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!
@K
ReplyDeleteI agree with you and went with this solution as well.
However, this type of background knowledge was not provided in the paper. As a patent attorney with an E/M background, it was difficult to imagine whether the opening was implicitly always there or not.
I'm from a chem background, I also limited to 0.3 -1.0 and 35-40, the latter taking the 35 from the example and combining it with the 30-40 range disclosed in the app (GL H-IV, 2.4 and T 201/83)
ReplyDeleteDo you remember what the description said about the thickness? If the thickness was required for the novelty, I'm probably not passing.
ReplyDeleteI agree. "smallest pore size in the layer being in a range S - T" does not put any upper limit on the pore sizes in that layer, it just imposes a limit on the smallest of them; whereas "the pore size in the layer being in a range X - Y" indicates that all pores in that layer have a size in that range.
ReplyDeleteE.g., "smallest size being in a range 0,1 - 5 " does not exclude "largest size being in a range 30 - 100".
K.
They may taper, but at the very location? Oder across the thickness? Does this relate to a single pore tapering across the thickness or a pore having a diameter locally at one surface that is different to another pore‘a diameter at the opposite surface to be understood as tapered?
ReplyDeleteIs 0.3 really far removed from the 0.1 to 5 range of D2?
ReplyDeleteConsider that you have in the range from 0,1 to 5 in total fifty (!) 0.1 steps. Therefore, I would not consider 0.3 (2 steps), 0.4 (3 steps) or 0.5 (4 steps) out of a total of 50 steps as far.
Hydrophilic, yes. No indication in the application that this feature can be removed.
ReplyDeleteUpper range: 35 - 100, as per original claim 2
Lower range: 0.3, - 1, to obtain novelty over D2.
Added thickness: no. In par 12 of the application it is stated: "the gentlest separation, with least cell lysis, would be achieved when the diameter changes over a long distance, i.e. across a thick membrane. However, such a thick membrane would have a high pressure drop, which also has an influence on the cell lysis. We have tested several membranes and have found that a membrane thickness of 150 to 400 um provides a good balance between pressure drop an separation efficacy." This to me discloses that the thickness is not an essential feature.
My answer is very similar to yours, but I'm afraid it might be necessary to add the thickness into the claim 1 (with a disclaimer) to establish novelty over D2, if they don't consider 0.3-1 to be sufficiently far removed from D2's range
ReplyDeleteD2 clearly says that each pore tapers from one surface to the other. The skilled person can figure out what is meant from the context. I think your arguments above are very weak and are unlikely to convince the exam committee.
ReplyDeleteDoesn't the selection of the ranges out of two lists contravene Art.123(2), if not unambigously disclosed? Unfortunately, I do not have the paper in front of me, but I can't recall that the two features were specifically disclosed as combination in the description.
ReplyDelete@Anonymous March 14, 2023 4:40 pm
ReplyDeleteWhy would the opening be implicitly disclosed?
D2 makes no reference to an opening. Only to "known strips" without specifying its structural features such as the opening.
D1 has an opening but D2 paragraph [6] does not refer specifically to the strip of D1 and its structural features. D2 only refers to D1 to indicate the teaching of using a membrane to filter red blood cells. The opening/strip as a whole is therefore not incorporated by reference in D2 [GL G-IV 5.1 and GL F-III 8]
Claim 1 of D1 and claim 2 of D2 both claim a strip without explicitly defining an opening. Doesn't seem essential for the strip to have an opening. You could make the reagent part transparent and it would work virtually the same from a measurement perspective.
Hi James,
ReplyDeleteI think you can not use R.139 for correcting the unit error:
D1 gives a different size for a blood droplet (at least 5 ul) than "Blood Science and Technology" (3-5ul). So, there is no unambiguous and single understanding to the skilled person as to the size of blood droplets, whereby the "direct and unambiguously knowing what the correction shall be" is not satisfied.
If this was the case, the original claim 1 was already novel over D2 and the examiner's objection was invalid. Has this ever been the case in B?
ReplyDeleteIt is crystal clear now, thanks Armin! Now I understand what you mean and I think you are correct.
ReplyDeleteAs a side question, did you add the thickness feature to claim 1? It was not even an issue in the office action (I read people saying it was essential, but the examiner did not objected it).
