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).

Tuesday, May 28, 2019 T 1218/14 - No accidental anticipation; relevant for inventive step?

Does the finding that (a disclosure in) a prior art document D1 does not qualify as an accidental anticipation (thus not allowing the use of an undisclosed disclaimer) because it does not fulfill the criterion laid down in G 1/03 that it is so unrelated to and remote from the claimed invention that the skilled person would never have taken it into consideration when making the invention, imply that it is automatically relevant for inventive step? Or, turned around, if it is found that the claimed subject matter is inventive in view of D1, does this mean that D1 is in fact irrelevant for inventive step, such that the criterion in G 1/03 is met and that D1 is an accidental anticipation after all?

Not necessarily - according to this decision. Herein, the Board argued that the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention.

Consequently, if this criterion is met, it follows that said disclosure is completely irrelevant for assessing inventive step. However, not meeting said criterion does not necessarily imply the opposite, namely that the disclosure in question will contribute to a finding that inventive step is lacking.

Accordingly, in the present case, as D1 was considered to deal with a side aspect of the claimed subject matter, the patentee was not able to maintain his broader claims by disclaiming a relevant disclosure of D1; the subject matter of duly limited claims was however deemed inventive in view of D1 as secondary document.

Sunday, March 31, 2019 T 437/14 (Minutes of oral proceedings) - Disclaimer decision following the decision on its referral (G 1/16)

In this case, the Board referred questions to the Enlarged Board about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The Enlarged Board handled the case as G 1/16 and answered that "For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03. The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons." The referring Board has no issued the Minutes of the subequent oral proceedings before it.

Tuesday, October 02, 2018 T 1399/13 - On the size of the hole

The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.

Wednesday, December 20, 2017 G 1/16 - The final word (?) about disclaimers

The referral relates to the allowability of undisclosed disclaimers. The referring Board asked about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The decision G 1/16 (Disclaimers III) noted that in drafting of undisclosed disclaimers as amendments, no technical contribution to the claimed subject-matter of the application as filed may be provided. 

Monday, July 31, 2017 T 287/14 - Disclaimers: do not try this at home!

Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

Tuesday, March 14, 2017 T 0625/11 - How technical is determining a threshold value?

In this appeal from the Examining Division the main question is whether the claimed method of determining a threshold value of an operational parameter of a nuclear reactor, based upon a simulation of the functioning of the reactor, is technical. The Examining Division recognised that the use of a computer made the claimed invention technical in the sense of Art. 52 EPC, but denied inventive step. Discussing the case law, including T 0641/00 (Comvik) and T 1227/05 (Infineon), the Board distinguishes two different approaches. The first approach requires including the functioning of the nuclear reactor to state the technical effect in the claim. The second approach, which is in line with T 1227/05, does not require stating the technical problem in the claim. The Board chooses the second approach and concludes that determining the value of a parameter gives the claim a technical character going beyond the simple interaction between the numerical interaction algorithm and the computer.

Friday, January 13, 2017 T 2502/13 - Positive feature allowed as Art. 54(3) disclaimer?

In the opposition appeal to which this decision pertains (which has been suggested by a reader), the proprietor appealed against the decision of the Opposition Division to revoke the patent on the basis of all requests extending beyond the content of the application as filed (Article 123(2) EPC).

Of interest is the first auxiliary request of the appellant, by which the claim of the main request is further limited by: "further wherein the third ply of interlayer material comprises a plasticizer".

The appellant argues that the subject-matter of claim 1 of the first auxiliary request amounted to a disclaimer allowable in view of A8, which was prior art according to Article 54(3) EPC.

Tuesday, November 15, 2016 Gold standard poll results

In T 437/14 the board of appeal referred questions on disclaimers to the enlarged board. The central question is how the gold standard of G 2/10 is to be squared with the disclaimers that are allowed for accidental anticipations under G 1/03. The case has been discussed in the comments, and various directions were suggested in which the enlarged board could go.

The past two weeks we placed a poll at our blog in which our readers could make their predictions. Polling is now closed and the results are in.

