EQE Paper B 2019 - Cooking with solar radiation


EQE Paper B of 2019 concerned cooking using concentrated solar radiation. Candidates needed to evaluate carefully amendments suggested by the client, to see if they were novel/inventive and supported by the application. 

The claims as filed and as amended by the client had several problems for which the candidates had to find solutions. The comments below are not a full response to the office action, but give an indication of the problems that had to be solved. 

Claim 1 in the application as filed is not novel over D1. The client has suggested to add that the storage unit contains a salt composition, but this claim seems to be not inventive over the combination of D1 and D2. Putting the pot of D2 on the cooker of D1 seems an obvious combination, and would fall under this suggested claim. So more is needed. Fortunately, the client already remarks that it is the melting of the salt that is important. Since melting of salt does not occur in the combination of D1 and D2, this further addition seems to solve the problems. The addition is supported by section [0009]. 

New claim 1 is novel over D3 since D3 does not disclose cooking food.

The closest prior art for claim 1 is D1 since it is the only document that discloses a process for cooking with solar radiation. 

Claim 2 in the application as filed is not novel over D2 and D3. Furthermore, the Examiner objected to a lack of essential features. The client's amendments do not complete solve these problems. Adding that there is an empty space is not enough; D2 also has empty space in the form of gaps between the salt. The application adds that the empty space should be dimensioned to allow the salt to expand upon melting. This is supported by sections [010] and [013].

The other amendment in claim 2 is needed to make the claim novel over D3. However, the range is not supported by the application, since the end point 120 is not disclosed. Instead of the point 120, the point 130 is disclosed. Accordingly, a better range is to use 130-350. This will be sufficient for the goals of the client according to his letter.

One could wonder if it is allowed under A.123(2) to restrict a range on the basis of an isolated value given as an example. The guidelines do not give this particular example, but in part H-IV, 2.4 a somewhat similar example is given with two ranges instead of with a range and an isolated value. The case law book does give this particular scenario, in II-E, 1.3.2. The case law cited there, e.g., T201/83 require an additional test, namely that the  'this value was 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'. Here that is not the case. We conclude that restricting the range to 130-350 does not constitute added subject matter. 

Conceivably, one could disclaim the salt 'magnesium chloride hexahydrate' instead of adding a range to claim 2. This would be allowed under G 2/10 since it disclaims a disclosed embodiment. This seems to run counter the wishes of the client though. 

The closest prior art for new claim 2 seems to be D2. Only document D1 and D2 are related to cooking, but the latter has more features in common. 


Claim 4 and 5 were switched around by the client. This switch appears to be supported by the application as filed. The embodiment of figure 3 of the application has handles with which unit 3 can be transported, an so it is portable.


The claims for our solution for paper B 2019 are as follows: 

1. A cooking process including the steps:
providing a heat storage unit (3) containing a salt composition (6);
concentrating solar radiation (12) onto the heat storage unit (3) to heat it and to melt the salt composition; and
cooking food (8) placed on the heat storage unit (3).

2. A heat storage unit (3) for use in the process of claim 1, characterised bycomprising:
a box (4) having heat-insulating walls and an opening,
the box (4) containing a salt composition (6),
a light-absorbing plate (5) fitted in the opening and in thermal contact with the salt
composition (6), and
a cooking surface (9) in thermal contact with the salt composition (6),
characterized
in that:
the box (4) contains an empty space (7) dimensioned to allow the salt composition to expand upon melting, and in that
the salt composition (6) has a melting temperature from 130C to 350C
.

3. Heat storage unit according to claim 2, wherein the cooking surface (9) is a surface of a cooking plate (2) fitted in a second opening of the box (4) and in thermal contact with the salt composition (6).

45. Heat storage unit according to claim 2, wherein the cooking surface (9) is a surface of the light-absorbing plate (5).

54. Heat storage unit according to any of claims 2 or to 34, wherein the heat storage unit (3) is portable by means of handles (10).

6. A solar cooker (1) comprising:
a heat storage unit (3) according to any of claims 2 to 5;
a parabolic mirror (11) for concentrating solar radiation (12) on the light-absorbing plate (5) of the heat storage unit (3).







Comments

  1. Pretty happy with how it went and I have exactly the same amendments as you (though didn't put the empty space in the characterising portion as D3 discloses this, and the guidelines F-IV 2.2 seem to suggest that if any 54(2) document - not just the CPA - discloses a characterising feature in combination with the preamble features then it should be in the preamble portion - doesn't seem like this would be a big deal mark-wise though!)

    My main issue though with this paper, as I expect will be the case for most of us, is the sheer amount to squeeze into the time, with two independent claims and three prior art documents. My novelty and IS analysis was rushed and may possibly be illegible in parts (which I hope will not count against me too much!) and I only just finished. Definitely harder than previous papers!

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    1. In fact, partly you are right, even D1 has an empty space in the embodiment with the pot. To me, the characterizing part has only the part related to the related dimensionality of the empty space.

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    2. I think D3 has the dimensionality - talked about space for PCM to expand quite early on in the description if my memory is correct. Either way, I doubt there are many marks to be gained/lost based on various forms of the two part form!

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  2. I messed up claim 1 and decided to swap it round to require the heat storage unit of claim 2 instead which I made independent. This is probably an unnecessary limitation, so will lose marks. However I am hoping that the method claim is less important than the device claim, so maybe not be too bad. Otherwise I just managed to finish the paper and the arguments, there was a lot of time pressure and even though I had my doubts about what I had done with claim 1 I decided to plough on and finish the arguments section instead of rewriting it.

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    1. I exactly did same (swap claim 1 and 2 in order to make explicit back reference to the novel and inventive heat storage unit in the process claim). I am happy I am not the only one who had this idea ;)

      The bad news is that, on top of losing points for a too restrictive process claim, we will lose a HUGE amount (!?) of points because of not provide a complete novelty and inventive step argumentation for the process claim (at least I only mentioned it was new and inventive thanks to the use of the new and inventive heat storage unit)...

