Tuesday, 26 February 2013

Pre-exam 2013: our answer to the claims analysis questions

As with the Pre-Exam 2012, some of the claims analysis questions led to some discussion between different tutors.

For two statements (12.3 and 20.4) - indicated with question marks below), we can argue either way. For these statements, we give the answer that we think was expected by the exam committee and our comments.

Our answers to the claims analysis questions of Pre-Exam 2013:

11: T, T, T, F;
12: F, F, ?T?, F;
13: T, T, F, F;
14: T, F, T, T;
15: T, T, T, T;
16: F, T, F, F;
17: T, F, F, T;
18: T, T, F, T;
19: F, T, T, T;
20: F, F, F, ?F?

Detailed remarks (click "read more"):

Remarks to specific statements:

11.1 True (‘for inserting’, so it is not yet inserted)
11.2 True (cork body, continuous net of interconnected channels forms a channel; claim not limited to single channel)
11.3 True (it includes more, and the channel is formed of two parts, but the claim allows that)
11.4 False (‘for example’ is not limiting)
12.1 False (claim states ‘at least partly inserted’)
12.2 False (is not straight, connected, random channels)
12.3 ? True ? (T if we only focus on the stopper - channels 3A and 3B form a continuous channel, see [010] ‘continues’; however, F if we look at the claim being limited to the stopper being in the bottle)
12.4 False (‘preferably’ is not limiting)
13.1 True (‘for closing a bottle’, so not in the bottle yet)
13.2 True (but not straight, but that is also not claimed))
13.3 False (also includes a filter, excluded by ‘consists of’ formulation in the claim)
13.4 False (claims rubber, which also covers natural rubber)
14.1 True (D1 is cork only, no rubber)
14.2 False (D2 does have the features; although the main material of the body is cork in D2, D2 does disclose a synthetic  rubber tube as part of the body; claim is not limited to only rubber)
14.3 True (D3 discloses a channel, not intended to let air through in itself, but it will if put in a broad bottle neck. However, the claim is limited to closing the bottle; then D3 has no air channel)
14.4 True (see 14.3)
15.1 True (D1 does not disclose a separate filter)
15.2 True (D2 does not disclose a separate filter)
15.3 True (D3 does not disclose a separate filter)
15.4 True (filter plate 404)
16.1 False (no basis for this in the Client’s application)
16.2 True (see last sentence of [006] in the Client’s application)
16.3 False (diameter of channel also influences it, see last sentence [008] in the Client’s application)
16.4 False (no basis for this in the Client’s application)
17.1 True (see 2nd sentence [008] and [011])
17.2 False (that is not even described and also has no particular effect)
17.3 False (it would then have to focus on an advantage of using synthetic rubber, but no such advantage is given in the Client’s application)
17.4 True (described in [003], [006]of the Client’s application, but is actually a bit broad)
18.1 True (Client’s application only discloses synthetic rubber and no foam)
18.2 True (Client’s application does not disclose an ‘additional’ aluminium perforated foil, but only   as foil that is the filtering unit - which is already in the claim; see comments to this blog: our original answer said: ?True? aluminium perforate foil is disclosed in [0008], but it is not fully clear if the function of the perforation – forming micro-air channels- should then also not be included)
18.3 False (see [008], ‘prevents liquids from coming in contact with the air channel’; since it is for wine bottle, see [001], wine as a liquid is OK)
18.4 True (micro perforations are in the filter plate, which is separate from the body)
19.1 False (D1 is a stopper and might use a filter plate, thus might be read but does not disclose the filter plate)
19.2 True (D2 also relates to stoppers and discloses glueing to synthetic rubber; however, does not disclose other positions than the surface of the stopper D2 does not disclose a filter plate or similar object and thus gives no specific suggestions to fixing it)
19.3 True (D3 does not disclose a filter plate or similar object and thus gives no specific suggestions to fixing it)
19.4 True (D4 has no hint at all in using two channels and incorporating the filter in between)


20.1. False (No basis for sparkling wine, only wine in general, in the Client’s application; sparkling is too specific)
20.2 False (Only synthetic rubber is disclosed in the Client’s application; rubber is more generic and covers natural rubber too; although the claim is formulated in a non-limiting way, it creates a fallback position, which is not allowed)
20.3 False (element is broader than plate)
20.4 ?False? (It is from the context unclear if this would result in a different embodiment and how an outcome of the essentiality test then would look)


Any different opinions are welcome! Please post your opinions as comments to this blog, so everybody can from the discussion.
If posting a comment, please donot use "anonymous" (you may be one of many), but use your name: you can enter a name without signing in. Better to discuss with persons by name, than to discuss with a plurality of "anonymous"es ;-).



