B 2023: first impressions?
To all who sat the B-paper today:
What are your first impressions to this year's B-paper?
Any general or specific comments?
Surprising elements in the client's letter and the prior art?
Did you have enough time?
How many marks do you expect to have scored?
What is your expectation of the pass rate and the average score?
How did this year's paper compare to the 2017, 2018, 2019, 2021 and 2022 papers?
Similar difficulty level?
Could you understand the examiner's objections? And the client's wishes based on his letter and his proposed amendments? Was the Art.123(2) argumentation difficult, if any? Clarity? Novelty? Closest prior art selection, distinguishing feature, effect, objective technical problem, and the rest of the inventive step argumentation?
Was the subject-matter well understandable, for chemists as well as e/m candidates?
Multiple independent claims? Functional features?
The core of our answers will be given as soon as possible in a separate blog post.
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 14-03-2023 14:14"), 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.
Please post your comments as to first impressions and general remarks to this blog.
Please post responses to our answer (as soon as available) to the separate blog post with our answer.
Thanks!
0.3 to 1, anyone?
ReplyDelete0.4-0.6, Was not sure the other one was narrow enough
DeleteI think 1 is far removed from 5, should be narrow enough considering that D2 didn't disclose 1
DeleteMaybe you are right. It is not easy to say when you are fare removed from endpoint and provide a narrow range when having 0,1-5 in D2. What further speaks for 0.4-0.6 is that it was the optimal range according to the description
DeleteWe discussed recent T 1688/20 of 19.10.2022 in the office. It says that narrow and far removed tests are not appropriate. Need to use the gold standard instead.
DeleteExcept that such case law is too recent right?
DeleteOh sorry, 19.10.. misread
DeleteOkay and the content of the examination can be anything up to 31.10.2022, that is a tough one a
DeleteIt's hard to think that the paper would have included that decision. it was probably already drafted by then
DeleteThere was a problem with 1. it has disadvantages or sth. so i choose thr narrow one.
DeleteThickness and undisclosed disclaimer anyone?
ReplyDeleteDisclaimer for what? You did 0.1 to 1, and 0.1 disclaimed?
Deletethickness was essential feature in my opinion otherwise too much lysis. Not used a disclaimer though
DeleteI also did an undisclsoed disclaimer for thickness of 200 um to restore novelty over D2, and included claim 2 with tapered pores into claim 1 for inventive step versus D1. I could not figure our a range of pores far removed and narrrower than the ones disclosed in D1 :(
DeleteI found this paper to be very different from previous papers, particularly in that one had to devise a strategy to restore novelty over D2, which was a. 54(3). Client had clearly not done a good job, and believed that D2 should not be citable because it was their own application - we do not have grace in EP! I was overwhelmed by the many different possibilities of restoring novelty over D2, it seemed like every time I found a new possibility it was not a good option.
DeleteI chose to limit on the thickness and disclaim "around 200 micron", since I found this option to have the broadest scope, in so far as the tapered pores could have a much broader scope, and we only lose protection for the particular membranes being around 200 micron. With modern day standard measurements, I would believe that "around 200 micron" is only a few microns lost in protection, and should it come to a question of infringement, a particular membrane at 200 micron, would likely be considered as equivalent, though I do not know how equivalency works when the equivalent is disclaimed.
There was also an obvious error which had to be corrected, however it seemed that annexed document and D1 was enough to show what was common general knowledge at the time of filing, however why was there not indicated a date on the annexed document.
Objection under rule 43(2) was easily removed, since the device in claim 4 also had to be limited to an comprise array detector[or at least that was how I restored novelty over D1], since it was clearly described in the application that the strips would be usable in any prior art device.
Since there was only D1 and D2, and D2 was a. 54(3) I do not think a large proportion of points is reserved for inventive step this year - D1 + common general knowledge was not really a discussion.
Being from life science I found the SM easily understandable of strips and devices for testing blood glucose levels.
The biggest problem with being life science was maybe that I focused a bit on D1 mentioning peroxidase, and D2 and the application as filed mentioned glucose oxidase (?as far as I recall..), however no combined disclosure mentioned the two reagents in combination. Thus, it was actually not clearly described, in my opinion, how the improved measurement with two wavelengths was achieved. Since this it clearly not something that all candidates would stumble upon, I tried not to focus my attention in that direction.
Did not see comments while writing the longer response.
DeleteYes, claim 1 was also limited with the SM of the previous CL 2, as proposed by the client, I then also limited CL 1 such that the membrane has a thickness between 140-400 micron, wherein the thickness is not around 200 micron [or at least that is how I recall my limitation, the specific range was given in the application]
I did the same as you, James
DeleteWhy adding the thickness to the claim?
DeleteI may have completely overlooked it, but it was not objected by the examiner and D2 discloses 200 um. It did not seem to be relevant for the invention to have it claimed.
james I also added 140-400micron but did not disclaim 200. Novelty was imparted by pore size in my case not thickness
Deletethickness essential, otherwise too much lysis. It's in the description
DeleteI don't think you can disclaim "200 micron" thickness for novelty because the skilled person would still seriously contemplate working "around 200 micron" from D2. I think the skilled person would seriously contemplate a thickness of 199 micron for example.
Delete"Novelty is destroyed by an explicitly mentioned end-point of the known range, explicitly mentioned intermediate values or a specific example of the prior art in the overlap. As with the selection of a sub-range, it is not sufficient to exclude specific novelty-destroying values known from the prior-art range, it must also be considered whether the skilled person, in the light of the technical facts and taking into account the general knowledge in the field, would seriously contemplate applying the technical teaching of the prior-art document in the range of overlap."
