B 2025 - our provisional answer
Hats off to all of you who bravely faced paper B! Nico and I had a go too.
Like last year, it was a long paper. Again 30 pages (same as 2024), and this time 11 claims, 7 figures and 3 prior art documents, the third one covering multiple embodiments. It took me personally a bit longer than usual to get to grips with the technology, as there were many details and it took me a while to see what's important and what not (or at least less important).
Please note that at this point in time, we can only give you our considerations as to why we made the decisions as we made them. Like you, we were under time pressure, and sometimes just needed to go for a certain solution. And like you, we will have to wait for the Examiner's Report to see what the intended answers were and in how much deduction a certain different solution would result. If any, as in recent year we have seen that multiple different solutions were considered to be OK. So don't panic or get depressed if your solution is different from ours.
As to the main amendment to the claims set, both Nico and I decided to go for claim 1+ 6 and claim 7+11.
In addition, in the second independent claim (claim 6 of the amended claims set, corresponding to claim 7 as filed), we also deleted the Hall-effect tranducer and replaced it by the magnetic field detector. This in order to solve a clarity objection as raised by the examiner.
In claim 9 (corresponding to claim 10 as filed), we replaced the "substantially differs in strength" by "differs by at least 20% in strength" - also in order to solve a clarity issue.
The issue to address in relation to claim 1+ claim 6 as filed and claim 7 + claim 11 as filed, was that claim 6 as filed referred back to claim 5 and claim 11 to claim 10. However, for both claims the description provided basis for not including claim 5 or claim 10, respectively.
For the combination of claims 1 and 6, basis can be found in par. 20 of the application as filed: "For instance, it is advantageous to combine the serial reading function together with a further variant having consecutive magnets of different polarities. This is however not necessary and both variant and serial reading function could be implemented independently of each other."
The "both variant" reads a bit weird in this sentence, but we assume it was meant to refer to the further variant having consecutive magnets of different polarities.
For the combination of claims 7 and 11 as filed, basis can be found in par. [025] of the application.
These amendments are in line with what the client desires, see par. [002] of the client's letter.
By these amendments, both independent claims got the same special technical feature, as claim 6 and 11 were very similar in terms of their features.
Although not addressed in the Communication, I added a few lines on R. 43(2) EPC, argueing that it's OK to have two independent claims in the same category. I leaned on R. 43(2)(c) EPC for that, argueing that amended claims 1 and 6 are alternative solutions to a particular problem, and it would be inappropriate to have them in a single claim as that would result in a claim with a high level of complexity. However, to be honest, I still don't really know what the fundamental difference would be between a locking system (claim 1) and an access system of claim 6. But claim 1 having the feature of the elngated key and claim 6 of the keycard would have also already made a messy claim, not to mention things like an electronic circuit vs. a processing circuit which would also have had to been cleaned up.
Then the prior art. D1 discloses a lock with an elongated key that has a special shape at the end. The part at the end can have one or more magnets with corresponding detectors.
D2 pertains to a keycard + reader in which the magnets in the card can have different polarity and optionally some of positions for the magnets may be left empty. This results in a code which corresponds to the polarity or absence of a magnet in each recess of the keycard.
D3 contains multiple embodiments, but the one in par. 5 -8 seems to be the most important. This embodiment pertains to a key-operated rotary switch. The magnets are in a rotary element of the switch. There is no disclosure that the magnets are in the key. In addition, the magnets are read out when the rotary disk is stationary, not when it's moving past a detector (see the reference to "positions" in par. 7 of D3).
Whilst multiple differences may be present between each of the prior art documents and the claims, none of the prior art documents seems to disclose "the electronic circuit means are configured to implement a serial reading of said detectors' electric signals as the key is being inserted into the housing and a plurality of magnets pass in proximity to one of the magnetic field detectors." (and the corresponding feature of claim 6).
Then inventive step. With respect to the closest prior art for claim 1, we see arguments for both D1 and D2. It can be argued that D1 is structurally the closest, with the elongated key. D2 only discloses a key card (but maybe that's an elongate key as well?).
The objective technical problem can be based on par. 17 of the application ("makes the locking system complicated to manufacture and requires many components").
For claim 6, D2 seems to be the closest prior art.
MOV
ReplyDeleteI included claim 6 in claim 1 and amended claim 1 to refer to a key or a keycard, what do you think? In the application as filed it is disclosed that the two embodiments differs from the fact that one has a key and one has a keycard...
ReplyDeleteWhy do you add all the features of claim 6 into claim 1 and not only the one related to the serial reading? I think there is support in the text that this amendment is not an intermediate generalisation.
ReplyDeleteI agree, that was my solution. This also let me keep the number of claims the same, since I kept in the part about fewer detectors/transducers in claims 6 and 11.
DeleteI used D1 as prior art for claim 1 and D2 for claim 7. My OTP, which I am not sure at all about since I was under a lot of time pressure by that point, was to make a cheaper system without decreasing security, since D1 would increase both amount of detectors as well as magnets if increased security was needed. This was in line with why the client wanted to protect the serial reading aspect.
