Our attempt at e-EQE Paper B 2022 - Snowshoe
Here's our attempt at this year's seasonal paper B about snowshoes. Although the paper was rather mechanical, luckily a deep understanding of the intricacies of shafts, axles, and pulleys did not seem necessary to arrive at (what we expect to be) the right claim amendments. You can find our solution by clicking on "Read more" below.
We look forward to your comments!
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 02-03-2021 22:23"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.
Update, July 7 2022: the examiner's report is now available on the EPO website. We have added some references to this model solution in our answer below.
Nico and Meilof
Our answer
Claim amendments (marked w.r.t. application as filed)
1. A snowshoe comprising a foldable deck (1), a footplate (2) and a binding (3), wherein the deck (1) is composed of tiles connected by joints (6) and the footplate (2) comprises elastic means (7) for contracting the foldable deck (1) and attaching means (8, 9, 10) for attaching the foldable deck (1) to the footplate (2), wherein the elastic means (7) comprises an elastic band (7), and wherein the attaching means (8, 9, 10) comprises pulleys (8) for guiding the elastic band (7), wherein the attaching means (8, 9, 10) further comprises guiding slots (9) in the footplate (2) and axles (10) of the pulleys (8) sliding in the guiding slots (9), each axle (10) being attached to a joint (6).
Comment: the proposal by the client is doubtful both in terms of basis and in terms of novelty over D1. We follow the hint in the client's letter to use the wording of claim 6 to amend the claim without inserting the "expansion control means" (which is indeed possible in terms of basis). The "sliding" feature is not very nice in terms of being an active formulation in a product claim. A formulation such as "can slide" (cf. [7]) or "slidable" may be slightly preferred. [NB: the model solution also uses "sliding".]
2. The snowshoe according to claim 1, wherein the tiles have quadrangular (4) and curved triangular (5) shapes.
Comment: there does not appear to be good basis for generalizing this claim in the way proposed by the client. Paragraph [6] says that "the tiles have a quadrangular 4 or a curved triangular 5 shape", but this is only the case for "the example shown", which clearly has a combination of both. Accordingly, we have not adopted the proposal of the client.
[NB: according to the model solution, the above paragraph is considered to provide sufficient basis for "and/or"]
3. The snowshoe according to claim 1 or 2, wherein the tiles (4, 5)
Comment: the client's proposed replacement of the first "consist" into "comprise" is OK in view of [11]. The same paragraph also uses the wording "comprising" for the joint layer, so we are adopting this as well. In view of [13] it is also possible to make this claim dependent on claim 1, and there may be marks available for doing so, as e.g. in EQE B 2018.
[NB: the model solution did not add this claim dependency.]
5. The snowshoe according to claim 4, wherein the attaching means (8, 9, 10) comprises pulleys (8) for guiding the elastic band (7).
Comment: this formulation, as also used in the application as filed in [13], is slightly clearer than the "detachable" formulation by the client since it makes it explicit that the disconnecting means and the pivoting means are part of the claimed snowshoe. The amendment by the client may also be OK.
[NB: according to the model solution it was also allowed to keep the "detachable" phrasing.]
Letter to the EPO
This letter is in response to the communication of the EPO in the present case.Basis in the application as filed (art. 123(2) EPC)
Claim 1
Claim 1 is based on original claim 1 and is amended by including the features of original claims 4 and 5, and by including from original claim 6 that "the elastic means (7) comprises an elastic band (7), and wherein the attaching means (8, 9, 10) comprises pulleys (8) for guiding the elastic band (7), wherein the attaching means (8, 9, 10) further comprises guiding slots (9) in the footplate (2) and axles (10) of the pulleys (8) sliding in the guiding slots (9), each axle (10) being attached to a joint (6)".Original claim 6 was based on original claim 5, which was based on original claim 4, which was based on original claim 2 (or 3), which was based on original claim 1. Accordingly, claim 1 is amended by including the subject-matter of orginal claim 6 and its claim dependencies, except that the shape of the tiles according to original claim 2, and the expansion control means according to original claim 6, are not included.
In both cases this is allowed according to the intermediate generalization test, GL H-V 3.2.1. Namely, the features that are included are not related or inextricably linked to the features that have not been included, namely, the shape of the tile and the expansion control means.
