補充實驗數據作為進步性之答辯。
此外， 申請時說明書、申請專利範圍或圖式已明確揭露發明的結構、操作及功能等技術內容，雖未提及或未充分提及功效， 若能經由該發明所屬技術領域中具有通常知識者自該結構、操作及功能直接且無歧異得知者，該功效之闡明亦不構成新事項。
【審查基準，2021 年版，2 - 6 - 6。】
1/14/2022
5/14/2015
負面表現排除前案，可例外視為未引進新事項
【 2026/09/03 更新】
於114年度民專上字第7號判決中，上訴人(即專利權人)為排除乙證3(先前技術)所揭露之「油封的外徑與內徑的比值為1.357」，向智慧局申請更正系爭專利之申請專利範圍，在系爭專利請求項1「每一油封的外徑與內徑的比值小於或等於1.7」後，添加「但不包含1.357至1.7」技術特徵，此更正申請業經智慧局「不予更正」之核駁審定，本判決同樣指出，上訴人並未提出僅更正「但不包含1.357」之內容，無法例外視為未引進新事項，屬實質變更系爭專利公告時之專利範圍，故上訴人所提更正自非合法，仍以更正前之系爭專利權利範圍為據。
【不行】：「每一油封的外徑與內徑的比值小於或等於1.7」「但不包含1.357至1.7」
【可行】：「每一油封的外徑與內徑的比值小於或等於1.7」「但不包含1.357」
真是莫名奇妙的法律邏輯啊！
【 2022/01/04 更新】
第2 - 6 - 10頁
上述以負面表現方式之修正限於申請專利發明為克服不具新穎 性、擬制喪失新穎或不符先申請原則之引證文件的情形 ，惟「同日 申請」之引證文件不適用該排除方式修正。
請參照智慧局的公告。
https://www.tipo.gov.tw/tw/cp-85-883542-7afc9-1.html
專利師公會曾經就此問題發文給智慧局，資料如下。
【 2021/04/19 更新】
【 2021/02/07 更新】
第二篇發明專利實體審查 ，記載有：
第六章 修正 「4.2.3 允許的變更」的章節（第2 - 6 - 12頁）
d.採用負面表現具體數值的方式進行修改。未揭露於申請時說明書、申請專利範圍或圖式之數值固屬新事項，惟若該數值屬於先前技術，例外允許以排除（例如不包含、不包括）的記載方式修正之。例如：原申請專利範圍記載某一數值 X1=600～10000，先前技術之範圍為X2=240～1500，因 X1=600～1500 與 X2 部分重疊而不具新穎性時，由於數值 1500 並未揭露於申請時說明書、申請專利範圍或圖式中，故不允許將該數值包含在內而將申請專利範圍變更為 X1=1500～10000。但例外允許藉排除重疊部分之記載方式，將申請專利範圍所記載之數值範圍修正為「X1＞1500～10000」或「X1=600～10000，但不包括 600～1500」。
2.4.1.5 表現方式所致之不明確
(1)請求項中使用負面表現方式，例如「除……之外」、「非……」或類似用語。
惟若此類用語在特定技術領域中具有明確的涵義，或該發明所屬技術領域中具有通常知識者能瞭解其範圍，則得以此類用語表現。
此外，若以正面記載技術特徵之方式無法明確、簡潔界定請求項時，例如為迴避先前技術，得將屬於先前技術的部分，以負面表現方式明確排除。
4.2 申請專利範圍
4.2.2.允許的刪除
第2 - 6 - 10頁。
(7)由請求項中排除與先前技術重疊部分之技術內容會導致引進新事項，因為該等被排除之內容並非由申請時說明書、申請專利範圍或圖式所能直接無歧異得知者。惟若無法以正面敘述方式明確、簡潔地界定排除後之標的時，得以「排除（disclaimer）」與先前技術重疊部分的負面敘述方式記載。例如請求項記載上位概念技術特徵，說明書中對應記載多個選項之下位概念技術特徵，若其中包含某個選項之發明已為先前技術，為避免與先前技術重疊，得允許於說明書中刪除該選項，而於請求項中以排除（例如不包含、不包括、除外）該選項之方式予以修正，即以負面表現方式記載上位概念技術特徵，雖然修正後之說明書及請求項增加申請時未揭露之技術特徵，亦即被排除之先前技術，惟得例外視為未引進新事項。於上述情況，即使申請時說明書中未揭露該先前技術，亦允許於說明書及請求項之上位概念技術特徵中直接以排除該先前技術之負面敘述方式予以修正，修正後之說明書及請求項中雖增加申請時未揭露之技術特徵，亦得例外視為未引進新事項。