Even though the CPA differed, I had exactly the same OTP and distinguishing feature for claim 1 in relation to D2 as to D1, i.e. only that the electronic/processing circuit was configured to implement a serial reading...
Even though D3 was trickier than D1 by virtue of mentioning fewer magnets than transducers, 1) this was not part of my distinguishing feature since I left it in claims 5/10 (so it was clear I only focused on the serial reading aspect, and 2) The actual usage of D3 as a push-button or rotary switch is quite distant from the elongated key of claim 1, so I argued that the amount of structural modifications needed were much greater than for D1.
Erik it seems we have done in the same way also for the inventive step discussion. Unfortunately, I notice only now that I missed to add into claim 7 the last part of the serial-reading feature ("and a plurality of magnet pass in proximity to the magnetic field detector"). However, I deleted that part from claim 11 explaining because it is included into new amended claim 7 (but it is not). I hope that it will be clear to whoever will correct my paper that's an error due to haste.
DeleteSame here. If claim 6 can be independent from claim 5, why not the serial reading alone…
DeleteGood to hear that others came to the same conclusion, it offers some comfort! =)
DeleteDid you both also opt to maintain the wordings of the claims rather than try to make a new one based on the description in the application? I used the exact phrasings of claims 6/11, and despite that the wording was quite different I still think it was clear that the claims as worded described the "serial reading function" described in [018] and referenced in [020], and thus I argued that [020] gave support to single it out without keeping the other parts of the claim or the features from the claim it was dependent on.
On another note, did you also argue that there was no unity issue since the passage discussion miniaturisation wasn't actually contained in claim 5? It appeared to be, from the Examiner's side, a conflation of "consecutive magnets" of claim 5 with "consecutive discs" described in [016].
I also agree . I did the same amendments. I only added the serial reading to claims 1/7 and left the "fewer magnets" feature in claims 6/11 + amendments to overcome clarity issues
DeleteI think that while writing serial number alone would be novel and inventive - the application only shows one way to do it. So the question is more whether the amendment would be seen too broad / not enabled
Delete@Nico and @Nyske, any reaction or thoughts on this solution because I also did it like this
DeleteTo be honest, I thought of this only later on in the paper, and at that point I did not have the time to go back and see if I could find proper basis for leaving it out. And to check if it wasn't by any chance presented as an essential feature. I defended novelty and inventive step based on the serial thing, so I didn't need to fewer detectors than magnets feature for that (which actually was what got me thinking about it). On the other hand, the client mentions it in his letter as being a relevant aspect of their commercially most relevant product. At this point I can't really guess what the intention of the drafters of the paper was on this point. I can see arguments for both options. Recent years, different solutions were accepted, so who knows.
DeleteThanks for your reply. However, if I'm not mistaken, the letter of the client only refers to fewer magnetic field detectors, it does not mention fewer magnetic field detectors than magnets
DeleteI did struggled a lot with this exam. There were so many pages disclosing a difficult matter to understand in short time... I have amended claim 1 to introduce the second part of claim 6 only. But also mixed with the principle disclosed in the application as filed par 18, since it seemed essential for a serial reading and implicity disclose "fewer magnetic field detectors"? again, not an expert in that matter...
ReplyDeleteHi Nyske and Nico, thank you for your considerations.
ReplyDeleteDid anyone else specifically use the two-part form and/or completed the reference signs in the claims based on the 'hint' in the communication of the Examiner: " fulfil the requirements of Rule 43(1) and (7) EPC.
That said, I did not go further and also address Rule 43(2) EPC, as an objection was only made to lack of unity. However, I get that by solving the unity, the next objection would be multiple independent claims in the same category.
2-part-form was expected, adding it would not give any penalties so I added it/oldlady
DeleteI read somewhere that missing the two-part form was penalized less than a one-part form or a wrong two-part form. So I used one part. Similar for wrong vs no reference numbers. I also consider this fair, because the examiner will usually insert references and put on two-part form in the Rule 71(3) communication (or am I just lucky with that? ;))
DeleteHi Johan, I simply didn't want to spend time putting in more reference numerals, as as there already were some in the claim, I didn't bother. With respect to characterising portion, again I prioritised other things over that in view of time pressure.
DeleteI'm very surprised you both went for limiting the independent claims with the dependent claims instead of with portions from the description.
ReplyDeleteParagraph [020] refers to the serial reading function as described in the previous paragraphs [017] to [019], not to the subject-matter of claim 6 as defined in the claims. The subject-matter of dependent claims 6 and/or 10 is not disclosed independently of the subject-matter of claims 7 and 12. Because the wording of the description and the dependent claims 6 & 11 diverges, it is barely if at all possible to use said dependent claims without adding matter.
Correction to above comment: The subject-matter of original dependent claims 6 and/or 11 is not disclosed independently of the subject-matter of original dependent claims 5 and 10.