In particular, with respect to the tile shape, the included features relate to a different part of the snowshoe. Moreover, the included features can be combined with tiles of a different shape, such as strips, as mentioned in the application as filed in [6] ("The tiles 4, 5 may, however, take different forms such as that of a strip.") and [13] ("The tiles 4, 5 may assume different shapes to those described above, e.g. they may take the form of strips.").
The included features are also not inextricably linked to the expansion control means since the application as filed explicitly mentions that the these expansion control means do not have to be included. This is explained in [12] of the application as filed where it is mentioned that "Expansion control means 17 can be positioned and fixed in the guiding slots 9", where it is also explained that the invention still works if the expansion control means are not included: "If the expansion control means 17 is not used, the deck 1 can expand to its maximum width. In this state it has a flat surface (Fig. 2a), providing maximum stability on powder snow.". This is also confirmed in [13] where it is mentioned that "In some embodiments the expansion control means 17 [...] may be omitted.".
Moreover, the overall disclosure justifies the generalising isolation of the included features and their introduction into the claim. This is because the application as filed explicitly mentions, e.g., in [13], that the shape of the tiles can be varied and the expansion control means do not have to be included. Accordingly, the inclusion of some but not all features of original claim 6 and its dependencies is an allowable intermediate generalization.
Further, claim 1 is amended by referring to "elastic means" instead of an "elastic element" as in original claim 4. This amendment also has basis since it merely fixes an inconsistency in the wording; it is clear from the application as filed e.g. in [4] ("The footplate comprises elastic means for contracting the foldable deck and attaching means for attaching the footplate to the foldable deck. In preferred embodiments the elastic element may comprise ...") that the terms elastic means and elastic element can be used interchangeably.
Claim 2
Claim 2 is based on original claim 2 and is itself unamended. Claim 2 depends on claim 1, which has been amended as outlined above. The features of claim 2 are compatible with the amendment of claim 1 as can be observed e.g., by the claim dependency of original claim 6 (which is now included in claim 1) on original claim 2. Moreover, the shape of the tiles is not related or inextricably linked to the expansion control means so that it is also allowable to specify the shape of the tiles without including the expansion control means.Claim 3
Claim 3 is based on original claim 2 and has been re-worded based on [11] of the application as filed, where it states that "In Fig. 4 the tiles 4, 5 comprise at least three layers, i.e. two carbon fibre layers 20 sandwiching a joint layer 19. The joint layer 19 comprises a flexible plastic sheet made of a material like polyvinyl acetate and/or polyethyl acetate.". According to this passage, it is clear that the tiles may comprise additional layers in adition to the three layers specified, and that the joint layer may comprise (as opposed to consist of) a flexible plastic sheet as specified. Claim 3 is further amended to make the claim dependent on claim 1 or 2.Claim 3 dependent on claim 1 is based on original claims 1, 4, 5, and 6, where the shape of the tiles and the expansion control means do not have to be included as argued above. In particular, the teaching of [13] that the tiles can take on various shapes relates to full embodiment so also to the teaching of [11] that describes the layers of the tiles.
Claim 3 dependent on claim 2 is based on original claims 1, 2, 4, 5, and 6, where the expansion control means do not have to be included as argued above.
Original claims 4 and 5 are cancelled without prejudice.
Claim 4
Claim 4 corresponds to original claim 6 which is now renumbered and from which the attachment means, which has been incorporated into amended claim 1, has been omitted. The subject matter of claim 4 is supported by the combination of original claims 1, 4, 5 and 6 (where the specific shape of the tiles as per original claim 2 has been omitted and the elastic element has been changed into elastic means, see the allowability of these changes for claim 1 above). In addition, according to [0013], the expansion control means is in general an optional feature, which supports a combination with theClaim 5
Claim 5 corresponds to original claim 7 which is now renumbered and of which the dependency has been changed to depend on any one of claims 1 to 4. The subject matter of claim 5 is supported by the combination of original claims 1, 4, 5 and 6 and 7 (where the specific shape of the tiles as per original claim 2 has been omitted and the elastic element has been changed into elastic means, see the allowability of these changes for claim 1 above).In additional, the claimis amended by rephrasing the claim feature as a structural feature of the snowshoe itself, namely, by stating that the snowshoe further comprises disconnecting means and pivoting means for detaching the binding from the footplate. The wording of this clarification is taken literally from [13] of the application as filed.