So there is a clear majority that does not expect that G1/03 is any in danger. I'm looking forward to the enlarged board's decision to see how well this poll matches reality.

Tuesday, October 25, 2016 T 437/14 - New Questions on Disclaimers referred to Enlarged Board

Is this still the same apple?

The disclaimer case G 1/03 seems to allow exceptions to Article 123(2) that 'Gold-standard' case G 2/10 does not allow. This board does not like it one bit:

"If one takes a bite out of an apple, what remains is recognisably no longer the same apple as the original one. Even though it is still an apple, the apple with the bite taken out of it cannot be regarded as explicitly or implicitly, but directly and unambiguously, "disclosed" in the original apple." (Reasons 8.1)

Claim 1 in this case includes two disclaimers to restore novelty against an accidental anticipation. This would be allowed under G 1/03. Is it also allowed under the more recent G 2/10? We will soon have a new enlarged board decision on disclaimers, joining the ranks of G 1/03 and G 2/10, because the following questions have been referred:

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?

2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?

3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?

Friday, March 06, 2015 T 2130/11: disclaimers and Art. 84 EPC: an inescapable trap?

Disclaimers are always a nice subject for a complicated and expensive appeal procedure and quite often result in "important" case law. In this appeal, which lies from a decision of the Opposition Division, claim 1 of the main request comprises a long disclaimer which tries to disclaim embodiments of a relevant Art. 54(3) prior art document. According to this Board, G1/03 defines that the disclaimer has to fulfill the requirement of Art. 84 EPC. G1/03 defines that the patent owner may not disclaim more than strictly necessary to be novel over the Art. 54(3) document. In order to disclaim all embodiments of the relevant Art. 54(3) prior art document, but not disclaim more than strictly necessary, the patent owner considered it necessary to introduce the long disclaimer. However, this disclaimer has to fulfill Art. 84 EPC. It seems to be an inescapable trap. How to disclaim not more than strictly necessary when the embodiments as disclosed in the Art. 54(3) document do not fulfill the requirements of the Art. 84 EPC (e.g. clarity and conciseness).
In this decision the Board refused the main request because the disclaimer did not fulfill the requirements of Art. 84 EPC (clarity). However, the Board formulated its decision in such a way that the requirements of G1/03 and Art. 84 EPC are not directly an inescapable trap.

Catchwords
 
The difficulty for the applicant or patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention. Not even a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, point 3 in the reasons, second paragraph, last sentence) may have as a consequence the watering down of one of the requirements of the EPC. The requirements of Article 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim (see point 2.9).
On the other side, the condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10).

Friday, February 06, 2015 T 2001/12 - Insufficiency, clarity or inventive step

Can an objection of insufficient disclosure under Article 83 be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect? What are the consequences of a doubt that the invention as claimed is capable of solving the problem defined in the application? Does it make a difference if the question arises because the claim fails to specify those features which are disclosed in the application as being essential for providing the solution to the problem, or because, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem? The Board of Appeal provided a thorough analysis and guidance in this decision. 

Summary of Facts and Submissions

I. The appeal is against the decision of the Examining Division refusing European patent application No. 08 764 638 "because the main request does not meet the requirements of Article 83 EPC, Article 84 EPC, and Article 54 EPC, and because the auxiliary request does not meet the requirements of Article 83 EPC and Article 84 EPC."

II. The following documents [...]

III. In the letter stating the grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or one of auxiliary requests I-VI, all filed with the said letter.

