Tuesday, 25 February 2014

Preliminary answers to the Claims Analysis Part of Pre-Exam 2014

Before checking your own answers with the provisional answers given below, please first check out on the thread  First impressions?  for general questions and comments about Pre-Exam 2014, and post your first impressions there.
The legal part is addressed in a separate thread: Preliminary answers to the Legal Part of Pre-Exam 2014

The claims analysis part seemed quite well doable. The description of the application (page 12-15) may have suggested a higher level of difficulty than the actual difficulty of the questions/statements.

Our preliminary answers (full agreement between three of us at DeltaPatents) are:

Q.11: T, T, T, T; 
Q.12: F, F, F, F;
Q.13: T, T, F, T;
Q.14: F, T, F, T;
Q.15: F, F, F, F;
Q.16: T, F, T, T*;
Q.17: T, F, T, F;
Q.18: F, F, F, T;
Q.19**: F, F, F, F;
Q.20: T, F, F, F;

*Statement 16.4: who ever expected disclaimers in the Pre-Exam?

**For Q.19, correct answers rely on a correct closest prior art determination. The closest prior art is D2 (same field, most similar purpose).

Detailed comments, legal basis and key considerations will be added to this blog in due course.

Any comments to the claims analysis part, and in particular any dissenting opinions, are highly appreciated! 
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 24-02-2014 17:54"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.

Roel, Nico, Sander

© Copyright DeltaPatents, 2014
All rights reserved. No part of this answer may be reproduced, used in any way for generating further course material or updates, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written consent of DeltaPatents.
The answer is made available for personal use only.

56 comments:

  1. Q16.4 I was afraid that the chemistry ecaminer how drafted this question wants to have T, but it is completely wrong, for the folloiwng reasons:
    (i) G 1/03 states that the disclaimer is not just considered allowable under Art. 123(2) if the legal purpose (Art. 54(3)) is fulfilled but also if the dsiclaimer doe snot contribute to inventive step
    (ii) The new GL 2013 H-V, 4.1 clarify (after T 1870/08, T 2464/10, and G2/10) that also in case of the so-called "undisclosed disclaimer", the remaining subject-matter has to be directly and unambiguously disclosed in the application as filed. However the application in the exam did not directly and unambiguously disclose 20-23% and 23-25%. Thus the answer should have been F.

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    1. let me clarify [20; 23[ + ]23-25] was not originally disclosed. The test of G 2/10 also has to be applied to G 1/03 due to latest case law and the current version of the GL September 2013. I understand, that we have to answers the questions based on the state of law in December 2013. I find it rather inappropriate to ask undisclosed disclaimers if they are effectively dead.

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    2. You misinterpret G1/03 and GL (Sept 2013) H-V 2013, 4.1:

      G 1/03 explicitly allows disclaiming Art.54(3) embodiments to restore novelty over those embodiments - see also GL H-V 4.1(i).
      What G 2/10 (and the reference in H-V, 4.1 to G 2/10) adds to this, is that the disclaimer shall not change the invention (apart from taking the Art.54(3) embodiment out of its scope of protection), and that, with the introduction of the disclaimer, the skilled person shall still be able to directly and unambiguously understand what is claimed and, in particular, that something remains in the claim.

      Thus, disclaiming Art.54(3) embodiments is not at all dead!

      Disclaimers are however -in my view- a very advanced topic, which I would never have expected in the pre-exam.

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    3. Sorry, I attended several meetings at the EPO and the case I cited above is clear: also in case of the undisclosed disclaimer, the remaining subject-matter has to be disclosed!!! This means if I disclaim an undisclosed technical feature, the invention is always changed if the remaining subject-matter is not unambiguously disclosed in the application as filed. This is also in the GL 2013.

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    4. The background for the latest version of the GL 2013 is:
      T 1870/08:
      "The test of G 2/10 also applies to an amendment involving an undisclosed disclaimer by means of which a claim has been rendered new over a European patent application according to Article 54(3) EPC. The examination of the admissibility of the amendment for compliance with Article 123(2) EPC must be made separately for the disclaimer per se and for the subject-matter remaining in the claim (see point 4. of the Reasons)."