DeleteThe subject-matter of claims 6 and/or 11 is not unambiguously disclosed in the first embodiment of the description, for example that "there are fewer magnetic field detectors
than magnets".
Agree! Had to use description for adding the serial reading adaption to the claims/oldlady
DeleteI did not dare to amend based on a feature of the description, because that always gives an objection under Article 123(2) in real life. So I also used the dependent claims.
DeleteIt's extremely common in practice to use the description for amendments, you don't get a 123(2) rejection as long as you provide basis from the specification as filed.
DeleteHi Anonymous @ 5:16pm, it seems you are correct that the reference in [0020] to 'the serial reading function' most literally relates to the embodiment of [0017]-[0019], especially considering the preceding sentence 'All the methods and variants described /above/...'. I therefore understand your conclusion that this does not apply directly to claim 6, since claim 6 is broader than the [0017]-[0019] embodiment (e.g., the latter explicitly mentions 'rows' and 'same row', which are missing from claim 6).
DeleteOn the other hand, it could be argued that a skilled person would understand that the reference to the 'serial reading function' in [0020] also applies to the more general 'serial reading' embodiment of claim 6. I believe this interpretation is probably reasonable.
A further issue with interpreting the reference in [0020] too strictly is that one would then need to be consistent and accept that the [0017]-[0019] variant is described specifically in the context of the Fig. 5 embodiment, which again is (much) narrower than the embodiment of claim 1 (e.g., it is limited to 'stacks of discs, 'outer sleeve', etc). Following this strict interpretation of support, claim 1 would then have to be replaced by the more specific Fig. 5 embodiment, and further limited to 'serial reading'. I don't believe this is the desired approach.
Thanks Nyske and Nico. I had the same approach. Except that in the heat of the moment, I considered D3 first embodiment [004] with the single transducer and multiple magnets as the CPA for claim 1. I guess that I was a bit thrown off by the examiner equating the part of the push button with an elongated key and found it difficult to separate the field/purpose between D1 and D3. So ended up with most promising springboard which is typically not a good sign :). Hopefully it will not cost all IS points for CL1.
ReplyDeleteI did this too - I think fewer marks will be available for us, but in the past papers they've allowed up to say 7/10 marks if the argumentation for the CPA is solid, even if the wrong choice was made. Fingers crossed!
DeleteField or purpose difference is not that relevant. It is all about the degree of difficulty to adapt the CPA candidate to get to the claims Delta Patents explains this very clearly in their courses IMHO. But even with that in kind, it was difficult if not impossible to choose in this B.
DeleteSame! But I feel that this year it was designed in a way that regardless of cpa the rest of the discussion is the same. So it should be only few points
DeleteHi Joakim, unlike in paper C, you often don't lose all points when you start with a CPA that's other than in the model solution. And sometimes, even different CPA's are expected. So don't worry to much about it.
DeleteI did the same, beside choosing for some reason D3 as closest prior art for claim 1, and D2 for claim 6. Ultimately the discussion for D3 or D1 was identical since they had the same feature, but probably you wouldn’t need a serial authentication on the push button (why haven’t I thought this while doing the exam??). I wrote that D1 was a slightly less suitable starting point but ultimately the technical difference and the problem to be solved (providing a locking system which is simpler to manufacture while maintaining the complexity of the key combination) compared to what I had written for D3 were the same.
ReplyDeleteIn view of the marking of previous years I don’t feel too troubled
Hi guys, thank you very much for your solution.
ReplyDeleteAre you sure about the novelty of claim 1 when limited to claim 6?
It seems to me that the term “serial reading” on its own does not carry much meaning. The application actually explicitly states that “serial reading” is just what they (the applicants/inventors) are calling their system. What the applicants/inventors mean by serial reading is “This produces a series of electrical signals which are analysed by the processing circuit and compared with the expected series”. However, this is not would one would normally understand from the term “serial reading” in isolation. (Especially if you give “serial reading” its broadest possible, reasonable interpretation: it is a well-established principle laid down by the boards' case law that a non-specific definition in a claim should be given its broadest technically sensible meaning (see T 79/96, T 596/96).)
The normal meaning of the word serial is just “taking place in series”. So, claim 6 just defines that the electronic circuit means takes a series of readings from the detector as the key is being inserted and a plurality of magnets pass the detector.
Now, consider what happens in D3 when the button is depressed (in the embodiment with multiple magnets and one detector). First, the circuit takes a first reading from the detector corresponding to one of the magnets, indicating that the button is open; then the circuit takes a second reading from the detector corresponding to another magnet, indicating that the button is in an intermediate position; and then the circuit takes a third reading from the detector corresponding to another magnet, indicating that the button is in the closed position. In doing this, the circuit has taken a series of readings from the detector as a plurality of magnets pass the detector, and so has performed “serial reading”. As the examiner has already equated the push button of D3 with the key of the claims (weird, but I think you have to go with it), the push button being pressed and thus going further into the chamber amounts to insertion of a key.
