Tuesday, April 24, 2018 T 0261/15 - Examples rather than end points

In this opposition appeal, the Board found that claim 1 of the Main Request, relating to a high strength pearlitic steel rail defined by several ranges of alloying elements, although overlapping with the composition of a pearlitic rail disclosed in D1, is novel. More specifically, the Board found that - whilst it is true that the Guidelines for Examination in the European Patent Office, G.VI.8, recite that the claimed sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range as a condition for acknowledging novelty of a numerical selection - the limit values (end points) of a known range, although explicitly disclosed, are not to be treated in the same way as the examples. The person skilled in the art would therefore not necessarily contemplate working in the region of the end-points of the prior art range, which are normally not representative of the gist of the prior art teaching.

Tuesday, October 20, 2015 T 1020/15 - Four substantial procedural violations

In examination appeal after a refusal due to an alleged lack of novelty, lack of inventive step and lack of clarity, the decision to refuse was under scrutiny as, among others, not (sufficiently) reasoned. The Board of Appeal identified four substantial procedural violations: comments from the applicant not taken into account (r.1.2.3), not sufficiently substantiated / no reasons given (r.1.2.4; r.1.3; r.1.4), Guidelines not followed (r.1.2.3, r.1.2.6, r.1.3), and interlocutory revision not granted (r.1.11). Further, common general knowledge was not acknowledged (r.1.10.1) which had a major impact on the assessment of patentability. The decision also shows (again) that also "decisions according to the state of the file" need to be as well reasoned as other decisions.