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vi_8.htm
@Anonymous March 14, 2023 2:50 pm
DeleteThat's an argument of inventive step, not novelty. And D2 cannot be used for inventive step. That's exactly the point of disclaimers vs. art. 54(3) EPC according to G 1/03.
The guidelines reference you provided is one that is specific to art. 54(2) EPC prior art, I think. And there you cannot use undisclosed disclaimers; only if they appear (positively or negatively) in the application as filed
DeletePlus D2 teaches that thicker membranes are undesirable, so even if said guidelines are applicable, one could say that D2 is discouraging the skilled person to use thickness around or above 200. The claimed range could be from 150-400, excluding 200. Maybe?
Delete0.3 to 1 micrometeres for lower and 30 to 40 micrometees for upper anyone?
ReplyDeleteI did 0.3 to 1 for lower and 30 to 100 for upper.
DeleteWhy? 30-40 is more narrow tho! 30 is a disclosed endpoint tho!
DeleteThe other range was already narrower, I thought we don't need to make both narrower for the novelty and one should suffice
DeleteMy thought for keeping 100 in the opper was that their data showed imporoved sepereation using upper with 100
DeleteI did 35 to 40, by combining the point value in the example with the range
Deleteyes, I was worried though because endpoint 30 was disclosed. However, figured that the selection of both ranges being different, and in particular the lower being novel in itself (narrow and far enough from 0.1 to 5) would make it work...
Deletebut amending 0.3 to 1 and 30 to 100 includes 0.3-30; 0.3-100; 1-30 and 1-100, so the upper limits (30 and 100) are the same as D2 and thus not narrower nor far removed, right?
Delete0.3 to 1 should be narrower and far removed from the 0.1 to 5 of D2, at least that's what I thought
Deletegentle taper was necessary for TE, I think upper range should also be amended
Delete30-40upper, 0.5 lower…. I wanted to do 0.4-0.6 as it was preferred but got scared lol I figure 0.5 definitely is a purposive selection with technical effect as mentioned used in all examples
DeleteI'm pretty sure 0.5 was a trap, because 0.5 didn't have the best separation performance.
DeleteIt had the optimal separation performance to separation speed. It is therefore the best option. It was also 0.5 in all the embodiments. Paragraph [10] is abundantly clear that 0.5 is most preferred and that 0.1 is disadvantageous to the user.
DeleteYes, but the technical problem wasn't about that.
DeleteFurthermore, [02] sets out that the problem the aim of the invention is to provide a simple to use system that is rapid, inexpensive and accurate.
DeleteThe invention is about that though because D2 already claims 0.1 on the lower surface so the 'best' separation is already covered.
DeleteThought this one was a bit of a stinker! Glad to be over with it though.
ReplyDeleteI amended claim 1 to recite 0.3 - 1 micrometres for the lower diameter and 30-100 for the upper diameter...
ReplyDeleteI kept the hydrophilic membrane requirement
I did the same. Also added the array whatever to claim 5 and the feature of using an additional wavelength to render that device novel over D1/D2
DeleteYep, same here
DeleteThe paragraph about the separation speed was very confusing, but I think that was only put there as a trap
DeleteYupp, did the same. Only the lower range and hydrophillic. Hope it is the correct answer 😰. Also added in the device claim the array for several wavelengths. Futher drafted a completly new method claim for measuring the blood sugar level following the procedure in the description and specifying providing the strip of claim 1 and the device of amended claim 4. There was lots of text about the use of this two and the advantages of combining them, so looked to me as it must be claimed
DeleteI don't think that the hydrophilic nature was essential. As far as I understood the description, only the pore size is essential for the desired effect to be achieved. Hence, for me, removing "hydrophilic" passed the essentiality test
Deleteno way
DeleteI ended up concluding that even it was not essential, there were no basis for removing it is the application as filed.
DeleteI agree with S, there was no basis in the application which allowed you to pass the three point test.
DeleteFor claim 5, was it enough to state that the device is adapted use with the strip of previous claims + the array feature?
DeleteI am not sure we need to state an extra wavelength as the device as such is not novel, but never used as the invention. So for me the adapted to + array feature were enough.
Thoughts?
There is only disclosure of hydrophilic. I don't think this could be removed. Also, thickness of membrane was essential, otherwise no technical effect
DeleteSame here. I kept hydrophilic because the application clearly stated ‚the membrane is hydrophilic‘. Also I added the array in claim 5 to measure several wavelengths.
DeleteI thought that the device of claim 5 is novel, but not inventive over D1 if you do not include the additional wavelength feature. Because that was the whole purpose of the array detector
DeleteEQE enjoyer, the application stated that the device is known (even with the array). I think novelty was that it was adapted for use with the strips of the claim.
DeleteBut I also added the array feature.
Yes, but does it matter as long as the claim is novel over the prior art presented by the examiner?
Deleteclaim 5 added array to restore novelty and that is it. Interrelated product with strip so can have two independent claims in same category
DeleteTrainee, the device as such was not known. The array is known, but not a device for measuring glucose comprising such an array.
DeleteThe array detector restored novelty over D1 and D2, but I thought that it is not enough to be inventive over D1, so I've also added an additional wavelength measurement as a feature
Deletemore than one wavelength increases accuracy so inventive over D1
DeleteThanks B.