I did not see it relevant anytime during the exam, but maybe I completely missed it....
i went for restricting to polyamide membrane. it was against the client wishes…. but it is already novel over d2. then for D1 i included the taper structure to be novel and inventive. i hope i dont lose crazy amount of points
ReplyDeleteI went for polyamide as well (as well as the ranges provided by the client). I have a mechanical background, wasn’t sure how to amend the claims with in a way that basis :/
DeleteJudging from past papers, it will be penalised heavily. I just needed to get a claim so I could begin the letter
The function of the opening is for access of the light source (of the spectrophotometer) to the reagent part - see D1 [003]. Obviously, the strip of D2 has an opening / something with the same function which allows measurement of the blood glucose in the normal way, i.e. with a spectrophotometer that works by measuring light intensity - see D2 [006]
ReplyDelete@Anonymous March 14, 2023 5:28 pm
ReplyDeleteI don't know about this happening in past exams. Has it ever been the case that there's only D1 and D2 and the latter is 54(3)? It does not seem like a valid argument for dismissing the lack of disclosure of the opening in D2.
Moreover, if you look at the examiner's objection in the communication, there is no indication about how the opening is disclosed in D2. Instead, they only discuss the tapering. This seems deliberate, just like the fact that the opening is not in the claims of either of D1 and D2.
I think this exam was designed to make you think about the opening very thoroughly. Any limitation of claim 1, beyond what is required for novelty and inventive step over D1 and considering R. 43(2) EPC, is in my opinion an unnecessary limitation.
@Anonymous March 14, 2023 5:30 pm
ReplyDelete> "something with the same function which allows measurement of the blood glucose in the normal way"
If it is not an opening, it does not fall under the scope of (original) claim 1. Might as well be a transparent casing. Or even just exposed.
Point is, D2 does not directly and unambiguously disclose (as lack of novelty so requires) an opening akin to what is claimed in original claim 1.
I disagree. An opening is anything that would allow light to access the reagent part. In this case, a transparent casing would be an opening. Besides, this is not an interpretation exam - we are not expected to construe the claims. We are expected to amend them. Hence it will not be enough to simply argue that Claim 1 is novel over D2 when the Examiner has expressly objected telling you it's not.
ReplyDeleteAccording to GL, F-III, 8, 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.
ReplyDeleteIn this regard, it could be argued that the opening is part of the relevant content, and can be considered as forming part of the D2, even though D2 itself does not disclose this feature. Why else would they add this exception to the guidelines?
@Anonymous March 14, 2023 5:45 pm
ReplyDeleteI don't think so, because that portion of the guidelines specifically refers to "relevant content". D1 is only referred in respect of the membrane teaching, and not in respect of the strip. Otherwise, you could just list a whole bunch of the prior art in every single application and deprive a lot of applications from novelty.
The fact that paragraph [6] mentions "known strips" without referring to D1 there specifically is not sufficient reference. General incorporation by reference is explicitly not sufficient for novelty, you need to refer to a specific portion of D1 for it to count.
easy
ReplyDeleteShare what you did then
DeleteI did, but I now fear a harsh penalty for unnecessary limitations, particularly with the upper layer range /aw
ReplyDeleteYou don't need the incorporation of the reference document. It is implicitly disclosed in D2 paragraph [006]. See G-VI, 6. Simply put, the strip of D2 inevitably has an opening which allows access of the light from the spectrophotometer.
ReplyDeleteBut the membrane is a part of the strip and D2 doesn't only disclose membranes, it also relates to strips. GL indicates that the document being referred to is enough to consider its relevant content within this context, it shouldn't matter how the referencing sentence is formulated. It has only one prior art document and it is obvious that the document is referring to D1's strip by that phrase.
ReplyDeleteNo specific part is identified in D2 as the reference, and accordingly this shows that the reference is directed to the entirety of D1, as per the last paragraph of the GL article. The last paragraph is mainly there to protect applicants who don't want to be forced to deal with their own applications under 54(3) during the examination proceedings, so that they can refer to that specific part and don't get novelty objections based on the rest of their own application.
@Trainee
ReplyDeleteI did not add the thickness in claim 1. Seemed to me that it was just a preferred range, and also not required for the strip to be used with the adapted device (to comply with R. 43(2) EPC). The only requirement for the latter was that the pores are tapered.
However, my solution is different from those of many, it seems. See my comment March 14, 2023 1:26 pm. Usually that is a bad thing. However, at least in my opinion, the paper is not conclusive on whether D2 indeed discloses an opening (and accordingly, whether you can omit further limitations to establish novelty over D2).