According to [0013], the disconnecting means and pivoting means are in general optional features, which supports a combination with the embodiments of any one of claims 1 to 4.
Clarity (art. 84 EPC)
Claim 1 now consistently refers to an elastic "means" instead of an elastic "element", thus remedying the clarity objection under point 5 of the communcation.Claim 5 now recites the disconnecting means and pivoting means as structural features of the snowshoe for detaching the binding from the footplate, thus remedying the clarity objection under point 6 of the communication.
Novelty (art. 52(1), 54 EPC)
Document D1
Document D1 discloses a snowshoe that contracts and expands to facilitate a more natural gait. The snowshoe comprising a foldable deck that can be reduced in size during walking, the deck being composed of tiles connected by flexible joints, and the snowshoe further comprising an elastic band that creates a biasing force on the tiles such that when the deck is not pressed onto the ground, the tiles are folded inwards and the surface of the deck is reduced.The snowshoe comprisings a foldable deck and a footplate. The elastic band is attached to the deck using attaching means. The attaching means is part of the footplate. The elastic band is guided by pulleys 108a-b attached to the central tiles. The pulleys do not necessarily need to rotate freely, but may be fixed rigidly at the deck and may consist of circular discs each with a guiding slot for the elastic band.
D1, however, does not describe attaching means which comprise guiding slots in the footplate and axles of the pulleys sliding in the guiding slots, each axle being attached to a joint of the deck. While D1 describes attaching means, they do not comprise the features of the attaching means as claimed. In addition, while D1 describes guiding slots, these guiding slots are for guiding the elastic band and not for allowing the pulleys to slide therein. In addition, while D1 describes pulleys, these are mounted only in/to the deck and not to the footplate.
Accordingy, claim 1 is novel over D1, and so are the other claims by virtue of their dependency on claim 1.
Document D2
D2 describes a foldable deck for snowshoes. The deck is composed of quadrangular and curved triangular tiles. The tiles are composed of three layers, i.e. two carbon fibre layers sandwiching a joint layer. The joint layer is made of a flexible plastic sheet. The joint layer facilitates both the free movement of carbon fibre tiles and acts as a robust joint between the tiles.
Document D2 mentions that it is impossible to combine the deck with the snowshoe of document D1, since no solution could be found to attach the joints to the footplate in a way that allows the joints to move when the deck contracts and expands. Accordingly, this document does not provide an enabled disclosure of the deck of D2 in combination with the snowshoe of document D1.
Accordingly, D2 does not disclose a snowshoe in which a footplate is attached to the foldable deck, nor specifically the attaching means as claimed for attaching the footplate to the deck. In addition, D2 does not disclose elastic means for contracting the deck.
Accordingy, claim 1 is novel over D2, and so are the other claims by virtue of their dependency on claim 1.
Document D3
D3 describes a snowshoe in the form of an ice climbing shoe. The ice climbing shoe comprises a footplate and binding. The footplate can be attached to a deck and pivots around a pivot pin. The footplate is detachable from the deck by means of a quick disconnect.
D3, however, does not describe a foldable deck as claimed, nor the attachment means which comprise guiding slots in the footplate and axles of the pulleys sliding in the guiding slots, each axle being attached to a joint of the deck. While D3 describes slots, they are formed in the deck and not in the footplate.
Inventive step (art. 52(1), 56 EPC)
Closest prior artDocument D1 is the closest prior art for claim 1. It lies in the same technical field as claim 1, namely, snowshoes; and has the similar purpose of providing a snowshow that contracts and expands while walking, D1 [1]. It also has various features in common, in particular a deck of tiles and joints and a mechanism with pulleys and an elastic band.
Document D2 is less close than D1. Although it relates to decks for snowshoes and thus lies in the same technical field, it does not disclose how the foldable deck can actually be attached to a snowshoe (i.e., it does not disclose a snowshoe with the foldable deck), noes it address the problem of contraction and expansion. D2 also has less features in common with the claim than document D1. It is thus a less promising starting point than document D1.