      According to your experience at DeltaPatents: any chance to get a 50/100 (or even 45/100) for such an answer (assuming a correct apparatus claim and argumentation based on D2 as CPA)?

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    2. Taking into consideration that you missed that whole line of argumentation, I most definitely think you will land in 2020 repeating the B exam. Just kidding Bert, PRAY all you can!

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    3. @Anonymous 5:21pm : Haha. Thank you for the support :P

      @Roel: do you think this mistake (swap claim 1 and 2 in order to make explicit back reference to the novel and inventive heat storage unit in the process claim) is that dramatic?

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    4. @Bert: Swapping the order of independent claims in principle does not matter; swapping the order of dependent claims may matter a lot (esp if multiple-dependent).
      But a method claim cannot be a dependent claim to a product claim or vv as they are not in the same category, also not if they refer to the other. The GL indicate that a claim can REFER to a claim in another category, but that does not make it an independent claim. So, it looks like Flannel made an argumentaion error when writing "I messed up claim 1 and decided to swap it round to require the heat storage unit of claim 2 instead _which I made independent_" - claim 2 was already independent (claim 1 was process = method; claim 2 was heat storage unit = device)

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    5. @Roel: of course the claims are not dependent to each other! What I meant is the following answer:

      1. A heat storage unit for solar cooking, comprising [...] (identical to the claim 2 of your solution).

      2. A cooking process including the steps:
      providing a heat storage unit (3) according to claim 1; Concentrating [...] (as in original claim 1)

      I rekon this solution is bad in that the cooking process has narrower scope. But most importantly (possibly dramatically), it is such that the process claim is trivially new and inventive (thanks to the step of providing of a new and inventive heat storage unit), such that I did not provide a complete novelty/IS argumentation for the process... I am afraid this will make me lose 40 points straight away (!?)

      (I hope this clarifies my question... Thanks for your reply!)

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    6. I think this approach makes good sense if you're looking for unified claims, which deltapatents don't seem to have considered.

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  3. Was 't it needed to add "configured to" in claim 2,3. The cooking service u thema contact with the salt is quite limiting.....

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  4. I tried to post earlier but it did not display so apologies if it ends up with mutliple posts.

    For claim 5, there should probably be an amendment for one or more handles because the client refers to this in his letter and there is support in the description for both embodiments so I guess it was a mistake in the claims which we were supposed to pick up.

    For claim 1, I went for a range of 110 to 350 degrees because I did not think of your solution which seems superior. I had not problem with D3 for PSA with claim 1 because D1 as the CPA discloses that for cooking the temperature should be above 120 degrees which is more than the 115 of D3.

    I have the same solution for claim 2, I felt that the disclaimer was a it of a longshot and felt I would be playing with an undisclosed disclaimer which would be in the differentiating feature so I felt safer with 130 to 350.

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    1. Hi Vitek, we did not consider it an undisclosed disclaimer as Salt A was disclosed in the application already - it would thus be a disclaimer of a positively disclosed embodiment which would in principle be allowed (see our reference to G 2/10 in our blog post) and which would get novelty, but felt like having more complications than limiting to a range, e.g., as being more difficult to defend inventive step, and seems to run counter the wishes of the client.

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  5. Am I the only one who missed the 350C in the description and went to 348C, according to Table 1?

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    1. No. me too !

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    2. I did this too because I didn't see any specific disclosure of 140 in combination with 350 as the end point, 350 is only disclosed in combination with the original end point and is not mentioned in the table at all...

      I did have a bit of internal discussion about the comment below the table that said that other salts with temperatures close to those in the table could also be used, but in the end decided to go for what I thought was the safer option

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    3. I mean 130 of course

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    4. Info that we used to accept 350 (as wanted/proposed by the client) rather than 348 (which has explicit basis in the table is):
      - just before the table it says: "Salt compositions particularly suitable for cooking in accordance with the nvention have a melting temperature from 110°C, sufficiently above the boiling temperature of water, to 350°C."
      - just after the table it says: "[007] Referring to Standard Chemical Databases, other suitable salt compositions can be found that have melting temperatures identical or close to those indicated in Table 1."

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  6. question, for claim 2: why 130 is necessary? D3 does not disclose a cooking surface? this is a hard limiting right? it is not a surface for cooking (soft limiting). so i thought D3 to claim 2 is an inventive step issue rather than a novelty issue. for inventive step, i also thought D3 is clearly teaching away GL G Vii annex 4 so not inventive step destroying.

    however, as soon as i handed in my B answer I knew the answer would be exactly like Delta gave....

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    1. I think that the issue was that the second embodiment had the light absorbing plate acting also as a cooking surface, i.e. cooking surface could be just the surface of the panel, i.e. any surface suitable for cooking would do.
      The device in the description was 30 times 40 cm, so an ok size for a standard pot and even though the device of par. 4 was a non-preferred embodiment that is irrelevant for novelty and since the description of the application said that anything above 110 C is good for cooking, that device falls into the scope, i.e. almost the same argument as the examiner.

      At best you could argue that even though there is an empty space in D3 it is not dimensioned for the expansion... But I think that would be pretty risky because of unity.

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  7. I was and still reflecting if the request from the examiner to add the feature was legitimate.
    I concluded no
    The examiner objected that the space is essential.
    How can we determine if this true without using our special technical knowledge?
    (i admit that even using my technical knowledge i would not be in the position to answer..)
    The application says that the salt must melt, nowhere it is specified that the space is essential, and per se this feature is not required because what is required is that the salt can melt.

    That a salt can melt even if not allowed to expand, depends on the specific curve of the diagram phase, something which required a deep special technical knowledge.
    If a look at a phase diagram, i will find pressure and temperature....

    So eventually, I could assume that if the salt cannot expand the pressure will rise and the only required modification, if required, is to make the structure more stable, something which I would not call a "real modification".