The fact that the opening in relation to D2 is also not discussed in the office action, or that the opening is not in the strip claims of either of D1 and D2, seems deliberate. They at least wanted you to think about it, but it's very much unresolved for me. Implicit disclosure should not be taken lightly!
I went for hydrophile and "30 à 100 μm sur la surface supérieure de la membrane à 0,3 à 1μm sur la surface inférieure.".
ReplyDeleteWas thinking that 0.3 to 1 is remote from the disclosed and produce effect, so an OK range selection.
As we could add some dependent, I went for "30 μm à 40 μm sur la surface supèrieure" and "0,4 μm à 0,6 μm, préférablement 0,5 μm sur la surface inférieure." as dependents ...
It was again another style than the previous years, with error correction, 43(2) and 54(3) in the game.
It is always a little challenge to prepare for all eventualities, but I was very happy that it was less mechanical than the previous years, in particular, that there was no moving mechanical parts in the figures that my brain somehow cannot handle.... So I feel good anyhow !
I did not know if we had to put the two part form in reference to the 54(3) or to the 54(2) doc ... Did not found an answer to that in the guidelines on the go ...
@eqe enjoyer
ReplyDeleteI also found GL G-IV 8, which I specified in one of my comments on this blog:
"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)"
Of course, I am defending my point of view and my solution to the exam, but the reality is that it seems rather inconclusive for an EQE-style B paper. If it said "strips known from D1", I would agree with you. If it said in the application or in D1 that these strips ALWAYS comprise an opening, I would again agree.
I'm anxiously awaiting the DeltaPatents tutors' solution to this paper. At the very least, it is not trivially implicitly disclosed in my opinion.
Also did this way
ReplyDeleteCPA assessment can not be based on a 54(3) document as far as I know. So it was ok to choose D1 as the CPA and draft accordingly.
ReplyDeleteSeems to be alot of interpretations that 0.3 is not sufficiently for removed from 0.1, but 0.4 is. Can anyone point me to why 0.4 meets this requirement and 0.3 doesn't? It doesn't add up to me.
ReplyDeleteI don't believe either are sufficiently far removed. I suspect the exam committee will find such claims to be lacking novelty. There was nothing in the paper which you could use to argue that 0.3 / 0.4 is sufficiently far removed from 0.1.
DeleteBut 0.5 is?
DeleteReciting only one value from a known range is novel. Reciting a sub-range with endpoints not sufficiently far removed from known endpoints is not novel.
DeleteAnd how do we determine what is sufficiently far removed? Is 0.3-1 sufficiently far removed from 0.1-5?
DeleteIt would appear to be against the "directly and unambiguously derivable" principle for 'known strips' to encompass and incorporate all structural features of strips known in the art including D1, without explicit reference to the opening in D2.
ReplyDeleteRemember that it only needs to be directly and unambiguously derivable by the skilled person. This skilled person would absolutely directly and unambiguously derive that the strip of D2 has an opening. How else would it be usable with a spectrophotometer?
ReplyDeleteThat appears to be exactly the point of the 54(3) exception in GL, F-III, 8 though. If you read the last sentence backwards, it is understood that the reference is directed to the entirety (at least, to the relevant parts) of D1, because no specific part was identified in the reference. This is in line with the second last paragraph (also, in line with the decision you've mentioned). I would say that the strip of D1 and its components are implicitly disclosed as a consequence of this, because D2 also relates to strips in addition to membranes. Maybe you're right, but I think this was a trap deliberately laid by the committee.
ReplyDelete@eqe enjoyer
ReplyDeleteBut a specific part of D1 WAS in fact referred to. In D2, paragraph [3]:
"GB1234321 teaches us to separate the blood using a membrane."
This is a very specific teaching, so that very specific teaching of uniform pore diameter is incorporated by reference. I don't think this automatically extends to the entire document, even if you later say "known strips", without explicitly referring again to the strips of D1.
@eqe enjoyer
ReplyDeleteI'd like to add that it's not just the mere presence of an opening itself that is sufficient for novelty. What must also be disclosed is that:
(i) this opening is for measurement
(ii) this opening is also for putting into place the strip
(iii) this opening is provided at the reagent part
You could at best argue based on D2 alone that (i) could be implicit. For (ii) and (iii), you do actually need the disclosure of D1. Therefore, I think it really depends on whether D1 can be considered incorporated by reference in full, including the opening, or not.
Very tricky paper. I am not 100% convinced either, but I lean towards my solution.