Admittedly, what I have just explained is not explicit in D3, but I think it is implicit because what else would/could happen as the button is depressed?
Interpreting “serial reading” to mean “This produces a series of electrical signals which are analysed by the processing circuit and compared with the expected series” (which seems to be needed for novelty over claim 1) relies on using the description to interpret the claims, which is very dodgy IMO - we are waiting for the outcome of G1/24, so there is no certainty on this point at all.
Thanks!!
Sorry, the last paragraph of the above should read "...(which seems to be needed for novelty over the push button embodiment in D3)..."
DeleteIt's been a long day...
This is exactly why I decided claim 6 is not novel....
DeleteI think you‘re reading too much into D3, which is not disclosed. Note that D3 explicitly says that the positions of the push-button can be detected depending on the geometrical arrangement of the magnets and detectors. I‘d argue that detecting the geometrical arrangement teaches away from a serial reading as disclosed in claim 6. Nonetheless, I find your argument that the detectors necessarily produce a series of signals when pushing the button convincing too. The question is how the processor processes these signals. So I guess one could easily argue both ways…
DeleteI had similar concerns for the term "serial reading" - I don't think it would be considered clear in real life. Especially as we are currently in the process of thrashing out before the EBA how the description can be used to interpret the claims during examination at the EPO, as you rightly point out.
DeleteTherefor, I added the definition of serial reading into the the independent claims as well as the features of claim 6/11.
The letter from the examiner raised no lack of clarity objection against claim 6, so no reason to worry about that I suppose.
DeleteI dithered on this in the exam, but eventually agreed with you. Added an extra feature to claim 1 accordingly.
DeleteThe relevance of D3 probably depends on whether you consider it reasonable to interpret a 'push button' or 'rotary switch' as a key or keycard. Personally, I do not think this interpretation is reasonable, at least because the push button and rotary switch seem to be fixed to the housing, whereas the essence of a key is typically that it can be removed and carried by the user (although strictly speaking this is not explicitly defined in the document). D3 does briefly mention a key ([005], 'key-operated rotary switch'), but there is no disclosure that this key includes magnets. Thus, D3 does not appear to disclose a 'magnetically coded locking/access system using a magnetically coded key/keycard' (paraphrased essence of the independent claims), which at least provides an argument for novelty and also makes D3 in my view somewhat less suitable as the closest prior art.
Delete@Nico
DeleteCould you please provide some reasoning as to why the key is so imporant for selecting prior art?
All of the decices of D1-D3 relate to some kind of access devices, and the inventive concept relates to the detector/processign circuitry for the sequential reading, where the dectors and processign circutry is part of the access device and not of the key. So the invention does not "lie" in the key.
In fact, we are required to downplay the importance of the keys when arguing for unity. The key is not important in the light of the inventive concept - it can be a keycard, key, etc.
Also, the examiner even considers a button to correspond to a key.
In my opinion, all these signs point away from choosing the key as the relevant concept for choosing of prior art.
@Nico, thank you for your reply.
DeleteRegarding “The relevance of D3 probably depends on whether you consider it reasonable to interpret a 'push button' or 'rotary switch' as a key or keycard”, I agree, but the examiner makes it very clear that he/she has interpreted the push button of D3 to be a key. So, in Paper B world, I think we have to take this as a certainty - in all my preparation for Paper B, I never saw a case where candidates were required to disagree with the examiner on a point of claim interpretation.
Well, I did the same combination than you did, so I should be happy, but reading the comments in the other blog, I'm far from certain that this combination is new wrt D3. Doesn't the examiner say that the push button in D3 can be assimilated to a key?
ReplyDeleteAlso, I agree that in R7 (renamed R6) you need to replace transducers with detecters but don't you think that, in R10, you need to put detecters because in the description, you have only said that transducers can detect strength variations of +/- 20%, not detecters in general.
Well, we'll see...
I have the exact same feeling. I have the same amendments, but it seems like at least claim 1 would not be novel with respect to the push button embodiment of D3. Fingers crossed that the answer by Nico and Nyske is correct
DeleteI have added another subclaim 10 that depends on claim 6 to 9 to claim Hall-effect tranducer as magnetic field detector since client says no more dependant claims except to what has been claimed already. Any comment on that?
ReplyDeleteI understood “no more claims” as “Not over 15”, becaus there is no reason to limit number if not more than 15.
DeleteDear Nyske and Nico, that you very much for taking the time and grinding through this paper and giving us a feedback of what is probably correct.
ReplyDeleteAwesome! I also went for 1+6 with D1 als CPA and 7+11 with D2 as CPA.
But! In regard of the clarity objection to claim 7+11 I decided to go with "Hall-effect transducer" instead of the more general term "magnetic field detector", since the paragraphs of the description in regard of the second embodiment only disclosed a "Hall-effect transducer" and had no hint or basis for the more general termin "magnetic field detector". So in my solution claim 1 contains a "magnetic field detector" and the new claim 6 contains a "Hall-effect transducer". We'll see if that is correct or not.