      T 2464/10:
      "Remaining subject matter test of G 0002/10 applied. The Enlarged Board of Appeal in G 0002/10 did not consider that G 0001/03 provided an exhaustive treatment of the conditions under which an undisclosed disclaimer was to be allowable. In addition to the requirements set out in G 0001/03, G 0002/10 developed the further test of whether the skilled person would, using common general knowledge, regard the remaining claimed subject matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed."

      The list of requirements in G 1/03 is not exhaustive as emphasized in G 2/10 and the catchword of G 2/10 also applies to the undisclosed dsiclaimer. This is what the GL 2013 now also say.

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    5. GL 2013 H-V, 4.1:
      "Allgemein gesagt gilt der in G 2/10 definierte Test nach Art. 123 (2) (siehe H-V, 4.2) auch für sogenannte "nicht offenbarte Disclaimer" (siehe T 1176/09).
      Ein nicht offenbarter Disclaimer ist nicht gewährbar, wenn
      i) er verwendet wird, um nicht funktionsfähige Ausführungsformen
      auszuklammern oder einer unzureichenden Offenbarung
      abzuhelfen;
      ii) er einen technischen Beitrag leistet."
      (sorry I only have the DE version).

      The GL say that the "remaining subject-matter test" of G 2/10 also applies to undisclosed disclaimer in order to judge if the disclaimer is allowable under Art. 123(2) EPC. The GL go on in emphasizing that the disclaimer is not allowed to make "a technical contribution".

      Disclaiming 23% is a technical feature making a technical contribution and thus changing the technical content of the subject-matter. I hope I could clarify my point. At the event GL 2Day 2013 by the epi this was also emphasized.

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    6. G 1/03, r.2: "A related but more limited question is whether a feature with a technical meaning contributes to the technical teaching in the application or to the subject- matter of the claimed invention, a question dealt with in decisions G 1/93 and G 2/98 (supra). G 1/93, concerned with the relation between paras. (2) and (3) of Article 123 EPC, makes a distinction between features providing or not providing a technical contribution to the subject-matter of the claimed invention. According to the decision, the latter features, which merely limit the protection, are not to be considered as subject-matter which extends beyond the application as filed (Order, point 2). […] " and
      G 1/03, r 2.1.3: "For the interpretation of Article 123(2) EPC, it may be concluded from the foregoing (point 2.1.1) that the purpose of a disclaimer excluding a conflicting application is merely to take account of the fact that different applicants are entitled to patents in respect of different aspects of inventive subject-matter and not to change the given technical teaching. The disclaimer splits the invention as a whole in two parts: in respect of the identical part, it preserves the rights of the first applicant; for the rest, disclosed for the first time in the later application, it attributes the right to the second applicant. This approach restricts the effects of Article 54(3) EPC to resolving the problem of double patenting.
      Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application. It is, therefore, not in contradiction to Article 123(2) EPC. Applied in this sense, the term disclaimer is justified also in its literal meaning. An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, ie no longer claimed. The remaining subject-matter is not modified by the disclaimer."
      G 2/10, r.4.7: "As can be derived from the Enlarged Board's position developed in the foregoing, in accordance with the principles developed in the above cited earlier rulings of the Enlarged Board, the overriding principle for any amendment to be allowable under Article 123(2) EPC is that the subject-matter of an amended claim must be at least implicitly disclosed to the skilled person, using common general knowledge, in the application as filed. As has also been set out in the foregoing that applies equally to the subject-matter of a claim the scope of which is determined by a disclaimer. Where this requirement is not fulfilled in the individual case under consideration because the effect of the disclaimer is to limit the claim to subject-matter, such as a subgroup, an intermediate generalisation or else, which cannot be regarded as disclosed in the application as filed, then there is no justification for granting a patent on such a claim."
      G2/10, hn 1b: “Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.”
      Also see G 2/10, r.4.5.1-4.5.5.
      Conclusion:
      G 2/10 effectively rules that the tests of G1/03 & G2/03 are not the complete test, but that there is an additional requirement that the invention shall not be changed - e.g., by the disclaimer having the effect of an intermediate generalisation and thereby violating Art.123(2).
      G 2/10 does not overturn the conclusion of G 1/03 that disclaiming an Art.54(3) embodiment (for legal reasons) "has no bearing on the technical information in the application" in the sense of not changing the invention.