The timing of this subject matter is very poor in view of T 1688/20
ReplyDeleteCould you elaborate? Before I dive into another rabbit-hole :)
DeleteI see your point now Armin, thanks! And I agree with your reasoning.
ReplyDeleteSide question: Did you limit claim 1 to a specific thickness? I see some discussion on it but I completely missed this possible issue (and many argue that there was a lack of essential feature justifying this limitation, even though the examiner did not object it).
It basically decided that the "sufficiently far removed" criterion should not be used when determining novelty of ranges. Instead the gold standard of what is directly and unambiguously disclosed. As a range does not implicitly disclose the values lying between, a value of 0.11 would be novel in a range of 0.1-5
ReplyDeleteConsidering I took the range 0.3-1 to obtain novelty over D2, I'd say the timing of T 1688/20 impeccable.
DeleteIn view of T 1688/20 this is imho correct.
DeleteThis BoA Decision opens a controversy to the Guidelines G-VI, 8(ii) that state:
A sub-range selected from a broader numerical range of the prior art is considered novel if both of the following two criteria are satisfied (see T 261/15): (a) the selected sub-range is narrow compared to the known range; (b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art. The meaning of "narrow" and "sufficiently far removed" has to be decided on a case by case basis. In this context, it must be assessed whether the skilled person, in the light of the teaching of the prior art, would seriously contemplate working in the selected sub-range. If it can be fairly assumed that the skilled person would do so, the selected sub-range is not novel.
Why would the skilled person select 0.3-1 when it's main purpose is a balance between separation speed and efficacy? That's not even mentioned in D2, I would say it is definitely novel. And if you use the gold standard even more so (is 0'3-1 directly and unambiguously derivable from D2 0'1 - 5 ? I don'tthink so. I would say the disclaimer solution for the thickness is a good point also, but the client didn't mention the thickness at all and the examiner didn't bring up any clarity issue for being an essential feature (plus the around wording f D2), so I have the feeling this is not the solution they are looking for.
DeleteJust a remark (I know that the GL 2022 apply for the EQE-2023): the criterion " "sufficiently far removed from the known endpoints of the known range" is no longer in the GL-2023, section G-VI, 8 ;-)🤡
ReplyDeleteWhere's that GL 2023 you're speaking of?
DeleteFunny, indeed :-)
DeleteD2 does not disclose any specific examples, unless one considers the 0.1 µm in the claim of D2 as a specific example
Glad I’m not alone then. Looking at past papers, I can see that there will be a penalty for Claim 1, but still marks for the rest of the claims and the letter, especially with the issues regarding unity and the correction.
ReplyDeleteanonymous 1:46pm : I think the general tapering was disclosed in the description, stating that the pores may be tapered. And next sentence : "for example the upper surface : 100um and the lower 0,1um. 30-40um best fort upper. 0,3-1 best for lower, with 0,4-0,6 even better and 0,5 the best for lower". In my opinion, limiting the upper hole diameter was not necessary.
ReplyDeleteYes, I claimed the last one (E i think), 35 and 0.5. I was terrified of adding matter (can't remember my reasoning specifically) and went for a specific example. I was a bit distracted by other aspects of the paper (I had gone all the way to inventive step claiming the membrane thickness before changing strategy). I think I'll (we'll) be heavily penalised for unduly limiting the claim, but less so than adding matter or lacking novelty. /aw
ReplyDeleteI spent what felt like a good 10 minutes trying to pass the phrase "pore-size gradient" and find support for a gradient that was pore-sized in the description before I realised I had interpreted it wrong. Why was it hyphenated (or am I misremembering it being hyphenated...)?
ReplyDeleteClient wanted both, if they were combined then client misses protection of strip-not!-he has the strip already protected on its own in a pending application. Device only possible to use with this particular strip but the strip may be used with other devices. Broadest protection is clauming a combination, no disclaimers, and this way gove client broadest protection. I believe this because there were so many pointers to this solution. Another application has never before had the task of providing some of the protection the client is asking for, vould this be???/Lo
ReplyDeleteCould it not be D2 should be regarded as part of clients protection? Solves everything so easy!
ReplyDeleteSame thoughts. An allowable claim from D2 could read on a membrane/stripe, 200 to 0.1 µm pore size, with a thickness of 200 µm.
DeleteThus the only difference of the new application is the membrane thickness range of 150 - 400 µm. Everything else would be already covered in a yet to be granted D2.
