想找這資料很久了，終於找到了。只惜沒有找到美國的。
THE PRAXIS AT THE EUROPEAN PATENT OFFICE IN CONNECTION WITH NUMERICAL LIMITATIONS AND DISCLAIMERS.
In the course of the various procedures (examination, opposition, appeal) at the European Patent Office (EPO), numerical limitations and disclaimers are often an issue in connection with novelty assessment over a prior art document.
Numerical limitations play an important role in connection with claimed ranges of parameters when it is necessary to distinguish such ranges from the known ranges disclosed in the relevant prior art.
The relevant case law of the Board of Appeal of the EPO offers good guidance over the criteria for evaluating the novelty of claimed ranges over cited prior art. Particularly three scenarios are distinguished: 1) Selection from a broad range; 2) Overlapping ranges; and 3) Multiple selection.
1) Selection from a broad range: this is the case when the claimed numerical range is a sub-range of a previously disclosed broader range.
A sub-range selected from a broader range of the prior art is considered novel if each of the following criteria is satisfied (see decisions T198/841 and T279/891):
(a) the selected sub-range is narrow compared to the known range;
(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art document and from the endpoints of the known range;
(c) the selected sub-range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art but another invention (that is to say, a purposive selection, having a new technical teaching).
The three postulates for the novelty of a selected sub-range are based on the premise that novelty is an absolute concept. In decision T 12/811 it was emphasized that a sub-range is not new because of a new effect discovered to occur within it, but has to be new per se. However, such technical effect occurring in the selected sub-range, but not in the known range, can confirm that criterion c) is met, i.e. that the invention is novel and not merely a specimen of the prior art.
As for criteria a) and b), it was clarified that the meaning of “narrow” and “sufficiently far removed” has to be decided on a case-by-case basis. In decision T610/961, the patentee/respondent claimed numerical ranges for the composition of layers of metallic thin films, which the Board considered to be a narrow selection of a prior generic disclosure. Because the claimed narrow range did not overlap with the preferred sub-ranges of such disclosure, the selection was considered to be sufficiently far removed from the specific examples of the prior art to be novel. Moreover, the claimed material exhibited different characteristics to the one of the prior art, thus proving that the selection had not been arbitrary (criterion c)). Another point of importance was the fact that the prior art disclosure appeared to discourage the skilled person from using the claimed selected sub-range, so that the skilled person would not have seriously contemplated applying the teaching of the disclosure in that range.
2) Overlapping ranges: this is when the claimed numerical range partly falls within an already disclosed range.
In the case of overlapping ranges of claimed subject-matter and the prior art, the same principles apply for the assessment of novelty as in the selection of sub-ranges from a broad range (see T 17/851). The EPO’s praxis is at first to decide which subject-matter has been made available to the public by a prior art disclosure. In this context, it is not only examples, but the whole content of the prior art document which has to be taken into consideration. As to overlapping ranges, the novelty is considered to be destroyed by an explicitly mentioned end-point of the known range, explicitly mentioned intermediate values or a specific example of the prior art in the overlap. This was the case for example in decision T 666/891 where the Board decided that a patent relating to a shampoo comprising 8-25 % anionic surfactant and 0.001-0,1 % cationic polymer was not new based on an earlier patent application disclosing a shampoo composition containing 5-25 % anionic surfactant and 0.1-5.0 % cationic polymer.
The EPO has also clarified that in order to reestablish novelty for the claimed range it is not sufficient to exclude specific novelty destroying values known from the prior art range but it must also be considered whether the skilled man, in the light of the technical facts and taking into account the general knowledge in the field to be expected from him, would seriously contemplate applying the technical teaching of the prior art document in the range of overlap. If it can be fairly assumed that it would do so, it must be concluded that no novelty exists. In decision T 26/851 the Board ruled that the skilled man could not seriously contemplate working in the range of overlap, since the prior art surprisingly contained a reasoned statement clearly dissuading him from choosing said range, although the latter was claimed in said prior art. Therefore, novelty was recognized. Similarly, in decision T751/941 the Board ruled that novelty was not destroyed by the overlap because the method of the prior art was clearly not to be carried out in the overlapping range. Moreover, the combination of parameters of the claimed invention was not disclosed in the prior art.
3) Multiple selection: this is when the claimed invention includes the combination of two or more ranges which fall within or overlap with ranges which have already been disclosed, without explicit connection to each other, in the prior art.
In decision T 245/911 most of the ranges of claim 1 could be obtained by substantially narrowing down previously disclosed ranges towards their central portion. The Board, however, decided that the combination of the relevant features would not have been seriously contemplated by the skilled reader and would not have been available to him as the features were not sufficiently prominent in the prior disclosure to be unambiguous. In this case, moreover, it was held that sheer number of parameters involved (more than ten) limited the scope of the claim quite substantially with respect to the disclosed composition. The claimed composition was thus regarded novel with respect to the cited prior art.