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    7. And G 2/10 gives the additional requirement that, although disclaiming an Art.5493) embodiment has in general no bearing on the technical information, “Determining whether or not that [the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed] is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.” (G2/10, hn 1b)

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    8. Dear Herrmada, thanks for the extensive discussion. Shall we for now conclude that better guidelines in the Guidelines would be very welcome, as interpretation of G 2/10 is quite difficult - else, we would share a single view on the matter!
      Roel

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    9. Hi Roel, yes I agree that this topic is too complex to handle it in one or two sentences as the GL do.

      Apart from the question if the remaining subject-matter test of G 2/10 should be applied to cases covered by G 1/03 ( as the above case law demand), and to what extend, it is still not right to say that as long as the legal puspose of Art. 54(3) is fulfilled for the undisclosed disclaimer, then it is automatically allowed under Art. 123(2) (what Q16.4 suggests). What seems to be commonly accepted is that the requirements of G 1/03 ALLONE are not sufficient. And then it is at least debatable if the disclaimer in Q 16.4 is allowed under Art. 123(2). If you look at G1/93, then it is only allowed to add or remove non-technical features to the application. As the undisclosed disclaimer inherently disclaims something which is not mentioned in the application as filed, then my understanding is that the only remaining field of undisclosed disclaimer is the disclaiming of non-technical features, or one establishes a more liberal original disclosure standard. But we will see (luckily I seem to have passed savely, so I should not be too upset).

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    10. Excuse me shoving my oar in, but is not T188/83 relevant here?

      Headnote
      I. If for the purposes of a chemical production process previously described a certain ratio of reactants, defined in terms of a range, is chosen, the said ratio being covered by the conventional teaching but not mentioned in it, this may involve a new invention. The novelty of this range is destroyed if the previous description contains examples which fall within it. The range is not rendered novel by the fact that the values calculated from the examples are excepted by means of a disclaimer, at least not if these values cannot be regarded as individual on the basis of the broader previously known teaching in the light of general knowledge of the art.

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    11. This is an interesting decision. As I understand it, it means that a parameter value that has a margin of uncertainty (as it is usally the case as it is clear also from other case law and common sense), so that excluding the value as such does not render the broder range new. In our example this may mean, that excluding 23% does even not help for novelty (irrespective of the question of Art. 123(2) EPC), as 23% always means 23+/-x%. However, couldn't one argue that the disclaimer also disclaims the margin of uncertainty x?

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  2. Why is 20.2 and 20.3 F? For me, 20.2 is the technical effect leading to objective technical problem of 20.1, which is T? By leading the remaining soap to the well via the V-shape, nearly all remaining soap can be extracted. Is 20.3 F, because it said "all" intstead of "nearly all" as mentioned in the application as filed?

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    1. 20.2 would seem to be 'F' since the effect is formulated as a (partial) pointer to the solution. (partial since it is in fact incomplete - the guidance of the tube into the well is missing). A better formulation would appear to be complementary to the technical problem of 20.1: "the amount of liquid soap remaining in the botte is reduced".

      20.3 would seem to be 'F' since the [0007] indeed states that 'nearly' all soap can be removed whilst the objective technical problem is phrased as 'all'. Accordingly, the distinguishing feature would, strictly speaking, not provide a solution to the objective technical problem.

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    2. To further clarify 20.2, the technical problem is the task of modifying the closest prior art to provide the technical effect that the invention provides over the closest prior art.

      Accordingly, the technical problem should 'match' the technical effect and vice versa.

      However, considering the technical problem of 20.1, the formulation of the technical effect of 20.2 mismatches this technical problem, i.e., it is not clear how the amount of liquid soap remaining in the bottle can be reduced by (merely) 'the remainder of the soap collecting in the well'.

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    3. Here I agree with you that 20.2, in regard to techical EFFECT is true (I replied to Nico above). So there is some disagreement here on the board.

      I believe 20.3, which is in regard to the PROBLEM, is false. The problem of how to remove all the soap is rather ambitious, and my opinion is that none of the references solve that.

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    4. Re: 20.2 I actually agree with the answer given here, but selected the other one in the exam because based on answers from past papers, I judged my true answer to be "over-thinking it". I think the answer you have given is correct, but I would not confidently say that I expect the EPO's answer to concur. This is something I have found frustrating about the pre-exam.