Document D3 is also less close than D1. Although it also relates to snowshoes and thus lies in the same technical field, it
does not comprise a foldable deck that can be reduced in size during walking and it is directed to a different purpose of making the footplate detachable from the deck and allowing adjustment of the pivoting pin for doing so. For this reason it is a less suitable starting point than document D1.
Distinguishing feature
The distinguishing features over D1 include the attaching means as claimed which comprise guiding slots in the footplate and axles of the pulleys sliding in the guiding slots, each axle being attached to a joint of the deck.
Technical effect of the distinguishing feature
A disadvantage of document D1 is that the elastic band of D1 breaks easily due to continuous friction with the ground. Furthermore, the rear tiles and hinder each other while folding and are more likely to break as a result.
The technical effect of the distinguishing feature of claim 1 is that the axles of the pulleys are attached to the joints and the axles can slide in guiding slots of the footplate. Thereby the pulleys are attached to the footplate in an adjustable manner thereby allowing folding or unfolding of the deck. The elastic band around the pulleys provides reversible elastic expansion and compression. This allows the deck to expand and contract while remaining robustly attached to the footplate, thus providing a more robust mechanism than document D1. See [14] of the application as filed.
Objective technical problem
The objective technical problem may be phrased as providing a snowshoe with a footplate and a foldable deck, with a more robust, yet movable attachment of the footplate onto the foldable deck.
Inventiveness, D1 by itself
Starting with document D1 and being confronted with the objective technical problem, the skilled person cannot come up with a solution falling under the scope of the claim.
Document D1 does not suggest the solution provided by the claim in any kind of way. While D1 describes attaching means which appear to attach D1's footplate to its deck, they do not comprise the features of the attaching means as claimed by which the footplate is attached to the foldable deck by axles of the pulleys being on the one hand connected to the footplate via guiding slots in the footplate and on the other hand connected to the deck via the joints of the deck. Rather, in D1, the footplate appears to be non-movably attached to a part of the deck. The skilled person seeking to provide a robust yet movable attachment of the footplate onto the foldable deck would thus not find a solution which falls within the scope of claim 1.
In particular, the pulleys are fixed rigidly to sides of the deck, D1 [6], and there is no suggestion that it is beneficial to modify this. Moreover, the pulleys of document D1 are oriented in such a way and at such a place that it is not possible for axles of the pulleys to slide in any guiding slots provided in the footplate.
Moreover, although document D1 discloses slots 109a, 109b, D1 [3] as also mentioned by the examiner, these slots are used to separate respective tiles. These slots are not comprised in the footplate and cannot be used to let axles of the pulleys slide in them, and accordingly, do not help the killed person to arrive at the claim.
Instead, being confronted with the objective technical problem of improving robustness, the skilled person may use a more durable elastic band or a different configuration of the tiles. This does not lead the skilled person toward the claim. According, the skilled person cannot arrive at the claim.
Inventiveness, D1+D2
The skilled person would not combine document D1 with document D2, since document D2 explicitly mentions that such a combination does not lead to a workable solution, D2 [2].
However, even if the skilled person would combine document D1 with document D2, this would not bring the skilled person any closer to the claim since document D2 fails to disclose any of the missing features. According, no combination of documents D1 and D2 leads the skilled person to claim 1.
Inventiveness, D1+D3
The skilled person would not combine document D1 with document D3, since document D3 does not address the objective technical problem that the skilled person wants to solve, namely, improved robustness.
However, even if the skilled person would try to combine documents D1 and D3, this would not allow the skilled person to arrive at the claim. As also mentioned by the examiner, document D3 does disclose a pivot pin that, at first glance, has a number of features in common with the claim, in particular, an axle, a pulley, and an elastic band. Namely, the pivot pin is implemented as an axle attached to the footplate. The axle is held by a slot in the deck and screwed to a pulley. The position of the pivot pin can be changed by moving the axle forwards and backwards in the slot, as indicated by
the arrows. An elastic band with a handle is attached to the pulley, D3 [4].
However, these features are used in document D3 for a completely different purpose than in claim 1, and accordingly, the skilled person would not implement them. A goal of document D3 is to allows the position of the pivot pin to adjust to the snowshoe’s centre of gravity. Another goal is to be able to quickly disconnect the pulley from the axle. Neither goals relate to improving the robustness, so the skilled person would not consider to implement the features of document D3.