    Furthermore, while the space is in all embodiments (which by the way were not defined as embodiment of the invention), nowhere is written that a feature present in all embodiments is essential.

    Finally, I didn t find in any of D1-D3 something that directly and unambigously discloses that a salt needs to expand to melt.
    In D2 there were only spaces defined between the granes and this really questionable if this space would allow the salt to expand when melting.
    D2 referred to no circulation of air if the salt is melted.
    D3 appears to have a little space, but there is no indication in the desription that the salt expands during melting.
    Again I should assume that on the base of a drawings open to interpretation.

    So I conclude that the feature is per se not essential...

    Am I completely dump :-)?

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    1. I think the letter of the client tells you that they agree that this is the only practical way...
      So for me, I assumed that we should take it at face value as there is not other argument anywhere to tell the EPO that their opinion is wrong.
      I do not think that it a complete disaster though. Most points are for inventive step anyway.

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    2. Ho Candy,
      Ypu asked: "How can we determine if this true without using our special technical knowledge?"
      I think you cannot challenge it as you afe not allowed to use any special technical knowledge - I expect, assume and consider it fair that you need to trust the examiner on it. as he has the technical knowledge and there is nothing in the paper that you can use to challenge it. Can you agree?

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  8. I cant believe that the amendment to 130°C is directly and unambiguously derivable from the application. The value 130°C is no disclosed for the salt composition but for a specific salt. Thus, this amendment means that a value of a specific feature can used for a range of a generic feature.

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    1. The paragraph below the table says that many salts having same melting points are known. I used it to argue that it is therefore obvious that I can take the temperature without the salt.

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  9. I found this paper extremely difficult - multiple independent claims, and difficult added matter decisions. I went for 110-350 plus a disclaimer in the end for claim 2. I hope this will be considered in the mark scheme, although I think the 130-350 amendment is what they were looking for in retrospect. I got flustered with how little time there was for 2 sets of inventive step arguments, so missed a few key points, but maybe will scrape a pass. Who knows though - also wouldn't be surprised if I'm back next year.
    Thanks deltapatents for giving suggested answers, as always

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  10. I deleted the temperature range from claim 1 and instead specified that "the salt composition is selected from one of salts B, C, D, E, F and G in Table 1". Obviously this is much narrower than your suggested temperature range of 130-350, which I realise is a much better solution. Do you think that my amendment will get some marks or will it probably lose all marks available for that amendment for being too narrow?
    Hopefully I'll still get ok inventive step marks because a lot of the argumentation is essentially the same - I referred a lot to the fact salts B-G would melt at cooking temperatures.

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    1. We cannot know how much marks this will cost you. It feels like a safe solution in the sense of Aert.123(2), but you definitely didnot follow the client's wish/hint in the second part of his letter as to the wanted scope of protection: "We do not consider it necessary to specify the ränge of melting temperatures, as long as the process includes melting the salt composition to störe the heat of fusion" and you ignored the information in [007] of the application: "Referring to Standard Chemical databases, other suitable salt compositions can be found that have melting temperatures identical or close to those indicated in Table 1". So it probably cost you a significant number of marks.

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    2. Thanks Roel. Sorry, I meant I did this in CLAIM 2. My claim 1 was identical to yours. Does that change your thnking?

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  11. In my opinion, D3 is the closest prior art for claim 2. The technical field of claim 2 is heat storage units (not cooking) and, if I am correct, only D3 discloses a heat storage unit. With regards the "for use" feature, this is soft limiting and the device of D3 can be used as in fig. 3 of the application as mentioned in the Communication.

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    1. I chose D2 because D3 can be suitable for cooking only with hindsight using the original description saying that suitable for cooking is above 110.

      D1 suggests that you need more than 120 degrees for cooking. Amended claim 2 defines above 130. Both temperatures are to be considered in association with for cooking you cannot just ignore their relationship.
      In contrast D3 says that 115 is too hot and lower temperature should be used so choosing this seems a bit at odds what i would expect based on past exams especially since as you mention it is about heat storage which in D3 occurs due to heat of fusion.
      I might be wrong though.

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    2. I also chose D3 as the CPA for the device claim exactly for the reason that it disclosed the heat storage unit.

      The question... is adding melting only to the process claim really enough to overcome all the prior art?.. it is not disclosed in the processes of the prior art but cannot it be derived since the melting temperature is mentioned and from D3 it is clear that the salt melts?..

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    3. I agree with Jurre. I also considered D3 as CPA because claim 2 is not hard-limiting to cooking. Both claim 2 and D3 has the purpose of storing heat for later usage and D3 is suitable for cooking because it has salt having over 110C melting temperature.

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    4. Me too. D3 last paragraph. Is also a heating unit, can also operate on solar to get to cooking temperatures. Also melting, so not too hot etc.

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  12. I agree with Jurre, beacause it is further mentioned that the device according to D2 is heated with a gasburner. So i thought only D3 is teaching using the sun as energy source and although the temperature of D3 mightbe lower, it is nevertheless suitable for cooking

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  13. Delta Patents solution has not added the missing reference numerals (3) in dependent claims.

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    1. The examiner did not object and no reference numerals were in these same dependent claims in the claims as filed, so why do you think it would attract marks to add them?

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    2. Because rule 43(7) EPC.

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  14. Wouldn’t the suggested amendments violate A82? There is no special technical features present in both claims 1 and 2, over either D1 or D2. For this reason i ended up putting my range also in claim 1...

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    1. I will add that this approach meant I had to only write one inventive step argument - but meant I went against the clients wishes for claim 1. I could not see any other way to get around unity problems.