DeleteAs I remember, the application stated that the device is know (with array), however not used to measure glucose with strip.
Thus, claim 5 for use + array is not novel over the own statement in the application.
The last paragraph stated something that the device is specifically adapted to use with the strip.
Therefore claim 5 is novel if we add "adapted for use with the strip of claims" plus the array feature. Does it make sense for you?
@Trainee
DeleteThe application cannot render itself not novel because it was not published before the effective date.
The devices that use a spectrophotometer with an array detector are not devices for blood sugar measurement, so they cannot take away novelty of that claim either.
This statement was there to make you think about how you would modify D1. In particular, array detectors are known but not used for this purpose (so the technical effect of multiple wavelength measurement is also not known), so why would the skilled person want this in D1?
I think the feature in claim 5 of "an opening for inserting the strip" would render the device novel over the known array, because the known device wouldn't comprise this feature because it hadn't been used for measuring glucose with a strip.
DeleteI only amended claim 5 to include using the extra wavelength. This seemed inventive over D1 (which lacks the additional wavelength) because using an additional wavelength won't work unless a strip having a membrane with tapered pores is used. Therefore, because such a strip is inventive over D1, it would be inventive to use an additional wavelength since this feature requires using an inventive strip.
@Claiming Novelty
DeleteClaim 5 is already novel over the array detector as such by virtue of it being a device [suitable] for measuring blood sugar levels. Indeed, the opening in the device where you can put the strip is one of the features that renders it suitable, but the application as filed is clear in that the array detector was never before used in a device for measuring blood sugar levels
Armin, you are correct, but the application can be used to state that it was generally known before its filing date that the device with an array was known.
DeleteWhat is new is not that the the device is "for blood sugar measurement" as the known devices are suitable for said measurement. To me, the device "adapted to" use with the strip of the previous claim together with the array is what makes it novel. There was even an effect described in the last paragraph.
So I amended claim 5 with "adapted for" and added the array feature.
@Trainee
DeleteThe expressions "for", "adapted for", "suitable for" and "configured for" all effectively mean the same thing. I think your amendment to "adapted for" was not needed since the device is [suitable] for blood sugar measurement, but it is not a limitation either (since "for" means the same thing), so I doubt points will be awarded/deducted for that amendment anyway.
The known application of a spectrophotometer with an array is not for this purpose, so it is already novel.
@Claiming Novelty, I did exactly the same!
DeleteI did not know that they mean the same thing. Maybe it is only in CII that for example "configured to" has another meaning.
DeleteWhen you say "The known application of a spectrophotometer with an array is not for this purpose, so it is already novel.". A new product for a new purpose/use does not make the product novel under art.54(2), as I am sure you know. A use claim in this case is more suitable to capture the new use.
The exception is medical use under art.54(4)(5), which was a big debate in paper A.
In other words, even if prior art does not disclose the product for the same purpose, the product as such is known, in my humble opinion.
@Trainee
DeleteThere may have been a misinterpretation/miscommunication. What I meant was that the known spectrophotometer, by itself, is not suitable for measuring blood glucose levels. The spectrophotometer is merely one component of the device *for measuring blood sugar levels* according to the present invention. Therefore, the spectrophotometer being known in other fields does not render a device for measuring blood sugar levels including such spectrometer not novel, but it may be relevant for inventive step (if its implementation in conventional devices is obvious).
You need more features than just the spectrophotometer, such as the 635 nm wavelength and the opening for receiving the strip. However, both of these features already appeared in the original device claim 5.
The product (a device for measuring blood sugar levels) that includes a spectrophotometer *with an array detector* is not known from the prior art.
"In general.." (smallest pore diameter removed anyone? And essentiality test anyone in this regard?)
ReplyDeleteClaim 1 amendment - add gradient (in client's letter and required by reference to claim 5) + (30-40 and 01.-1), two list principle. Claim 5 - add array detector (restore novelty in view of D1)
ReplyDeleteat first glance, I also thought the two list principle. However, I later realized that it seems that the diameter of the upper surface and the diameter of the lower surface must be in a certain combination. Rather, the diameter of the upper surface must be large enough and the diameter of the lower surface small enough to form a tapered structure.
Deletemust not be in a certain combination (typing error ;-)).
DeleteYep, I did this
DeleteI didn't see how the strip of D2 discloses an opening within the context of claim 1. The opening "is for measurement and putting into place the strip" and is provided "in the reagent part".
ReplyDeleteThe 'for measurement' is debatably implicit from D2, since the opening in the present application is provided to allow light to access the permeate. However, the remainder, I could not see how it was directly and unambiguously disclosed in D2.
Although D2 makes reference to D1, this is only in relation to the use of a membrane to filter out red blood cells. The opening is then not incorporated by reference in the prior art.
I definitely made it a lot more complex in my head than I should have. It was probably safer to include a limitation (and take the hit if unnecessary) than to take this approach. Hopefully if the exam committee disagrees I can still have enough points with the device claim, the basis reasoning and R. 43(2) EPC.
GL G-IV 8:
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 (see T 153/85)"
GL F-III 8, penultimate paragraph:
"If, for the disclosure of the invention, a document is referred to in an application as originally filed, the relevant content of the reference document is to be considered as forming part of the content of the application for the purpose of citing the application under Art. 54(3) against later applications."
