Tuesday, January 13, 2015 T 2157/08 - Clarity, support and enablement

The examining division refused the application for the reasons that the independent claims of the main request were not supported by the description, contrary to Article 84 EPC, and that they further comprised unsearched subject-matter. The applicant appealed the decision. The board discussed clarity, support by the description and enablement. The board discussed in detail why a skilled person would have no problem to understand the quite broad claim in view of the presence of a single and very detailed embodiment. The board considered that it would normally be a matter of professional routine to analyse what are the appropriate technical implementations for each of the broad claim terms for any specific communications channel. Even though there might be exceptional cases where this would not be a routine undertaking, the board considers reproducibility of the method in all normal cases satisfying the requirement of case law that the claimed invention must be disclosed in a manner which makes it executable across the whole claimed range.

Summary of Facts and Submissions

[...] 

VIII. Claim 1 of the sole request [as pending during oral proceedings before the board] reads as follows:

"A method (2100) of dynamically adapting a communication channel to channel impairments, comprising:

(a) operating (2104) the communication channel in accordance with a set of operating parameters;

(b) determining (2108) a channel impairment characteristic related to a channel impairment present in the communication channel;

(c) determining (2110) a quality metric indicative of channel performance for the communication channel; and

(d) adjusting (2112) one or more operating parameters in the set of operating parameters when the quality metric is not within the target range, said adjusting being based on the channel impairment characteristic determined in step (b) so as to bring the quality metric within the target range."

Reason for the Decision

1. Admissibility

The appeal complies with the provisions of Articles 106 to 108 EPC. Therefore it is admissible (see Facts and Submissions, point II).

2. Unsearched subject-matter

Claims 1 to 14 are based on claims 1 to 5, 7, 10 to 13, 15, 21 to 24, 26, 29 and 31 as originally filed. All of these original claims belong to the group of claims for which the search report was drawn up. Thus, the present claims do not comprise unsearched subject-matter.

3. Article 84 EPC

According to established case law of the Boards of Appeal, the requirement for the claims to be supported by the description has to be interpreted in the sense that all the features which the skilled person would understand from the description to be necessary to carry out the invention must be present in a corresponding claim. Thus, in particular features which are necessary to solve the underlying technical problem must be present in the claim. See e.g. T 1055/92, point 5.

The problem underlying the application is inferred from the description, paragraphs [0005] to [0009], to be to mitigate impairments in a communication system.

The skilled person would understand that the flow chart depicted in Figure 21 and the corresponding description in paragraphs [0099] to [0115] disclose the general principle of the claimed solution and that paragraphs [0016] to [0098] disclose details of a cable modem system, representing a specific embodiment. According to the flow chart of Figure 21 a channel is operated according to a set of operating parameters. Channel impairments, e.g. common path distortion, ingress, impulse/burst noise or AWGN (additive white Gaussian noise) are detected and characteristics, e.g. signal to noise ratio SNR, of each impairment are determined. Further, a quality metric which indicates the channel performance, e.g. packet error rate, latency, spectral efficiency, etc. is determined. If the quality metric is not within a given target range, one or more operating parameters are adjusted to bring the quality metric within the target range based on at least one of (a) the quality metric and (b) at least one of the impairment characteristics.

The board observes that the specific embodiment is disclosed with reference to a large number of apparently interrelated tables including results of measurements without explicit explanation how these tables are to be created or applied and that this extended description of the specific embodiment is only of limited help for understanding the general principle of the claimed subject-matter.

However, the board is satisfied that, after careful analysis of the description, the skilled person would understand that the general method claimed may be applied to all kinds of communication channels affected with known channel impairments and that the CMTS (cable modem termination system) in which the method may be performed is only mentioned as an exemplary embodiment (see page 15, line 15 and page 4, lines 27 and 28). The board accepts that it would be a matter of professional routine to analyse what the relevant channel impairments for a specific communication channel are, to determine the characteristics of each impairment and a quality metric indicative of channel performance and to set up a target range of the quality metric.

Page 16, lines 2 and 3 discloses somewhat ambiguously that the "predetermined ranges may be stored in Adaptation Lookup Tables, as described above." This phrase might be understood as referring to the specific adaptation lookup tables disclosed in paragraphs [0082] to [0098], i.e. to the specific embodiments of the communication channel, the impairments and the quality metrics. It may equally be interpreted as referring to other adaptation lookup tables, only similar in structure to those disclosed in paragraphs [0082] to [0098]. However, the skilled person would understand that it is only one option to store the predetermined ranges in adaptation lookup tables and that the method disclosed with reference to the flow chart of Figure 21 might use different representations of quality metrics target ranges (see page 16, lines 5 and 6).