In any case, document D3 differs from the claim in that the position of the slots and the function of the axle are completely different (D3, [4]-[5]). In document D3, the slot is formed in the deck, and based on document D3 the skilled person would also not deviate this because "the inventive idea is that the slot 309 is formed in the deck 301", D3 [5]. According to the claim, however, the guiding slots are provided in the footplate and not in the deck, and the axles are attached to some of the joints. So also for this reason, the features do not allow the skilled person to arrive at the claim.
In conclusion, no combination of documents D1 and D3 leads the skilled person to claim 1.
Inventiveness, D1+D2+D3 and conclusion
The skilled person would not combine documents D1, D2, and D3 for the reasons above, in particular since document D2 is explicitly mentioned to be incompatible with document D3 and since neither document D2 nor document D3 propose to solve the objective technical problem that the skilled person has.
However, in the unlikely case where the skilled person tried to combine the teachings of documents D1, D2, and D3, the skilled person would still not arrive at a solution falling under the scope of the claim. In particular, none of the documents teach to attach pulley axles to joints of the deck, so no combination of documents D1-D3 can provide this feature.
Accordingly, new claim 1 is inventive over the cited art, and so are the depending claims by virtue of their claim dependency.
Thanks for claims and response letter.
ReplyDeleteSo no "the pulleys (8) can rotate freely" in claim 1?
I decided it like you and I did not add "each axle (10) being attached to a joint (6)" part.. so I hope I will not lose too many marks.
DeleteI am amazed how fast you are. I did not get it in 3:30 Hourers....
ReplyDeletePretty sure I am going to resit that one again....
Did you run out of time, or go in the wrong direction?
DeleteI ran out of time. I had claime one as it's shown I had the argumentation.
DeleteI new it was novel and inventiv, but I did't had the time to write novellty and proablem solution down... Was silly not to start with those two... This Mistake won't happen again next year :)
I don't expect the EPOs model solution will differ much from this, at least not to the extent of paper B 2021. Lots of pointers in the letter and D2. This may have been an easy year for B.
ReplyDeleteIt seems "elastic band" made in claim 1. I still think it is preferred embodiment.
ReplyDeleteA bit confused about new claim 4 and adding a dependency to claim 1 i.e. isolating the expansion control means from the quad/triangular tiles and/or carbon fibre tile layers. I thought (obvs wrong) that it was only disclosed in relation to these embodiments?
ReplyDeleteNo, not an easy B paper as far too mechanical. Too much smoke to see through. Not a great paper.
ReplyDeleteTrue. I see that the papers are more and more designed for people with a solid mechanical background, which makes also easier to timely go through all the matters.
DeleteIs paper B still meant for non EM people? Especially for those whose language is not an official language of the EPO? Wasnt it promised that the paper B after the merge of CH with EM would have been technically accessible to everybody? ...This of today was really not. I believe nobody has doubts about this. Likewise, I believe it would have required you at least a basic understanding of mechanical engineering to effectively be able to read the paper and make technical sense of it. Since when are chemists supposed to be tested for something they are not trained for? The aim should be to test your competencies and suitability to practice wehen dealing with an office action. I understand it may be difficult to have a chemistry and EM part. However technically the paper should be neutral as it was promised. Today was really a blow for non EM people, especially for non native speakers ("Gait?!?"). The technical difficulty coupled with the linguistic complexity made it really difficult to read the whole text though and link the features with corresponding technical effect. I hope this will be taken into account during marking
ReplyDeleteAgree. Needs equal level playing field. Was not this year.
DeleteAgreed with this, just very technical without sufficient definition of the technology. Some years the examiners get the "technology" right, this year it doesn't seem like they have unfortunately.
DeleteHopefully, this will be taken into account when marking.
I didn't think the technology was that difficult to understand. It's snowshoes. They fold. There's a rubber band squishing them together with pullies and slots. It feels like any one who can put together a Lego kit should be able to understand the technology.
DeleteTempleton - I think it is easy to say in hindsight but of all the papers I did, including the specifically EM pre-2017 papers, this seemed the most daunting when initially looking at the figures - maybe this is just me. I think if the opposite had happened - i.e. a dual technical field paper B where the subject matter was more chem-based than a pre-2017 chem paper they would be quite a big outcry!