Therefore, the broadest protection for the applicant (which is the same of D2) out of the application would be a claim with a disclaimer excluding 200 µm (but this would be covered by D2). Both is novel and inventive.
A claim with a subrange (0,3 - 1) may also be possible, if one considers 0.3 far away from 0,1 as novelty argument, which is questionable. Also not sure about Art 123(2), if you have two different pore sizes (upper and lower) from two different lists, care needs to be taken, that the claimed combo is specifically disclosed. Otherwise arguments against intermediate generalization would need to be strong here.
In any way such claim would not provide the broadest protection possible. This claim would also need the membrane thickness as essential feature
The client letter said "as long as these claims cover the strip and the device". So it's clear you are meant to cover the strip and the device separately in the present application.
DeleteArmin, I think thats exactly the clue! and client already had strip protected by D2! Is this aproach possible? Gives a broad protection and no disclaimers necessary.
ReplyDeleteI believe clients other appl is to be seen as part of protection. Pointers: strip may used with other devices (strip orotected by D2), device+strip=system, (device in itself known acc to descr). This way client get maximal protection. D2 must have been clients application for a reason; there are no ”it just happend to be so” in the EQE. /me
ReplyDeleteNovelty of subranges always feels very arbitrary.
ReplyDeleteI used 0.3-1.0 for the lower pores and 30-100 for the upper.
My logic was that 0.3-1.0 is still reasonably broad and encompasses all the examples, and there’s nothing to suggest this range isn’t “narrow and far-removed” enough while others (e.g. 0.4-0.6) are. Using the point value 0.5 seems far too limiting and against the client’s wishes to define a range of values.
There’ll obviously be a “best” amendment in the view of the examiners, but I feel there’ll still be good marks available for slightly-less-ideal ones.
My solution for discussion:
ReplyDeleteclaim 1: i) keep hydrophilic - the whole invention only related to how hydrophilic membrane works,
ii) adding feature "membrane is with a pore-size gradient" - indicated in the client letter (in D2 too), I consider that for claim 5 device, the feature of "array detector" is only possible with "a membrane with a pore-size gradient", otherwise I am afraid that I can't add "array detector" into claim 5, if claim 5 referenced to claim 1, cf. para. 013.
iii) adding feature "having pores that taper in diameter from 30 to 40 μm on the upper membrane surface and 0.1 to 1.0 μm on the lower membrane surface." the literal basis is in para. 009. - I believe it is a selection from two list. I could not find any combination of both ranges can be limited. The values from the table are not suitable, it seems not being combinable.
Claim 2 is deleted.
Claim 3 and specification para. 0017, ml is replaced by µl according R. 139 EPC,
obvious mistake. Submit the arguments by client and extract.
Claim 4, amended dependency, the term "adhesive" is disclosed only in the claim. I argued that there is no intermediate generalisation, because "reagent is attached to the strip using adhesive" can be considered as general knowledge of the technical filed, cf. description of [003] of D1.
Claim 5 amended by adding "array detector".
Unity objection - argue that Claim 1 and claim 5 are interrelated products having the same inventive concept - membrane with a pore-size gradient, device claim is referenced to claim 1, which has array detector, adapted for membrane with a pore-size gradient.
Novelty and inventive step argued accordingly....
The combination of 0.1 lower surface and 30 upper surface is disclosed in D2 so your claim is not novel.
DeleteD2 does not disclose combination of 0.1 in lower surface and 30 in upper surface. Do we talking about single point or combination?
DeleteMy answer is identical to this...
DeleteI thought this was a selection from two lists too. I'm a physicist though and never really work with ranges, so I wasn't sure
"On the upper surface, the pore size is in the range of 30 to 100. On the lower surface the smallest pore size ranges from 0.1 to 5". So, the disclosure of the endpoint 30 anticipates the range 30-40 and the disclosure of the endpoint 0.1 anticipates the range 0.1 to 1.
ReplyDeleteI disagree, your assumption is combination of 30 and 0.1 disclosed. but is it correct? We are talking about ranges not single point. The combination of single point is not disclosed.
DeleteIt is not permissible to combine separate items of prior art together. It is also not permissible to combine separate items belonging to different embodiments described in one and the same document, unless such combination has specifically been suggested (T 305/87).
I haven't combined separate items belonging to different embodiments. That passage from D2 discloses the following embodiments: 0.1 & 30; 5 & 30; 0.1 & 100; 5 & 100.