Generally speaking, I also massively lacked time. The argumentation in regard of novelty is pretty short ("...does not disclose the features of claim 7 / 11") and in regard of inventive step I only had time for a brief problem-solution-approach for claim 1. In regard of inventive step for claim 7+11 I only made a reference, that the claim also contains a similar feature, which rendered claim 1 inventive. I could've given them a good solution with an extra 30 minutes of time.
Regarding the clarity I also used tranducer instead of the broader detector. I struggled there, but stick to the tranducer because I did find a really solid argument from the description. The second embodiment did refer to the first embodiment, but rather with respect to the detecting function of the tranducer.
Delete*did not find a solid argument
DeleteHi Markus, for broadening I relied on par. 10: " It is furthermore noted that although the
Deleteexample described above uses a Hall-effect sensor to detect magnetic fields, it is also
possible in the present invention to use any other suitable type of magnetic field sensor."
Hello Nyske, thank you for your reply and explanation. I also considered this paragraph, but I understood it to only be applicable to the first embodiment. I didn't find a clear equivalent paragraph applicable to the second embodiment. Since there was an independent claim for each embodiment I considered them to be "separate matter" and therefore decided to use the specific term in the second embodiment.
DeleteThank you so much for your take on this (very tough) paper B. I also went for claim 1+6 (serial detector) and claim 7 amended likewise.
ReplyDeleteI went for D2 as CPA for both claims, since that made it possible to save some time and use the same argumentation mutatis mutandis. Time was really the big struggle in this paper.
I ended up restricting embodiment two to Hall-effect detector, since I did not find clear enough basis for broadening the term for this particular embodiment.
Thank you for this preliminary solution. Examiner explicitly requested to comply with the regulations of R. 43(7) EPC, thus I included reference signs in all claims (a lot were missing). Any thoughts on this?
ReplyDeleteProbably worth 1 mark at most. Ignored and left as it was from the client
DeleteI also noticed that, but did not nearly have the time to add all the reference signs. Chose to invest my time in the inventive step argumentation instead since that would have cost more marks.
DeleteI included reference signs in all claims according to R. 43(7) EPC. I spent a lot of time on this, so I hope it's worth more marks than usual... I lost time on novelty/IS, so I hope this is reflected in the scoring in some way.
DeleteDo you think they were expecting full problem-solution arguments for both claims? The issues seemed to be the same for both (I had the same closest prior art for both, D2, because this is the only document to disclose axially-spaced-apart magnets, which is absolutely fundamental to serial reading, so any document without axially-spaced-apart magnets is not a promising starting point for arriving at the invention). Considering this, I did a full problem-solution for claim 1 and then just said the same applies for the second independent claim because the CPA and distinguishing feature are the same. Now, I am concerned that I am going to miss out on a whole lot of marks that were available for the inventive step analysis for the second independent claim.
ReplyDeleteI did exactly the same. With the time available I think it was a good decision, but I agree, it will be interesting to see if that leaves no marks for IS regarding claim 7. In any case, I did not have the time.
DeleteWhen same inventive concept between two independant claims no need to go deeply into the IS, check exam 2015 E/M ;)
DeleteHere, the CPA might be different (D1 for claim 1 and D2 for new claim 6): in that case, if this is what the epo expected, two lines of reasonning had to be detailed…
DeleteAnother indication that D3 is indeed CPA - If D3 is prior art (as it is the only document which addresses the same problem as the invention), then only one line of reasoning is required for both claims.
DeleteDear Nico& Nyske, closely followed your solution so far. Curious about your argumentation and non-unity solution. Especially in treatment of the one detector with magnets button of embodiment 4.
ReplyDeleteMight have forgotten to cite basis for claim11 merge and kept D3 as CPA everywhere for mutatis mutandis argumentations as none of D1-D3 discussed the effect of claims 6/11. Went on from there without writing two separate argumentations to start from D2. Then argued why a combination would not work, so I hope it is enough.
Brutal lack of time though, lots of stress and pressure :(
Thank you very much for posting the solution. I amended the claims exactly like you. However I run out of tine and could not argue inventive step and unity. I pretty confident I will not pass the exam. It is a pity since I lost a lot of time in reading and understanding the invention. I a chemist and this a bit to technical foe me...
ReplyDeleteAs some has already pointed out I am not sure that using claim 6 only complies with art123(2). Referring to the description for the omission of claim 5 is not correct as it relates to a different embodiment in the description.
ReplyDeleteAlso, is it novel over d3 par 4 +1? Probably not. Many magnets will be read along the Axis (par4) which will cause a certain state which can control the lock (par 1)
(read along the Axis must imply in series, ie serially)
DeleteSo two independent claims??