13 comments:

  1. This comment has been removed by the author.

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    1. In my opinion questions 11.3, 12.3 and 13.3 does not relate to assessment of novelty, but rather to whether the third embodiment would infringe one of the claims. As such, I would designate statement 12.3 wrong, because the third embodiment does not include a bottle. Following this statement 13.3 appers to me as true.

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    2. Indeed to 11.3, 12.3 and 13.3 relate to scope of protection.
      However, for 13.3, the scope of protection only includes stoppers which CONSIST OF a body made of rubber. It does not extend to bodies COMPRISING a body of rubber and something additional. The filter plate 34 of embodiment 3 is part of the stopper, but not made of rubber (only disclosed that it can be any metal foil in [011]). The stopper of embodiment 3 is thus not made of rubber ONLY, and thus not within the scope of claim III.

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  2. Roel, thanks a lot for your answers!! This gives some (pretence of) certainty. I mostly agree with your reasoning, even in case I went the other way on the exam, but still have some remarks:

    Re 16.1: GL G-VII par. 5.2 mention: "It is also
    possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested." Isn't quicker manufacture considered implied by the skilled person?

    Re 18.3: Maybe different arrangements ("plate arranged to...") are possible, so the claim may be broader then what is disclosed in the applications?

    Re 19.3: I had false, as - in my opinion - the fact that D3 does not disclose a filter plate is no reason not to combine D3 with D4 (same field). A valid argument would be that the combination of D4 and D3 does not give an integrated filter plate.

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    1. Re 16.1: yes, that could be possible, but with the information in the paper, what could you do to defend or attach inventive step? The foam could be quicker to manufacture than the straight air channel. No, in exam context, we donot believe this statement can be considered T.

      Re 18.3: That as also my initial thought, but you need to check how it could then actually be broader. And then you will (at least, we did) conclude that it is OK: the independent claim already states that it is attached on the first planar surface. So together with [0008] "prevents liquids" and [001] "wine bottles", we donot see a problem with C.

      Re 19.3: in our view, everybody (candidates, exam committee) still needs to learn how to assess these argumentation step statements. In our view, with the assumptions given (D4 CPA; OTP: solve problem of the filter plate of D4 as to how to secure it), the secondary document needs to address securing a filter plate or something similar.

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  3. Roel, thank you for your answers. They are very helpful, but there are a few questions where I disagree with your answers and reasoning.

    18.2 - you said this could be either True or False because "aluminium perforate foil is disclosed in [0008], but it is not fully clear if the function of the perforation – forming micro-air channels- should then also not be included", but I disagree that the answer is ambiguous. The new dependent claim recites "an *additional* perforated aluminium foil". Given that claim V already recites "a filtering unit", there would appear to be absolutely no basis for claiming "a filtering unit and an additional aluminium perforated foil", therefore this answer should be unambiguously true (it does add matter).

    19.2 - you said True because "D2 does not disclose a filter plate or similar object and thus gives no specific suggestions to fixing it", but I don't think that this reasoning coincides with what the statement actually says. Whilst I agree with your reasoning that D2 does not teach a solution to the problem, I disagree that the way that the question statement is phrased is a validly formulated inventive step argument. The question statement argues that "considering D2, which teaches to use a strong glue, the skilled person would glue the filter plate of D4 to the filter body of D4". This would seem to be firstly a bit illogical (since D2 teaches glue for joining completely different elements), but also irrelevant because D4 already states that the filter plate is glued. The question statement provides no other reasoning (the rest of the statement is merely a statement that D2 does not solve the problem). This statement therefore does not appear to be a valid argument, and I believe that this answer should be false.

    19.4 - you said True because "D4 has no hint at all in using two channels and incorporating the filter in between", but I disagree. You appear to have read more into the statement than is actually there. The question statement itself merely states that "the person skilled in the art would not provide two air channels", which appears to be incorrect as D4 explicitly discloses "a network of interconnected air channels". Therefore, I believe this answer should be false. If the statement had mentioned providing a filter between the air channels, then I would have agreed with your reasoning.