DeleteI’m afraid I am struggling to see how D2 could be overcome by disclaimer. The precise wording used in D2 is a thickness of “around 200 um”. An undisclosed disclaimer must disclaim exactly as much as is necessary to overcome the 54(3) citation, so simply disclaiming 200 um would not be enough. However, disclaiming “around 200 um” would introduce a lack of clarity into claim 1. Bit of a double-edged sword. I think the word “around” was added so that the undisclosed disclaimer was not a viable option.
ReplyDeleteDisagree. See GL 2021 F-IV 4.7.1 for Interpretation of Terms Like "about", "around" etc.
DeleteAgree, it could not and the word ”about” made me certain/ me
DeleteI also disclaimed 200 um and referred to F-IV.4.7.1 for the interpretation of "about". According to the Guidelines, about 200 um has to be interpreted as 200 um. Therefore, disclaiming 200 um makes claim 1 novel over D2.
DeleteThe guidelines you have cited relate to the interpretation of claims, not the interpretation of prior disclosures.
DeleteValid point. But why should an unclear term in the prior art be interpreted differently than in the claims of an application? And why should an applicant of a prior right have an advantage by using an unclear term, the advantage being that an undisclosed disclaimer in a later application would not work?
DeleteGL 2021 F-IV 4.7.1 refers also to section G-VI, 8.1 Error margins in numerical values , specifically in "patent specifications"
DeleteAround not about…/me
ReplyDelete@Roel, is there any recent decision like T 1688/20 as mentioned above you think could be useful for C paper? A and B papers this year was quite different compared to the previous years, C will probably be the same
ReplyDeletegood question
DeleteI can't understand why they bring such a topic when it is apparently not really chrystal clear from the documents what's the correct solution is (as the amount of different opinions here in the comments show). Even the guidelines say: "The meaning of "narrow" and "sufficiently far removed" has to be decided on a case by case basis." Not really a good basis for an exam with only one solution counting and imo no clear basis in the documents.
ReplyDeletePaper B was always my strongest part in the preparations and now I'm a frustrated...
Just a short comment on the undisclosed disclaimer solution: I don´t think that an undisclosed disclaimer gives claim 1 novetly in view of D2, since in D2 claim 1 is also a disclosed embodiment which is borader than in the description, wherein no thickness is mentioned. Hence, claim 1 with only the undiclsoed disclaimer (not a thickness of 200 µm) is not novel over the embodiment in claim 1 in D2
ReplyDeleteI agree with you, @Armin.
ReplyDeleteI also did not see how the strip of D2 discloses an opening in the sense of (amended) claim 1 and therefore argued that (amended) claim 1 is new over D2 without a restriction to the range (I nevertheless restricted the lower range to 0.1 - 1.0 um in order to ensure sufficiency and inventive step over the whole breadth of the claim, since the technical effect in the table was provided for the example of 0.5 um while stating in the description that all values between 0.1 and 1.0 um would work).
Having considered the relevant passages in the GL (G-IV, 8; F-III, 8) I would also say it's at least inconclusive from these passages what exactly would be incorporated from D1 into D2 in such a manner as to be "directly and unambiguously derivable" from D2 itself (which should be the applicable criterion after all).
Having further briefly studied the relevant case law (cf. I.C.4.2 of the case law book), i.e. decisions T 153/85 (which apparently was the first and most important decision in this respect setting the "standard" for the later decisions) and T 645/91; T 942/91; T 422/92; T 866/93; T 239/94; T 221/05; and T 610/95, it really appears to be a case-by-case question in the end (e.g. where in the main document is the reference, is it part of the description of prior art or of the description of the invention etc.).
Taking all this into account, I do not see how the question what was actually incorporated from D1 into D2 in a "direct" and "unambiguous" manner could be easily answered in one way or the other.
Therefore, I would be rather unhappy if, in view of how this year's paper B was formulated, a claim 1 like mine (as well as the corresponding novelty arguments) would be marked with zero points. If this issue costs me passing this year's paper B (which might also depend on marks for the second independent claim, the dependent claims, the R139 and R43 issues, and the inventive step marking), I would at least consider appealing such a decision.
@Jonathon - I also did this, and then had an additional dependent claim to my new method claim specifying the device had the array detector. I felt this had some advantages over the amending device claim to include the array detector, in that the method covers the use of the strip with the conventional device as well. However, I don't think this was the way we were meant to go and clearly in other senses the method gives much narrower protection. I worry we will have lost a lot of marks not having the R43 and novelty/inventive step arguments for the device claim :(
ReplyDelete