IV. Claim 1 according to the main request reads as follow:

"A memory device (1), comprising at least:

a first semiconductor region (100) having a length (Lg), a first surface (100A), and a cross-section surrounded by the first surface (100A);

a memory means (300) provided on the first surface (100A), wherein the memory means (300) is a multilayered insulation film; and

a gate (400) provided on the memory means (300);

wherein an equivalent sectional radius (r) of the cross-section of the first semiconductor region (100) is defined as a radius of curvature of a circle having the same cross-sectional area as the cross-section; and

an equivalent silicon oxide film thickness (tm) of the memory means (300) is defined as a sum of values of thickness of each layer of the multilayered insulation film, wherein each value of thickness is the film thickness of said layer multiplied by dielectric constant of silicon oxide and divided by dielectric constant of said layer;

and wherein the equivalent sectional radius (r) of the cross-section of the first semiconductor region (100) is equal to or smaller than the equivalent silicon oxide film thickness (tm) of the memory means (300);

characterized in that

the equivalent silicon oxide film thickness (tm) of the memory means (300) is 20 nm-to 6nm."

V. The Examining Division argued essentially as follows:

[...]

VII. The appellant argued essentially as follows:

[...]

Reasons for the Decision

1. The appeal is admissible.

[...]

3. Main Request: Article 83 EPC 1973

3.1 Paragraph [0011] of the description begins as follows:

- "According to to the above-mentioned configuration, the equivalent sectional radius r is set to be equal to or smaller than the equivalent oxide film thickness tm of the memory means".

This relationship between the equivalent sectional radius and the equivalent oxide film thickness is included in claim 1 of the main request.

Paragraph [0011] then continues:

- "and therefore it becomes possible to realize a memory device which can reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device."

This feature, which is not comprised in claim 1 of the main request, is central to the objection under Article 83 EPC made in the contested decision.

In particular, by comparing Examples 1 and 2 of the present application with the disclosures of documents D2 and D8, the Examining Division came to the conclusion that it was not credible that the invention defined by claim 1 of the main request would achieve the technical effect of reducing the voltage for writing and erasing to approximately 70% or less of that of a conventional planar type device. For this reason the Examining Division judged that the requirements of Article 83 EPC were not met.

3.2 Hence, a first question which arises is whether the allegation that the claimed invention is incapable of achieving the above-mentioned effect would - even if true - justify refusing the application for failure to meet the requirements of Article 83 EPC.

3.3 In Decision G 1/03 (OJ, 2004, 413) the Enlarged Board of Appeal stated the following:

- "a lack of reproducibility of the claimed invention ... may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)." (See Reasons, point 2.5.2.)

This passage has since been cited in other decisions; for example in T 1079/08 the point is made as follows:

- "In Decision G 1/03 (OJ, 2004, 413) the Enlarged Board of Appeal indicated that a lack of reproducibility of the claimed invention is relevant under the requirements of sufficiency of disclosure if the technical effect is a technical feature of the claim, since then it is a feature characterising the subject-matter claimed (see point 2.5 of the reasons)." (T 1079/08, Reasons, point 4).

The same point had been made in earlier decisions, for example in T 939/92 (cited by the Enlarged Board in the above excerpt from G 1/03), and in T 260/98 (also citing T 939/92) in which the following conclusion was drawn:

- "However, since the claims only specify a reduced abrasiveness and do not require any synergistic activity of the components, the question as to whether or not such a synergic effect is achieved by the claimed printing inks is not relevant to the issue of sufficiency, although it may properly arise under Article 56 EPC, if this technical result turns out to be the sole reason for the alleged inventiveness of the printing inks (T 939/92 of 12 September 1995, Headnote point 2 and Reasons Nos. 2.4 to 2.6, OJ EPO 1996, 309)." (T 260/98, Reasons, point 3.6.6.)

3.4 It is therefore the consistent position of the boards that an objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect.

In the present case, the technical effect in question is the reduction of the writing and erasing voltage to approximately 70% or less of the program voltage of a conventional planar type device. Achieving this effect is not part of the invention defined by claim 1 of the main request, and hence the Examining Division's objection that the application as a whole does not disclose features which would enable this effect to be obtained does not constitute a valid objection under Article 83 EPC 1973.

3.5 The Board therefore judges that claim 1 of the main request complies with the requirements of Article 83 EPC 1973.

4. Article 84 EPC 1973

4.1 The Examining Division also found that since claim 1 of the main request did not define features which would enable the above-mentioned effect to be obtained, the requirements of Article 84 EPC 1973 were not met, since the claims did not recite all the features essential for the definition of the invention.

