Foundation Paper 2025 - our provisional answers to the Claim Analysis Part (F-2)
First of all, a big thank you to the candidates who send us the copies of the printable parts and of their answers (which included the questions)! There were no benchmarkers for F this year, and the paper wasn't published straight way, so we had to rely on you to get the paper. Thanks for helping out!
Roel, Joeri and I looked into the case of the claim analysis part. These are our answers (including explanation):
Description of Application as filed: see Annex
Claims of Application as filed:
- 1. A transportation device comprising a frame, two wheels, seating means, steering means and a pedal system for propulsion, characterised in that the frame is made of a very light metal alloy significantly lighter than a steel alloy.
- 2. A bicycle comprising a frame, two wheels, a saddle, handlebars for steering and pedals for propulsion, characterised in that the frame is made of a metal alloy with a density below 5 and preferably below 3.
- 3. A bicycle as claimed in claim 2, further characterised in that the frame is made of a titanium alloy.
- 4. A bicycle as claimed in claim 3, further characterised in that the frame consists of an aluminium alloy.
Q1: No, claim 1 not
in conformity with Art. 84.
“Very light”
and” significantly lighter” are unclear terms because they don’t allow you to
determine what falls within the scope of the claims and what not.
Q2: E – none
correct
A: Claim 2
does not define the specific metal alloys to use for the frame.
- > not necessary to define specific
metal alloys. Claim 2 is probably not clear because the claim doesn’t specify
that the density is in grams/cubic cm, but that doesn’t mean that the specific metal
alloys need to be mentioned in the claims.
B: Claim 2
does not define how the frame can be produced.
-> the description tells us that the skilled person knows how to make the
frame.
C: The
wording “preferably below 3” renders claim 2 unclear.
-> optional features are allowed GL F-IV 4. 9
D: Claim 2
is missing an essential feature because a brake system is always necessary for
a bicycle.
-> Not an essential feature for achieving the object of the invention (less
weight) and D1 tells us that there are also bicycles without brakes. In
addition, the description says that “a bicycle
according to the present invention may be provided with a brake system
as often required by local law”
E: None of
the answers A to D is correct.
Q3: No/Not true
Claim 4 is
unclear because it contradicts claim 3, from which it is dependent.
Q4:
Claim 1 in
view of D1: Novel - True
Although claim 1 is not clear, “significantly lighter than steel” does not
include “steel”.
Claim 1 in
view of D2: Novel - True
D2 does not disclose a transportation device, only material properties
Claim 1 in
view of D3: Not Novel* - False
Truck = transportation device; has 4, 6 or more wheels so has 2 wheels*; pedals controlling an engine for propulsion = pedal
system for propulsion; aluminium alloy frame = metal alloy lighter than a steel
alloy (significantly = unclear term, cannot be used to distinguish over the
prior art).
*[Added] However, one can also argue Novel - True if one considers “comprising 2 wheels” to mean that it has exactly two wheels. See discussion in comments.
Claim 1 in
view of D4: Not novel - False
D4 = art. 54(3) prior art so it’s relevant for novelty; clearly all features
disclosed in D4.
Q5:
Claim 2 in
view of D2: Novel - True
D2 does not disclose a bicycle, only material properties
Claim 2 in
view of D3: Novel - True
D2 does not disclose a bicycle
Claim 2 in
view of D4: Not novel - False
D4 = art. 54(3) prior art so it’s relevant for novelty; clearly all features
disclosed in D4.
Q6:
Claim 3 in
view of D2: Novel - True
D2 does not disclose a bicycle, only material properties
Claim 3 in
view of D3: Novel - True
D2 does not disclose a bicycle and also doesn’t mention titanium
Claim 3 in
view of D4: Not novel - False
D4 = art. 54(3) prior art so it’s relevant for novelty; clearly all features
disclosed in D4.