ReplyDeleteIt gives me a bit of hope to read your post tonight. it was a tough one compared to the one of the past years!
ReplyDeleteWhat a mess, however, there should have been more information in the paper about the fact that two independent claims to the same category allowed. Furthermore objection of unity of invention make things much more unclear and confusing.
ReplyDeleteSo what about unity problem due to Claim 5 and Claim 10?
ReplyDeleteIn the total confusion and in final rush I took the dramatic decision to deleted claim 7 and dependent to avot clarity and unity objection, after spending lot of time to amend it and try to figure out ho to link it with claim 1. That is not a canonical solution for a paper B come on
ReplyDeleteIt seem quite impossible that a set of claim with two independent claims in the same categories did not receive any comment in the communication
ReplyDeleteSee you this summer for results and report
ReplyDeleteSitting this as a benchmarker, I found the examiner's report a little odd.
ReplyDeleteFor one thing, I thought that claim 1 was novel over D1 as it didn't appear to clearly and unambiguously disclose that a plurality of magnets were spaced axially (just going form memory here), but were instead spaced around an axis.
Secondly, I thought that a real examiner would have raised clarity objections to the term "sequential reading"...
Thirdly, the unity objection seemed to be interpreting claim 5 as including the "consecutive disk" feature, but this isn't what claim 5 actually said.
That said, I think the amendments the paper was looking for was 1+6 and 7+11 (with broadening amendments to the magnet detectors), and clarification of substantially to "differing by 20% or more". In my answer I also replaced sequential reading with the definition of it in the application, but I don't think that was necessary, just something I would have considered in real life (probably adding it as another dependent claim, which we cant do in the exam).
For novelty a, I relied on the sequential reading, which clearly wasn't in D1 or D2, and the relevant parts of D3 related to either detecting static positions (the "one sensor, many magnets" embodiment) or fixed patterns of magnets (the rotary embodiment).
For inventive step, I had D1 CPA for claim 1 and D2 for claim 7, with the combination of D3 with either of these not supplying all the features needed for sequential reading. D3 not CPA as it related to a different field, and had the magnets and sensors in the same piece of equipment.
The unity objection seemed like either a red herring or another clue that 1+5+6 and 7+10+11 would not be acceptable. In any case, I argued that the alleged non-unified claims were dependent from unified independent claims, so there was no lack of unity, and added something about them both being directed to the same problem in any case.
Anyway, good luck to everyone who sat it for real!
Quote: "For one thing, I thought that claim 1 was novel over D1 as it didn't appear to clearly and unambiguously disclose that a plurality of magnets were spaced axially (just going form memory here), but were instead spaced around an axis."
DeleteYes! I also thought that today. I understood D1 in such way, that it only discloses a radial arrangement of the magnets. I also wrote that down as a differentiating feature. I guess I'll see if this is correct.
I was also wondering about claim 5 and the effect of miniaturization. I spent more than 10 minutes reading back and forth the description and communication to see if I lost some information somewhere. At the end I decided to ignore that statement. But isn't the examiner always supposed to be right in this paper?
Delete"a real examiner"... you said it all.
DeleteVery challenging subject matter! I broadly understood the invention and general differences between locking systems and accessing systems but in truth, I missed most of the nuances. D3 had many different variants - I did not have time to discuss why each of the other embodiments was not the closest prior art. I focused on the embodiment in D3 that was most relevant (in my eyes).
ReplyDeleteI did not know how to argue for unity, so I deleted the tampering prevention (claim 10) and kept the miniaturization (claim 5). Since I deleted claim 10, the lack of clarity objection of “substantially” also went away.
The Examiner said that the subject-matter of claim 5 and 6 appear to be patentable in view of the available prior art. I understood this to mean that claim 1+ 5 or claim 1+6 (claim 6 depending on claim 5) are novel over the prior art. The client was pleased that the examiner identified novel subject matter and was willing to accept claim 1 +6. However, claim 1+6, which is actually claim 1+5+6, is overly limiting since claim 1+5 was also novel. Instead of amending to claim 1+6, I amended to claim 1+5. Any one else do that too?
For novelty of renumbered claim 6, I did claim 6+11, without including subject-matter of claim 10 (because it was deleted to overcome lack of unity) and using (025), first sentence of disclosure as basis of support.
I argued inventive step of claim 1 in view of D1 and Fig2 of D3, and inventive step of renumbered claim 6 in view of D2 alone.
Any one else did the same?
I dropped 1+5 especially because it was against the client‘s wishes, Sinai had to force for 1+6…
DeleteD3 was the closest prior art for claim 1, since it provides determination of magnet's position (intermediate position) when the key slides. This is the closest embodiment for amended claim 1 (combination of claim 1 and 6).
ReplyDeleteBut D3 was a different device and in different field. claim 1 was in the field of access device, preventing unauthorised use of a thing. D3 was a contactless button, so anyone could press it (there was no way to prevent people from pressing button of D3) so it was not CPA? at least for me.