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  3. Thanx!
    I had deviating answers on:
    13.4, I migth have overanalyzed the part of "at least at portion of the tube extends along the base of the bottle" as I believed that D4 has a part (outside the bottle) extending in a direction along the base (and also that the end part of the tube inside the bottle may be considered as "at least a part" and that this part extends along the base)
    15.3: I believed that "non-ionic detergent" is different from the detergents mentioned in the application (last section in the application)
    20.2: I realized that this was a "pointer to the solution" but the question states "the technical effect..." (different from the other statements in question 20 which states "the technical problem"), hence I believed the statement to be true

    Brgds

    Oskar

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    1. I agree, it stated "technical effect"

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    2. This comment has been removed by the author.

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    3. 13.4, I assume that "extending along the base" implies the tube being in contact with the base. Having read your interpretation, I do understand it, but expect it to be not intended by the Exam Committee.

      15.3 'Non-ionic detergent' is a species of the genus 'detergent'. A genus is not novel over a species. Claim III 'claims' the genus. Accordingly, claim III not novel over the species of 15.3.

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  4. 20.2 If I understand your comment correctly, you imply that 20.2 correctly states a technical effect of the distinguishing feature.

    However, within the context of the question, it appears that "the" technical effect is meant in accordance with the problem solution. See also part (c) of the question, which explicitly refers to the problem solution approach.

    In the problem solution approach, the technical effect should match the technical problem in that it provides a solution to the technical problem.

    Considering the technical problem of 20.1, the formulation of the technical effect of 20.2 mismatches this technical problem, i.e., it is not clear how the amount of liquid soap remaining in the bottle can be reduced by (merely) 'the remainder of the soap collecting in the well'.

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    1. Hi Nico,

      I tend to disagree and believe 20.2 is true. The effect of the remainder collecting into the well allows the remainder to be reached by the end of the tube which is guided into the well. Thus the problem of how to remove the remainder (the next time the pump is used) is solved.

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    2. Yes, I agree that the answer to 20.2 is clearly not 'clear-cut', and I do understand your arguments.

      However, even when disregarding the mismatch to the objective technical problem, the effect of 20.2 appears to be incomplete since the amount of liquid is only reduced if the remainder of the liquid soap collects in the well, and "the end of the tube is guided into the well".

      The latter part is missing from the formulation of the technical effect. Accordingly, I would tend towards 'F' here (but I guess we'll have to wait to see which answer the Exam Committee intended to be 'correct').

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    3. Dear Nice,

      I had exactly the same thoughts about the missing part. However, the part "the end of the tube is guided into the well" was part of the differenciating feature. Therefoer, i tended towards 'T'.

      But I agree, we'll have to wait and see.

      Delete
  5. As for me, 14.4 and 18.4 can be Fs.

    With regard to 14.4, it appears from paragraphs [0006] and [0010] of the description that the detergent can include glycerine, since it can be a blend of palmiate and stearate soaps and liquid soap (compositions) can include glycerine. Hence, the liquid soap composition according to claim III can include 1% water and 99% detergent which includes 23% glycerine.

    With regard to 18.4, claim IV.1 says nothing about the composition of the soap and the position of the lower end of the tube and thus in too many cases would not achieve the specified technical effect. For example, if claim IV is used with the liquid soap as in D1, i.e. with abrasive particles, then more product would remain in the bottle.

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    1. 14.4 I'm not a chemist so I'm not sure on the technical correctness of your statement. In any case, [006] and [010] do not explicitly indicate to me that detergent may in itself comprise glycerine. So you may be using your own technical knowledge in this case, which is always risky in EQE papers.

      As a non-chemist, and having read [006] and [010], I would expect the detergent not to comprise glycerine but rather the glycerine to be a seperate ingredient in the composition. Accordingly, 14.4 would be 'T' in my view.

      18.4 You appear to be right in that the claim formulation may leave open some embodiments in which the technical effect of 18.4 is not achieved (we'e also had some discussion about this here). However, personally, I expect that the Exam Committee did intend 18.4 to be 'T'.

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    2. Nico, thanks for sharing your opinion! With regard to 14.4, I am not a chemist too and have no idea what detergent may include. I just thought that if A includes B and B includes C, then A includes C. However, I agree that the Committee probably does not expect F.