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    2. I feel myself better now after reading this 🙂I not alone at least

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  15. I got the CPA for claim 2 wrong, because I chose D1. Now I see that D2 is much better. The problem solved by claim 2 (apparatus claim) is to provide an improved heat storage unit that allows cooking while keeping temperature stable and that works even without any thermal energy source. D3 is completely off as it addresses a thermal radiator so it is in a unrelated technical field. Having narrowed the documents to D1 or D2, D1 does not address the problem of keeping temperature stable nor working without any thermal energy source. D2 at least addresses one of those problems (maybe even the second as it discloses NaCl can storage energy..). I chose D1 because D1 also discloses a heat storage unit (as identified by the damn Examiner, the plate (2)) and this works under solar radiation heat source. Frustrated. Anyway, I don't mind coming back next year because this exam does not require so many study hours!

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  16. In previous years, a single argumentation (novelty + inventive step) for a single independent claim was expected. Plus, the Art 123(2) EPC issues were typically limited to (at most) intermediate generalizations or to applying the essentiality test (i.e. well-known issues).

    This year, two full argumentations (with different closest prior art documents!) were expected for two independent claims. Plus, the Art. 123(2) EPC issue about the range 130-350 was rather tricky and implied looking the above mentioned T-decision (unless you are a chemist and work with ranges on a daily basis). Looking for this T-decision can make you lose 30-45', especially if you start doubting about whether to adopt the disclaimer solution or the range 130-350. This can result in 30-45' less effective time for writing the argumentation.

    Conclusion: roughly double the amount of argumentation work with less effective time? hum hum...

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    1. I donot agree. We proposed a full argumentaion for each of the independent claims, as in any earlier C exam. It was special that the CPA was different, but why would that be strange? It happened before between an independent cvlaim and a claim dependent thereon.

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    2. But Paper C relates to a granted patent, where unity cannot be put into issue. That is not the case for Paper B. Different inventive step arguments suggests non-unity.

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    3. DifficultPaperB?March 01, 2019 8:37 am

      Hello Roel, Thanks for the reply! I agree that having two different CPA is not strange at all. What I meant is that: (i) there was possibly more writing needed than in previous years (double argumentation), and that (ii) even a well-prepared candidate could have lose precious time struggling with the 123(2) EPC issue of claim 2 (deciding whether 130-150 range or disclaimer are 123(2) EPC compliant is not trivial, as the posts on this blog demonstrate). Combining (i) and (ii) makes me think that it was a difficult paper (compared to 2017, 2018 at least). But it was just a comment, not a jugdment. Thanks to the delta-patents team for sharing their answer!

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    4. Confused UK first timerMarch 01, 2019 12:25 pm

      Azru - I agree. I really struggled with the fact that D1 seemed to be cpa for Claim 1 and D2/D3 seemed to be cpa for claim 2, as this implied a lack of unity, so I ended up doing one inventive step argument for subject matter of both claims with D1 as cpa. I guess this might not result in a passing mark...

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  17. I thought that the knowledge of the melting temp of MgCl2..., is common knowledge as is the melting temp of ANY salt composition, in appl. 007: other suitable salt...found...in databases", so I think choosing to cover a temp. interval comprising a specifically mentioned, (also mentioned as highly unsuitable for a heat preserving device, )salt/melting temp not is hindered by the inclusion in D3. If not so;, wouldnt all the knowledge from databases also be an obstacle? All salt compositions are already known, and their melting temps too, so I believe 110-350 should be ok. But I can also agree with you who says it is not ok.

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  18. How about the feature "fins" (thermal contact
    means, possibly "protruding"), isnt that an essential feature, it is included in every embodiment, seems nessesary for the thermal contant salt-light absorbing plate? It is also provided in D3, couldnt that inclusion be a pointer to the importance of it?

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  19. Dear Delta-Patents Team,

    I'm not convinced that the new area is disclosed. I'm pretty sure that your solution (claim 2) is not the one, the examiners expect. There are several T decisions, which say, that you cannot simply create new ranges out of single examples. For example

    In T 517/07 a newly introduced upper limit had been disclosed in the original application documents only as an isolated value in example 1. The board decided that singling out an individual value from a specific embodiment and applying it as a new upper limit in claim 1 created a new – now capped – value range that was not disclosed in the original documents.

    or

    In T 570/05 the proposed amendment was that the coating layer had a "thickness of from 220 to 500 nm", for which the only literal basis in the application as originally filed for the lower value of 220 nm of the claimed range was to be found in three examples. Thus, the formal disclosure of the value 220 existed. The issue to be decided was whether or not new subject-matter was added by forming a new range in a claim using said figure of 220 nm, it being evident that nowhere in the documents as filed did this value form the lower (or indeed any) endpoint of a range of thicknesses. Recalling the relevant case law namely, T 201/83, T 1067/97 and T 714/00 (see also in this chapter II.E.1.7. "Intermediate Generalisations – undisclosed combination of selected features"), dealing with extracting an isolated feature, the board examined whether or not there existed a functional or structural relationship between the coating layer thickness, in particular its lower limit, and the remaining features of the claim. The board concluded that the condition of absence of any clearly recognisable functional or structural relationship was not satisfied in the present case and that the amendment could thus not be allowed.

    To dive into these T decision in a B exam is nothing, the EPA would have expected! That would be even to hard for a D part. They aimed for the G 1/16 and wanted to see the disclaimer. It's exactly what the client wishes for. He simply wants to take out salt A. This is achieved by the disclaimer, which is new and inventive over the cited prior art. Your solution unnecessarily narrows the claim to ranges, which can easily be avoided, by using other salts, as the client mentions. Therefore you harm your client by adding a range instead of using the disclaimer.



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    1. I considered disclaimer in light of G1/16 but it is not that simple.
      First,the argument that a storage unit for thermal energy of is an accidental anticipation from a distant field is not so easy to assert.
      Second,even then the difference from D2 (and also D1) is salt with a melting temperature of 110 to 350 except for Naxxxx.
      In other words the disclaimer is in a feature which contributes to IS which goes against G1/16 so I do not think that disclaimer was the silver bullet for this case.
      In addition, if you carefully read the application 110 degrees is mentioned also as a point well above boiling point of water. And below the table there is a weird passage relating to how many salts can have the same melting temperature.
      The cynic in me thinks that these passages are hardly a coincidence because there are no coincidences in eqe exams. Normally each word is carefully chosen. Not to mention that it takes 2 years to prepare an exam so it might be too soon for G1/16. Might be wrong though. We will see in June.