Figure 21 and the corresponding description disclose that the step of adjusting one or more operating parameters to bring the quality metrics within the target range is based on at least one of (a) the quality metrics and (b) at least one of the impairment characteristics. The skilled person would understand the reference to the quality metrics as basis of the adjustment as merely a reference to bringing the quality metrics within the target range.

Claim 1, which corresponds to a combination of claims 1, 2 and 3 as originally filed, is limited to the option that the adjustment of the operating parameters is based on the impairment characteristics. In addition, it comprises steps 2104, 2106, 2108, 2110 and 2111 of the flow chart depicted in Figure 21. The board is satisfied that these steps are necessary and sufficient to solve the underlying problem. Thus, claim 1 is supported by the description.

Moreover, the board accepts that claim 1 fulfills the requirements of support and sufficiency in the sense that the method can be put into practice over the whole claimed range for the following reasons. The claimed method is only directed to operating the channel according to a set of operating parameters, detecting channel impairments, determining characteristics of each impairment and a quality metric indicative of channel performance and, if the quality metric is not within a predetermined range, adjusting the operating parameters based on the impairments characteristic so as to bring the quality metric within the target range.

As noted above the board considers that it would normally be a matter of professional routine to analyse what are the quality metrics, relevant impairments to measure them and to determine appropriate corrections of operating parameters, for any specific communications channel. Even though there might be exceptional cases where this would not be a routine undertaking, the board considers reproducibility of the method in all normal cases satisfying the requirement of case law that the claimed invention must be disclosed in a manner which makes it executable across the whole claimed range.

Thus, claim 1 fulfils the provisions of Articles 83 and 84 EPC.

Similar arguments apply mutatis mutandis to claim 10, which is directed to a device corresponding to the method of claim 1.

4. Remittal

As the decision under appeal was only based on the grounds of unsearched matter and Article 84 EPC and no substantive examination, in particular with regard to novelty and inventive step, has been carried out so far, the case is remitted to the department of first instance for further prosecution.

The board observes that the passage "the target range" in the second line of step (d) of claim 1 should be replaced by "a target range".

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 on the basis of the sole request, corresponding to the auxiliary request filed with letter of 17 June 2009.

This decision has European Case Law Identifier:  ECLI:EP:BA:2009:T215708.20090717. The whole decision can be found here. The file wrapper can be found here. Photo "Skating on water (Weissensee, 10 January 2015)" by Roel van Woudenberg.

Monday, January 05, 2015 T 1827/12 - Unavoidable impurities

This opposition appeal considered the question whether an amendment extended the scope of protection. Claim 1 of the sole request contained the following features. The amendments are shown with respect to the claim as granted:

A glass article with a metal member joined thereto,

(...)

(c) wherein the two joining planes of the metal member are fixed (...) with a lead-free solder alloy containing Sn as a main component, and

(...)

(e) characterized in that the lead-free solder alloy is an Sn-Ag based alloy that contains 2 to 4 mass% Ag, and a content of other minor components except for Sn and Ag in the Sn-Ag based alloy is 0.5 mass% or lessin which the rest is Sn, and

The opponent objected (amongst other objections) that this amendment broadened the claim after grant. The board did not agree.


Summary of Facts and Submissions
(...)
The patent had been amended in such a way as to extend the protection it conferred (Article 123(3) EPC). Substituting in feature (e) the term "a content of other minor components except for Sn and Ag in the Sn-Ag based alloy is 0.5 mass% or less" from claim 1 as granted for "in which the rest is Sn" extended the scope of the patent as granted. The former term limited the amount of other minor components, such as impurities, in the alloy to up to 0.5 mass%, whereas according to the new wording the amount of impurities could reach higher levels beyond 0.5 mass%. Deletion of the former term therefore broadened claim 1. The patent as granted did not specify what was to be understood by 'other minor components'. These additional minor components had to be interpreted in the patent as granted as any 'other element' within the alloy and included also impurities. It was further common practice for the skilled person that elements in the alloy composition which did not add up together to 0.5 mass% of the alloy were not specified in the composition but just generally referred to as other components. The skilled person knew that impurities had a significant effect on the properties of a metal alloy (see T 184/05), and their concentration level could not be regarded in isolation from the specific examples.
(...)
Reasons for the Decision
2. Extension of scope of protection - Article 123(3) EPC

2.1 The amended European patent according to the sole request does not extend the protection conferred within the meaning of Article 123(3) EPC.