Q7: Correct
order of steps in the problem-solution approach
1. define closest prior art
2. establish how the closest prior art differs
from the claimed subject-matter
3. define technical effect
4. define objective technical problem
5. decide if proposed solution is obvious to a person skilled in the art
Q8: D1 is
closest prior art for claim 3, because it is the only Art. 54(2)-document discloses
a bicycle (same technical field as claim 3). (Note that D4 cannot be closest prior art as
it is an Art. 54(3)- prior art, so it is not taken into account for the
evaluation of inventive step)
Amended claims filed during substantive examination
- 1. A bicycle comprising a frame, two wheels, a saddle, handlebars for steering and pedals for propulsion, characterised in that the frame is made of an aluminium alloy.
- 2. A bicycle comprising a frame, two wheels, a saddle, handlebars for steering and pedals for propulsion, characterised in that the frame is made of a magnesium alloy.
- 3. The bicycle of claim 1, further characterised in that it is provided with a disc brake system.
- 4. The bicycle of claim 1, characterised in that the frame is made of a titanium alloy instead of an aluminium alloy.
- 5. The bicycle of claim 1, characterised in that the two wheels are made of a titanium alloy.
- 6. A bicycle frame, characterised in that it is made of a titanium alloy.
Q9: Amended
claim 1 is clear, concise and supported by the description, so it complies with
Art. 84 EPC
Q10: Amended claim
4 is not a dependent claim because it does not have all the features of claim
1. It lacks the feature of the aluminium alloy.
The mere reference to claim 1 does not render claim 4 a dependent claim.
[Added] However, can also consider it a dependent claim as it can be argued to depend on claim 6 of which it has all the features. Not likely to be expected, as it would result in a True for good as well as bad reasons. See discussion in comments.
Q11: Amended claim 6 is not novel over D4, as D4 discloses a bicycle frame which is made of a
titanium alloy.
Q12:
Amended claim
2 in view of D1: Novel - True
D1 does not disclose magnesium alloy as material for a frame
Amended claim
2 in view of D2: Novel - True
D2 does not disclose bicycle, only material properties
Amended claim
2 in view of D3: Novel - True
D3 does not disclose bicycle and doesn’t mention magnesium
Amended claim
2 in view of D4: Novel - True
D4 does not disclose magnesium alloy as material for a frame
Q13:
Amended
claim 1: OK in view of Art. 123(2)
All features of amended claim 1 are disclosed in combination with each other in
the application as filed.
Amended
claim 2: Not OK in view of Art. 123(2)
Application as filed does not mention magnesium.
Q14:
Amended
claim 3: Not OK in view of Art. 123(2)
Disk brake not mentioned in the application as filed. It is irrelevant for Art.
123(2) EPC whether it’s obvious to use a disc brake.
Amended
claim 5: Not OK in view of Art. 123(2)
The application as filed does not mention any specific material for the wheels.
Q15:
Amended
claim 4: OK in view of Art. 123(2)
All features of amended claim 4 are disclosed in combination with each other in
the application as filed.
Amended
claim 6: OK in view of Art. 123(2)
All features of amended claim 4 are disclosed in combination with each other in
the application as filed. It is explicitly mentioned that the frame can be sold
separately, so amended claim 6 is not an unallowable intermediate
generalisation.
Looking forward to your comments, and I hope to see you in our M1- and M2-courses for the next EQE!
Nyske, with help from Roel and Joeri
European patent application Bicycle-1 as filed - Description
Filed 1.1.2025 at the EPO. No priority claimed.
The present invention relates to bicycles as widely known and used around the world for
transportation. Bicycles are also used in sporting events at private and professional level.
D1 shows a bicycle according to the prior art.
The bicycle of D1 essentially has a steel alloy frame, two wheels, a saddle, handlebars for steering
and pedals for propulsion.
Bicycles of D1 are relatively heavy and thus hard and strenuous to drive uphill.
The present invention seeks to overcome this problem and it is an objective to provide a bicycle
lighter in weight than those of D1.
The invention is defined by independent claims 1 and 2.