5.更正之效果
6.審查注意事項
(10)一般而言，從請求項中刪除與先前技術重疊的部分，由於該等除外內容並非由原說明書、申請專利範圍、圖式所能直接無歧異得知，故屬引進新事項；惟如因為刪除該重疊部分後使請求項剩餘之標的不能經由正面的表現方式明確、簡潔地界定時，得以排除（disclaimer）與
先前技術重疊部分的負面表現方式記載，此時在更正後之請求項雖出現了申請時說明書所未揭露之技術特徵，得例外視為未引進新事項。
【2016/10/7更新】
【臺灣2015年的審查基準】
審查基準第二篇第六章之「4.2.2.允許的刪除」的章節（2 - 6 - 10），記載有：
(7)由請求項中排除與先前技術重疊部分之技術內容會導致引進新事項，因為該等被排除之內容並非由申請時說明書、申請專利範圍或圖式所能直接無歧異得知者。惟若無法以正面敘述方式明確、簡潔地界定排除後之標的時，得以「排除（disclaimer）」與先前技術重疊部分的負面敘述方式記載。例如請求項記載上位概念技術特徵，說明書中對應記載多個選項之下位概念技術特徵，若其中包含某個選項之發明已為先前技術，為避免與先前技術重疊，得允許於說明書中刪除該選項，而於請求項中以排除（例如不包含、不包括、除外）該選項之方式予以修正，即以負面表現方式記載上位概念技術特徵，雖然修正後之說明書及請求項增加申請時未揭露之技術特徵，亦即被排除之先前技術，惟得例外視為未引進新事項。於上述情況，即使申請時說明書中未揭露該先前技術，亦允許於說明書及請求項之上位概念技術特徵中直接以排除該先前技術之負面敘述方式予以修正，修正後之說明書及請求項中雖增加申請時未揭露之技術特徵，亦得例外視為未引進新事項。
於上述情況，即使申請時說明書中未揭露該先前技術，亦允許於說明書及請求項之上位概念技術特徵中直接以排除該先前技術之負面敘述方式予以修正，修正後之說明書及請求項中雖增加申請時未揭露之技術特徵，亦得例外視為未引進新事項。
【臺灣2011年的審查基準】
請參考審查基準第二篇「發明專利實體審查」第六章「說明書及圖式之補充、修正及更正」之「1.4.1.4.2 刪除」的章節。其記載有：「此外，若在說明書中雖未揭露先前技術之技術特徵時，亦允許在請求項中以排除該先前技術之技術特徵之負面表現方式修正，此時在修正後之請求項雖出現了原說明書所未揭露之技術特徵，可例外視為未引進新事項。」
【2015/9/7更新】
美國：
說明書雖然沒有記載時，可以用說明書已“暗示”或“固有地”揭示的方式來答辯。
To
comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA
35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing
date under 35 U.S.C. 119, 120, or 365(c), each claim
limitation must be expressly, implicitly, or inherently supported
in the originally filed disclosure. When an explicit limitation in a claim
“is not
present in the written description whose benefit is sought it must be shown
that a person of ordinary skill would have understood, at the time the patent
application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed.