2.2 In its granted version, claim 1 determines the composition of the lead-free solder alloy as including a content of other minor components except for Sn and Ag of 0.5 mass% or less. According to the documents of the present request, the above-mentioned feature of granted claim 1 is replaced by "in which the rest is Sn", and the last two sentences from paragraph [0020] of the description of the granted patent have been deleted, namely: "The Sn-Ag alloy may contain other minor components. In this case it is preferable that the content of the minor components is 0.5 mass% or less".

2.3 Any reference to other minor components has thus been deleted in the description. As agreed by both parties, when explicitly claiming "other minor components" the claimed solder alloy includes any kind of voluntarily added elements as well as unavoidable ones such as impurities, in particular because this term is not further specified in the patent as granted (see paragraph [0020] of the description). Moreover, in the Board's judgment, the sentence in paragraph [0020] that the "Sn-Ag alloy may contain other minor components", i.e. that minor components can be added on purpose or be excluded, would be contradictory if "other minor components" were equated with "impurities", which by nature are unavoidable. By deleting the references to other minor components in paragraph [0020] of the description, which clearly indicated that they were optional components, and by the amendment to claim 1 as granted according to the sole request, the composition of the claimed solder alloy has been restricted to silver, tin and an unavoidable amount of impurities, since it is well known to the skilled person that a solder alloy will never be pure and thus contains unavoidable impurities.

Therefore, with respect to the composition of the alloy solder as granted, the scope of protection of the amended patent according to the sole request has been limited to a lead-free Sn-Ag based solder alloy that contains 2 to 4 mass% of Ag, in which the rest is Sn, further, implicitly, containing an unavoidable amount of impurities.

2.4 In accordance with the respondent's opinion, the range of "0.5 mass% or less" claimed in the granted version for the other minor components included as a lower limit "0.0 mass%" of other minor components. The present request is limited, due to the deletion of other minor components in claim 1 and the definition that "the rest is Sn", to this lower limit, i.e. in this respect the scope of protection has only been restricted compared to the patent as granted.

2.5 It remains to be discussed whether, based on claim 1 and the description of the sole request, the content of unavoidable impurities might include an amount greater than 0.5 mass% of the solder alloy, as alleged by the appellant. Starting from the undisputed understanding of the term "other minor components" in granted claim 1, comprising voluntarily added elements as well as unavoidable impurities, their total content was explicitly restricted to "0.5 mass% or less" in the granted version. In fact, this restriction was deleted in claim 1 according to the sole request. However, as a further limitation claim 1 according to the sole request now specifies a composition "in which the rest is Sn". In the absence of any evidence that a content of impurities in the solder alloy could amount to more than 0.5 mass% without being explicitly mentioned, the Board finds that, on a reasonable interpretation of the subject-matter of claim 1 according to the present sole request, such content of unvoidable impurities higher than 0.5 mass% must be ruled out. A person skilled in the art describing the content of solder alloys would specify an element of which the content is greater than 0.5 mass% of the alloy because it will affect the properties of the alloy. In the Board's judgement, this also applies to a group of elements in the alloy, such as impurities, if their content exceeds 0.5 mass% because such impurity content would have a considerable influence on the properties of a metal alloy, as stated by the appellant himself.

In this context, the appellant cites decision T 184/05, which again refers to decision T 201/83 (OJ EPO 1984, 481) stating (point 12 of the Reasons, last sentence) that "an amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree". However, the present application and the specific examples described therein are totally silent with regard to impurities and their concentration range, and only in the general part of the description, as originally filed, is it mentioned that other minor components may - optionally - be included up to a maximum content. Therefore, the the Board finds that the case law referred to by the appellant - which relates to the extraction of a particular value of a concentration range of an alloy from a given example comprising further features - is considered not to be applicable in the present case, which only excludes an optionally mentioned solder alloy component. In particular, the Board finds that deletion of such optional alloy composition with a limited content of other minor components cannot open the door to an interpretation of the claimed subject-matter which would include an unlimited or unreasonable amount of impurities.

Moreover, as argued by the appellant, it was common practice for the skilled person that elements in the alloy composition which do not add up together to 0.5 mass% of the alloy were not specified but just generally referred to as other components. In the absence of any citation of other minor components in claim 1, reading claim 1 with a mind willing to understand (which comprises the term "in which the rest is Sn"), the skilled reader would at the most assume an insignificant amount - far below 0.5 mass% - of unavoidable components such as unavoidable impurities.