Dependent claims 3-4 set out various preferred embodiments. Preferably, the frame of the bicycle
is made of an aluminium alloy or a titanium alloy. Such alloys have a density below 5 or even for
some below 3. Density is commonly and herein expressed in grams per cubic centimetre.
A bicycle according to the present invention may be provided with a brake system as often
required by local law.
Bicycle frames may be welded together from individual tubes or moulded in suitable forms by
processes known to a skilled person.
Bicycle frames are often marketed & sold separately and then assembled by retailers or private
individuals using wheels, a saddle, handlebars, pedals etc. from other sources. Therefore, only the
bicycle frame itself is considered essential for the present invention.
Available prior art
D1
Published 1970
The bicycle of D1 essentially has a steel alloy frame, two wheels, a saddle, handlebars for steering
and pedals for propulsion. A bicycle is often provided with a brake system in the form of disc
brakes or rim brakes which each form well known alternatives for bicycle brake systems. Some
bicycles e.g. for closed track racing have no brakes.
D2
Prior art technical encyclopaedia published 1990.
Aluminium is a metal with element number 13. Density for pure aluminium and its alloys is 2.7.
Titanium is a metal with element number 22. Density for pure titanium and its alloys is 4.5.
Magnesium is a metal with element number 12. Density for pure magnesium and its alloys is 1.7.
Iron is a metal with element number 26. Iron is the predominant component in steel alloys. Steel
alloys are having a density at 7.9.
It is generally known that an alloy is defined to be a mixture of chemical elements of which at least
one is metal.
D3
Prior art published 1997
A big truck is shown with steering wheel, pedals controlling an engine for propulsion, seats and
wheels.
The structural parts of heavy trucks are traditionally made from steel alloys. It has been found that
significant weight reduction is possible by employing an aluminium alloy for the frame of the truck.
D4
European patent application filed 15.7.2023 and published 15.1.2025. D4 is presently pending.
D4 discloses a bicycle, comprising a frame, two wheels, a saddle, handlebars for steering and
pedals for propulsion. D4 sets out that bicycle frames of steel alloys are traditionally very heavy.
Especially for competition purposes. D4 suggests to replace the heavy steel frame with a titanium
alloy frame with a density of 4.5
Thanks so much for these - it really helps get more of a sense of certainty about how we did.
ReplyDeleteI'm not sure I follow the reasoning for 15-2 - From your explanation, I would say OK in view of Art. 123(2)? Unless I miss something?
You are correct. The reasoned is correct so it complies with 123(2): Yes. We will correct our glitch.
DeleteI was also confused. Additionally, the application as filed also mentions "Therefore, only the
Deletebicycle frame itself is considered essential for the present invention."
glitch corrected, apologies
DeleteI have the same question. Your explanation in 15.2 would be that is in conformity with Art 123(2)
ReplyDeleteSee above. Will be corrected.
Deletecorrected, apologies
DeleteJohn
ReplyDeleteQ7: I agree with your answer which was what I initially put. However I changed my answer due to the examples given in the guide lines.
ReplyDeleteIn the examples the technical effect of the invention claim is first investigated thus allowing you to define the closest prior art.
So would the answer not be instead
Define technical effect > define closest prior art> establish how the closest prior art differs from the claimed subject-matter> define objective technical problem> decide if proposed solution is obvious to a person skilled in the art
You seem to confuse purpose of the claimed invention (jn field - purpose - minimum modifications) with technical effect of the distinguishing feature.
DeleteSe Guidelines G-VII, 5 and subsections.
Thank you!
ReplyDeleteAs for Q.2, why is the absence of specific metal alloys in claim 2 considered to be supported by the description under Art. 84?
I would also argue that without bringing additional technical knowledge to the situation (which candidates are not supposed to do), claim 2 is not clear. Neither description, nor provided prior art discuss density of metal alloys, how to determine it and whether or not other alloys exist with the required densities, except specific given examples. Instead, both the description and the prior art first introduce alloys, then declare what densities they have, but they do not provide any guidance as to how to search for alloys having density as a selection criterion. Neither they declare that a skilled person knows how to measure density to select suitable alloys based on this measurement (do different measurement technics exist to give you different values?). In summary, there is just not enough information given in the exam to declare that alloy density alone is clear enough feature to determine the meaning and scope of claim 2.