DeleteIt's not so much the technical field as the technical detail. It's irrelevant if it's snowshoes, cars, rockets or can openers: what matters is the technical detail, and that was just over the top for non mechs.
DeleteI formulated my OTP as the provision of a snowshoe having a footplate that can expand and contract to facilitate a more natural walking gait and adapt to changing snow conditions.
ReplyDeleteHopefully there will be some marks for this, the argumentation after was similar...
Same claim 1 but incorporated features of claim 2 as suggested by the Client. See [013]:" Various modifications are possible that do not go beyond the scope of the
ReplyDeleteinvention. The tiles 4, 5 may assume different shapes to those described above eg.
they may take the form of strips.".
I used claim 3 because in my eyes it gave novelty and inventive step by the special acetate foil. This could also be argued well with the problem-solution approach (a technical effect of this distinguishing feature was disclosed). This would also make the solution EPC-compliant.
ReplyDeleteDoes this solution mean that one has not passed, although one has found a solution that conforms to the EPC?
I think this would go against the wishes of the client, who mentioned that the claim could further amended with claim 6. So yes, possibly novel and inventive, but not what the client wanted so probably not the full points. But I would not go as far as to say that you automatically failed.
DeleteSimilar here regarding claim set. But you are completely silent from the crossed reference of D1 in D2. I think embodiments of D1 are considered to be taught in D2 because of explicit reference, this should be mentioned at least in the novelty part, but also, perhaps could render D2 as CPA (embodiments of D1 are considered to be therein disclose plus the embodiment of D2 itself is a deck with tiles all connected unlike in D1 read tiles), what do you think?
ReplyDeleteIs there really cross reference? There is no explicit incorporation by reference, but instead an explicit statement that the two are not compatible. As such what DP has above seems right, if not too much given the lack of useful disclosure.
DeleteI'm actually not sure, I spent ages mulling over it. But it does disclose the problem (robustness) and intends to incorporate the contracting means of D1 even though it fails, it is explicity referenced so the teachings should be incorporates in D2 as disclosure. Ain't it?. Then you would have the embodiments of D1 + the deck of D2 (which is actually closer to the invention). I think it should be at least mentioned and addressed in the response.
DeleteI am with 123 on this one. At the very best, D2 discloses two embodiments, one being the foldable deck and one being the rest of a snowshoe, as the combination is explicitly not disclosed. In my opinion you cannot start from D2, as you would need to start from an inoperable disclosure, which can never be a "promising springboard".
DeleteYes, I agree it discloses the embodiments of D1 and the embodiment of the foldable more robust deck (with all tiles connected there between unlike D1 where rear tiles aren't). Thus I would say it is the most promising starting point.
DeleteI'm not sure how it can be most promising starting point when it explicitly states that you cannot combine the two and all attempts failed - it is not an enabling disclosure of a snowshoe, since the skilled person reading D2 would not be able to make a snowshoe any different to D1
Delete"If a document (the "primary" document) refers explicitly to another document (the "secondary" document) as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the primary document if the document was available to the public on the publication date of the primary document"
DeleteThe embodiments of D1 are considered to be disclosed in D2 by reference. D2 ALSO discloses a deck as a further embodiment (said deck with all tiles connected to joints). The purpose is a more robust deck (not snowshoe.. ok) but if you assume that it also discloses the embodiments of D1 because of cross references....
I'm struggling to see this from your perspective... The guidelines specifically say: "If a document (the "primary" document) refers explicitly to another document (the "secondary" document) as providing more detailed information on certain features...". D2 doesn't say that D1 provides more detailed information on certain features. Instead, D2 says D1 is not compatible with D2. That is not a disclosure that more details are provided.
DeleteI think you are right it's actually not a cross reference because it didn't mentioned an specific feature on an embodiment of D2. I messed it up. I knew D1 was CPA but I thought it may be a trap or something. I have the problem and distinguishing features right though (and claims). I hope the wrong CPA is not enough for a fail.
DeleteThat's ok mate, I messed up claim 1, think there's a good chance you'll still pass.