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    2. Great post! As a chemist, i fully agree.

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    3. I think the disclaimer is allowed to relate to the feature of inventive step, as long as the disclaimer isn't the reason the claim is inventive (in other words, you can't introduce a disclaimer to cause inventiveness). In this paper, removal of the specific salt does not change the general inventive step argument, so appaeared to me to be acceptable.

      Having said that, one of the documents referred to cooking temperature as 120C+, which makes 110C seem a bit odd.

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    4. We discussed disclaimers when we discussed the case among us. We discussed whther D3, last par could be an accidental anticipation (heater; de-icing), to allow an undisclosed disclaimer G1/03 & G 1/16. But this subjtec-matter is disclosed in the application, so should be un undisclosed disclaimer G 2/10 - G 1/03 stuff thus not relevant as G 1/16 clarified. See our post why we believed that disclaiming disclosed subjecyt-matter acc G 2/10 was not optimal, and why we went for the range.

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    5. In addition to my argument above, I think disclaimer is not a wrong solution. The difference between D3 would be "except for Salt A".

      However par. 7 of the application mentions many salts equivalent to salts of the examples having identical melting temperature, i.e. there are known equivalents also to Salt A.
      I believe that these equivalents will cause issues with inventive step because the skilled person would consider equivalents when making the "test heater" of D3.

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    6. I've choosen the disclaimer. It seemed to me to keep a broader scope and still be inventive: the skilled person would hardly have included salt A in another document based on D3, and with greater reason he would not have used other undisclosed salts with similar properties.

      As regards the support: first, I am still not sure that 130-350 is ok with 123(2) (but I'm not often involved in range amendments). Second, the disclaimer is NOT to be treated as an undisclosed disclaimer, and therefore it is IRRELEVANT if it is or not an accidental disclosure or if it is or not an amendment linked to inventive step. Instead, it regards discaiming a feature that has been (positively) disclosed, and thus it has to be assessed whether the compositions remaining in the claim have been at least implicitly disclosed (and enabled) using common general knowledge. And, in my opinion, yes, the standard databases have been described right to enable the skilled person to figure out the "remaining subject-matter" of the claim.

      F

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    7. Hi Cadae, G 1/16 was about interpretation of G 1/03, not about interpretation of G 2/10. So, paper does not depend on G 1/16. So had no need to wait. So G 1/16 is a candidate to be used. But I opted for the range, table and paragraph below it gives solid basis I believe.

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  20. Thanks to Deltapatents for this post. Any idea about how points are divided among amended claims, basis in the text as filed, added sm, novelty and inventive step for the first and the secondo independent claims?

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  21. I've been wondering what that special place in hell looks like, for people drafting a paper B with two independent claims and three prior art documents, without even a sketch of a plan how to answer it in 3.5h.

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    1. Sorry, donot agree. Client's letter and client's claims proposal is a clear skecth - which, as in a any B paper, needs to be taken into account resp. amended to answer the paper in 3.5 h. Answer may/will not be perfect (neither is/will be ours), but getting a pass seems realistic for a well-prepared candidate.

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    2. There should have been roughly the same proportion of well-prepared candidates this year as last year. We'll see if indeed the passing rate is the same as you suggest.

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    3. 37% fail rate in 2019 vs. 20% in 2018, 19% in 2017... anybody surprised?

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  22. Did u miss claim 6? Claim 6 is another independent claim.

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    1. Claim 6 includes all the features of claims 2 to 5, and therefore is dependent (R43(4))

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  23. I came up with the same solution, except that I also believe in claim 1 it must be stated that the the solar radiation is concentrated using a parabolic mirror (11) as well as that the concentration of radiation melts the salt composition. These features are, to my mind, disclosed in combination at [009] and there is no alternative method of concentrating solar radiation specified anywhere else in the application.

    Thoughts from the Delta-Patents team?

    J

    ReplyDelete
    Replies
    1. I completely agree, I did the same! As soon as we add a feature from [009], it was in my point of view necessary to include all the features in order to comply with A. 123(2). And as you say, it is nowhere else disclosed that the solar concentration can be made another way.
      I am also interested in a thought from DP Team.

      Delete
    2. Regarding the Art. 123(2) problem when relying on [009]: more general support for using a salt composition + melting thereof was also available from [006] ('The invention uses ... ' suggests this applies to all embodiments).

      Delete
    3. Hi Nico,

      Thanks for your response. I'm not sure I agree with that, though. Whilst [006] certainly refers to the fact that the salt compositions have an appropriate melting temperature, it does not seem to provide adequate basis for a method step where solar radiation is concentrated onto a heat storage unit to melt the salt composition. The fact that the salt composition is used in "the invention" does not seem sufficient to use [006] as a basis for the amendment to claim 1 - it does not indicate how, in the actual process, it comes to pass that the salt is melted.

      [009] is the only disclosure of a method step of melting a salt composition using solar radiation in a cooking process according to the invention, and this suggests that the parabolic mirror is integral to that step. The only other passage that refers to a step of concentrating solar radiation is [002], in respect of the prior art process, and this also explicitly refers to parabolic mirrors.

      J

      Delete
  24. Hi, I also added to claim 1 the empty space feature. Wasn't it also essential there after the salt composition was added?

    ReplyDelete
    Replies
    1. Well, claim 2 relates to a particular embodiment of the heat storage unit for which the empty space is indeed essential.

      Claim 1 is rather directed to a method of cooking using heat storage which is based on phase changes. Arguably, the client has 'invented' such a way of cooking, and may deserve protection for the method without being limited to the particular heat storage unit. Of course, one may argue that the description does not support such a claim in the broadest sense (e.g., contravening Art. 84).