Delete-SV
I also answered A, because frame being any metal alloy was not disclosed. Only preferably aluminum and titanium alloys, and then 'such alloys' (referring to aluminum and titanium) have a density below 5 or even for some below 3. I thought that because magnesium alloy has a density below 3, and magnesium is not supported then metal alloy should have been defined.
DeleteBit late to the discussion but I answered A, for the same reasons that Lisa gave.
DeleteI don't agree with your answer regarding Q9, as the description as filed does not have an embodiment describing a bicycle. Therefore, as the description is not amended to include the embodiments of the claims as filed, there is no support in the description for the amended claim 1.
ReplyDeleteThe amended claim 1 would be in conformity with A84, in my opinion, if the description would have been amended with the embodiments of the claims as filed.
-Aj
Interesting point of view! I had the same thoughts. Chose in any way True (is supported) because I thought your argument would be a little tooo much for Paper F - let‘s see!
DeleteThat would not be an issue with the claims but with the description.
DeleteYou seem to refer to the alleged need to being the description into conformity with amended claims.
Note that this alleged need to bring the description on conformity with the amended claims is highly debated and there is no consensus whether there is such need and whether art.84 would be the legal basis for that. See e.g. recent decision T 56/21. Note that the Guidelinies indicate that it only needs to be done when there are inconsistenties that cause uncertainty on scope of the claims/scope of protection - that does not apply here imho.
I know that the reasoning might have been far fetched, but for the sake of learning, I will write it out.
DeleteIn the description of the exam paper, the "embodiment" of a bicycle (comprising frame, two wheels, etc) is only disclosed in reference to D1 and in the original claims 1 to 4. The invention, as written out in the description, relates only to the frame of the bicycle (and to a bicycle that may have a brake system).
Therefore, as there is no support for the embodiment of bicycle in the description, I considered that there would be no support for the amended claim 1 in the description.
This problem could of course be solved by amending the description with the embodiments of the original claims, referring to GL F-IV 6.6, stating in the first sentence that "where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description so that it includes this subject-matter". It can be also thought as A83 problem, but as the question was relating to A84 and the description was not been amended, my reasoning brought me to the conclusion that it was *not* in conformity of A84. This most probably is not the way it would be communicated to the applicant by EPO, but is still within the wording of A84.
As a side-note, I still answered to Q13.1 that there is no added subject-matter regarding amended claim 1 because the original claims in the application as filed contained those "missing" embodiments.
-Aj
@ Anonymous 22 March 2025 at 16:05 (please use your name or a nick name!)
DeleteIt looks lime to have another application than I have... I cite from it below to show the basis for amended claim 1:
The present invention seeks to overcome this problem and it is an objective to provide a bicycle lighter in weight than ...
The invention is defined by independent claims [...] 2.
2. A bicycle comprising a frame, two wheels, a saddle, handlebars for steering and pedals for
propulsion, characterised in that the frame is made of a metal alloy with a density below 5
and preferably below 3.
Preferably, the frame of the bicycle is made of an aluminium alloy [...]. Such alloys have a density below 5 or even for some below 3. Density is commonly and herein expressed in grams per cubic centimetre.
Yes, I totally agree that there is support in the application *as filed* for the amendment. However, where does the reference to the independent claim 2 in the description point after amending the claims?
DeleteIf it is considered that it points to the amended claim 2, I can agree that after the amendment the independent claim 2 is supported by the description and thus complies A84, as there is the path described by you but with amended claim 2. (Would this in real life introduce some problems due to changing the definition of the invention? Also the preferred embodiments of the invention get modified in this suggestion.)
If the reference still points to the original, after the amendment non-existent, independent claim 2, is there still support in the description for the amended claim 1? I would argue that the description cannot refer to the application as filed, but all the text must be in the description. Thus, there would be no support as the claim 2 in the path described by you is missing.
