No difference between "to contain" and "to comprise" - T 0056/08

The words "comprising", "consisting of" or "containing" count among the most discussed words in the patent-related case-law.

In the decision T 0056/08 here, the respondent/opponent had argued that an amendment from "to comprise" to "to contain" infringes Art. 123(2) EPC.

Respondent's argument that the verb "to contain" has a more restrictive meaning than the verb "to comprise", the Board would point out that the general meaning of the verb "to contain" is "to have in it", "to hold", "to include", "to encompass" or "to comprise". 

Therefore, the Respondent's argument cannot be accepted.

Perishable Products and Valuable Disclosure

 

My french blogger friends Oliver Randl of K’s-law and Laurent Teyssèdre of Le blog dudroit européen des brevets have both reported an interesting decision of the EPO board of appeal dealing with the often frustrating question allowability of an amendment under Art. 123(2) EPC.

The patent related to the use of a preservative for food products, “wherein the preservative is added to such food products at a concentration from 0,006% to 0,015%” (cited from claim 1 as amended).

The upper- and lower limits of this concentration range were taken from different examples where the preservative was used for different types of food products.

I presume that most people would guess that this amendment is not allowable as it combines features from different embodiments. However the board Z 3.3.09 allowed the amendment. Why?

Here is the essential part of the argument (reasons, 2.1):

In order to assess whether this new range complies with A 123(2) it has to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples.

In this context, it emerges from table 1 of the application as filed that LAE as preservative is active against a number of gram-positive and gram-negative bacteria as well as fungi and yeast. It is furthermore stated on page 1, lines 4 to 5 from the bottom that “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products”. From this the skilled person would therefore recognise that the preservative effect of LAE is universal and not limited to specific bacteria and food products." 

I am pleased to see that at least one board appears to argue technically rather than linguistically when it comes to 123(2) EPC.

Indeed, the alarm bells of the examiners are usually set off when the "skilled person" is invoked for disclosure.

However, what is "clearly and unambiguously" disclosed in a text depends on the reader and his background knowledge. The case law is very clear in that the disclosure original documents has to be viewed through the eyes of the skilled person - and not even any ordinary skilled person but a skilled person with the famous "mind willing to understand and not with the mind desirous of misunderstanding". Decisive is what this person in this state of mind understands and whether or not this understanding is unambiguous.

I think that this is disregarded too often when the allowability of amendments is discussed.

My impression not only from this decision but as well from a decision of  the BGH reported here is tha the case-law both at the EPO and in Germany goes into the direction that a combination or sub-combination of features is considered to be disclosed in an individualized way and "as an invention" (rather than as an arbitrary selection) if the notional skilled person may clearly and unambiguously derive technical advantages of that specific combination or sub-combination from the documents as a whole.  In the above case, it was the sentence “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products” that has saved the case.

This should have, according to my personal opinion, a strong impact on how to draft patent specifications in the future. Sub-combinations disclosed without mentioning specific advantages thereof are pointless and mentioning many advantages applicable to sub-combinations is essential and creates valuable disclosure.

"Comprising" is not "Consiting Of" - BGH X ZR 75/08 "Reifendabdichtmittel"

The the patentee in the decision "Reifenabdichtmittel" had amended a limitiation according to which an adhesive for sealing tyres "comprises" a number of ingredience to a limitation that the adhesive "consists of" the same ingredients, i.e. that no other ingredients were used.

The BGH fond that, as a rule such an amendment is not allowable because it introduces the new technical feature of the "conclusiveness" of the recipe and that furhter incentives from the specification are needed to make such an amendment allowable. The specification mentioned indeed an embodiment with no furhter ingredients (such that the amendment would presumably have been allowable under the EPC) but did not explicitly mention this feature. Rather, other portions of the specification indicated that fillier materials could be added optionally and this option was not explicitly excluded for the embodiment under discusstion.

In the judgement of the BGH, the allowability of such an amendment would require indications that the feature of consisting of the mentioned ingredients only has particular advantages or is otherwise desireable.

It is interesting to compare this decision with T 390/08, where the "consisting of" in claim 1 in combination with a dependent claim mentioning further ingredients (or more precisely, the introduction of a further element in the opposition procedure) led to a clarity objection. There appears to be a tendency to require some explicit "singeling out" of specific combination of features to be claimed, which may be supported by mentioning particular advantages of the specific combinations.

For the practice, this means that when mentioning the advantages of optional additional features for supporting their inventiveness during the prosecution, it is wise to also mention an advantage of the embodiment without these features. In the case at issue, it would probably have been sufficcient to say that the adhesive is cheaper or easier to brew if no filler materials are used.

Essentiallity Test Revisited - Deleting Features From the Claims before the EPO

K's law discusses the decision T 747/10 today, where the EPO technical board of appeal applies the "essentiallity test" in the Gidelines for examination as develpoed in T 0331/87 is applied and makes an attempt to put it into a more precise form.

This test says that the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:

1. the feature was not explained as essential in the disclosure;
   
2. the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
   
3. the replacement or removal requires no real modification of other features to compensate for the change.
   

The case at issue related to a light therapy apparatus with light sources connectable to a computer via an interface. Original claim 1 required that the interface does not only control the light sources but also serves as a power supply. Interestingly, the BoA argues that the "technical problem" mentioned under 2 is the "subjective technical problem":

A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.

In this case, the original specification had actually mentioned two technical problems:

While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources.

and comes to the conclustion that using the (USB-) interface for power supply does at least contribute to the solution of the second problem of improving the portability. Other alternatives (e.g. batteries) were not consistently disclosed. On the other hand, the board argues that the replacement of a feature with an equivalent one (which is originally disclosed) should be possible even tough the original feature may contribute to the technical solution of the subjective problem and comes to the conclusion that:

In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.

It is interesting for me that both the „classical“ decision T 0331/87 and this new decision appear to have problems with the line of demarcation between the requirement of “support by the specification” of Art. 84 EPC and Art. 123 EPC. This is very clear in T 0331/87, where the board argues in item 3 of the reasons:

For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (…) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application […]. In other words, it is to examine whether the claim as amended is supported by the description as filed.

.

The argument is a little more hidden in the decision T 747/10, but it appears that distinguishing between cases where more than one alternative is mentioned and cases where only one alternative is mentioned is equivalent to answering the question whether or not the broader claim is supported by the specification and is limited to the scope within which the invention makes a technical contribution to the prior art.

So why did the BoA not refer to Art. 84 EPC?

For the ”Houdaille decision T 0331/87, the case is clear: This was an opposition procedure and the BoA was simply not entitled to carry out an examination on Art. 84 EPC. In the light of this finding, it appears that this groundbreaking decision is circumventing the statutory limitation to the grounds for opposition set out in Art. 100EPC and has to be questioned.

For the case T 747/10, the application of Art. 84 EPC would have required reverting the case to the Examining division for carrying out the examination on this article.

I wonder if failure to do so could be considered a violation of the applicant’s right to be heard?