GL G-IV 5.1:
By the "content" of a European application is meant the whole disclosure, i.e. the description, drawings and claims, including:
(i) any matter explicitly disclaimed (with the exception of disclaimers for unworkable embodiments);
(ii) any matter for which an allowable reference (see F‑III, 8, penultimate paragraph) to other documents is made; and
(iii) prior art in so far as explicitly described.
Under point (ii) and (iii), D2 makes reference to D1 but only in relation to the teaching of using a membrane (with uniform pore size) to filter out red blood cells. No specific reference is made to the teaching of the opening in D1 under point (ii), nor is the opening of the prior art (known strip) explicitly described under point (iii).
Therefore, the opening is not directly and unambiguously derivable from D2.
I did the same reasoning, and limited cl1 with cl2... but damn am I uncertain wether this is the answer they are looking for.
Delete@IB I absolutely feel you regarding the last sentence. Like I said, maybe it was safer to take the hit with a limitation since then you can guarantee to get rid of D2 regardless of the opening interpretation.
DeleteWaiting for the DeltaPatents solution, hopefully they can at least clarify the situation a bit. It should come much quicker this time compared to A since the exam is uploaded on the WiseFlow EQE compendium (of old exams) already.
> Although D2 makes reference to D1, this is only in relation to the use of a membrane to filter out red blood cells. The opening is then not incorporated by reference in the prior art.
DeleteI agree. D1 is only considered part of D2 with the more detailed information on *certain features*, i.e., the membrane.
K.
That was so hard! I went with 0.4 to 0.6 (due to mention of optimum effect) and 30 to 100. I didn't even consider a disclaimer but that sounds handy!
ReplyDeleteEveryone's approaches are so different, no wonder so many marks are associated with the letter, rather than the claims. Usually a 70/30 split right?
On a second note, I struggled to find basis for the adhesive claim with my new claim 1... Adhesive seemed only to be mentioned in the claims, so I didn't know how to met the 2nd part of the intermediate generalisation test 😱
I had about 4 different options to amend claim 1. But it was not clear whether D2 was completely considered incorporated (then opening disclosed in D1) or only where it related to the membrane (no opening in D1). Guidelines not conclusive.
DeleteWith opening not disclosed, novel over D2 and various amendments possible for novelty over D1: tapered pores of various diameters, but also just a membrane thickness of 150 to 400 µm without any limitation to pore size.
K.
@K
DeleteI think what was important is that the new measurement device can only be used with tapered-pore strips. This was explicitly stated. Therefore, you were not entirely free to limit claim 1 to whatever was novel and inventive over D1, because you also have to comply with R. 43(2) EPC (multiple independent claims).
In other words, if you chose the membrane thickness, the device and strip would not comply with R. 43(2) EPC and you would have to choose one or file a divisional to get both (in separate applications).
DeleteOn the other hand, if you limit claim 1 to the tapered pores, you CAN combine both the strip and the device claim in a single application
Hydrophilic essential BUT out from the chracterising portion anyone?!
ReplyDeleteyep
DeleteDammit, didn't change the two part form
DeleteI referred to GL F-III, 8, then said that the opening is not disclosed by D2 and in D1 it is not essential (see opening only in dependent claim 2 of D1 and not in claim 1). So the opening is not disclosed by D2 for novelty. Then you do not have to narrow the ranges. It can also be you can change it to not use the ranges to broaden the scope even more and only limit to having tapered pores.
ReplyDeleteI thought the same as you, though I did not use the 'essentiality' of the opening in D1 but rather I used the fact that no specific reference is made to D1 in relation to the opening.
Deleteopening might be implicit disclosure
DeleteWhy should it be implicit? In D1 it was obviously non-essential as it was only included in claim 2 and not in claim 1. The person skilled in the art could consider alternative ways of making sure the measurement was possible without including the opening.
DeleteEven if you would get the opening implicitly because you want to access the permeate SOMEHOW, that still does not render the soft-limiting '[for] putting into place the strip" and the opening being provided in the reagent part implicitly disclosed.
DeleteThe fact that D2 refers to "known strips" is not important for novelty if such known strips are not identified as having this opening in D2.
Still, I am doubtful whether the Exam Committee put left out the opening here as a trap. Hopefully the marks from the rest are still available even if the opening is 'implicitly disclosed'.
TheOne320, the opening in claim 2 of D1 refers to the opening of the device, in which the strip is inserted. Not the opening (3) of the strip for access of the light source to the reagent part, as disclosed in paragraph 3 of D1.
DeleteThe strip could also be without an opening if that is not disclosed, as it is also not disclosed that the strip is a closed device. It could simply have an exposed face, as a microscope slide.
DeleteK.
Claim 1 amendment: incorp. claim 2 and amend lower range to 0.4-0.6 because upper range of 100 still worked (as shown in Table). Kept hydrophilic (no basis for deletion).
ReplyDeleteClaim 5 amendment: add array detector for differing wavelengths and amend to be configured to be used with strip of preceding claims.
Client was ok with strip+device, strip not new over D2, device not new according to description. Went for a system: strip with tapered pores and device with array. Client can protect strip with D2 so no loss for client to do system. What do you think?/Lo
ReplyDeleteI had no technical difficulties at all. Wiseflow worked the same as with the Compendium papers.
ReplyDeleteStruggled with the paper, disclaimers are terrible, ranges also not nice with mechanical engineering background, topics were chemical.
M.
