Tuesday, February 11, 2020 T 1621/16 - Multiple selections from lists of converging alternatives

In the present case, amendments were based on multiple selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list). The appellant (patentee) argued that these should not be considered to be equivalent to selections from lists of non-converging elements, and that these rather represented a restriction of the scope of protection and were allowable under Article 123(2) EPC. The opponent and the opposition division argued that amendments based on the selection of at least two intermediate options (i.e. different from the most preferred) from lists of converging alternatives infringed Article 123(2) EPC, and that lists of converging and non-converging alternatives had to be treated in a similar way, because the convergence could only be considered to provide a specific pointer to the most preferred options. The Board had to settle on the matter.

Tuesday, June 11, 2019 T 473/15 - Closest prior art not directed to the same purpose or effect as the invention

In the present case, novelty and prior art were challenged in opposition appeal. The main request was considered novel, in view of it being considered a multiple selection from alternatives and parameter ranges disclosed in different parts of the description of a prior art document D5 and there being no pointer towards applying them in combination. The opponent considered the same document as the closest prior art, and the board saw no reason to depart from this choice. However, the claim aimed for an improved filtereing whereas D5 related to a different purpose or effect: chromatography. "In other words, D5 relates to a different technical field than that of the patent in suit. However, a closest prior art that is not directed to the same purpose or effect as the invention cannot, according to established case law, lead the skilled person in an obvious way to the claimed invention (see the introductory remarks to Case Law of the Boards of Appeal, 8th ed., I.D.3.2).  Applied to the present case, this means that the skilled person would not, without hindsight, try to improve the particulate capture efficiency of the medium of D5, which is meant for chromatographic separation. Hence, the skilled person would not, when starting from D5, apply D4's, D10's or any other document's teaching, since these documents do not deal with chromatographic separation."

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.