2.6 The Board thus cannot see that the European patent has been amended in such a way as to extend the protection it conferred.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T182712.20140919. The whole decision can be found here. The file wrapper can be found here. Scan by Jamie obtained via Flickr; Original source The Toronto World, May 17, 1902.

Friday, January 02, 2015 T 204/11 - A little EPC test

This should make for a nice item for a Paper D. The opposition division had rejected the opposition and maintained the patent as granted. However, during the appeal the granted patent
lapsed in all designated states. 

Can the opposition continue, and if so, how should the Board handle this?

(no parts of the decision were highlighted, but instead the entire decision was copied)


Summary of Facts and Submissions
 I. The opponent 1 (appellant) lodged an appeal against the decision of the opposition division posted on 16 November 2010, by which the oppositions against European patent No. 1 185 264 were rejected.

II. By communication of the board of 12 September 2014, the parties' attention was drawn to the fact that the patent had meanwhile lapsed in all designated contracting states, and the appellant was asked to inform the board whether it requested a continuation of the appeal proceedings.

III. The appellant did not reply within the time limit of two months.

Reasons for the Decision
1. If a European patent has lapsed in all designated contracting states, opposition proceedings may be continued at the request of the opponent (Rule 84(1)EPC). According to Rule 100(1) EPC, this also applies in appeal proceedings following opposition proceedings.

2. Since the appellant has not, within the time limit set, requested the continuation of the appeal proceedings and the state of the file gives no grounds for the proceedings to be continued by the board of its own motion, the appeal proceedings are terminated (see T 329/88 of 22 June 1993; T 165/95 of 7 July 1997; T 749/01 of 23 August 2002; T 436/02 of 25 June 2004; T 289/06 of 17 December 2007).

Order
For these reasons it is decided that:
The appeal proceedings are terminated.
 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T020411.20141210. The whole decision can be found here. The file wrapper can be found here. Photo by Alberto G.

obtained via Flickr.

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).

Tuesday, December 23, 2014 T 2431/11 - Meshing gear wheels

This opposition appeal deals with sufficiency of disclosure for a mechanical invention. Claim 1 of the main request in this opposition appeal read as follows:



A gear wheel with a plurality of teeth capable of meshing with the teeth of another corresponding gear wheel, characterised in that the profile of each tooth falls within a band of tolerance of ± 1 /20th of the depth of the tooth (H) with respect to a theoretical profile similar to a profile defined by a natural spline function passing through a plurality of nodal points having pre-established coordinates {X, Y}, expressed in a system of Cartesian coordinates having their origin at the centre (O) of the the pitch circle (P) of the gear wheel, corresponding to tables 1 to 6, also given below, for gear wheels with a number of teeth equal respectively to five, six, seven, eight, nine and ten:

The board is unhappy with this claim and the corresponding description for two reasons. It appears that the gear defined by a spline through these points would not produce a working gear, and that the claim puts an undue burden on the skilled person to select working gears within the band of tolerance.

Reasons for the Decision

2. Background

2.1 The patent concerns gear pumps having a driving and a driven gear wheel, specification paragraph [0001] and [0002]. In this context the gear wheels must mesh without encapsulation, that is without trapping fluid in cavities between interlocked teeth, (specification paragraphs [0004] and [0005]).

To this end claim 1 as granted proposes a gear wheel having a plurality of teeth with particular tooth profiles falling within a tolerance band about a theoretical tooth profile. The theoretical tooth profile is similar to a profile defined by a natural spline function passing through a plurality of nodal points tabulated for five, six, seven, eight, nine and ten toothed gear wheels respectively. The term "natural spline function" commonly refers to the piece-wise polynomial function resulting from spline interpolation of a set of known data points, where each of intervals defined between successive data points is interpolated by a respective polynomial function that passes through the interval's end points such that it is twice differentiable in those points. For a natural spline function the polynomials are cubic and together form a set of cubic polynomials, one for each interval between nodes where the nodes define their end points, and where adjacent polynomials have the same slope at their common node.

2.2 The gear wheel claimed is also limited by the functional feature that it must be capable of meshing with a corresponding gear wheel. Giving the terms their normal meaning, gears mesh when, viewed in profile, the flank of a driving gear's tooth profile contacts that of the driven gear, at a single point which moves as the two flanks roll over one another until they separate.

(...)