I understand that this could be more like a philosophical question, but at least for me the support in description is questionable in this kind of situation. In real life there most probably would be examples of the invention in the description that would give support to the amendments, and such example or just having one sentence of the embodiment disclosed in original claim 2 in the description would have made the question clear for the F exam, or was it the intention all along to make a question that is not so straightforward to answer? (Most probably I'm just overthinking this.)
Sorry about the mishap with the nick, as I only "signed" all my previous messages.
Excuse me, about Q.9, I've found this in GL IV-4.3, about art. 84 and inconsistencies: "features required by the independent claims may not be described in the description as being optional using wording such as "preferably", "may" or "optionally". " What do you think about it @Roel?
DeleteThank you so much for sharing your answers!
ReplyDeleteRegarding Q2, I understood option A as "Would a claim 2 that defined the specific metal alloys be OK?". For example, claim 2 might define the metal alloys: "characterised in that the frame is made of a metal alloy, where the metal alloy is selected from a titanium alloy or an aluminium alloy, with a density below 5 and preferably below 3." If yes, option A was a valid answer.
Please explain your interpretation, as I donot see how you got to that interpretation.
DeleteOption A is: “ Claim 2 is not clear as required by Article 84 EPC because: Claim 2 does not define the specific metal alloys to use for the frame.”
which seems unambigous to me.
Doesn't option A offer a way to eliminate the clarity issue?
DeleteDid you give any thought about interpreting D4 to be a non-enabling disclosure? D4 only ["suggests" to replace the heavy steel frame with a titanium...] How can one be sure if they have actually reduced it to practice? Does this change the whole novelty assessment?
ReplyDeleteEnablement in EP does not mean that they should have refused it to practice. It means that the skilled person can make the invention with the information given in the applicant combined with common general knowledge and skills - for prior asr: at the eff date of the claim being examined. There is no indication that that would be an issue, on the contrary, so that there is no reason to consider D4 not enabled.
DeleteI had the same thoughts when I read the prior art.
DeleteThe format presenting it is very strange and I am very keen in seeing the outcome of this „enabeling“ debate
In my comment above, “refused” should read “reduced”.
DeleteI am a bit confused regarding question 10, in the guidelines, F-IV, 3.4 a dependent claim is defined as "Any claim which includes all the features of any other claim is termed a 'dependent claim'". As such, shouldn't amended claim 4 technically be dependent on claim 6, since amended claim 4 contains all features of claim 6, i.e. the feature a bicycle frame made of titanium alloy?
ReplyDeleteHi Ee, note that claim 4 is not just the feature of claim 4, but includes all features of claim 1 (The bicycle of claim 1, …).
DeleteWe understood the statement to mean “dependent on claim 1” - with that interpretation it is False.
However, in your interpretation of “dependent on another claim”, the statement is indeed True as claim 1 with the replacement of claim 4 is a bycicle with the frame of claim 6 and hence a dependent claim.
We will need to wait which interpretation the Committee and the Examination Board had in mind and whether they only consider answers based on that interpretation correct, or whether they agree that the statement can be understood both way and will neutralize it (and possible adjust the pass level accordingly).
I, after a lot of back and forth, answered True, seeing claim 4 as dependent on claim 6… This question is the only one where my answer differ from yours. Hope that True can be accepted as an answer, I still find it correct.
Delete@OC: I agree. And as questions shall not trick candidates but be clear and fair and answers based on a different but not incorrect interpretation shall also be considered correct, imho both answers shall be considered correct. The Examination Board will consider blog post and other input when deciding (but they are not always convinced by unexpected interpretation and reasoning, so do not always follow our suggestion ;)).
DeleteChiming in, if you allow, but if the claim 4 (bicycle) would be referring to claim 6 (bicycle frame), the claims would be independent claims according to R43(2). Similarily to a plug and a socket, or if of different categories "Claim 1 Method X" and "Claim 2 Software ... implementing method according to claim 1".