      However, the Examiner did not raise such objections, and the client did not request or suggest further limiting the claim. From a exam-tactics perspective, this seems to be a case of 'If it ain't broke, don't fix it'.

      Delete
  25. For arguing that "this value was 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": Isn´t the feature MgCl2*6H2O closely linked to the melting point? Therefore, I would believe that the above criterion is not fulfilled. What am I missing?

    This principle based on the T 201/83 can neither be found in the guidelines nor the Visser.

    ReplyDelete
    Replies
    1. Guidelines do not give basis for the amendment based on a table. If expected, not fair to non-chemists, they could only do educated guess. If not expected, why was the table in the paper?

      I did educated guess. Range. From table which is generalized due to line just below table. Seems ingredients fit so nice that it feels like the expected attack. But... where is the Guidelines paragraph that supports it?

      Delete
  26. Do you think there was an iS argumentation for claim 6 expected as the examiner raised such an objection

    ReplyDelete
  27. Having had some time to reflect a bit, I would advocate the following solution:

    Cl. 1: - include "salt composition" based on par. 9. This par. however further specifies "parabolic mirror" and "thereby melting", so these aspects must go into cl. 1. The application does not provide any disclosure that concentrating can also be made without a parabolic mirror. Even though par. 11 does not mention the feature, it also does not disclose that it is not necessary. All figures show the concentrated rays with ref. sign 12, i.e. those originating from the parabolic mirror of fig. 1. Since basis is taken from the detailed embodiment of par. 9, fig. 1, omission of the parabolic mirror would be an intermediate generalisation. Finally, the "empty space" is not needed in cl. 1, because it covers the general embodiment of fig. 1 which discloses the general idea without the specific structural features of the housing. Inclusion of the "space" based on any of the other embodiments would require specification of housing, thermal insulation, opening(s) etc.

    As cl. 1 relates to solar cooking, D1 is the only possible choice as closest prior art, because it is the only doc from the same technical field. D2 does not relate to "solar", D3 not to "cooking". Completely different purposes and effects.

    ReplyDelete
  28. Claim 2:
    The originally disclosed range 110-350°C is sufficient to limit vis-à-vis D2. D3 mentions in par. 4 that the Mg salt was "tested as PCM". I tend to consider that this is not a disclosure of a heat storage unit comprising the Mg salt. Novelty requires a direct and unambiguous disclosure of all the features in combination, which cannot unambiguously deduced from D3. The test does not necessarily require the salt to be provided in the radiator. It is to be noted that the last sentence referring to features of the heat storage unit of D3 is put in the speculative conditional "could", and does also not imply that the radiator with salt is disclosed. Finally, the heat storage unit of cl. 2 must be "suitable" for the process of cl. 1, which involves concentrating sun light onto the plate. It is also not unambiguously clear whether the large black ceramic plate can withstand local heating and is thus suitable for use in the process of cl. 1.

    In any case, I would agree with some previous comments that there is no basis for amending the temperature range. 130°C is only disclosed in the specific example B, i.e. in combination with the specific salt. It cannot be argued that the intrinsic property of the melting temperature was not "structurally or functionally linked" with the specific salt, and their is thus also no basis for an allowable intermediate generalisation as would be required by GL H-V, 3.2.1. And this is even irrespective of the question whether a single point can be used to change a range. It cannot be ruled out that the mention of par. 7 that other suitable salts can be found with the "identical" melting temperature would be seen by some as a basis for generalising the specific salt. However, the same sentence also refers to temperatures "close to" the specific ones, which would potentially be excluded by selecting one of the specific melting temperatures. Taken together, par. 7 does not therefore in my view constitute a disclosure of using the specific temperature points as end points of a range.
    A disclaimer would be a valid solution in case D3 is considered novelty-destroying.

    ReplyDelete
  29. Some tactical considerations to cl. 2:
    1) The amendment of range is controversial, and it is thus not to be expected that this is the envisaged solution.
    2) if D3 does not disclose the radiator with Mg salt, the limitation by the range or disclaimer is unnecessary (costs 5 marks), makes the argumentation of novelty and inventive step easier (missing 8 marks), but maybe some marks can be earned in the justification of basis (3 marks), at least for the disclaimer. If the disclaimer or amendment of range is considered unallowable, further marks are lost. The additional effort costs time, which could have earned 5 more marks somewhere else. In summary, about 15 marks.
    3) If D3 is considered to disclose the radiator with Mg salt, cl. 2 without further limitation is not new (costs probably 15marks) and further marks are lost when arguing basis and novelty (8marks). Some unnecessary time consumption is weighed out by the reduced effort for arguing the disclaimer or the amended range. In summary, 23 marks.
    4) It would be harsh to make entire 15-25 marks dependent on a nuance in understanding the disclosure of D3. It is hopefully to be expected that the marking scheme takes this point into account to reduce the impact. The point is particularly serious, because lack of novelty is normally severely penalised, because it should be easy to determine.

    Irrespective of the above amendments, by the reference “for use in the (solar cooking) process of claim 1” the technical field of cl. 2 is, like cl. 1, “solar cooking” and the purpose and effects rely on phase-change heat storage. D1 is thus, again, closest prior art. D2 and D3 do not relate to solar cooking. They relate to heat storage, D2 without any consideration to solar energy and the associated problems. D3 is from another technical field (heating vs. cooking). Even though D2 and D3 share more common features, they are no promising starting point for making the invention of claim 2.

    ReplyDelete
    Replies
    1. What would you think of the feature "salt composition having a melting temperature suitable for cooking" based on primarily on paragraph 06, first sentence, and the rest of para 05 to 07?

      Delete
    2. I would say that a claim amended in this way still lacks novelty over D2. A salt composition with a melting temperature "suitable for cooking" does not imply that the salt has to melt during the process! The salt in D2 has a melting temperature "suitable for cooking", because in D2's process it is not supposed to melt and indeed, does not because it has a v high melting temperature.