DeleteUsually when using wrong CPA, you can get 30 of 36 max or 28 of 36 max if your argumentation is sound. So don't worry too much.
That's great news, Thanks! I hope so because I didn't have much spare time to develop much on basis (I rushed through it). I hope correct claims, inventive step (with wrong CPA) and novelty do the job to the fifty points line.
DeleteGood luck!
DeleteI messed up claim 1 last year and failed.
DeleteIndeed, I also think that D2 discloses just the deck for snowshoes. I don't think D2 really incorporates D1, it just refers to it. And even if it does, the deck of D2 and the snowshoe of D1 would be different embodiments. Document D2 does not disclose an (enabled) disclosure of the combination of the deck and the snowshoe, so that cannot be the closest prior art.
DeleteYou could start from the deck as closest prior art, but then you would never combine it with the snowshoe because of the prejudice mentioned.
Or, as we did in our solution above, you can start from the snowshoe as closest prior art, but then the deck does not help you.
In any case you cannot arrive at the invention.
I amended the claim 7 new claim 5 by using the pivot pin comprising a disconnection means including a spring and a push button based on the description of the application since it says that this is for detaching the binding (3) from the footplate (2)
ReplyDeleteI did the same. I interpreted the passage from the description as that the spring and push button are required for detaching the binding.
DeleteWhy?
DeleteI have more or less the same claim 1, however i also incorportaed due to the client's suggestion that the pullys (8) have wheels that rotate around the axles (10). That was definied in [04] i guess. do you think this will be ok?
ReplyDeleteI included that the axes of the pullies can glide freely, also following the client's suggestion. I don't think we will loose many points due to limitations, maybe 4 marks or so. I made some small errors because i rushed through the amendments to have sufficent time for argumentation. I still think that was a good approach as most marks are for argumentation anyway. So i can accept some marks lost here and there for e.g. unnecesary limitations to the claims. There simply isn't enough time to have both the optimal claims set and ellaborate argumentation.
DeleteAbout the elastic band, in the description, it is stated that "elastic band in the footplate", shouldn't we limit the elastic band as described in the description in the new claim 1? Although this feature is taken from claim 4, after amendment it is a new embodiment which is different from that of claim 4, without "in the footplate", would it go beyond the scope of the application as filed?
ReplyDeleteI struggled with this, and in the end didn't and put a line in the basis saying that it is implicit from features of claim 1... It's a classic case of real life and exams not being the same - in the exam, I suspect they'd consider it an unnecessary limitation...
DeleteMaybe I thought too much, I felt it's a trap:)
DeleteI also thought this was essential when taking from the description and put it in claim 1, though but the elastic band being in the footplate part in the characterising portion - the limitation is a relatively minor one so hopefully only a couple of marks will be deducted if it didn't need to be there. I also felt it helped with the arguments for IS because presumably the elastic band being in the footplate contributes to the robustness (client letter hints the exposed band of D1 on the base makes it less robust).
DeleteThe claim says that "the footplate comprises elastic means [...] wherein the elastic means comprises an elastic band". So at least as we phrased it above, the elastic band is automatically part of the footplate?
DeleteSo then additionally including that the elastic means are in the footplate may be redundant but at least it is not an unnecessary limitation.
DeleteSo, I would interpret "in" more narrowly than "comprises" or "part of", because "in" suggests that at least part of the elastic band is inside the footplate (as opposed to, say, attached to the outside of the footplate, which "comprises" or "part of" would include). So I thought it was a very minor limitation, but one that I nevertheless needed to make.
DeleteTo me it seems that the positioning of the elastic band (as part of the footplate) is a key distinguishing feature over D1 as it is the elastic band that makes the folding/unfolding work. Further, the position of the elastic band in D1 provides the disadvantage of breaking more easily. This distinguishing feature appears a bit neglected in the model solution?
DeleteThank you for the answer, very reassuring!
ReplyDeleteConcerning inventive step over D1+D2,could be a mistake to cite the GL G-VII Annex, Example 4,to say that the invention overcome a technical prejudice, as suggested by the client?
ReplyDeleteI mentioned that as well bug just as minor comment in the D1 plus D2 part, after explaining that D2 discourages the combination.