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  6. Nico, btw I thought that 12.3 can be T because, as you wrote, it is risky to use your own technical knowledge. D3 does not mention liquid soaps and does not show a tube of a liquid soap dispenser.

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    1. Touché, as they say :)

      Nevertheless, I still expect that the intended answer for 12.3 to be 'F' since it requires no/little _specialist _ technical knowledge. How far you should apply your own technical knowledge is a grey area, and unfortunatey the T/F format forces us to make a 'hard' choice in this grey area.

      For me personally, as a rule-of-thumb, I expect that I should use my highschool-level of technical understanding but not my specialist university-level (since the latter differs for everybody so the paper cannot and should not rely on this).

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    2. I actually answered "T" as the material of the D3 bottle is very thin (see description of D3) and it is therefore not suitable for a soap dispenser at all.

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  7. Hello Nico,

    I have one question about Q20.1: the description of D2 seems to imply that this document addresses the technical problem of reducing the amount of soap remaining in the bottle (see the first sentence of par. 1). If my understanding of D2 is correct, the problem of Q20.1 seems to have already been solved by D2 in that this document provides a solution consisting of a tube that is bent at the end and extends along the base of the bottle. D2 seems similar to provide the same solution provided by the first and second embodiments of the application. If this is correct, I would say that Q20.1 is false, as the technical problem addressed is too generic. I would argue that a proper technical problem, with respect to D2, would be how to further reduce the amount of soap remaining in the bottle.
    I will not argue about Q20.2, but given that the effect I was expecting was not listed among the answers, I decided that this effect is indeed the right technical effect and, as a consequence, decided that Q20.3 was true. I presume this is a mistake, but I decided to go this way, anyway...I know that the description of the third embodiment does not state that all the soap may be removed (which means the answer to Q20.3 should be false); but there is an increased reduction of soap remainder when going from the first embodiment to the third one and, based on the fact that soap does collect in the well, I thought 20.3 should be considered true.
    Many thanks for your thoughts and for providing your answers (if you are right, as I believe, then I can be very upbeat...). Cheers.

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    1. hi Ale,

      I have the same answer with you but it seems the point we should be aware is the difference of
      "technical problem" and "object technical problem".

      best

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    2. Hi Ale,

      I guess you're right that the problem could also be phrased as "further reducing" the amount of soap since D2 already reduces the amount of soap remaining. On the other hand, strictly speaking, the technical problem is defined with respect to the base situation provided by D2.

      As such, you could argue that the problem is how to (starting from the little soap of D2), reduce the (this remaining) amount of soap.

      So strictly speaking, I think the formulation of 20.1 is correct but it does not match our conversational English. I personally would indeed have formulated it as "further reduce".

      Delete
    3. Many a thanks for your reply, Nico. I am curious indeed to see the solutions provided by the examination committee, although I do not know whether they are going to be provided this year. You might know better. Cheers.

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    4. Actually, the objective technical problem has to be formulated between the solution on the one hand, and the prior art at the other hand, so that there is neither a pointer to the solution, nor should the problem be already solved by the prior art. Thus, 20.1 should be F, as it is too generic and already solved by D2. 20.3 should be T, as the V-shape aims to "remove nearly all soap" as disclosed in the application. They did not say "nearly" in the problem, so one could also say that the claimed subject-matter does not solve the posed problem rendering 20.3 F. It would have been easy to draft a clear question here, too. From my point of view 20.2 should be T, but there are also arguments above that could be used for F.

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    5. From my point of view 20.2 should be T.
      A V-shape has generally the tecnical effect to reduce the volume in direction to the base and gravity should be well known.A v -shape has not the effect like f.e. a s-form , so if you consider that the V-shape also leads the suction pipe to the button, the tecnical effect leads in view of the objective problem to a solution, while a O-,U-,L- or W-shape will definitly not.

      Delete
    6. @ Herrmada

      In my view, Q20.3 is clearly F. It was formulated as "all liquid soap is completely removed". The term "completely" is in my view a clear hint that the proposed problem is not solved.

      Delete
  8. Hi Roel, Nico and Sander

    many thanx for publishing your argumentations that quickly.
    For me 9.4 seems not that clear.
    An oral statement durcing oral proceedings in opposition might be public.Not in all cases it is public. Cause the question was defined, if this oral statement represents state of the art, the question aims to the point that oral statements in opposition are allways state of the art. So I said: F.
    If the questions is" if the oral statement could be state of the art....", I would have answered : T.
    Any comments?