      J

      Delete
    3. RE the tactical considerations to claim 2 - I think the client letter very strongly hints at the 130-350 solution: the client says that the material with "the lowest" melting temperature they want to use commercially is composition B. I took this as a big steer towards 130-350. I wasn't entirely comfortable that this had basis, but convinced myself that the (otherwise rather odd) paragraph [007] had been put there precisely so that generalisation from examples could be mentioned. Very nasty though - certainly have not come across a paper B as controversial as this one has proved.

      Delete
    4. see D 9/09 for paper A (from k-slaw.blogspot.com/2013/05/d-909-more-trouble-with-marks.html)

      [2.1] The appellant pointed out that the (fictitious) client’s letter on which paper A was based clearly and unambiguously indicated that the client did not desire to obtain patent protection for the process using the arsenical acid solution, which had no economic value. As the candidate had no reason not to respect the wishes of the client, it was not justified to deduce marks if this process variant was not claimed.

      [2.1.1] Against this, it can be argued that it is possible to be of the opinion – and this opinion is generally held – that a professional representative is not required and should not limit himself to slavishly implement the indications of his client (which in practice are not meant to be limitations for the patent protection to be obtained) – irrespective of the fact that the text of the client’s letter (which is fictitious, but inspired by real life) does not contain unambiguous or express indications; it does not contain indications regarding the extent of the desired patent protection at all. Rather, the client consults a representative for the very reason that the applicant cannot or does not wish to assess which options he has and what the corresponding expectations of success are. In the situation underlying the exam paper this would mean that even subject-matter in which the client is presently not interested is incorporated into the application, be it only “as a precaution”, in order not to generate additional costs but to offer the applicant more options regarding methods, use (possibly via licences) and development. Thus there is no contradiction in a legally relevant sense when – quite in line with the “fit-to-practice” criterion (see Rule 4 IPREQE) – the copies of the candidates are also assessed according to this point of view. The instructions to candidates also unambiguously indicate that the candidates are expected “to draft an independent claim (or claims) which offers the applicant the broadest possible protection and at the same time has a good chance of succeeding before the EPO”.

      Delete
    5. So, interpreting client's instructions correctly and taking into account and general practice rules is of utmost importance.

      Delete
    6. J, Re "The salt in D2 has a melting temperature "suitable for cooking", because in D2's process it is not supposed to melt and indeed, does not because it has a v high melting temperature":

      But there is also the feature of "the box (4) contains an empty space (7) dimensioned to allow the salt composition to expand upon melting" in claim 2...

      Delete
  30. A question regarding claim 6:
    Is the restriction of a “solar cooker” to the features of claims 2-5 not too restrictive? Although I did not find the time to deal with this, wouldn’t it have made more sense to broaden claim 6 as a further independent claim based on par. 9, i.e. in correspondence to claim 1?

    ReplyDelete
  31. How about amending claim 2 by introducing the range which is actually disclosed in the description (even if it is against the client's whishes...) and arguing that the apparatus in D3 is "not suitable" for the use of claim 1 (based on the last paragraph of D3) and the claim is thus novel over D3?

    ReplyDelete
  32. Paragraphs 12 and 13 provide support for ONE OR MORE Handles for first and second embodiments. Anyone else has added "one or more" before "handles" in new claim 5? Client's letter asked for this..

    ReplyDelete
    Replies
    1. Good catch, that's a subtlety we did not see!

      It is indeed quite possible that the client's reference to 'one or more' represents a wish to have 'one' handle also protected, so it seems prudent to change 'handles' to 'one or more handles', which is supported by all embodiments ([012] last sentence, [013] line 19).

      We may change our proposed solution accordingly.

      Delete
  33. Hi Roel and Nico, many thanks for your solution. For claim 1, I also recited the feature that the salt composition (6) has a melting temperature from 130C to 350C.

    How many marks do you think it would cost me? Thanks.

    ReplyDelete
    Replies
    1. without specifying "to melt the salt"...

      Delete
  34. Isn't claim 2 anyway new over D3 in that claim 2 requires that the light absorbing plate is fitted in an opening of the box?

    The examiner's allegation that D3 discloses that the light-absorbing plate is fitted in an opening of the box, as required by claim 2, is based on an ex-post-facto interpretation of D3.

    It is described in D3 [001] that the light-absorbing plate is fitted to a side of the box. This could correspond to the plate covering a solid side of the box and does not imply an opening in a side, the plate being fitted in this opening.

    It is further described in D3 [001] that the plate is in thermal contact with the PCM. Thermal contact includes both direct thermal contact and indirect thermal contact. No disclosure of the contrary is provided in the exam papers. Take our embodiment having a light absorbing plate, an empty space beneath it, the thermal contact being maintained by fins. So there is no direct thermal contact between the plate and the salt in this embodiment according to the invention. While a direct thermal contact requires an opening in the box, an indirect thermal contact does not require such an opening. Thermal conduction from the plate through a side of the box to the PCM would not require an opening in D3, the plate and PCM still being in thermal contact. This is true also for a heat insulating box, as this doesn't imply that all sides of the box are entirely made of heat insulating material. No opening can be derived from this disclosure.

    It can also not be derived from the drawings that the plate is fitted in an opening of the box. No openings, other than openings 10, are identified in the drawings or anywhere else in D3. The drawing in figure 1 seems to comprise elements shown in cross-section view and elements shown in front view. Supposing that the blackish object on top of the box is the light-absorbing plate, the plate might be shown as being applied to a side of the box and bent over the edge, thus extending over the base of the box, the front view of this part of the plate being visible in figure 1.

    In summary, D3 does not disclose, neither explicitly nor implicitly, an opening in which the light-absorbing plate is fitted, as required by claim 2.