DeleteI think I got it now: D1 is incorporated into D2 by reference - so all features combined are relevant for novelty. Thanks.
ReplyDeletehttps://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_iv_8.htm:
Delete8. Cross-references between prior-art documents
If a document (the "primary" document) refers explicitly to another document (the "secondary" document) as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the primary document if the document was available to the public on the publication date of the primary document (see T 153/85) (for the state of the art pursuant to Art. 54(3), see G‑IV, 5.1 and F‑III, 8, penultimate paragraph). The relevant date for novelty purposes, however, is always the date of the primary document (see G‑IV, 3).
check the solution provided by delta patents. They mention that the disclosure of D2 with reference on D1 is not enabling. My understanding is that therefore the teaching of D1 with D2 can not be considered as prior art.
Deleteno it is incorporated in this case!!
Deletedoes anyone know how detrimental to the marks it is if you added a new dependent claim? I know it was against the client wishes but in the midst of the exam I think I got carried away which in hindsight I shouldn't have done!
ReplyDeleteI separated out Claim 3, into Claim 3 + the materials in a new dependent Claim 4. (thinking now I do not actually know why).
But as the client did say not to add any new claims - will I lose a lot of marks for this??
i think it is common to not award negative marks per claim. so you will of course not get full marks for claim 3 (and maybe not for claims referring to claim 3) but i guess no marks will be lost for new dependent claim 4.
DeleteClaim 2: I argued that original claim 2 discloses "and" and original description discloses "or" (or vice versa, don't remember), such that and/or does not go beyond the application as originally filed.
ReplyDeleteThe description can be adapted for disclosing original claim 2 without prejudice to Art. 123(2) EPC.
I did effectively the same however in two sentences. The wish was to change it to include the OR-Version. The and Version was already in the claim and not objected although kind of unclear, because one tile can't have both shapes. So I put ", wherein individual tiles have either a rectengular or a rounded triangular shape". And cited parts of the description that supported this. I felt better like this than just ignoring the client's wish.
DeleteFor the claim stating:
ReplyDelete"comprising a flexible plastic sheet made of a material like polyvinyl acetate and/or polyethyl acetate."
i removed the part that says "a material like" and referred to T172/82. What do you think of that?
I was in two minds as what to do for this. The Examiner hadn't objected to it, and it was in the spec and claims as filed. I thought that any amendment (apart from deletion of the entire claim) would arguably add matter, so I left it as it was provided.
DeleteI added that D2 contains evidence of a "long felt want" and tacked that on to the end of my IS arguments.
ReplyDeleteI wonder if there will be a mark for adding in foldable in the line "wherein the foldable deck (1) is composed"...consistency in claim language and all that :p
ReplyDeleteI also closed out claim 1 with the words thereby allowing folding or unfolding of the foldable deck - wonder how many marks will be deducted for this?
I applied 3 point essentiallity test GL H-V,3.1 under the arguments for basis of new claim 4 (origional Claim 6), instead of intermediate generalization test GL H-V,3.2.1 under the arguments for basis of new claim 1. Is that allowable?
ReplyDeleteI did the same! not sure how/if we will be penalised.
DeleteB was better than last year, but it is so clumsy from the screen with so little parts printable in advance. Wiseflow is too poor in windows management for me. Not at all real life, where I can have multiple windows open side-by-side to view multiple pdfs, and where I split my editor window in Word to see one part of my response while typing another section. I hope I passed, but if not I hope that Wiseflow will be abandoned for something better or otherwise significantly improved.
ReplyDeleteI wanted to point out that the French version of the paper has a difference
ReplyDeleteI wanted to bring to the attention that the French version of the exam has a problem in the translation of one of the amendments suggested by the client.
Indeed in the French version, the amendment made by the client on claim 3 "comprise" does not exist in the description, but another term "compose". This constitutes an additional difficulty compared to the other versions, we had to spare more time to think about an issue that was not existing for other versions.
As a reminder, in the English version the client amended claim 3 by replacing the term "consist of" by "comprise", and the amendment is based on paragraph 11 in which the term "comprise" is used.
However, In French the client replaces in claim 3 the term "constituées de" by "comprennent". Whereas, in the description in paragraph 11, the term "comprennent" is not used at all, it is only the term "compose" that can be found.