Sunday, March 07, 2021 Paper B e-EQE 2021: The jury is still out

This year’s paper B was very difficult. The client's wishes and proposed amendments could scarcely be reconciled with the disclosure of the application as filed. Even among DP's experienced attorneys and tutors, this year’s paper led to dramatically different solutions.

Although it was promised that "Paper B will have the same syllabus and character as before", Paper B looked different in design from previous years. This year’s candidates were confronted, for the first time, with third-party observations, a computer-implemented invention (or not?), and client's claims with unusual (and incomplete) tracking of changes. In particular, the accumulation of these issues appears to have placed a very high burden on the candidates.

So far, we have been able to draw up several "solutions", each of which has its strengths and shortcomings - both in the light of meeting the wishes of the client, as well as good defensibility against the requirements of Art. 123(2), and with a clear narrative for the problem-solution approach.

For that reason, we will present below, for the first time, several proposals for amended claims, and our considerations thereof. 

Claim 1 could have been amended as follows:

1. A container (1) for organic refuse, comprising

a. an upper compartment (3) having a support (3a) for holding the refuse (7) populated with earthworms (8);

b. a lower compartment (4) for collecting excess moisture (6), wherein optionally the lower compartment (4) is removable;

c. drain holes (5) permitting moisture to drain from the upper to the lower compartment, or when the lower compartment (4) is removable directly into soil if the upper compartment (3) is placed directly on the soil; and

d. an upwardly opening covering lid (2) which fits over the container (1), wherein the container comprises a water spraying device (13) connected to a water container (14).

• The client had removed "for organic refuse", but there only seems to be support for a container for "organic (kitchen) refuse"
• The client had added "and/or housefly eggs"; while there is basis for (earth)worms and optional additives (cf. [022]), which may be  housefly eggs (cf. [003]), there seems to be no basis for "housefly eggs" alone as implied by the "or" language; the "housefly eggs" as additives can be put in a dependent claim
• The client had deleted the "lower compartment" and the "drain holes", because, according to the client, "the lower compartment and the drain holes are both optional and are not essential to the container
• deleting both the lower compartment and the drain holes, without adding a replacement feature, seems to certainly contravene Art. 123(2) as the invention clearly requires excess water to be drained. A possible solution is to replace both features by a more functional definition, e.g., “means for draining moisture from the refuse”, with possible support from [020] combined with [004], but ultimately we expected it not to be directly and unambiguously derivable from the application as filed, i.e., to contravene Art. 123(2) (and it would be very much against the established style of Paper B in which the wording of amendments are directly derivable from the wording of the application as filed - including for functional claim language)
• the drain holes seem essential, because they not only are a means for controlling the moisture of the refuse, but they also prevent the earthworms from falling from the upper compartment into the lower compartment (and the soil) (cf. [017])
  
• the lower compartment is trickier: both embodiments described and in the drawings have the lower compartment. But [018] says it may be removable; does this mean that it is non-essential and can be deleted? Indeed, we can argue that it was not explicitly explained as essential, is not indispensable for the invention (it can e.g. also drain on soil) and no compensating features are required for its removal - but is a container with only an "upper compartment" directly and unambiguously derivable from the application as filed as being an invention per se? 
• The present amendment "wherein optionally the lower compartment (4) is removable" is our safe bet (and not completely in line with the client's wishes) - but we feel that a claim without the lower compartment and a convincing Art. 123(2) argumentation should get (more?) marks, too
• The client had added "a water spraying device (13) for adjusting the moisture" and argued that this created novelty over D2 as "in D2 the water spraying device is exclusively used for cleaning".  That argument does not hold, since the spraying device of D2 - attached to a tap - is of course also suitable for adjusting the moisture. [012] mentions a water spraying device (13) connected to a water container (14)
• it is easy to see that the amendment "connected to a water container" creates novelty over the tap of D2. It also allows arguing a convincing PSA starting from D1 as CPA: a skilled person seeking to improve moisture control in the refuse, would not consider D2 as it is concerned with removing water, and it merely teaches to use a spraying device connected to a tap for cleaning the container
• however, we can also understand that candidates struggled with adding the "water container" part to the claim, as this seems to be an external component to the container (see Fig. 2), and therefore seems to modify the claim in a "kit-of-parts". We also struggled with that, and with the fact that it results in a claim that is easy to circumvent.

An alternative solution could be:

1. A container (1) for organic refuse, comprising

a. an upper compartment (3) having a support (3a) for holding the refuse (7) populated with earthworms (8);

b. a removable lower compartment (4) for collecting excess moisture (6);

c. drain holes (5) permitting moisture to drain from the upper to the lower compartment, or directly into soil if the upper compartment (3) is placed directly on the soil; and

d. an upwardly opening covering lid (2) which fits over the container (1), wherein the container comprises a water spraying device (13)  for spraying water on the refuse

• Novel over D1 (no spraying device at all) and over D2 (no removable lower compartment) and similar PSA story, with the addition that a removable lower compartment is undesirable w.r.t. larvae being present there
  
• But: rather limited w.r.t. to the original claim, and also not fully in line with client's wishes.
• In this solution, the connection to the water container is removed, but could also be included (see above for arguments; if you conclude that the water container as such is not indispensible for the function it serves, which is to supply water to the water spraying device, as it could be any type of water source/supply)

Further possible amendments (possibly as alternative solutions to limiting claim 1 to "connected to water container" and/or "removable") were:

• a moisture detector (with a display)
• In D1, but not in D2
• present in all embodiments that use a water spraying device
• seems required for the moisture data step of the calculation method
• not suggested in any way by client, so rather arbitrary (not B style) amendment
  
• adjustable size of the drain holes (cf. [017])
• it contributes to the invention's effect of active control of the moisture
• however, again arbitrary in view of the client's wishes

As far as the other (independent) claims are concerned:

The claim to a method for producing a fertilizer (original claim 4) was amended by the client to include

• "and/or housefly eggs"; as for claim 1, not supported
• "earthworms" instead of "worms"; this amendment (supported by [006]) is indeed required to overcome the Examiner's objection 
• a backreference to the preceding container claims; that makes sense for restoring novelty over D1 and D2
• specifying "by spraying water on said refuse" (NB: not tracked, and not explained by the client!) in step b

The following claim seems to be an acceptable amendment, also taking into account the removable lower compartment/soil option of amended claim 1:

X. A method for producing a fertilizer, the method comprising the following steps

a. providing a container (1) according to any of claims 1-xx, comprising organic refuse (7) and earthworms (8);

b. optionally, adjusting the moisture of the refuse by spraying water on the refuse and/or by draining moisture from the refuse;

c. composting the refuse with the earthworms for a time sufficient to convert the refuse into fertilizer, and,

d. optionally, separating earthworms from the fertilizer.

• the step "and/or by draining moisture from the refuse" is likely not required because it can also be achieved automatically by the container. Novelty is already conferred by the use of the container of the invention itself

Finally, again  - in our view - two viable options for dealing with "mental act" claim 6:

9. A computer-implemented calculation method for optimizing processing organic refuse, comprising the steps of

a. defining a target value TV at time point tp > 0 for the amount of the earthworms (8) present in the refuse (7) at said time point tp;

b. receiving data relating to the moisture of refuse (7) and the amount of earthworms (8) at a plurality of time points tp;

c. determining if the value for the amount of earthworms (8) present in the refuse (7) at tp > 0 is equal to the defined target value TV for the amount of earthworms (8); and

d. recommending adjusting the amount of moisture added to the refuse (7) at said time point tp, if the value for the amount of earthworms (8) present in the refuse at tp > 0 is not equal to the defined target value TV for the amount of earthworms (8).

 

• Basis in [024]: "One, more or all steps of the method can be implemented by a computer"
  
• GL G-II 3.5.1: "Where a claim defining a method for performing mental acts as such is limited by specifying that the method is carried out by a computer, not only the use of a computer but also the steps carried out by the computer themselves may make a technical contribution if they are based on technical considerations and serve a technical purpose"
• The main argument against this claim is that a large majority of EQE candidates is not familiar with computer-implemented inventions; on the other hand, any EQE candidiate is expected to be familiar with the main concepts of any technical field at a base level when sitting the exam, and you do not need to be more familiar CII than what the Guidelines and G 3/08 tell to be able to amend this claim as proposed above. In that sense, CII is not different from, e.g., second medical use.

 

However, based on the proposal of the client, the following claim should also be allowable:

X. A calculation method for optimizing processing organic refuse, comprising the steps of

a. providing a container according to any one of claims 1 to xx comprising organic refuse and earthworms,

ba. defining a target value TV at time point tp > 0 for the amount of the earthworms (8) present in the refuse (7) at said time point tp;

cb. receiving data relating to the moisture of refuse (7) and the amount of earthworms (8) at a plurality of time points tp;

dc. determining if the value for the amount of earthworms (8) present in the refuse (7) at tp > 0 is equal to the defined target value TV for the amount of earthworms (8); and

ed. recommending adjusting the amount of moisture added to the refuse (7) at said time point tp, if the value for the amount of earthworms (8) present in the refuse at tp > 0 is not equal to the defined target value TV for the amount of earthworms (8).

 

• It should be specified that the container comprises organic refuse and earthworms as the container of claim 1 itself does not necessarily has them present
• With the container in the claim, the claim can no longer be objected to under Art.52(2)&(3)
• GL G-II 3.5.1: "A claimed method is not a method for performing mental acts as such if it requires the use of technical means (e.g. a computer, a measuring device, etc.) to carry out at least one of its steps or if it provides a physical entity as the resulting product"
• With the container with the earthworms and the organic refuse in the claim, also the earthworms and the organic refuse are no longer abstract concepts but real things with technical character, so that also the further method steps are clearly technical and well-linked.
• Main argument against this claim is that the "steps can be executed by a computer" information is not used.

With respect to the third party observations, we note that:

• The announcement was published on the internet under www.opendayincotsford.com on 6 June 2018 does not disclose any container
• Even though there were over 100 visitors who were impressed by the guided tour on 02 August 2018 at 11:45, where the public had access to the facilities and where the apparatus of claim 1 was located, the public could not see the internals of the container, not could they see the drain holes at the bottom of the container. There is no indication that the public could hold or open the containers to inspect them. As these claimed features were not visible, the open day on 02 Aug 2018 does not impact novelty of inventive step of the claim.
• Further, there are no details given as to how the public could "learn how our earthworms and house flies produce fertilizer and feed", nor any evidence.

We did not want to delay posting a reasonable effort; however, because we feel we still may have overlooked something, we may post an updated answer in a few day's time. We will also provide at a later date (more of) our findings, including the dependent claims.

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!

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The DeltaPatents Team

Note: you may also wish to check the comments posted to our first impressions blog, here.