4. Sufficiency of disclosure

4.1 Article 83 EPC requires that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

4.2 According to established jurisprudence, an invention is sufficiently disclosed if it can be
performed by a person skilled in the art in the whole area claimed, using common general knowledge and taking into account further information given in the description of the patent or patent application, see the Case Law of the Boards of Appeal of the EPO, 7th edition, 2013 (CLBA hereinafter) II.C. introductory portion.

Furthermore, the skilled person must be able to perform the invention without undue burden. Where the skilled person can only establish by trial and error whether his choice of numerous parameters will provide a satisfactory result, this amounts to an undue burden, see CLBA II.C.5.6 and 5.7.

4.3 As explained above, a key element of claim 1 is the theoretical tooth profile (one each for 5-10 tooth gears) that is similar to the profile defined by a natural spline function passing through the tabulated data points.

The decision under appeal found that the resultant profiles using all data points were so irregular that they would not practically mesh, as required by the claim, nor prevent encapsulation. It further held that if, as argued interpolation was only through selected but not all of the tabulated points, this would put an undue burden on the skilled person.

4.4 Contrary to what was argued before the opposition division (cf. decision, page 7, second paragraph) and until recently in appeal (cf. Meneghello, page 8, 2nd paragraph, last sentence), the appellant in the oral proceedings before the Board argues that the spline function profile does pass through all the points of a given table in the claim, and that the resultant profile will mesh and prevent encapsulation. Insofar as the profile passing through all points is concerned the Board can agree with such a reading of claim 1. This reading corresponds to the skilled person's understanding of "natural spline function" (see above) in relation to "a plurality" of nodal points which contextually can only be the plurality given in the table. This point is thus no longer in dispute between the parties.

4.5 It is also undisputed that, based on the nodal points listed in claim 1, parts of the theoretical profiles claimed undulate, that is when set out in a graph these data points produce a profile that is irregular, i.e. that is not smooth but has considerable local variations. See for example figures 1 to 3 in Meneghello, or the tabulated points in the various figures of D18 Figure 1.

4.6 The only point in dispute is thus whether or not the resultant profile and band of profiles as defined in claim 1 can mesh, as required by the claim, and prevent encapsulation. The respondent has consistently argued that a profile passing through all points does not, and indeed from the appellant proprietor's initial response in opposition and appeal that not all points were meant it can be inferred that he initially agreed. In appeal the appellant now however expressly states that the main profile resulting from interpolation through all points does result in a meshing and non-encapsulating gear.

4.7 Normally, as explained in CLBA II.C.8, and in particular T 63/06, after the grant of the patent a legal presumption exists that the patent meets the requirements of the EPC. In order to establish insufficiency, the burden of proof is upon an opponent to establish on the balance of probabilities that a skilled reader of the patent, using his common general knowledge, would be unable to carry out the invention.

However, when the patent does not give any information as to how a feature of the invention can be put into practice, the presumption of sufficiency of disclosure is weak. The opponent can discharge his burden by plausibly arguing that common general knowledge would not enable the skilled person to put this feature into practice. The patent proprietor then has the burden of proof for the contrary assertion that common general knowledge would indeed enable the skilled person to carry out the invention.

4.8 In the present case the patent provides no information, by tests or otherwise, that would support the claimed meshing and non-encapsulating of the resultant gears. The patent, at specification paragraph [0011] mentions experiments that led to the identification of the tooth profiles, but the relevant data has not been included or provided subsequently in opposition or the following appeal. The respondent-opponent on the other hand has presented a plausible, substantiated case why there would not be meshing and non-encapsulating. Given further the varying positions of the proprietor-appellant in this point the Board concludes that there can be only a weak presumption of sufficiency in the present case, and that the onus now rests on the proprietor to prove sufficiency. In weighing the parties' submissions against each other he can therefore no longer enjoy the benefit of the doubt.

4.8.1 In the respondent's submission of 2 July 2012 in reply to the appeal, see page 5, reference is made to his submission in opposition dated 15 December 2010, in particular figures 1 and 1b which plot the data points of table 3 for a 7 toothed gear wheel (table 3 of the claim) having a pitch circle of approximately 11 mm and an outer diameter of approximately 19mm, that is for a gear wheel of typical dimensions. Further figures 2 to 15 of the same submission show the contact area between an enlarged section of the flank profile of the driving gear with the flank and the corresponding identical driven gear profile at various angles of rotation. It is evident that during rotation the profiles cross and overlap each other due the irregularity of the opposing flanks. He argues that since gear teeth cannot overlap, at worst they would not fit together, at best they would not mesh but touch at more than one point, thereby jamming and encapsulating fluid.