Deletethe magnets in D3 are on a rotary disk that may be turned by an ordinary key -- the magnets are not associated with a key as such
DeleteSo it's the actual key that prevents access, and not a magnetic device? So D3 is not in the same field right?
DeleteD3 was locking device. It was in first paragraph. Furthermore, the first embodiment was not rotary (it was second embodiment), it was push button which moves axially. Also, paragraf 4 defines determination of intermediate position.
DeleteD3: "[001] The present invention relates to a contactless switching device which can be used to start/open or stop/lock a vehicle or apparatus."
Deletewhat about it is related to access devices where an authorised user has a specific magnetic key which is arranged to mate with a corresponding opening and grant that user access? and other people without that specific magnetic key cannot access the device?
The prior art with the most structural similarly is only selected if all other prior art candidates also addresses the same problem as the invention.
DeleteIn our case, only D3 addresses the same problem of less detectors.
No unity of invention and two f... independent claims in the same category was the solution. 3 f....hours reading and reading trying to figure out what the f... they want to prove sitting for the 3rd f... time this f. exam.
ReplyDeleteIt is not correct under art 123(2) to combine claim 1+6 based on par 20 and is an intermediate generalisation. Par 20 is directed to the optionality of methods and variants described above paragraphs 20 "... described above ... for instace ... the serial reading ...", and not the optionality of the subject matter in the claims. Keep in mind that the subject matter of par 18 (which must be referred to by par 20) is different from the subject matter of claim 6, or at least, it is not an easy task to prove that they are equivalent as they use different wording.
ReplyDelete"[020] All the methods and variants described above can of course be used
independently or in combination according to the needs of the locking system. For
instance, it is advantageous to combine the serial reading function together with a
further variant having consecutive magnets of different polarities. This is however not
necessary and both variant and serial reading function could be implemented
independently of each other."
This paper is very badly designed,
ReplyDeleteyou can't submit a set of claims with two independent claims for the same category to a candidate without any other information to be able to arrive at R.43 EPC
It's clear that the candidate will waste a good part of the time trying to amend the set of claims in such a way as to put everything under the umbrella of a single independent claim, particularly if the communication raise objection of unity of invention.
The communication had to mention the fact that given the complexity and difference in the embodiments, cover the alternatives with two independent claims for the same category was acceptable. That was draft a good paper.
ReplyDelete@Nyske Blokhuis: Hi, thank you for your provisional answer. Are you sure that a locking system having key and a an access system having a keycard are alternative solutions to a particular problem? For instance, keycards for access a door does not necessarily comprise any locking systems. They have the same technical features in common and they are not mutually exclusive possibilities. On the above, I doubt that two system indipendent claims are allowable under R.43(2)(c) . Looking F-IV, 3.2, "examples of allowed R.43(2)(c) claims are: - a group of chemical compounds; – two or more processes for the manufacture of such compounds." ... "For the purpose of Rule 43(2)(c), the term "alternative solutions" can be interpreted as "different or mutually exclusive possibilities". Moreover, if it is possible to cover alternative solutions by a single claim, the applicant should do so. For example, overlaps and similarities in the features of the independent claims of the same category are an indication that it would be appropriate to replace such claims with a single independent claim, e.g. by selecting a common wording for the essential features (see F‑IV, 4.5)."
ReplyDeleteI do not think there was a 43(2) objection? Only 43(1)?
DeleteIn paper B you are expected to deal with problem of unity of invention by drafting o properly claim different embodiment under a independent main claim.
DeleteMy considerations were as follows: you solve the unity problem by combining claims 1+6 and 7+11. Claims 6 and 11 have basically the same features, so by this amendment the unity problem is solved. The features of claims 6 and 11 become your special technical features. But that leaves you with 2 independent claims in the same category. So you have to come up with an argumentation (or excuse...) that you are allowed to do that in view of R. 43(2) - if I remember correctly this is expected always if your amended claims set ends up having two independent claims in the same category. I though R.43(2)(c) was the most appropriate, so I went for that. I didn't see a way to properly draft original claim 7 as a proper dependent claim because so many different words were used (e.g. electronic circuit in claim 1 vs. processing circuit in original claim 7). And how would you deal with locking system in claim 1 vs. access system of original claim 7? The paper does not provide any clues for solving these issues. That told me that making claim 7 into a dependent claim was most likely not what the drafters of the paper had intended. Note that simply sticking original claim 7 into claim 1 with "or" between original claim 1 and original claim 7 doesn't help - such a claim is considered to represent two separate independent claims.
DeleteI found it a very realistic and close to reality paper. Reply to a shitty search report and opinion like now EPO has been working on for past few years.