It was an odd paper. It seems most people provided a range in claim 1. I only specified that the smaller membrane diameter was 0.5 because 1) the application stated that they only use 0.5 in practice, 2) 0.5 was presented as the optimum size due to balancing separation efficacy and separation time and 3) the table shown in the application showed best result only with 0.5 as the smallest diameter. I didn't feel like I need to specify the size of the larger diameter (except that it is larger than the smaller diameter because 1) 30 and 100 were in the range of 30-100 in D2, 2) I felt just having a surface with 0.5 diameter was enough to differentiate from the prior art as none of them taught specifically 0.5 and 3) I thought there was support in the description for only specifying the size of the smaller diameter so long as the larger diameter is specified to be larger because the larger diameter.
ReplyDeleteI did 0.5 for lower for the same reasons. However, 30-100 was needed for upper because D1 disclosed 0.5 and there was no basis for general tapering
Delete0.5 was a safe bet, but I thought it's too limiting because you don't need to be inventive over D2
DeleteI thought it was too risky to say that one of the disclosed ranges was narrow with endpoints far removed enough to be novel over the known range. I figured 0.5 is definitely novel and covers all their embodiments.
DeleteAF, do you remember which paper? Thank you in advance!
Delete@AnonymousMarch 14, 2023 1:46 pm, I didn't think D1 disclosed 0.5. I thought D1 disclosed 0.1-5.
Delete@AnonymousMarch 14, 2023 2:06 pm sorry I don't understand what you mean by which paper. Can you clarify?
Ah sorry you're right
DeleteAF, Sorry, I misread and read "old paper" instead of "odd paper"....
DeleteDevice COMPRISING the strip according to...anyone? Reference signs anyone?
ReplyDeleteYes, kindof: a system comprising. strip and the device with the arraything with 2 wavelengthes/Lo
DeleteThe strip is not part of a device, so how can the device comprise the strip.
DeleteYes, reference signs were missing. Probably worth only 1 mark though.
DeleteA system wouldn't make sense, but maybe an apparatus?
DeleteA system comprising 2 parts, like a key and a lock, together they do something, alone they dont. Strip could for sure be used alone, used with other "measuredevices" but strip wasnt new over 54(3). However I thought client has strip alone protected by their previous application as it was still pending. Withdrawing was my first thought but since they gone on vacation to somewhere this was not an option.
DeleteSame here, device comprising the strip according to ... to limit claim 5.
DeleteI don't think that merely specifying the array detector in claim 5 (without including the strip) would suffice for novelty and inventive step because the spectral fotometer with the array detector was described to be known and is therefore arguably SUITABLE for use with the strips to measure blood sugar (GL F-IV, 4.13.1).
@Anonymous March 14, 2023 2:16 pm
DeleteA device for measuring blood sugar levels with an array detector is not known (explicitly stated in the application as filed).
Indeed, the spectrophotometer with an array detector (which is known as such) COULD be used in a device for measuring blood sugar levels. However, the mere existence of the array detector does not anticipate a device for measuring blood sugar level using the same. It takes an inventor to recognize this and adapt the device accordingly.
GL F-IV 4.13.1 Interpretation of expressions such as "Apparatus for ...", "Product for ... "
"An apparatus which otherwise possesses all of the features specified in the claims but which is unsuitable for the stated purpose or requires modifications to enable it to be so used for said purpose, is normally not considered as anticipating the claim."
The strip and the device together form an easy to use system. However, the device itself does not include the strip, rather it just is able to receive a strip.
DeleteTough one!
ReplyDeleteIs it me or is Paper B become more and more difficult over the last 3 years?
Generally yes but year to year not sure, in 2021 the subject matter was difficult to understand but the main amendments were actually given if you were a little careful to pick up on them.
Delete2022* sorry. 2021 was probably more difficult due to computer implemented
DeleteThis was a tough struggle. Much worse than 2022. Even worse than 2021.
DeleteK.
How the hell does the marking work?!
ReplyDeleteDid anyone at all change claim 5 into a method claim, thereby avoiding R43(2)? I thought that given that the objection had been raised against "a device for use with a strip" and therefore changing the claim category was safer than arguing plurality of interrelated products, which the examiner had apparently already rejected...?
ReplyDeleteThe client was very clear that the device must be protected. So I think you were expected to argue. I did wonder whether to do a method claim as well as the client didn't say don't add claims. But I ran out of time.
DeleteI argued with "Plug and socket" Part F-IV 3.2, but also added the Array detector and the additional wave length. I am pretty sure that they doesn't want you to claim a method.
DeleteStef, I did exactly the same. Array and argued interrelated products with strip
DeleteI changed "for use with" to "using" to explicitly say that the new strips are used. The application mentioned that the device only works with the new type of strips and so the limitation to "using the strips of claims 1 to xxx" should be essential and make the argumentation for interrelated products easier.
DeleteThanks. That's a nuisance.
Delete@TheOne320 - that amendment introduces a clarity problem. "using" is a method term which can't be used in a device claim
Delete@Lower 0.5, true, but how else to limit the device to be only used with the new strips? "for use with a strip as defined in claims 1 ..." is not limiting and further the claim states: "opening for inserting the strip (1)" but that is also not limiting, as both only mean suitable for.
DeleteSuitable for is limiting (albeit soft limiting) - see one of Roel's comments on the paper A thread about molton steel or something.
DeleteI did. The claim was not new, as the client's letter said that the test strips of the present invention can be used in conventional instruments. But making it a use claim results in the new and inventive strip being part of the claim features, and makes it new and inventive. And Rule 43(2) also trivially not an issue.