This was reiterated in D18, page 18, first paragraph, and further substantiated in D18 by calculating profiles and their so-called conjugates using natural spline functions applied to limited sets of the tabulated data points. A conjugate profile is derived from the main profile under condition of conjugation, that is that the normal to the instantaneous point of contact always intersects to centres of the two gears, D18, page 16, first paragraph. These limited set conjugates already exhibit unphysical anomalies, see D18, figures 5b, 6b, 7b, 8b/c, 9b/c and 10b/c, with interference as above also for these limited set profiles, see D18 figures 10c,d,e and 11c, and page 39, 5th and 6th paragraphs. Thus even for limited set approximations the irregularities and anomalies persist.

4.8.2 The appellant has argued that the irregularities in the profile are not significant enough to prevent meshing or cause encapsulation. The profiles would be based on measurements made on actual meshing and non-encapsulating gear wheels and fluctuations would merely result from measurement error and/or surface roughness.

The Board is unconvinced by this argument. Most importantly, it is in direct contradiction with the Meneghello report commissioned by the appellant himself, which at page 8, second paragraph, states that it is "not possible nor permissible to perform an interpolation passing through each of the digitized points [as] this .... does not allow to obtain a profile that meets the functional requirements" (in reference to the geometric-functional characteristics including meshing and conjugation mentioned on page 2). The tests or empirical data, or even the actual gear from which the measurement data is said to derive, and which might have proven his case, are lacking. Without such evidence the arguments that the irregularities would be insignificant and the profiles mesh and not encapsulate are nothing more than unproven assertions that can be of little weight.

4.8.3 Weighing the various submissions against each other - the respondent's substantiated arguments on the one hand, the appellant's varying positions and unsubstantiated assertions on the other - the Board decides that a gear with a profile defined by a natural spline function passing through all of the tabulated data points (or for that matter only through a limited set) will not mesh and will encapsulate, and thus fails to produce the desired, claimed effect of the invention. For this reason already the claimed invention is insufficiently disclosed.

4.9 In addition, the Board notes that the claim 1 does not define a single theoretical tooth profile (for each number of teeth), but also other profiles that lie in a tolerance band of +/-1/20th of tooth depth with respect to each theoretical profile. The band width corresponds to about 10% of tooth height. This figure, much larger than normal machining tolerances, represents a range of profiles as explained elsewhere in the specification and argued by the appellant: experiments on various gears reveal a "range of tooth profiles" (paragraph [0005]); and "...the actual tooth profile falls within a band of tolerance T ...", (paragraph [0011] and figure 1).

As submitted by the appellant, the profiles within this band are not different scaled versions of the basic profile defined by the data. The tolerance band is rather meant to encompass an unlimited number of tooth profiles of varying shape, as long as they give gears that mesh. Only profiles that meet this important functional limitation of the claim are to be protected.
The appellant acknowledges that there are some within the band that do not meet this requirement and should therefore be excluded from protection. Which profiles do and which do not meet this requirement would then, so the argument goes, need to be determined by trial and error.

4.9.1 The question therefore arises as to whether or not such trial and error does not constitute an undue burden on the skilled person for him or her to successfully carry out the claimed invention, see section 4.2 above.

4.9.2 The patent is silent as to how to distinguish a working profile from one that does not. One way would be to prototype, i.e. manufacture, the corresponding gears and measure meshing and encapsulation. Another alternative suggested by the appellant would be to generate the gears mathematically, or model them, using a variety of analytical techniques known to the skilled person, see e.g. the Meneghello report, page 8, last two paragraphs.

4.9.3 Given the myriad of possible profiles, and the effort involved in prototyping or modelling the corresponding gear, this is a daunting task. In particular, the Board holds that this would far exceed routine experimental work. For each possible profile the skilled person must prototype or model two gear wheels and investigate whether or not they mesh without encapsulation. This process of trial and error in the Board's view represents an undue burden for the skilled person.

4.10 In summary the Board concludes that on the balance of probabilities the main gear tooth profiles defined in claim 1, which are central to the invention, do not result in a working gear wheel. Furthermore, the skilled person would not be able to determine which of the remaining profiles within the tolerance band defined in the claim would result in working gears without undue burden. The invention according to claim 1 of the main request is thus insufficiently disclosed, Article 100(b) EPC with Article 83 EPC.

 

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T243111.20140924. The whole decision can be found here. The file wrapper can be found here. Photo by Sergei Golyshev

obtained via Flickr.