4.2 Article 84 EPC requires that the claims are clear, concise and supported by the description. According to established case law of the boards, Article 84 EPC is to be interpreted as requiring that the claims indicate all essential features of the invention (see Case Law of the Boards of Appeal, 7th edition 2013, II.A.3.2).

In the decision T 32/82, the matter was put as follows:

- "Article 84 EPC requires amongst other things that the claims, which define the matter for which protection is sought (i.e. the object of the invention as implied by Article 52(1) EPC) be clear. The Board of Appeal considers that this has to be interpreted as meaning not only that a claim from a technical point of view must be comprehensible, but also that it must define clearly the object of the invention, that is to say indicate all the essential features thereof.

- "As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed which are necessary to solve the technical problem with which the application is concerned." (see T 32/82 OJ 1984, 354, Reasons, point 15.)

In the decision T 133/85 the point was made as follows:

- "A claim which does not include a feature which is described in the application (on the proper interpretation of the description) as an essential feature of the invention, and which is therefore inconsistent with the description, is not supported by the description for the purpose of Article 84 EPC." (T 133/85, headnote I).

This requirement to eliminate inconsistency between the claims and the description also implies that where an invention has been presented in the description in terms of a modification of prior art which is cited or otherwise acknowledged in the application, the modifying features must be seen as essential (see e.g. T 813/03, point 5.1).

Hence, if the claims do not comprise a feature which is described in the application as essential, or which is disclosed in the description as being indispensable for solving the problem defined in the application, then an objection under Article 84 EPC 1973 may properly arise.

Examination for compliance with this requirement does not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to any prior art cited in the application with respect to which the invention has been disclosed.

4.3 By contrast, the determination of the objective contribution of the claimed invention, i.e. having regard to the totality of the prior art, and in particular the objectively identified closest prior art, forms part of the examination for inventive step.

If, as a result of the comparison with the prior art, objective doubts arise that the claimed invention would actually be capable of solving the problem defined in the application (whatever may be asserted in the description), then an objection under Article 56 EPC 1973 may be raised, possibly requiring a reformulation of the problem (see e.g. T 400/98, points 4.3 - 4.3.6, and Case Law, op. cit. I.D.4.3.2).

This is also consistent with the passage cited from G 1/03 under point 3.3, above, in which a lack of reproducibility the claimed invention (i.e. a failure of the claimed features to deliver the effect aimed for) is seen to represent, in the case of an effect which is not expressed in a claim but is part of the problem to be solved, "a problem of inventive step".

4.4 In summary, a doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

- If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

- If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised.

4.5 In the light of the above analysis, the Board is called upon to decide whether the Examining Division was correct in concluding that the claim 1 of the auxiliary request (essentially corresponding to claim 1 of the present main request) failed to meet the requirements of Article 84 EPC in that it did "not recite all the features essential for the definition of the invention". The Board's answer to this question is no, for two reasons.

4.6 Firstly, in the section entitled "Problem to be Solved by the Invention" (paragraphs [0007]-[0009]), several problems are mentioned, including providing a "memory device which can reduce the voltage for writing and erasing".

However, although providing a writing/erasing voltage of approximately 70% or less of that of a conventional planar type device is mentioned in the description, achieving this effect is not stated to be the problem to be solved by the invention, either in paragraphs [0007]-[0009] or elsewhere. There is therefore no basis for arguing that features necessary to achieve this degree of reduction are essential to the definition of the invention.

4.7 Secondly, even if it were accepted that the technical problem underlying the invention is to provide a writing/erasing voltage of approximately 70% or less compared to a conventional planar type device, according to the application this degree of reduction is achieved by ensuring that "the equivalent sectional radius r is set to be equal to or smaller than the equivalent oxide film thickness tm of the memory means" (see e.g. paragraph [0011]).

Since this feature is indisputably comprised in claim 1 of the main request, no legitimate objection could be raised under Article 84 EPC 1973 that claim 1 lacks a feature presented in the description as essential to solving the problem.