DeleteI added also a device claim for the improved measurements at two wavelengths.
K.
I went with the selection from two lists principle and recited: upper range of 30-40; lower range of 0.1-1. Hopefully this gives novelty over D2?
ReplyDeleteDoes anyone know the exact case law regarding end points and sub ranges?
I kept hydrophilic but removedit from the characterising portion
I did not want to exclude 100, because all of the examples in the table were given for 100
DeleteAgreed, 100 was mentioned a lot and it wasn't disclosed in D1 or D2? Have we missed something?
DeleteGL H-IV, 2.4 and T 201/83,
DeleteAnonymousMarch 14, 2023 2:21 pm it was disclosed in D2
DeleteAh OK! Thanks I forgot. I made the sub range Novel over D2 I guess!
DeleteNow that I think about it, maybe it was better to keep 0.1 to 5 and narrow the other range.
DeleteMaybe if a tech effect is achieved by 30 to 40 if the lower range remains as 0.1 to 5? Can't recall...
DeleteYou don't really need a technical effect to overcome a 54(3) document
DeleteDid someone notice that this year the client did not mention that he would not like additional dependent claims? Do you think the Examiners expected us adding additional claims?
ReplyDeleteTrue, I did not pay attention to that. Maybe we were expected to claim some method, or an apparatus?
DeleteI doubt it. In my experience with practicing older papers, you were never expected to add dependent claims unless the client expresses this wish (e.g., in the letter or included by them in their amendments)
Delete@Anonymous March 14, 2023 2:19 pm
DeleteThe client's letter expressed the wish to protect the strip and the device. I don't see the purpose of adding a method in view of the lack of explicit wish by the client
yep I noted this, but I had no idea what the client wanted except what he wrote that he wanted, I gave him that, and I didnt made anything else up, except 0.1-100 from description, as I really couldnt tell what client wanted. I however in first claim added biggest possible interval from description to cover 01-100 as those points were mentioned as endpoints of functioning invention and therefore relevent. (An hour later now and Im not so sure anymore) . Novelty and inventive step from combining strip and device w array so no need to disclaim anything. I really do not want to write this exam again....so I hoooope
DeleteI agree, the client's letter was quite confusing with pretty much no pointers to what they exactly want.
DeleteI guess "no pointers" in the client's letter could mean:
DeleteClaim as much as possible:
a) An independent product claim with disclaimer (exclude 200 µm thickness)
b) An independent product claim with narrow pore size. (lower pores 0,3 µm - 1.0µm) + dependent claim 0,4-0,6µm
c) An independent claim directed to the device (with array detector for two wavelengths).
d) An independent method claim to detect blood sugar, including steps using the product and device.
Then arguments for the "obvious error" and "unity" objections.
At least three different PSA's (for a, b and c)
For me due to the limited time very difficult.
I missed b) and d) though it was so obvious.
And this is just about the structure of the claims.
Writing down all the necessary argumentation in just about 3 h, puhh
I deleaated hydrophilic membranes from Claim 1. And as noticed the part that additional dependent claims were not excludet, I made a Claim two were I mentiont that the membran is a hydrophilic membran.
DeleteCan someone explain how the two list applies here? I'm not from a chem/bio background. I couldn't tell how best to interpret the list of "preferably this, further preferably that"...
ReplyDeleteA selection from a single list in a prior art document is not novel, but a selection from two lists is, provided they are "long enough", which is a vague term.
DeleteI didn't think the two-list principle applies here because we were not talking about lists (discrete elements) but about ranges (endpoints and a continuous spectrum in between).
Precisely Armin!
DeleteThanks! I thought the same but was worried by the comments here that I should have considered it
DeleteEPC G/L G-VI, 8 state that "Examples of such selections from two or more lists are the selection of ... sub-ranges of several parameters from corresponding known ranges"...
DeleteSo selecting sub ranges does refer to selection from lists
I think an upper range of 30-40 and lower range of 0.1-1 lacks novelty over D2 despite the two-list principle.
DeleteD2 discloses: "Membranes may have pores that taper in diameter from 200 μm on the upper membrane surface to 0.1 μm on the lower. On the upper surface, the pore size is preferably in the range of 30 μm to 100 μm."
Thus, D2 discloses:
(i) 200 μm (upper) tapering to 0.1 μm (lower) or
(ii) preferably 30 μm to 100 μm (upper) tapering to 0.1 μm (lower).
By a single selection of 30 μm in the preferred embodiment, (ii), you get 30 μm tapering to 0.1 μm. This anticipates 30-40 (upper) to 0.1-1 (lower).
I don't think we were expected to use the two list approach because one of their embodiments in the table had an upper diameter of 100. Therefore, narrowing using the two list principle excludes one of their embodiments.
DeleteWhat do you folks think about the hydrophilic membranes? In the description,all membranes are hydrophilic, but it is not mentioned that this is an essential feature. If I remember correctly, the description only stated that the right pore size is essential. So I thought "hydrophilic" could be removed from the claim in accordance with GL H-V, 3.1 since (i) the removed feature was not explained as essential in the originally filed disclosure, (ii) the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve and (iii) the skilled person would recognise that the replacement or removal requires no modification of one or more features to compensate for the change.
ReplyDeleteI figured that the application as filed disclosed the hydrophilic feature as essential because it was in claim 1 as originally filed and there was nothing else to say that it wasn't essential.