DeleteI have always considered that independent claim cannot be dependent, but is it nevertheless possible?
@Aj: A claim is either dependent or independent - see definition in GL.
Delete@EE: If the committee did indeed consider 4 dependent on 6 and hence the answer True, they would not be able to distinguish that from candidates that wrongly considered 4 dependent on 1. So the question would not discriminate between correct and incorrect understanding - that would be an error in the design; an overlook (that 4 depends on 6) seems more likely; intending to test whether candidates considered 4 dependent on 1 seems more likely, as that does discriminant between correct (no, not all features from 1 are in 4 due to the replacement) and incorrect (yes, because the claim starts with “…acc to claim 1”) understanding and reasoning. Seems a likely candidate for neutralization/ cancellation.
DeleteThanks a lot for putting this together. I disagree with your answer to 4.3 - you wrote
ReplyDelete„Truck = transportation device, pedals controlling an engine for propulsion = pedal system for propulsion; aluminium alloy frame = metal alloy lighter than a steel alloy (significantly = unclear term, can not be used to distinguish over the prior art)“
You forget to analyse the two wheels. In my opinion a „big truck“ (later mentioned heavy truck) in 1997 would never (ever!) be disclosed in an enabling way having two wheels. In this example the number of wheels is important and in my opinion a technical difference.
Agree that the way of reporting the prior art is strange, but I would be really surprised if for 4.3 your answer is the only one accepted…
Let‘s see !
Isn't this allowed by the "comprising" language of the claim? I.e. It must have at least 2 wheels, but there is nothing precluding more than 2?
DeleteBut comprises two wheels does not exclude four wheels.
DeleteIt depends on whether one considers “comprising 2 wheels” to mean “compositie exactly 2 wheels but not more than 2” (novel w.r.t. a truck that implicitly has 4, 6 or more but not just 2) or “comprising 2 or more wheels” (as more than 2 comprise 2) (then not novel).
DeleteWe had a debate on it. The Guidelines do not give clarity as “comprising” in combination with a specified number of X is not described.
We used the second interpretation.
Actually, I have not thought about that - I do, in this context, interpret „comprising two wheels“ as having only two wheels … (because three would be a very different vehicle!). But yes, with the argumentation I see a point, but still does not find it convincing.
DeleteAlso interesting to note, that there is sth.not be clearly solvable with the Guidlines, which I would assume far beyond what I‘d expect for paper F …
@Jan-Philip: I agree, should be solvabele with the art/rules or the GL, but they donot cover “V comprising a specific number of W (and vs but not more)”, only “V comprising W (and possibly more)”. I could not even find that in the case law book (not part of the Foundation syllabus, but telling me that there seems to be no legal basis at all to discriminate between the two interpretations)
DeleteBy the way, I consider a “BIcycle” (“TWEEwieler” in Dutch) have exactly two weeks because of the “bi” in its name. A “unicycle” had one, a “tricycle” has three, etc…. If it is open how many, it should use a generic term and be called a “cycle” (genus “rijwiel” in Dutch, genus “Fahrrad” in German
DeleteI checked the GL again:
DeleteSee the “other” in GL F-IV, 4.20: “A claim directed to an apparatus/method/product "comprising" certain features is interpreted as meaning that it includes those features, but that it does not exclude the presence of OTHER features, as long as they do not render the claim unworkable.”
I understand that to mean that “comprising 2 wheels” does not excluded other features such as a bell and a luggage carrier rack, but does not allow more of the same, so extra wheels.
@Roel: I disagree with the interpretation that "comprising 2 wheels" excludes transport devices with more than 2 wheels from the scope of the claim. It is not a question of "more of the same", since each wheel is a separate feature. Thus, the claim comprises a first wheel and a second wheel. This does not exclude the presence of a third wheel, since it is a feature OTHER than those already present in the claim. The term ”comprising” should not exclude other features just because they happen to be of the same type as features already present in the claim.