ReplyDelete@Nyske Blokhuis: Thank you for your reply. I see your point about the relevance of combining (or not) claim 1+7+6(6=11) in a single independent claim. Indeed, referring to R.44(2)EPC, the determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. Still, my considerations about gl, F-IV, 3.2 apply: "... if it is possible to cover alternative solutions by a single claim, the applicant should do so. For example, overlaps and similarities in the features of the independent claims of the same category are an indication that it would be appropriate to replace such claims with a single independent claim, e.g. by selecting a common wording for the essential features"
ReplyDeleteHi GIL, I think that in real life I would have never drafted the two independent claims like this. I struggled most with the inconsistent wording that I mentioned in my previous reply to you. For example, I didn't have a clue if the access system was a species of a locking system, or a locking system a species of an access system. And I also didn't find any basis for an "umbrella-word" to cover them both. Keep in mind that all EQE-papers are (or should be!) drafted to guide all candidates to the same solution. So if the paper would have been intended to make you redraft original claim 7 in a dependent form, it should have provided proper words to do that. My strategy as a benchmarker is to stick as closely as possible to what the paper tells me. If that steers me in a direction that was not intended, then there's probably something wrong with the paper at that point. Which I hope then attracts the attention of the committee when establishing the final marking scheme ;-)
DeleteI agree with Nyske, the instructions were also deceptive, why to specify in the customer's instructions that Client absolutely do not want a divisional application and not maybe if there was a way to have two independent claims?
DeleteIf you stick to the paper and what Client ask, don't want to file a divisional application, a solution was to delete the second independent claim and dependents in order to overcome unity and clarity issues.
DeleteThank you DP guys, did you figure out how to draft a claims set too?
ReplyDeleteWould you Deltapatents guys be so kind to share your set of claims and arguments since you sat as benchmarker?
ReplyDeleteWhile I think your ideas are fair, the problem with the EQE is more fundamental than the problems you describe. We are supposed to be a trade where we, after careful consideration, give advice or draft documents. In our work we should double or triple check, we sleep on matters, we use technical tools, we consult colleagues and clients and internet resources, etc. This is what will make you a good attorney and is not possible to do during the EQE.
ReplyDeleteInstead, in the EQE, what is tested is the ability to make many arguments in a short amount of time with limited information. While I guess there are situations where we are stressed on time, it is often possible to delay to get more time and/or to discuss with collegues/clients etc.
Hi everyone, I have started a PETITION to urge the EPO to offer the EQE twice a year, thereby minimizing the negative psychological impact on our mental health when we fail one part of the exam (and thereby the whole exam!hence forced to wait one complete year to retake - as if lifetime is endless).
ReplyDeletePlease I urge you to sign the reasonable (vernünftig, raisonnable) petition and to share it with colleagues, friends, trainees, and whoever you think can accelerate taking a decision by the EPO.
Thank you DeltaPatents for allowing us to share our concerns about the exam. While many companies in this domain are very much profit and business focused, you are humain and quality focused. Thanks from the heart.
Petition:
https://chng.it/V29hwhJQ8n
I reckon there will not be a complete solution by DP
ReplyDeleteThanks Nyske and Nico for sharing your solution and the rest of the DP team for running this blog.
ReplyDeleteIn my solution, I incorporated both, claim 5 and claim 6 into claim 1.
In my opinion, the subject-matter of claim 6 is inextricably linked to the concept that the magnets need to be arranged such that they actually have a measurable polarity as understood in the patent application.
The definition for serial reading is given in paragraph 018 of the description, which includes that the detector is configured to detect the presence of the magnets which are downstream along that row, AS WELL AS THEIR POLARITY, while the key is being introduced into the passage.
The definition polarity of the magnets as understood in the patent application is provided in paragraph 010:“to determine if the pole of the magnet which is nearest to the sensing arrangement is the north pole or south pole“. Which implies that the magnets need to actually be arranged in a manner such that either the north pole or the south pole is arranged closer to the detector. One could also image an arrangement with both poles of each magnet being arranged at the same distance to the detector, which wouldn’t allow any measurement of the polarity of the magnet by the detector as understood in the patent application. The only basis of magnets being arranged such that they have a polarity measurable by the detectors is the one with differing polarities of consecutive magnets, as defined for instance in claim 5.
In addition, is not clear to me to what paragraph 020 actually refers. The wording „All the methods and variants described above can of course be used independently or in combination according to the needs of the locking system. For instance,“ suggests that it refers to one of the embodiments disclosed in one of the preceding paragraphs; the wording „FURTHER variant“ seems to point to a variant which is not disclosed in any of the preceding paragraphs and would actually lack any sufficient disclosure in the patent application; in the subsequent sentence reference is made to „variant“ and is not clear if this now refers to the FURTHER variant introduced in the preceding sentence or not. In the former case I would have rather expected the reference to „said/this variant“ or „the further variant“.
A general conclusion: just like in 2024, also this year's B was much too long. I do not really see the purpose of drowning the candidates in ever more information, more prior art, more claims... While the available time of course stays the same.
ReplyDeleteThey are burocrats they are hurdles to overcome in your careeer and your life.
DeleteWhat happens now? result? solution?
ReplyDelete