DeleteAgree, kept it, it was essential. No indication of hydrophobic or something else than hydrophile/Lo
DeleteI did the same as hydrophobic candidate. In any case, it was a lame way to test the essentiality test. Usually in such cases there should be a sentence positively saying that the hydrophilicity is not essential. This was not the case, but also the statement in 011 that the membranes are hydrophilic is not a statement that the membranes MUST be hydrophilic.
DeleteCompare this to the pore feature which is clearly described as essential. (009).
You could thus infer that the skilled person would not consider it essential using 009 to support the argument, and also use the same paragraph to argue for the third point of the essentiality test.
I was also not sure, and spent too much time thinking about it. In the end I removed it.
The membrane being hydrophobic was not essential, but there was no real argument to remove it either. It wasn't described as an optional feature and no alternative was given.
DeleteThere was a more general description of the membrane where it is a rigid structure with pore that allows certain liquid constituents to pass while other cannot. This also applies to hydrophobic membranes, So I was able to deduce that hydrophilic was merely an option.
Deletethere is only a teaching of hydrophilic. Cannot delete from claim 1
DeleteI found very confussing the fact that they provided ranges for each end point of the general range. I limited claim 1 to a hydrophilic membrane having pores that taper in diameter from 100 μm on the upper membrane surface to 0.5 μm on the lower becasue this is narrower than the range diclosed in D2 and although 30-100 are diclosed as a preffered end points for the upper limit in D2 they were not disclosed in combination with the lower limit being 0.5. In claim 2 I limit to 30 to 40t the upper limit. I did not realized durig the exam that I could just disclaim the end points diclosed in D2. I feel I will not pass. I change claim 5 into a method one.
ReplyDeleteI think Paper 2023 is very unfriendly to candidates with ET background. I have drafted more than 100 responses during the training, there was none about the amendment of value range. Also Guideline does not show enough examples for such a complicated case, namely combination of different ranges with different single value plus two list ... crying .... (I did 35 - 40 um + 0.3 - 1)
ReplyDeleteI agree with you. I‘m from ET background and came to exactly same conclusion as yours.
DeleteI did exactly that: 35 to 40 and 0.3 to 1.0
DeleteFor isolating 35 from a table I mentioned T201/83 and argued that 35 is not closely associated with all the other features of the membrane. I have noooo clue whether this is right. i just couldn't see any other way to repair novelty. Disclaiming 200 microns seemed odd and not desired by the client.
Is it required that BOTH parameters are novel over D2? Isn't it enough to restore novelty if one of them is novel, e.g., 30-100 and 0.3-1?
DeleteYou may be right. I got so confused with the claim language that I saw (upper membrane values = one end point ) and ( lower membrane values = second end point ) and if I make lower membrane values novel, then still upper membrane values would be disclosed. If one end point is disclosed then it’s disclosed. Thus, I came up with 35-40. However, I have no idea what is wrong or what is right. And it seems 35-40 is not a popular choice here so now I’m kind a scared that I would be facing heavy consequences.
DeleteI thought that limiting the upper surface would not be the right thing to do, because the table showed that (I think?? I don't remember the exact table) the upper surface's diameter doesn't really matter and the invention works properly for all given values of the upper surface diameter. This gave me the idea that we're supposed to cover all values for the upper surface diameter, because otherwise it would be too easy to work around the patent and still achieve the same purpose. So I chose to narrow the lower surface only.
DeleteI also cited T201/83, based on Paper B 2019.
Deletedid anybody stumble upon "smallest pore size" for the lower membrane surface? this is defined differently than the "pore size" for the upper membrane surface?
ReplyDeleteInstead of relying on values or a range for novelty over D2, I amended claim 1 to specify, amongst other things, that the tapering is in a linear fashion over the thickness of the membrane - this feature was described as preferable, and common to all the specific examples in the description. Though D2 discloses tapering (/a gradient of pore size), it does not disclose this specific kind of tapering.
ReplyDeleteDid anyone else take this route to achieving novelty over D2?
Hi. Kind of similar and no ranges. I went for the route that the pores extend from one to the other surface and are tapered. D1 has no taper and no hint towards from-surface-to-surface since it only mentions minimum pore size. D2 only discloses that tapered means pores are larger at the one surface relative to the opposite surface; D2 doesn’t tell whether the pores extend from surface to surface or what is in the middle of the membrane. A tapering of porey doesn’t explain that they can be understood as through-holes or bores through the membrane.
DeleteI defined that the pores are tapered and that the pores extend from one surface to the other membrane surface.
DeleteD2 has no opening, no designation of the capillary for blood transport, no tapered pores, and no extension of the pores from surface to surface.
D1 does not disclose that the pores extend from one surface to the other surface and are tapered. In D1 it is merely disclosed that pores on the upper surface are larger than the pores on the lower surface. Nothing in D1 implies tapered pores that extend from one to the other surface. The skilled person doesn’t know such an arrangement of pores, I argued…
Sorry guys for founding the paper hard, as a chemist the exam was a piece of cake.
ReplyDeleteFor those wondering
The tricks in the exam are
-Correction of the obvious error ml micro Rule 139
-novelty of the subrange (far removed and narrow)
-demonstration of the technical effect by the experiments reported in the table in relation to the arguments for the inventive step of claim 1 over D1
So what range did you choose?