    In view of the above, there would be no need to take the risk to restrict to a temperature of 130°C in claim 2, or disclaim a composition. Just specify 110°C to 350°C. This would be inventive. Even when starting from D3, the skilled person would choose a working example as a starting point, such as the one with fatty acids. The skilled person would not start from the salt example. The working embodiment would eventually be adapted by providing an opening in a side of the box and fitting the plate in that opening, in order to find how to reach higher temperatures. But the skilled person would stop there and not use a salt, as D3 teaches away. The skilled person would also not combine any of D1 or D2 with the salt example in D3, again as D3 teaches away.

    In the letter it is proposed to restrict the temperature range for the device, because the applicant doesn't plan to commercialise anything lower than the temperature of B. However there seem to be no such plans for the cooking method? Were we intended to direct the claims to a scenario in which the applicant intends to look for infringers in remote areas (see [001|), and does not care so much about manufacturers?

    I chose 110°C to 350°C degrees both for claim 1 and for claim 2. This seemed to be the solution that makes most sense without taking too much risk.

    I was already doubting however when I was drafting my answer whether this could possibly be the expected assessment, otherwise why all the details about specific examples of salt compositions and their melting temperatures. Smokescreen?

    Many thanks for your blog and your answers.

    ReplyDelete
  35. Don't claims 3 and 4 contradict each other?

    Claim 3: cooking surface is a surface of cooking plate fitted in second opening

    Claim 4: cooking surface is surface of light-absorbing plate fitted in (first) opening


    Shouldn't the preamble of claim 5 read: "Heat storage unit accoording to claim 2 or 3 or 4"?

    ReplyDelete
    Replies
    1. Claim 3 refer to claim 2, claim 4 refers to claim 2 and not to claim 3, so no contradiction, just alternatives.

      "any (one) of claims 2-4" is the same as "2 or 3 or 4".

      Am I overlooking some hidden argument from your comment?

      Delete
    2. I thought that "any of claims 2 to 4" meant "claim 2 and/or 3 and/or 4".

      Delete
    3. Why is that different?
      Dependent claims have all the feature from the claim they depend on in it:
      Claim 2 = combination of all the features of claim 1 + 2
      Claim 3 = combination of all the features of claim 1 + 2 + 3
      Claim 4 = combination of all the features of claim 1 + 2 + 4

      Delete
    4. It matters. If "any of claim 2 to 4" means "claim 2 and/or 3 and/or 4", then claim 5 would include the combination of claim 2 + 3 + 4, which seems impossible, because 3 and 4 are contradictory. In addition, there is no basis for the combination 2 + 3 + 4.

      Delete
    5. It means any of the claims before. 1+2+3+4 is not part of the claims before it: claim 2=1+2, claim 3=1+2+3, claim 4=1+2+4; claim 5 = (2=)1+2 or (3=)1+2+3 or (4=)1+2+4.

      Delete
    6. I would have preferred the Paper B of 2018.

      Delete
  36. I got a 51 and I believe it is thanks to the fact that the EC awarded marks to the solution of the disclaimer as well. I was hoping for such a marking scheme actually, because I felt my overall argumentation was decent. What is the opinion of the tutors on the "acceptance" of both solutions here?

    Natasha

    ReplyDelete
  37. Hi Roel,

    for a claim 2 having the amendments:"dimensioned to allow the salt composition (6) to expand upon melting" and "the salt composition (6) has a melting temperature from 120°C (not 130°C) to 350°C". How many points do you think I have received?

    From the compendium it seems 8 (on a total of 18). If so, why they have penalized a 123(2) violation by not giving any point on the second amendment, instead of deducting some of the points as in the last years (wherein a 123(2) violation caused a deduction, for example, of 5 points?)

    Thanks for your answer.

    ReplyDelete
    Replies
    1. And what about a new claim 1 with the amendments "containing a salt composition", "thereby melting the salt composition (6)" and "wherein the salt
      composition has a melting temperature of 120°C (not 130°C) to 350 °C - not necessary - ?

      According to the compendium, a new claim 1 amended as above with the right range of temperature has been valued 7 points. Does the wrong range of temperature has not been penalized not to have a double penalisation?

      Delete
    2. @ Anonymous July 02, 2019 9:57 am:

      As a general principle, marks are also awarded for answers that deviate from the expected answer, if the given answer shows that the candidate is fit to practice, if "reasonable and competently substantiated".

      See e.g. D 20/17, r.3.4: “It is established case law that the examiners are obliged to allow for fair marking of answers which deviate from what was expected according to the examiners' report, but are reasonable and competently substantiated (see inter alia D 7/05, OJ EPO 2007, 378, Headnote II and Reasons 13; D 12/82, OJ EPO 1983, 233, Reasons 3). This obligation follows from the object of the qualifying examination, which is to establish whether a candidate is fit to practise as a professional representative (Article 1(1) REE); but it does not rule out the possibility that an individual answer to a part of Paper C may be awarded no marks if, for instance, an objection of lack of inventive step is based on a document which cannot reasonably be regarded as the closest prior art or a suitable starting point for the problem-solution approach or if the reasoning, while structured according to the problem-solution approach, cannot be regarded as a logical and justified ground, in a notice of opposition, prejudicial to the maintenance of a European patent.”

      Delete
    3. Thanks for your answer. I do admit I have missed the point (actually I have been penalized in the "amendment arguments part") but my proposed claim 2 is anyway novel and inventive.
      I managed to argument novelty and inventive step of claim 2, but not inventive step of claim 1.
      In the past B exams, probably I would have gained more points for inventive step arguments (because one independent claim has to be discussed), and I would be penalized less for non-compliance with A.123(2).
      As an example, in paper B 2018 non compliance with A. 123(2) has cost 13 points (claim + amendment arguments) while in 2019 it costs 17 points (claim + amendment arguments).

      Delete
  38. Does anybody intend to appeal? If my recollection is correct, this was the very first time ever that two problem-solution approaches needed to be discussed.
    As we all know, the EQE establishes whether or not a candidate is fit for practice. How can this be be established fairly when one candidate has to discuss two and the other just one problem-solution approaches within the same time frame just one year earlier?

    ReplyDelete

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