In decision T 653/931 the appellant/applicant successfully argued that the process of claim 1 was novel as it referred to a combination of three selected ranges and product features which had not been disclosed in the cited prior art. The Board accepted the reasoning and emphasized that novelty cannot be assessed by contemplating the ranges of the various parameters separately where the claim in question is characterized by a combination of parameters.
Similarly, in decision T 65/961, although the ranges of the prior art and of the claimed invention overlapped, the prior art document did not disclose the combined features in question as the solution to the technical problem. Moreover, the Board held that the claimed solution was not arbitrary as it solved a specific technical problem compared with the products according to the prior art. The claimed invention was thus to be considered new.
It can be concluded that, again, also in the case of multiple selection, novelty is considered as an absolute concept. Therefore, the requirements for novelty can be considered to be fulfilled when no prior art document exists which discloses the same combination of parameter ranges (whether overlapping or comprising those of the claimed invention) for the solution of the same technical problem.
In this context, it is perhaps worthwhile noting that optimization of parameters falls within the scope of the assessment of inventive step. When a number of parameters are concurrently optimized to lead to an improvement, a compromise or a solution to a problem, it should be assessed whether such optimization is to be considered obvious or inventive.
With regard to disclaimers, the EPO defines a disclaimer as an amendment to a claim to introduce a negative limitation that expressly states that particular features are absent (Guidelines for Substantive Examination2, Part C, 4.12).
There are two types of disclaimers: those that are disclosed in the application as filed, and those that are not disclosed in the application as filed.
The disclaimers disclosed in the application as filed constitute features that have been expressly mentioned as not being part of the invention and they are admissible.
Disclaimers of the undisclosed type are usually introduced when there is conflict with the prior art and constitute features which would not have been obvious from the application as filed. They are used to remove non-patentable embodiments disclosed in the application as filed or when the absence of a feature can be deduced from the application as filed.
Disclaimers may be used only if adding positive features to the claim would either not define the still protectable subject-matter more clearly and concisely or unduly limit the scope of the claim.
Disclaimers may not, under any circumstance, be used to restore inventive step. This was made clear by the Board of Appeal in cases T 170/871 and T 597/921 where it was stated that there was no basis in the European Patent Convention3 (EPC) for the substantiation of inventive step by way of a disclaimer. However, a disclaimer may render new an inventive teaching which overlapped with the state of the art.
The allowability of disclaimers has been recently considered by the Enlarged Board of Appeal of the EPO in two landmark decisions G1/031 and G2/031.
According to the above decisions, an amendment to a claim by the introduction of a disclaimer is in principle considered admissible even if the disclaimer is not disclosed in the application as filed.
However, a disclaimer which is not disclosed in the application as filed may be allowable for:
1) restoring novelty by
- delimiting a claim against state of the art under Article 54(3) and (4) EPC3, and
- delimiting a claim against an accidental anticipation under Article 54(2) EPC3, wherein an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the skilled man in the art would never have taken it into consideration when making the invention,
2) disclaiming subject-matter excluded from patentability under Articles 52 to 57 EPC3 for non-technical reasons.
Furthermore, the Enlarged Board of Appeal has set up the following criteria for the allowability of disclaimers:
i) the disclaimer must meet the requirements of clarity and conciseness as prescribed by Rule 84 EPC3. This means that the disclaimer is not allowable if a necessary limitation to a claim can be expressed in simpler terms in positive, originally disclosed features in accordance with Rule 29(1), 1st sentence, EPC3 and/or if it puts an unreasonable burden on the public to find out what is protected and what is not protected,
ii) the disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. This means that the necessity of a disclaimer should not be an opportunity for the applicant to reshape his claims arbitrarily,
iii) the disclaimer must not become relevant for the assessment of inventive step or sufficiency of disclosure, otherwise it adds subject-matter to the application as filed contrary to Article 123(2) EPC3, and
iv) it should be clear from the description that there is an undisclosed disclaimer and why it has been introduced; this means that the excluded prior art should be indicated in the description (pursuant to Rule 27(1)(b) EPC3) and the relation between the prior art and the disclaimer should be shown.
In conclusion, the use of numerical ranges and disclaimers is subject to specific and precise rules, clarified and consolidated throughout the years, with the decisions of the Boards of Appeal.
As a general rule, it is advisable to always include in patent applications as many examples as considered necessary to cover the entire essence and the extent of an invention. By doing so, the inventor secures himself enough basis to support any reasonable arguments to distinguish his invention from the prior art, in the event of a conflict during the procedures before the EPO.
Notes:
* Conflicting applications: i.e. earlier applications which had not been published at the filing or priority date of the (later) application at issue. Conflicting applications are state of art only for the purpose of examining novelty (Art. 54(3) and Art. 56 EPC3) and are restricted to European patent applications. In addition, the novelty-destroying effect apply only to the countries commonly designated in both earlier and later applications.
References:
1 http://legal.european-patent-office.org/dg3/search_dg3.htm
2 http://www.european-patent-office.org/legal/gui_lines/pdf_2005/part_c_e.pdf
3 http://db1.european-patent-office.org/www3/dwld/epc/epc_2002_v1.pdf
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