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    1. Hi Doug,

      (Please post any further questions to the legal questions to the separate legal blog)

      I am not fully sure whether I correctly understand your question.

      If it is, 'who knows what was actually disclosed in the oral statement', you overlook an important 'detail', which is actually a key principle:

      the oral statement is made during oral proc in opposition. These oral proc are public, so the statement is made in public - the oral statement is thus prior art -Art.54(2)- as of the moment it is pronounced.
      Whether it can be proven what the statement really disclosed -and even whether the statement was pronounced- is a matter of proof for which evidence may be necessary; if challenged but not proven, the technicasl content can not be used to succesfully argue lack of novelty -Art.54(1)- over the prior art -Art.54(2)-.

      If your question is 'parts of oral proc in oppo may be non-public, e.g. where highly confidential information is discussed', then your legal argument is correct: this is exceptionally possible.
      However, you are expected to stay close and strict to the facts of the case. As there is no hint at all that we are in this exception, we believen that you are not supposed to speculate, and apply the main rule of Art.116(4) and not the exceptional exception boven in that same article. (Not fully unambiguous, I agree). I will bring in your point in the meeting that all tutors will have with the Exam Committees in autumn.

      Roel

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  9. Hi all, I'm not convinced about 17.1 . it seems to obvious that the bottel for soap is suitable fro soap and for hand cream - ok this is known, but the second embodiment of the invention states that it is a soap dispenser - Non a dispenser for soap..so as per eqe of past years this shout not be the same as suitable for... this was my thinking about that.

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  10. about the previous post, sorry for the anonymous comment but I'm in a hurry thanks for any comments about that, pehaps my resoning was too analytic about that. kind regards

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    1. Dear Anonymous number NN,

      You can undersign a message posted with the 'anonymous' option of replying, by simply putting your name at the last line of your response. That makes the discussion more lively and less into-the-dark. If you want to hide your identity (e.g. because you are a tutor yourself and donot wanna risk loosing your authority ;-)), you can use a nickname.

      Roel

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  11. This comment has been removed by the author.

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  12. No comments about 'in particular'? I guess I'm just straight-wrong to have though it was limiting (in contrast to 'more particularly', which I know is not).
    I read 'more particularly' to mean 'more specifically' (which isn't limiting) whereas 'in particular' means 'specifically'. Which is limiting.
    Hmm, or not.

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    1. Hi Eliot,

      "in particular" in claim III (Q.13-16) has the same meaning -before the EPO- as "for example" or "preferably".

      See GL F-IV, 4.9:
      4.9 Optional features
      Expressions like "preferably", "for example", "such as" or "more particularly" should be looked at carefully to ensure that they do not introduce ambiguity. Expressions of this kind have no limiting effect on the scope of a claim; that is to say, the feature following any such expression is to be regarded as entirely optional.

      Delete
    2. Thanks Roel.
      It's great for you to take the trouble to provide answers and explanations. Hope the festival was/is good.
      Regards

      Delete
  13. masaro posted the following comment thread you have subscribed to entitled - First impressions Pre-Exam 2014? - in the Pre-examination forum of EQE Forum (http://www.eqe-online.org/forum/showthread.php?t=10523&page=2&p=30420#post30420).
    As the question is directed to this blog, I copy his question here (and we will answer it here)

    Here is the message that has was posted by massaro:
    ***************
    Dear Roel, on your answers to Q12.
    why do you think that claim I is not novel over D4?
    Did you consider whether or not D4 is suitable for the purpose of claim I?

    In my opinion, subject matter of D4 is UNSUITABLE for the base touching the tube.
    In D4 it is disclosed that the tube extends VERTICALLY into the bottle. That is, letting
    the tube touching the base will prevent dispensing the soap...
    ***************

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    1. The claim is not novel over D4 (statement 12..4 is F), because of the folllowing:

      claim I reads:
      "Bottle for a liquid soap dispenser, the bottle having a base for touching a tube of a liquid soap dispenser".
      which is equivalent to:
      "Bottle suitable for a liquid soap dispenser, the bottle having a base suitable for touching a tube of a liquid soap dispenser".
      As the bottle "reservoor bottle 410" of D4 has the same or a very simiar shape as the bottle 21 of Fig. 2 of the application, is it suitable for the same purposes and for being used with the same tubes as the bottle 21. So, it is suitable to be used with tube 24 of Fig. 2 (and also for tube 14 of Fig. 1).
      So, D4 shows "a bottle 410(=20) stuiable for a liquid soap dispenser, the bottle 410 having a base (not numbered in D4, but = 21a of Fig 2) for touching a tube (for example, tube 14 or 24) of a liquid soap dispenser".