Cir. 1998). See also In re Wright, 866 F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed.
Cir. 1989) (Original specification for method of forming images using
photosensitive microcapsules which describes removal of microcapsules from
surface and warns that capsules not be disturbed prior to formation of image,
unequivocally teaches absence of permanently fixed microcapsules and supports
amended language of claims requiring that microcapsules be “not permanently fixed” to underlying
surface, and therefore meets description requirement of 35 U.S.C. 112.); In re
Robins, 429 F.2d 452, 456-57, 166 USPQ 552, 555 (CCPA 1970) (“[W]here no explicit description of a generic invention is to be
found in the specification[,] ... mention of
representative compounds may provide an implicit description
upon which to base generic claim language.”);
2/16/2012
2163.06 Relationship of Written Description Requirement to New Matter - 2100 Patentability
說明書沒有記載，但是請求項有記載時，則可以修正說明書使其包含將請求項的發明。
2163.06 Relationship of Written Description Requirement to New Matter - 2100 Patentability: "III. CLAIMED SUBJECT MATTER NOT DISCLOSED IN REMAINDER OF SPECIFICATION
The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Form Paragraph 7.44 may be used where originally claimed subject matter lacks proper antecedent basis in the specification. See MPEP § 608.01(o)."
'via Blog this'
4/29/2011
進步性的答辯時，新內容會不會構成新事項？
於進步性的答辯時，在意見陳述書中增加實驗數據、或新的描述，顯示發明之功效，不會構成New Matter。
此外，為了舉證發明的功效，還能夠向美國專利局提出「暫緩審查程序 Suspension of Action」，以“暫時地”停止審查以爭取時間，例如要追加實驗，取得証明本發明的優越性的資料。
「暫緩審查程序 Suspension of Action」
http://patentdic.blogspot.com/search?q=%E5%AF%A6%E9%A9%97+%E5%BB%B6%E9%95%B7
日本去年七月的判例。
http://www.hanketsu.jiii.or.jp/hanketsu/jsp/hatumeisi/news/201104news.pdf
MPEP
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_716_02_f.htm#sect716.02f
716.02(f) Advantages Disclosed or Inherent
The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant's evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).
The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971).
此外，為了舉證發明的功效，還能夠向美國專利局提出「暫緩審查程序 Suspension of Action」，以“暫時地”停止審查以爭取時間，例如要追加實驗，取得証明本發明的優越性的資料。
「暫緩審查程序 Suspension of Action」
http://patentdic.blogspot.com/search?q=%E5%AF%A6%E9%A9%97+%E5%BB%B6%E9%95%B7
日本去年七月的判例。
http://www.hanketsu.jiii.or.jp/hanketsu/jsp/hatumeisi/news/201104news.pdf
解決課題及び解決手段が提示されているか否かは、『発明の効果』がどのようなものであるかと不即不離の関係があるといえる。そのような点を考慮すると、本願当初明細書において明らかにしていなかった『発明の効果』について、進歩性の判断において、出願の後に補充した実験結果等を参酌することは、出願人と第三者との公平を害する結果を招来するので、特段の事情のない限り許されないというべきである。
他方、進歩性の判断において、『発明の効果』を出願の後に補充した実験結果等を考慮することが許されないのは、上記の特許制度の趣旨、出願人と第三者との公平等の要請に基づくものであるから、当初明細書に、『発明の効果』に関し、何らの記載がない場合はさておき、当業者において『発明の効果』を認識できる程度の記載がある場合やこれを推論できる記載がある場合には、記載の範囲を超えない限り、出願の後に補充した実験結果等を参酌することは許されるというべきであり、許されるか否かは、前記公平の観点に立って判断すべきである。」
MPEP
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_716_02_f.htm#sect716.02f
716.02(f) Advantages Disclosed or Inherent
The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant's evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).
The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971).
8/06/2003
新穎性, 除去法，克服拒絕理由
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
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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