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.

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, January 26, 2016 T 1990/10 - Combining ranges

Can you puzzle the claimed range from multiple disclosed ranges?

The claims in this Opposition appeal contained ranges that were taken by combining ranges in the description. 

Claims 1 and 4 of the main request contained the ranges 'below 35°'C and 'about 26°C to 32°C'. Although these ranges are not explicitly disclosed, numerous other ranges are disclosed which might be combined to obtain the claimed ranges.  

For example, can you get 'below 35°'C from the disclosed ranges "below 37°C"  and "30°C to 35°C"? The board thinks not. In part because the qualifiers 'below' and 'about' are not disclosed correctly for the combined ranges.

The proprietor appellant (Appellant I) did not attend oral proceedings or respond in substance to the preliminary opinion. In response, the board canceled the oral proceedings.