Friday, December 19, 2014 T 1458/11 - You talk too much

During the oral proceedings before the opposition division the proprietor had most of its case represented by a trainee. This appears to violate the requirements that the board of appeal had set out G 4/95. The opponent now asks a reimbursement of the appeal fee because of a substantial procedural violation.

The board doesn't go along; the opponent should have complained during the oral proceedings. The following keywords were provided:

Oral submissions by an accompanying person in opposition proceedings (yes allowable - in conformity with G 4/95)
Requirements of G 4/95 to be met throughout the oral proceedings (yes - duty of the opposition division to ensure)
Party's obligation to inform the opposition division that requirements of G4/95 are not met (yes - as
soon as it becomes aware thereof)


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Summary of Facts and Submissions
(...)
III. The opposition division held that the patent as amended according to the auxiliary request filed during the oral proceedings before the opposition division met the requirements of the EPC.
In particular, it found that the subject-matter of claim 1 of the patent as granted was novel over D1 and D2, but lacked an inventive step in view of D2 alone, and that the subject-matter of claim 1 of the auxiliary request involved an inventive step in view of D2 as the closest prior art and D1.

At the oral proceedings before the opposition division, appellant 2 was represented by a professional representative, Mr Chivarov, accompanied by Mr Huber, who was said to be a trainee in the law firm of Mr Chivarov. Appellant 2 requested that Mr Huber be allowed to speak "on selected issues during the oral proceedings under his (Mr Chivarov's) supervision and responsibility". Appellant 1 agreed to this with the proviso that Mr Huber would "not make the complete case". The opposition division allowed Mr Huber to speak "on selected issues under Mr Chivarov's responsibility". After the impugned decision was pronounced, appellant 1 submitted that, according to its observations, Mr Huber had spoken "for more than 50% of the time" and that this was not what had been agreed at the beginning of the oral proceedings.

(...)

Mr Huber, the accompanying person of the representative of the proprietor (now appellant 2) within the meaning of G4/95 at the oral proceedings before the opposition division, had not been previously announced. The opposition division agreed that Mr Huber could talk upon specific points under the responsibility of the professional representative Mr Chivarov. Under these circumstances, appellant 1 had no other option than to continue to attend the oral proceedings or to withdraw therefrom. Appellant 1 could not have foreseen whether Mr Huber would indeed only talk about specific points in order to support the otherwise exhaustive submissions by the professional representative or whether he would take the floor for a longer time.

However, during the oral proceedings the professional representative, Mr Chivarov, did not speak more than two sentences in the period up until the lunch break. After the break, the professional representative intervened a few times but did not present the entire case. This was in fact done by Mr Huber. As a result, Mr Huber took the floor for presenting the vast majority of the submissions by appellant 2.

Since in the morning of the day of the oral proceedings, Mr Chivarov did not speak for more than two minutes in total, Mr Huber did not make submissions relating only to specific points as agreed at the beginning of the oral proceedings. The criteria developed by the Enlarged Board of Appeal concerning the authorisation of an accompanying person had been violated. This amounted to a substantial procedural violation.
 (...)

Reasons for the Decision

(...)

8. Appellant 1's request for reimbursement of the appeal fee and to remit the case to the opposition division

8.1 According to Rule 103(1)(a) EPC, "the appeal fee shall be reimbursed... where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation...".

8.2 The board is of the opinion that no substantial procedural violation occurred in the proceedings leading to the impugned decision. The reasons therefor are as follows.

8.2.1 In G4/95 the Enlarged Board of Appeal held that "an accompanying person is not excluded from making oral submissions in relation to either legal or technical issues on behalf of a party to the proceedings, under the control of the professional representative, and in addition to the complete presentation of the party's case by the professional representative" (reasons 8(a), last paragraph). If "a request for an accompanying person to present oral submissions is made either shortly before the date appointed for oral proceedings, or at the oral proceedings, such a request should in the absence of exceptional circumstances be refused by the EPO unless each opposing party agrees to the making of the oral submissions requested" (reasons 10, last paragraph).

8.2.2 In the case at hand, it is undisputed that the person (Mr Huber) accompanying the professional representative (Mr Chivarov) had not been announced prior to the oral proceedings before the opposition division.

According to the minutes of the oral proceedings before the opposition division, at the beginning of the oral proceedings, Mr Chivarov requested that Mr Huber be allowed to speak "on selected issues during the oral proceedings under his (Mr Chivarov's) supervision and responsibility". This request, therefore, amounted to a request for oral submissions by the accompanying person in addition to the complete presentation of appellant 2's case by the professional representative.