DeleteThe experiments only evidenced the technical effect for embodiments in which the lower diameter was 0.5. Hence why I believe we were expected to limit to 0.5. Narrow and far removed are subjective and subject to case law. There's no way that the exam committee would make the exam hinge on such a thing without providing clearly direction in the paper
DeleteYes, but it was also stated that 0.1 performs better than 0.5 in terms of separation. 0.3-0.5 could be the correct range based on this.
DeleteI'm pretty sure it said 0.5 was the optimum
DeleteIt was the optimum for the balance between speed and separation, not for the separation. 0.1 was the best for separation
DeleteI doubt they will consider 0.3 to be far removed from known 0.1
DeleteThe only range that has a technical effect and is not randomly selected is 0,4 - 0,6 which is disclosed in relation to (0,5). In chemical invention the example 0,5 supports the range 0,4 - 0,6.
DeleteThe other end is far removed though
DeleteI can't see any reason to choose 0.4 as the lower limit for the lower surface. It was implied that 0.3 performs better in terms of separation, because the description said that 0.1 achieves the best separation. It was slower, hence not preferred for the purpose of the invention, but the technical problem wasn't about the speed anyway, it was about separation efficiency.
DeleteIt is as always all about argumentation. At least the following was expected; I guess:
Deletea) An independent product claim with disclaimer (exclude 200 µm thickness)
b) An independent product claim with narrow pore size. (lower pores 0,3 µm - 1.0µm) + dependent claim 0,4-0,6µm + further dependent claim 0,5 µm).
c) An independent claim directed to the device (with array detector for two wavelengths).
d) An independent method claim to detect blood sugar, including steps using the product and device.
Then arguments for the "obvious error" and "unity" objections. Further correct argumentation for Art.123(2), Art.54 and Art.56.
Not so easy as it appears on the first sight.
I highly doubt that these were expected.
Delete@Anon 3:44 I believe both end points must be far removed. See GL G-VI, 8(ii). D2 discloses 0.1 - 5. The skilled person would seriously contemplate working in the selected sub range of 0.3 to 0.5.
DeleteIf that is the case, the only way to establish novelty would be to add the thickness into the claim.
DeleteOr to specify 0.5 as the lower diameter.
Delete0.4-0.6 in lower (It has tech effect associated for being a subrange of an selección invention) to 30-100 (long range allowed with the subrange disclosed in application and it is a two list principle, but may be only 100 could be fine) in upper to obtain novelty over D2 (54(3)). Said ranges are without the hydrophilic feature (in paragraph 009, so, It could be deleted, the hydrophilic is disclosed in another embodiment later, or this is my understanding. The thinkness of the membrana I have a lot of doubts, because all range is too much lysis as it is said but for me It Is not clear to be an essential technical feature as It was written in the application. So, I delete it and left as a dependence... But I dont know
ReplyDeleteHi, I left « hydrophilic » in claim 1 since thé membrane was told to « be » hydrophilic, and did not seem to be an option in the description. I considéred upper range (30-100) could be removed from claim 1 and admissible. And I narrowed the lower range to 0.3-1. Anyone else did like me?
ReplyDeleteDoesn't removing the upper range from the claim simply make it a non-tapering strip? How did you formulate the technical problem when everything in the description was based on a tapering strip?
DeleteThe description mentioned that the strip may be tapered. And that, for example, 100um on the upper and 0.1 on the lower face. I mentioned that the strip is tapered, and that the lower face has 0.3-1um to distinguish over D2
DeleteDid anyone limit the range to one of the examples? Certainly a narrow amendment but gets novelty…
ReplyDeleteIs the feature of former claim 3 "the reagent is attached to the strip
ReplyDeletewith an adhesive" in D2 (Art. 54(3) EPC-doc)?
@curious cat
DeleteIn my opinion, no. And neither is the opening of original claim 1.
@Armin: Thanks for the clarification!
DeleteSo :
ReplyDeleteHydrophilic : yes or no in claim 1?
Upper range in claim 1 ?
Lower range un claim 1?
I did :
Hydrophilic : yes in claim 1
I removed upper range (added it in a dépendent claim), but indicated that the membrane is tapered
I claimed 0,3-1 as lower range
Hydrophilic: Yes
DeleteUpper range: 35 to 40
Lower range: 0.3-1
Added thickness of membrane too as essential feature
Did anyone got for a route without restricting by using values?
ReplyDeleteI defined that the pores are tapered and that the pores extend from one surface to the other membrane surface.
D2 has no opening, no designation of the capillary for blood transport, no tapered pores, and no extension of the pores from surface to surface.
D1 does not disclose that the pores extend from one surface to the other surface and are tapered. In D1 it is merely disclosed that pores on the upper surface are larger than the pores on the lower surface. Nothing in D1 implies tapered pores that extend from one to the other surface. The skilled person doesn’t know such an arrangement of pores.
D2, [004] "membranes may have pores that diaper in diameter from 200 on the upper membrane surface to 0.1 on the lower.
DeleteD2, claim 2 "strip...comprising a capillary"
The opening is implicitly disclosed and is not important.
*taper" not diaper!
DeleteDid anyone include the feature directed at the membrane thickness with the associated range as it was functionally linked to the reduced range size of the lower pore size? It was outlined in the description that both features show the same technical effect, hence, I assumed that it was required to also include the specific thickness? But as no one mentioned this above it seems that I spotted something that was not relevant. ?!? Overall, it was just a very tough paper in my view with so many ways to get it wrong and with the marking scheme of not getting any points for a claim that is not new it is just very harsh as it comes down to "the winner takes it all" or has to come back again next year with no mercy.
ReplyDelete