DeleteI disagree with Skalman and agree with Roel. If the number of a countable feature is essential for defining the nature of a claimed subject-matter, then the claimed subject-matter should be limited to the stated number (even though the comprising language is used). For example, in the case of a fruit plate comprising two bananas, there may be a third one. The nature of the fruit plate is not changed by a third banana. By contrast, the nature of a living creature comprising one head would be drastically changed if a second head were present. In such a case, I would argue that the comprising language refers to OTHER features that may be present.
DeleteComing back to the question, the overall nature of a transport vehicle is associated with the number of its wheels to such a degree, that it is safe to say that said nature is DETERMINED by the number of its wheels. Here too, I would argue that the comprising language refers to OTHER features of the transport vehicle that may be present.
I agree with Skalman and would like to chime in on the discussions to learn for the upcoming, more advanced, exams.
DeleteAlthough not part of the Foundation syllabus, T 0759/91 (2.2) states regarding the term "comprises": “in drafting patent claims legal certainty requires its interpretation to be normally restricted to the broader meaning "include" or "comprehend"”. Wouldn’t you agree that a truck with four or six wheels “includes” two wheels (i.e. any pair of the four or six)?
In addition to agreeing with Skalman that a possible third and forth wheel are “other” features than a first and second wheel, I am unable to find any statement supporting the interpretation that the use of the term “other” in GL F-IV, 4.20 “does not allow more of the same”. On the contrary, in T 0759/10 (3.4), which is referred to in GL F-IV, 4.20, the Board states that "comprises" indicates that “any further component” may be included. Roel, could you please elaborate a bit more on your interpretation?
And also @Roel: I am uncertain about the relevance of the term “bicycle” in this context, given that the claim pertains to a “transportation device”. Could you please provide further clarification on the meaning of your post above regarding “Bicycle”/TWEEwieler”?
@Markus, your statement about limiting claimed subject-matter to a stated number when the number is essential for defining the nature of a claimed subject-matter appears reasonable, but I couldn't find support for it in the Guidelines or Case law. What is the basis of this statement?
Thanks in advance for any input!
The holy books and the established doctrines may not support my statement.
DeleteIn some cases (such as this), the openness of "comprising" is counterintuitive and against the use and understanding by the overwhelming majority of mankind
(which by itself is not yet a good argument, but here intuition coincides with logic and reason). Aren't patents meant for the public?
The strict interpretation of comprising, as it is practised by the high priests in the language temples, is dogmatically lopsided.
While going down the rabbit holes of the language religion, it's easy to lose one's sanity. But new priest candidates must be indoctrinated, so that the cult can persist.
Notably, in chemistry (which happens to be my field), a claim reading "composition comprising 10% A" does NOT cover a composition containing 20% A.
DeleteThat obviously means that "comprising" is interpreted differently dependent on the technical field: In mechanics, more of the same is allowed, whereas only other, unspecified features are allowed in chemistry.
In T 1023/02, the board found "that a claim using "comprising" should generally not be construed as covering subject-matter which includes further steps of a nature that would manifestly counteract the specified technical purpose of the step(s) recited in the claim."
Apparently, a method was discussed there ("steps"). However, this statement may be paraphrased as: The oppennes of comprising should not be abused to change the nature of the claimed subject-matter.
In T 1599/06, the board stated: "The meaning of terms in a patent claim and the resulting meaning of the whole claim have to be determined from the point of view of the skilled person, who reads the claim in the context of the application and against the background of his/her common general knowledge."
Here too, it seems to me that the board would rather reject the notion that a claim directed at a transport vehicle comprising 2 wheels, and which is appended to a description disclosing only bicycles, would cover a transport vehicle with more than 2 wheels.
I find it highly problematic that comprising has different ramifications in different fields.
The mechanical comprising simply makes no sense to me.
@Markus Horn: Thanks! I was not aware that the established interpretation of a "composition comprising 10% A" inherently excludes (and is thus considered novel compared to?) a composition containing 20% A.