8.2.3 Further according to the minutes, appellant 1 "objected against Mr Huber being the only speaker but agreed on Mr Huber contributing submissions under Mr Chivarov's responsibility and with the provisio (sic) that he would not make the complete case".

Appellant 1 thus agreed to the accompanying person making oral submissions under the control of the professional representative, and in addition to the complete presentation of appellant 1's case by the professional representative as foreseen in G4/95. Whether appellant 1 had the subjective impression that it had no choice but to agree is in this context of no relevance. In fact, appellant 1 could have refused its agreement and, if the opposition division had decided to allow the accompanying person to make oral submissions despite the missing consent of appellant 1, could still have challenged this decision during the appeal proceedings.

Therefore, the opposition division's decision that "Mr Huber was allowed to speak on selected issues under Mr Chivarov's responsibility" was in line with G4/95 and, therefore, cannot be said to amount to a procedural violation.

8.2.4 According to G4/95 (reasons 11), "the EPO should always be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative". Thus, when conducting oral proceedings, the opposition division has the duty to ensure that the oral submissions made by an accompanying person satisfy the above conditions, i.e. that they are made in addition to the complete presentation of the party's case by its professional representative and under the continuing responsibility and control of the professional representative.

8.2.5 In the case at hand, the minutes of the oral proceedings, up to the pronouncement of the decision, do not state who made the submissions on behalf of appellant 2. It is only after the pronouncement of the decision that the minutes state that "the opponent mentioned that according to his observation, Mr Huber had spoken for more than 50% of the time and that this was not what was agreed on at the beginning of the proceedings".

Also, appellant 1 submitted in its statement of grounds of appeal that the professional representative, Mr Chivarov, did not speak more than two sentences during the oral proceedings in the period up until the lunch break. After the break, the professional representative intervened a few times but did not present the entire case. This was in fact done by Mr Huber, his assistant. As a result, Mr Huber spoke in the vast majority of the submissions by appellant 2. Hence, according to appellant 1, the submissions made by Mr Huber did not comply with the conditions set forth in G4/95, i.e. were not in addition to the complete presentation of appellant 2's case by the professional representative, Mr Chivarov.

8.2.6 Conversely, appellant 2 in its statement of grounds of appeal contested the submissions by appellant 1. It was apparent from the minutes of the oral proceedings that the opposition division had been satisfied that the submissions by the accompanying person were made under the continuing responsibility of appellant 2's professional representative.

8.2.7 The board considered the submissions of the parties and the content of the minutes of the oral proceedings before the opposition division. It is not possible to establish, on an objective basis, whether the submissions made by the accompanying person were in addition to the complete presentation of the professional representative or whether they went beyond that or even amounted to a presentation of substantially the complete case of the party.

8.2.8 The board is, however, of the opinion that it was incumbent on appellant 1 to inform the opposition division of any alleged negligence of the opposition division's duty to ensure that the oral submissions by Mr Huber be made under the aforementioned conditions as soon as it became aware of it. This immediate reaction is required since a party to the proceedings must take an active part and must on its own initiative submit in due time whatever will support its position (cf. R 2/08, reasons 8.5).

In the case at hand, appellant 1 should and could have informed the opposition division accordingly at the latest before the lunch break since, according to its submissions, at that point in time the professional representative had only made a few submissions, i.e. the accompanying person's oral submissions were apparently not only in addition to the complete presentation of appellant 2's case by the professional representative. Appellant 1 failed to inform the opposition division accordingly.

8.2.9 Furthermore, the conditions elaborated in G 4/95 are intended to ensure that during oral proceedings, one party does not present oral submissions which take an opposing party by surprise and for which such opposing party is not prepared (G 4/95, reasons 10, second paragraph).
In the case at hand, there is nothing that would indicate that appellant 1 was taken by surprise or that it was not prepared, or at least could not have been prepared, for the oral submissions made by the accompanying person. The board notes that the accompanying person had been presented as a trainee (see item 1, first paragraph of the minutes) and that appellant 1 did not argue that it had been taken by surprise by the presentation of the accompanying person.

8.3 In summary, the board fails to see that a procedural violation, let alone a substantial one, occurred during the proceedings before the opposition division.

8.4 The request to reimburse the appeal fee and to remit the case to the opposition division is therefore not allowed.

 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T145811.20141023. The whole decision can be found here. The file wrapper can be found here. Photo "SING" by Angela Meißner obtained via 500px, under the CC-By 3.0 license.