4.8 The actual objection of the Examining Division was that, in the light of document D2 (cited in the International Search Report) and document D8 (cited by the Examining Division), and despite the assertions in the description of the present application, it was not considered technically credible that the devices of the present application did in fact reduce the writing/erasing voltage to 70% or less than that of a conventional planar type device.

In the light of the analysis presented above, the Board takes that view that while such an argument might conceivably be of relevance in an examination of inventive step under Article 56 EPC 1973, it is not relevant to the question of compliance with the requirements of Article 84 EPC 1973.

4.9 The remaining objection against claim 1 under Article 84 EPC 1973 (mentioned under point 24.1 of the section "Additional Comments") is that in the case of a hollow semiconductor region, claim 1 does not provide a clear definition of which "first surface" (internal or external) is meant.

In the opinion of the Board, however, it is clear that the external surface is intended. Claim 1 of the main request defines:

- "a first semiconductor region (100) having a length (Lg), a first surface (100A), and a cross-section surrounded by the first surface (100A)".

Hence the "cross-section surrounded by the first surface" is a cross-section of the first semiconductor region. Taking the first surface to mean the internal surface of a hollow semiconductor region would imply that the cross-section of the semiconductor region would enclose none of the actual semiconductor material, but only the hollow interior region. It would be clear to the skilled person from the wording of the claim that this is not what is intended.

4.10 Claim 1 of the main request is therefore judged to meet the requirements of Article 84 EPC 1973.

5. Further Procedure

5.1 No objection of lack of novelty was raised against the subject-matter of claim 1 of the first auxiliary request then on file, nor does the Board see any reason to raise such an objection against the (broadly similar) subject-matter of claim 1 of the present main request in the light of the prior art currently on file.

5.2 In view of the statement in the contested decision that "no supplementary European search report has been established for the present application and no further search for relevant prior art has been conducted during the written procedure", the Board considers that the Examining Division's proposal that "it would be appropriate to return the file to the division for a detailed search and examination to be conducted" is sensible. Hence it is appropriate for the Board to exercise its discretionary power under Article 111(1) EPC 1973 to remit the case to the department of first instance for further prosecution.

5.3 In the section headed "Additional Comments" (said not to form part of the reasons for which the application was refused) the Examining Division briefly indicated its view (under point 25.1) that the subject-matter of claim 1 of the first auxiliary request did not involve an inventive step with respect to document D5/D5a. The Board finds it appropriate to refrain from commenting on this matter for the following reasons.

If, following the search mentioned above, the document D5/D5a is confirmed as the closest prior art in the remitted procedure and the Examining Division maintains its view on inventive step, then the applicant would be entitled to a full explanation of this objection in terms of the problem-solution approach, and taking into account any counter-arguments of the applicant (for example, those presented in the notice of appeal). For the Board to decide this matter in the present decision would deprive the appellant of two instances on the issue. Moreover, the search may reveal new relevant prior art which may either become the starting point for examination, or have a bearing on the argument starting from D5/D5a.

5.4 Hence, for the avoidance of any doubt, the Board has decided only that claim 1 of the main request filed with the notice of appeal satisfies the requirements of Article 84 EPC 1973 and Article 123(2) EPC, and that in respect of the invention defined in claim 1 of the main request filed with the notice of appeal the application meets the requirements of Article 83 EPC 1973.

All other matters remain to be decided by the Examining Division in the remitted procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

Headnote

An objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (point 3.4).

A doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

a) If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

b) If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised (point 4.4).

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T200112.20150129. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Impossible object" by Till Krech obtained via Flickr under CC BY 2.0 license (no changes made).

Friday, December 26, 2014 T 1441/13 - The difficulty of disclaiming

The examining division considered the claims not to fulfil the requirements of Article 53(a) EPC in combination with Rule 28(c) EPC - no EP patents shall be granted in respect of invention which at the filing date could exclusively be performed by use (involving the destruction) of human embryos for industrial of commercial purposes, including where the implementation of the invention presupposes such a destructive use to have taken place at some point in time before the filing date, whether or not this is described in the application (G 2/06). In appeal, the applicant tried to overcome the objection by introducing disclaimers in two  auxiliary requests, but without success: the "remaining subject-matter" test of G 2/10 was not met, and/or the claims with the disclaimer lacked clarity.