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    1. For 18.2We were focussing on whether the term "perforated" was too broad in view of the disclosure in [008] or not: some of us had the opinion that “perforations” are too broad, as they shall be specifically such that they form “micro air channels” (not permeable to liquids). However, some of us recalled the message from the pre-exam committee that “thou shall not think too deep as this is pre-exam level”, and for that reason expected that the exam committee considerd the word “perforation” already unambiguous.
      You bring in an aspect that we indeed overlooked: the word "additional". I agree with you that that extends for the reason you mentioned. Also, [008] starts with "The filter plate can for example be made of an aluminium foil", so it is the same thing.

      For 19.3: we made an error when posting the ansers. We consider the statement True, as the OTP relates to securely helding. So, IF the skilled person would combine D4 with D2, he would try whether the glue of D2 that matches well with his synthetic rubber can also securely hold the aluminium foil. He would then arrive at a solution whrein the filter plate is glued with "a strong glue" at the (same position on the) surface of the body - but still not within the body.

      For 19.4: in the context of inventive step with the assumptions given for 19.4, we consider the term air channel in 19.4 to be understood as a "straight air channel extending from a surface" - the blind hole in D4. We may be wrong in this interpretation. Then, D4 alone only teaches that an air channel is used to act as a cork screw [005, last sentence]. The skilled person would not consider to use two of those, as there is no use in putting that at both sides of the cork.
      Also, in the context of the assumptions, especially with the "securely held" aspect of the OTP, we think that the exam committee considered "with the filter plate in between the two air channels" to be implicit to statement 19.4. But we agree with you that this "in between" aspect is not in the argument.
      This touches on a general issue with "valid argument" statements: is it required that the argument provides the full argumentation, or is it enough if the argument is one argument of a multi-step-argumentation? (here: two-step argumentation: argument 1 = would not consider two air channels; argument 2 = so also not to out the filter in between, which would be required to get within the terms of the claims)

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    2. Also another candidate, Peter, pointed our attention to the word "additional" in 18.2.
      We deleted our earlier question marks and changed to the answer to True.

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    3. Peter concluded T for 20.4 and gave the following, very reasonable argumentation:

      In [010] of the description it is said in one of the later sentences “The filter plate 34 is fixed WITHIN THE BODY 2 so that gasses can flow between the first air channel 3a and the second air channel 3b through a part of the filter plate 34." (emphasis added)

      To me it seems that it is essential that the filter plate is fixed within the body (see above) but not essential that it has to be furthermore between the first and second air channel (3a, 3b) which feature is deleted in question 20.4.

      I tend to agree with Peter's argumentation, especially as par.[010] ends with: "Fixing the filter plate 34 WITHIN the body prevents the filter plate from falling into thr wine by the action of the corkscrew." Thus, when applying the essentiality test, you would -following this reason- come to the conclusion that it is not essential that the filter element is between the first and second air channel, such that the amendment would be alloable under Art.123(2).

      However, intermediate generalisations are difficult - also in pre-exam 2012, there was an answer where the exam committee considered an amendment allowable as it had literal support in the text, but where you could argue that it would also be required to incorporate other features of the embodiment from which the amendment was taken.

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  4. I agree with your solutions except for 20.1, 20.2. Those solutions seem to not take into account the knowledge of the skilled man in the art. I would choose.
    20.1 True (because that is no additional information for a stopper professional)
    20.2 True (because what comes after a "such as" does not affect the scope of a claim)
    What do you think?

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    1. 20.1: I donot think I agree. The application does not disclose that the wine may be sparkling wine. The skilled person will also know that sparkling wine cannot do with ordinary corks, but requires special shape. Probably (but I am not a skilled person in sparking wine...), sparking wine cannot be bottled in a bottle that has air channels from the interior to the exterior (as I would guess the sparkles would be gone rather quickly).

      20.2: the Art.123(2) test is not whether the scope of protection changes, but whether information is added or not. A "such as" may not be limiting, but it does add information that the skilled person cannot directly and unambiguously derive from the application as filed.

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    2. 20.1 I would also argue that it is True since according to T187/91 a species(sparkling wine) is allowalable as a slection from a genius(wine). You still have a point that the sparkles probably would disapear rather quickly but there is no time aspect in the claim so it would be possible to cover a shorter time limit too. Whats your thougths?

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    3. The headnote of R 187/91 says: "A specific example within a generic disclosure forming part of the description of the invention in an application as filed is part of the content of the application as filed for the purpose of Article 123(2) ...". Also see reason 4. Thus, it is required that the species is disclosed as an example in the application as filed - no sparkling wine is mentioned, so not allowed.

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