DeleteWould it be correct to interpret your statement as: a “composition comprising 10% A” means that the composition contains exactly 10% A, neither more nor less? If so, and assuming my understanding of "comprising" in the context of mechanical applications is accurate, I would agree that the term is interpreted differently depending on the technical field. But my interpretation of the “mechanical comprising” could just as well be incorrect.
Ah, Sean was faster :)
ReplyDeleteThanks very much all for sacrificing your weekend time to put this together so quickly for us, it's very comforting to read. I threw away a couple of silly marks by not reading the question properly but c'est la vie.
ReplyDeleteRegarding the comments on prior art document D4 and the terminology ''suggests to replace'', that too gave me pause for thought and I agonized over it's meaning. Clarity of the prior art disclosures is definitely something for the EB to improve upon for next year's candidates I think.
Hello, First of all thanks for this job and for your support!! I have a doubt on Q14 related to amendment of Claim 3.... The disk brake are described in the prior art D1 and I considered this as an exception to Art. 123(2) since also all the other conditions appear to be respected...see GL IV-2.2.1 features described in a document cross-referenced in the description....that's why I considered it as allowable...what do you think?
ReplyDeleteFor question 15, regarding claim 4: this claim reads "...the frame is made of a titanium alloy instead of an aluminium alloy.". Can't the "instead of an aluminum alloy" be considered as an undisclosed disclaimer, which in turn is not allowed under A.123(2) for this question?
ReplyDeleteHello, thanks for sharing your answers.
ReplyDeleteI would like to specifically revisit your answer to question Q2 regarding the lack of clarity of claim 2.
First, the question stated that claim 2 lacked clarity, so answering "E" did not mean that the claim was clear, but rather that the real reason was not among the given answers.
Next, I find that you dismiss answer A too quickly, which states that "Claim 2 does not define the specific metal alloys to use for the frame." Personally, I hesitated a lot during the exam because, in my view, the claim defines the desired result rather than the means to achieve it. I therefore carefully read the guidelines, particularly Guidelines F-IV, 4.10, which indeed state that claiming a result to be achieved is acceptable BUT under certain conditions: "they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims."
The guidelines then add—this is where it gets interesting—that:
"However, these cases have to be distinguished from those in which the product is defined by the result to be achieved and the result amounts in essence to the problem underlying the application [...] Therefore, if the independent claim defines the product by a result to be achieved and the result amounts in essence to the problem underlying the application, that claim must state the essential features necessary to achieve the result claimed (T 809/12), see also F‑IV, 4.5."
In this case, the patent application explicitly aims to address the problem of excessively heavy bicycles. Claiming a metal alloy with a mass density lower than 5 therefore corresponds, in my opinion, to the very core of the problem and should not be allowed under Article 84 in light of the guidelines. Moreover, the application would have allowed the claim’s scope to be defined in a more precise manner, making the result-oriented formulation unnecessary.
I would like to conclude with one last point from the same guidelines:
"Art. 84 also reflects the general legal principle that the extent of monopoly conferred by a patent, as defined in the claims, must correspond to the technical contribution to the art. It must not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art (T 409/91)."
As it stands, claim 2 does not correspond to the technical contribution described in the patent application, which is limited to two specific metal alloys and does not even mention the possibility of using different alloys.
Of course, this is only my personal analysis and the reasoning I had during my exam. I would be interested to hear your opinion on this.
I fully agree. The claim is too broad for the described invention. During the exam, I also spent a lot of time on this question, going back and forth between answers A and E. Then I said to myself: magnesium alloys are clearly beyond the scope of the invention, them not being mentioned once in the whole application. Yet, they would fall into the protection scope of claim 2.
DeleteI understand that there is no fine line, but rather a wide area, between the need to further specify a feature and the lack of said need. The reasons provided above in favor of the necessity of further specification of the metal alloys are absolutely convincing.
Regarding Q3. Considering that Titanium-Aluminium alloys do exist, wouldn't that remove the contradiction?
ReplyDeleteDo you know how and when the EQE Paper F results will be available?
ReplyDelete