Summary of Facts and Submissions

[...]

VIII. Claims 1 and 5 of the Main Request read as follow:

"1. A method for obtaining polypeptide-secreting cells, comprising culturing pPS cells in activin A to differentiate the pPS cells to form gut endothelium, and culturing the gut endothelium in a mixture of islet cell differentiation factors comprising one or more of cyclopamine, betacellulin, exendin-4, glucagon-like peptide-1, hepatocyte growth factor, nicotinamide, IGF-1, n-butyrate, retinoic acid (all trans), growth hormone, placental lactogen, VEGF, IGF-II, IBMX, wortmannin, gastrin, cholecystokinin, NGF, EGF, KGF, PDGF, Reg or INGAP, thereby obtaining a cell population in which at least 5% of the cells secrete at least one of the following proteins from an endogenous gene: insulin, glucagon, somatostatin, and pancreatic polypeptide."

"5. A method of producing islet cells from primate pluripotent stem cells comprising

1) differentiating pPS cells to gut endoderm by culturing the pPS cells in a medium comprising activin A or retinoic acid;

2) differentiating the gut endoderm to a pancreas precursor by culturing the gut endoderm in a medium comprising a TGFß antagonist, a member of FGF family and EGF; and

3) differentiating the pancreas precursor to a mature islet cell by culturing the pancreas precursor in a medium comprising nicotinamide."

wherein "pPS" stands for "primate pluripotent stem". Claims 2-4 and 6-11 were directed to preferred embodiments of claims 1 and 5, respectively.

IX. Claims 1 and 5 of Auxiliary Request 1 were identical to claims 1 and 5 of the Main Request except for the following disclaimer at the end of both claims:

"... wherein said pPS cells are not obtained by means of a process in which human embryos are destroyed."

[..,]

X. Claims 1 and 5 of Auxiliary Request 2 were identical to claims 1 and 5 of the Main Request except for the following disclaimer at the end of both claims:

"... wherein the method does not involve use of a human embryo for industrial or commercial purposes."

[...]

Reasons for the Decision

Main Request

1. The Main Request is identical to the request on which the examining division decided to refuse the present application.

Article 53(a) EPC, Rule 28(c) EPC

2. The method of claim 1 for obtaining polypeptide-secreting cells requires the use of a culture of primate pluripotent stem cells (pPS) which, according to the description of the application, includes human embryonic stem (hES) cells (cf. page 6, lines 19 to 20 of the application as filed). In the decision G 2/06 (supra), the Enlarged Board of Appeal considered that "(b)efore human embryonic stem cell cultures can be used they have to be made" and that, if the "only teaching of how to perform the invention to make human embryonic stem cell cultures is the use (involving their destruction) of human embryos, this invention falls under the prohibition of Rule 28(c) EPC" (cf. G 2/06, supra, point 22 of the Reasons). The Enlarged Board of Appeal further decided that the argument of the appellant that, for the assessment of patentability of these inventions, "all the steps preceding an invention for the purposes of Rule 28(c) EPC" should not be taken into account, was not relevant. Thus, the Enlarged Board decided that these steps had to be considered (cf. G 2/06, supra, point 23 of the Reasons).

3. At the relevant date of the patent in suit, the known and practised method for achieving cultures of hES cells, i.e. the starting material of the method of claim 1, included preceding steps that involved the destruction of human embryos. These destructive methods are not excluded from the scope of claim 1. Thus, in accordance with decision G 2/06 (supra), the board decides that the Main Request is not allowable under Article 53(a) EPC and Rule 28(c) EPC.

Admissibility of Auxiliary Requests 1 to 4 and of the new documentary evidence

[...]

