invention. Furthermore, with a (according to the opposition division) conventional understanding of the upper end, the claims would not work. The granted claims were then revoked for being insufficiently disclosed. 

The board gives more credit to the skilled person to come to a working embodiment that falls under the terms of the claims, then the opposition division did. 

Friday, October 21, 2016 T 2346/12 - Defined by flex modulus

In this opposition appeal, the appellant (patent proprietor) lodged an appeal against the decision revoking European patent No. 1 773 675.

In the appealed decision, the opposition division found that neither the main request (patent as granted) nor the auxiliary request met the requirements of Article 83 EPC.

Of particular interest in this case is that claim 1 defines a closure for sealing a container (...) characterised in that the outer wall surface (10) at the first wall edge (22) has a flex modulus of less than 3.95 N/mm", i.e., a characterisation by parameter.

This case shows the pitfalls of such type of characterization.

Namely, as argued by the respondent (opponent), in the patent in suit apparently a new method for determining the flexibility with the new parameter "flex modulus" was developed, however without providing the adequate level of information for its implementation. 

Friday, October 21, 2016 T 2346/12 - Defined by flex modulus

In this opposition appeal, the appellant (patent proprietor) lodged an appeal against the decision revoking European patent No. 1 773 675.

In the appealed decision, the opposition division found that neither the main request (patent as granted) nor the auxiliary request met the requirements of Article 83 EPC.

Of particular interest in this case is that claim 1 defines a closure for sealing a container (...) characterised in that the outer wall surface (10) at the first wall edge (22) has a flex modulus of less than 3.95 N/mm", i.e., a characterisation by parameter.

This case shows the pitfalls of such type of characterization.

Namely, as argued by the\respondent (opponent), in the patent in suit apparently a new method for determining the flexibility with the new parameter "flex modulus" was developed, however without providing the adequate level of information for its implementation. 

Sunday, October 02, 2016 T 1242/06 - Tomatoes III

After two referrals to the EBoA underlying G 1/08 and G 2/12 settling the Art. 53(b) issues relevant for the present case, the Opposition Appeal proceedings regarding the “Tomato” patent have reached their end: The patent is maintained in amended form with two claims relating to the Tomato fruit itself but no claims to the method of their production. The maintained claims are the claims of Auxiliary request I discussed in the below (highlighted in red and bolded). Depositing of the lines used to obtain the claimed Tomato fruit was not found necessary for enablement. The inventive step of the claimed tomato fruit was found to lie in the low expectation of success of the performed selection.

Sunday, August 07, 2016 T 1727/12 Sufficiency of disclosure for a broad claim

In this decision the Board has to go into different forms of lack of disclosure. The Board is not a big fan of the British term ‘Biogen sufficiency’ and goes back to the original decision T 409/91 and terminology used in that decision (“the patent monopoly should be justified by the actual technical contribution to the art”). 

In opposition proceedings, Art.84 cannot be used in this respect. In the opinion of the Board, the opposition division has not been convincing in proving that Art.83 was violated. In particular, the opposition division believed that features of dependent claims 3-5 were required for the invention of claim 1, but the division did not come up with options which the skilled person would not know how to carry out. The burden of proof was thus not met.

The Board remitted the case back to the opposition division for further prosecution. No oral proceedings were held, since the request "In the event that the Patent is not to be maintained in the form in which it was granted, the Proprietor requests oral proceedings" does not cover the situation wherein the Board does not take a final decision on the case itself but remits the case.

Tuesday, July 26, 2016 T 803/12 - No right to two instances

In continuation of the patent being revoked in opposition due to lack of sufficiency of disclosure, the proprietor appeals the decision. The proprietor requests the case to be remitted to the Opposition Division as he is of the opinion the his right to be heard has been violated and that he is entitled to be heard in two instances according to Art. 32 of the TRIPS agreement and based on Art. 125 EPC, Furthermore, the proprietor requests the Board to order a correction of the minutes of the oral proceedings before the Opposition Division.

The Board disagrees with the proprietor in all aspects. The case is not remitted, the minutes are not corrected and the patent remains revoked.

Tuesday, July 12, 2016 R 2/14 - Is there an undue burden?

Undue burden?

This is a successful petition for review.  

Claim 1 as granted refers to an amino acid sequence "SEQ ID NO:4". Unfortunately, the sequence contains an error and does not provide the required desaturase activity. The opposition division revoked the patent as not complying to Art. 83 EPC. In the appeal, the proprietor countered that the skilled person could nevertheless prepare a protein having the desired activity. 

In the appeal decision, the board rejects this argument. The relevant part of the decision is the following:

"30. Since the skilled person relying on the patent application was not informed that the protein defined by SEQ ID NO:4 was inactive, and since the patent application neither disclosed any active sequence variants having at least 60% sequence identity nor which positions of SEQ ID NO:4 had to be modified in order to obtain a functional desaturase, it had to go back to E. gracilis and redone the desaturase in order to put the claimed invention into practice. Even though each of the steps necessary for recloning could be performed by a person skilled in the art,- it is the combination of all the necessary steps (isolation of total mRNA, PCR amplification and selection of a group of amplification products with homology to known desaturases, completion of the 5' and 3' ends by RACE amplification, cloning and expression of the full length sequence to assess its function) which creates an undue burden on the skilled person trying to perform the invention. The same applies to the two alternative approaches mentioned by the appellant.

31. Thus, contrary to the requirements of Article 83 EPC, the skilled person would not have been in a position to perform the claimed invention readily and without undue burden across essentially the entire scope of claim 1."

The proprietor raised two complaints against the decision, the second of which is that the board based its decision on facts and arguments in respect of which the parties were not heard and did not reason its conclusions about the objection under Articles 100(b) and 83 EPC.

Tuesday, May 31, 2016 T 2182/11 - Lack of clarity is no lack of sufficiency

Vague and broad, who can object to that?

In this opposition appeal, the opponent tried to raise insufficient disclosure objections (Art. 83 EPC) based on broad or vague terms in the granted patent claim. Below are the relevant portions of the main claim.

A sanitary napkin adapted to be worn in a crotch portion of an undergarment, said sanitary napkin having opposed longitudinally extending side edges and a longitudinal axis and comprising:
(...)
b) an absorbent system under said cover layer, said absorbent system having an absorbent width of at least 64 mm;
(...)
f) said absorbent system including at least a pair of preferential bending zones that extend along said longitudinal axis and are adjacent to respective side edges of the sanitary napkin, said preferential bending zones register with respective linear, longitudinally extending adhesive zones, this construction allowing said sanitary napkin to fold at said preferential bending zone in response to lateral compression applied to said napkin and permitting said napkin to acquire a three-dimensional deformation profile,
 (...)

Arguing insufficiency without experimental data is always hard. This attempt also failed, as the board considered the potential problems in the claim to fall under clarity, which is not a ground for opposition.