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    2. I believe that the tube of D4 should also be considered. Although the tube is not explicitly disclosed as a limiting feature, the embodiment of D1 is specially constructed such that the bottle can contact the tube. That is, we have to check with the tube of D4 as well.

      D1: F1 (bottle) + F2 (tube(implicit)) + P1 (relation bottle-tube(purpose))
      D4: F1 (bottle 410) + F2 (tube 40x) + P2 (relation bottle-tube)

      to me P2 is different than P1 --> D1 is new over D4.










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  14. ...the Examiners Report differs in the claim analysis part in 18.4 and 20.2 from your answers...interestingly enough how clear/unclear such multiple-choice tests are...

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    1. Dear Christian,

      Thanks for your quick analysis.

      With respect to 18.4 and having read the Examiner's report, I'd agree that our preliminary answer was wrong. The question was indeed a bit tricky given the chain of 18.1-18.3 (which were all clearly wrong) which subsequently lead to the (too quick and erroneous) conclusion that 18.4 was true.

      With respect to 20.2, I'm not too surprised given that also on this blog there was quite some discussion (meaning diverging opinions). However, I do remain of the opinion that, in view of 20.1 being now confirmed as true, is incorrect or at least incomplete.

      Well, hopefully you all passed despite such clarity issues in the questions!

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  15. Some candidates contacted us whether it is possible to file an appeal against a FAIL decision when disagreeing with one or more answers, or whether there would be a way to make the Examination Board change the official answers (from T to F or vice versa, or to an "both T and F are considered correct for this statement") and remark the papers of candidates that failed.

    We comment to this item on the Legal Pre-Exam Blog (http://pre-exam.blogspot.nl/2014/02/preliminary-answers-to-legal-part-of.html), as statement 10.4 seems to be the most likely statement in respect such an action may be succesful, and -when concluding from the discussions above- maybe also some of the claims analysis statements, in particular statement 20.1 and possinly 18.4

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    1. Actually, I meant 18.4 and 20.2:

      18.4:
      It may be argued that, in view of the opening words of the statement “With respect to D1 as the closest prior art, a technical effect…”, the skilled person will consider the technical teaching of D1 when interpreting the claim wording. See Guidelines, G-VII, 5.2: "In the context of the problem-and-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the "objective technical problem".”
      Thus, it may be argued that the technical effect as understood by the skilled person takes into account the teaching of the closest prior art, D1.
      The last two sentences of par. [001] of D1 and Fig. 1 teaches that the tube shall extend to the base as far as possible. Thus, the skilled person would directly and unambiguously understand that, when adapting D1 to solve the objective technical problem, the feature that “a base which is in contact with a part of the tube” includes that “the end part of the tube is in contact with the base”.
      Thus, statement 18.4 can be considered true.

      20.2:
      In our opinion, statement 20.2 may be considered FALSE because the effect “the remainder of the liquid soap collects in the well” does not in itself solve the technical problem as phrased e.g., correctly in statement 20.1, as also the end of the tube should be guided into the well in order to solve the problem of reducing the amount of liquid soap remaining in the bottle.

      Thus, the second element of the distinguishing feature (i.e.,: “V-shaped well [that] guides the end of the tube into the well”) should be included in the technical effect of the distinguishing feature as a whole, and without it, the statement is FALSE.

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    2. if you want to appeal, don't wait too long! The appeal period for an appeal agaist an EQE FAIL décision is only ONE month from notification (10days) of the décision. Décision dated 28 March (check your own décision!!!) is thus deemed notified on 7 April, so period for appeal expires 7 May! You need to file not only the notice, but also grounds and full argumentation by 7 May, and pay the 1200 euro appeal fee. Don't forget to file a conditional request for oral proceedings! Good luck, D

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  16. I had visited your website which was really good Lights OT Examination

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