Auxiliary Request 1

8. Claims 1 and 5 of Auxiliary Request 1 contain a disclaimer that excludes methods involving the destruction of human embryos, reading: "... wherein said pPS cells are not obtained by means of a process in which human embryos are destroyed" (cf. point IX supra). This disclaimer intends to overcome the objection raised against the Main Request (cf. points 2 and 3 supra).

9. The criteria for allowability of disclaimers have been laid down in the decisions of the Enlarged Board of Appeal G 1/03 (supra, see in particular point 2.4.1 of the Reasons) and G 2/10 (supra). According to decision G 2/10 (supra), the subject-matter remaining in the claim after the introduction of the disclaimer must be - explicitly or implicitly - directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed (cf. G 2/10, supra, Headnote answer to question 1(a)). In fact, this is "the overriding principle for any amendment to be allowable under Article 123(2) EPC ... that applies equally to the subject-matter of a claim the scope of which is determined by a disclaimer", be it an undisclosed or a disclosed disclaimer (cf. G 2/10, supra, point 4.7 of the Reasons).

10. In the present case, the subject-matter remaining in claims 1 and 5 of Auxiliary Request 1 after the introduction of the disclaimer, namely a method for obtaining polypeptide-secreting cells which includes the culture of hES cells derived only and exclusively from non-destructive methods, was not available at the priority date of the application (7 December 2001) and thus, was not directly and unambiguously disclosed to a skilled person as required by decision G 2/10 (supra). The board does not consider this "remaining subject-matter" to be disclosed in the application as filed. For the board to arrive at this decision, the following points are relevant:

10.1 According to the appellant, a single hES cell could be obtained from a human pre-implantation embryo by using methods developed in 2000 for pre-implantation genetic diagnosis (PIGD) of in vitro fertilised (IVF) embryos. Document Verlinsky et al. (2001) has been filed in order to show that a single blastomere cell could be obtained from day 3 cleaving embryos without destroying the embryo. This evidence allegedly supports the availability of hES cells at the priority date of the application by methods that do not involve the destruction of human embryos.

10.2 However, for carrying out the methods of claims 1 and 5, it is not enough to be in possession of single hES cells but it is further necessary to culture these cells in order to obtain an established culture of hES cells or a hES cell line, i.e. in vitro culturing and expansion of hES cells (derivation).

It is acknowledged that derivation methods of embryonic stem cells from mice and from some primates were known and available to a skilled person at the priority date of the application, as shown by the bibliographic references in the application as filed cited by the appellant (cf. page 6, third full paragraph and page 8, first and second full paragraphs of the application as filed). However, none of these derivation methods has been successfully used with hES cells.

Indeed, document Klimanskaya et al. (2006) states that the derivation of hES cells "currently requires the destruction of ex utero embryos" (cf. page 481, left-hand column, lines 1-2). Only by using a new method disclosed in this document, it was for the first time possible to obtain two hES cell lines (cf. page 481, right-hand column, last paragraph to page 482, left-hand column, first paragraph). In document Chung et al. (2008), this method is referred to as being highly inefficient (cf. page 1, middle column, first paragraph). Incidentally, Chung et al. (2008) also states that "(t)o date, the derivation of all human embryonic stem cell (hSEC) lines has involved destruction of embryos" (cf. page 1, left-hand column, lines 1-3).

10.3 It is worth noting that the derivation method disclosed in document Klimanskaya et al. (2006) is based on a co-culture of hES cells with green fluorescent protein (GFP)-positive hES cells (cf. page 482, left-hand column, first paragraph). The source of these GFP-positive hES is not mentioned in this document but, in view of the comments made in all these post-published documents (cf. point 10.2 supra), these hES cells were also obtained by methods involving the destruction of human embryos. It is thus only the derivation method disclosed by Chung et al. in 2008, seven years after the priority date of the present application (7 December 2001), which for the first time has allowed the provision of hES cultures (cell lines) without destroying a human embryo in any production step.

11. Appellant's further argument based on the public availability of established hES cell lines cannot be followed by the board, since these cell lines were also originally obtained using methods that, at some preceding step, involved the destruction of a human embryo (cf. point 2 supra, last sentence). This has not been contested by the appellant and there is no evidence on file to demonstrate the contrary.

In this respect, appellant's attention has also been drawn to decision T 2221/10 (supra) (cf. point V supra). In this decision, this board in a different composition considered methods using commercially or otherwise publicly available hES cell lines, including most of the hES cell lines referred to by the appellant in the present case (inter alia, Thomson et al., 1998). Although methods using these hES cell lines did not require de novo destruction of human embryos, the board concluded that all these hES cell lines were initially derived from a process which had destroyed human embryos.

Therefore, the board, following the criteria established in decision G 2/06 (supra), decided that "(i)nventions which make use of publicly available human embryonic stem cell lines which were initially derived by a process resulting in the destruction of the human embryos are excluded from patentability under the provisions of Article 53(a) EPC in combination with Rule 28(c) EPC" (cf. T 2221/10, supra, Headnote and points 10 to 29 of the Reasons).

Accordingly, the board dismissed the appeal against the decision of the examining division to refuse European patent application No. 03 751 238.1 claiming the priority dates of 7 October 2002 and 19 February 2003, i.e. almost one year after the priority date of the present application (7 December 2001).

12. Thus, the board does not accept appellant's argument that the application discloses a method for obtaining polypeptide-secreting cells which uses hES cultures or cell lines produced without involving the destruction of a human embryo, in a manner sufficiently clear and complete for it to be carried out - without undue burden or inventive skill - by a person skilled in the art. Rather the methods available to the skilled person at the relevant date all included, at some point in time, the destruction of a human embryo.

13. In view thereof, the board does not consider it necessary to examine whether the disclaimer introduced into claims 1 and 5 of Auxiliary Request 1 fulfils the other criteria established in decision G 1/03 (supra), such as for instance whether the disclaimer is complete, i.e. whether it actually excludes all subject-matter not allowable under Article 53(a) EPC in combination with Rule 28(c) EPC (see in this respect the disclaimer introduced into Auxiliary Request 2, points 15 to 17 infra).

14. In conclusion, the board considers the disclaimer introduced into claims 1 and 5 of Auxiliary Request 1 not to be allowable since the application as filed does not disclose the "remaining subject-matter" of the invention (a method which includes the culture of hES cells derived, only and exclusively, from non-destructive methods). Only with information available seven years after the claimed priority date, a skilled person would have been in a position to put into practice this "remaining subject-matter" (cf. point 9 supra).

Auxiliary Request 1 does not meet the requirements of Article 123(2) EPC.

Auxiliary Request 2

15. Claims 1 and 5 of Auxiliary Request 2 contain a disclaimer reading: "... wherein the method does not involve use of a human embryo for industrial or commercial purposes" (cf. point X supra).

16. Without entering into the question whether this disclaimer overcomes the objection raised against the disclaimer introduced into Auxiliary Request 1 (cf. points 10 and 11 supra), the board considers the disclaimer in Auxiliary Request 2 not to be clear and to be contradictory in itself. The fact that industrial protection is sought for the claimed subject-matter, i.e. a method comprising culturing pPS cells, already indicates that a human embryo is used for industrial or commercial purposes. Thus, claims 1 and 5 of Auxiliary Request 2 are not clear and contravene the requirements of Article 84 EPC.

17. If it is the aim of the introduced disclaimer to restrict the later use of the differentiated pPS cells produced by the claimed method, namely to be used exclusively for the embryo (or the human being derived therefrom) which was used for obtaining the starting material of the claimed method, then the disclaimer is directed to subject-matter which is not covered by the claim. Such disclaimer does not meet the requirements of Article 123(2) EPC is not allowable (cf. T 1836/10 of 9 April 2013, points 11 and 13 of the Reasons).

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T144113.20140909. The whole decision can be found here. The file wrapper can be found here. Photo "Islets of Langerhans by Sarah Richardson" by University of Exeter obtained via Flickr (no changes made, CC-BY-2.0 license).