Our (provisional) answers to the Claim Analysis part of Pre-Exam 2015
Our preliminary answers (not yet thoroughly reviewed) are:
Q.12: F, T, T, F#
Q.13: F, T, F, F
Q.14: T, T, T, F
Q.15: T, T@, F, T
Q.16: T*, F, F, F
Q.17: T, T, F@, F
Q.18: T, T, F, F
Q.19: T, F**, F, T
Q.20: T, T***, T, T
* = answer depends on how strictly intermediate generalisation test is applied, see below
** = different interpretations possible but we tend to 'false', see below; Examiner's report considers both answers correct [comment added after Examiners report became available]
*** = ambiguous statement but we tend to 'true', see below
# = see comment of Arthur L for reasoning in support of 'true'
@ = Examimer's report answered F for 15.2 and T for 17.3 -- however, appeals based on opposite answers were successful, so our answers T and F are(also) correct [comment added on 8 May]
Any different opinions are welcome! Please post your opinions as comments to this blog, so everybody can from the discussion. Comments are welcome in any official EPO language. So, comments in German and French are also very welcome!
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 26-02-2014 23:59"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.
For comments, legal basis and our key considerations and reflections: click to read more.
Note: there are so many comments that you may need to click on "Load more" at the end of the first long page of comments to be able to see also the most recent comment threads!!!
11.1 F See GL F-IV 4.15, expression "in a" renders the protection sought unclear
11.2 F According to [0014], must have a thickness of at least 8cm (solid oak) or 10cm (other wood), so claim is broader than justified. See GL F-IV 4.5.2
11.3 F Claim is defined by reference to another entity, namely a door frame, which appears not to be standardised. See GL F-IV 4.14
11.4 F According to [0014], must have a thickness of at least 8cm (solid oak) or 10cm (other wood), so claim is broader than justified. See GL F-IV 4.5.2
12.1 F According to [0014], must have a thickness of at least 8cm (solid oak) or 10cm (other wood), so not an unnecessary limitation
12.2 T The plate being watered is a preferable yet optional feature, see [0009]
12.3 T Feature d) is a preferable yet optional feature, see [0016]
12.4 F For the door leaf to be suitable for a fire protection door, the door leaf "must" be closable by a door closer, see [0002]
13.1 F D1 shows a door leaf with wood fibres distributed in the plate 105 and in which the calcium silicate releases moisture when heated, see [0003] of D1
13.2 T D1 is silent about aluminium, only mentions steel and metal in general, see [0002] of D1
13.3 F D2's door has all claimed features. Note that solid wood contains wood fibres (see [0009] of client's application).
13.4 F D2 biases the door in a closed position using a rock (which is a weight) and cable and thus anticipates the claimed embodiment before the "or" statement
14.1 T Note that a door closer can be seen as a form of biasing means for biasing the door leaf into a predetermined position (namely closed position)
14.2 T The first embodiment falls within the scope of the part of claim I.8 after the "or" statement
14.3 T The second embodiment falls within the scope of the part of claim I.8 before the "or" statement
14.4 F According to [0017], a stepped edge is not suitable for a sliding door. Claim I.10 thus excludes the second embodiment
15.1 T D3 lacks a door closer which according to [0002] of the client's application is required for a door to be (suitable as) a fire protection door
15.2 T D3's fibers are cardboard fibers and not wood fibers as claimed in claim I.2 (of which claim I.6 depends). Note that in our opinion, cardboard fibers are not (necessarily) wood fibers - D1 simply states that its (particular kind of) cardboard comprises wood fibers
15.3 F D3 has a cable and weight and thus anticipates the claimed embodiment before the "or" statement. Note that the claim does not require a door closer but rather a general biasing means.
15.4 T D3 does not disclose the door leaf having a stepped edge. (also, according to the client's application [0017], a stepped edge is not suitable for a sliding door)
16.1 T Combination not disclosed by way of dependency, but appears to correspond to the door described in [0014]-[0016]. Note that the claim is not limited to a fire protection door, hence the thickness requirement may not apply. (*) On the other hand, one may still argue intermediate generalisation wrt. description since the support on which is relied on does relate to a fire protection door and thus the associated limitations, such as the thickness, should be incorporated in the claim.
16.2 F Combination not disclosed by way of dependency + unallowable intermediate generalisation wrt. description, e.g., since cable + weight (embodiment 2, sliding door) is combined with stepped edge which according to [0017] is not suitable for a sliding door.
16.3 F See 16.2 argumentation - covers combination of sliding door with stepped edge.
16.4 F No support for the plate being made of a material containing fibers other than wood fibers
17.1 T D1 is from same field, being fire protection doors. D2's door is suitable for fire protection, but is from a more remote field, namely vintage art. D3 also different field.
17.2 T D1 and D2 both have pivoting + closing doors, D3 is rather sliding + opening. D2 most similar construction, having plate of solid wood.
17.3 F D3 at least does not have a plate containing wood fibers, only discloses cardboard fibers or fibers in general
17.4 F D3 lacks a door closer which according to [0002] of the client's application is required for a door to be (suitable as) a fire protection door
18.1 T According to [0006] of the client's application, solid wood is resistent to bending (note that this appears to be a general statement independent of thickness)
18.2 T According to [0007], wood provides heat insulation (general statement, independent of thickness), [009] moisture provides cooling effect (which insulates heat)
18.3 F Claim II.3 merely claims a biasing means biasing the door leaf into a predetermined position, which may also be an open rather than closed position
18.4 F According to [0016] of the client's application, the aluminium layer of claim II.1 prevents the wooden plate from drying out
19.1 T According to [0004] of the client's application, there is no need for additional stiffening which indicates a simplified construction
19.2 F Imitating the appearance of ancient doors may be considered a non-technical problem in that an aesthetic effect is trying to be reached. (**) On the other hand, one may also argue that the underlying technical effect is that the wooden door allows appearance + shape to be varied, thus allowing the appearance of ancient doors to be imitated, see [0004] and [0015] of the client's application, in which case the answer may be 'True'.
19.3 F Mere fact that D1 is a patent document does not prevent it from being combined with a journal in a particular field.
19.4 T True? Also one may argue that ultimately the combination of D1 and D2 is incompatible?
20.1 T Appears to be true, D3 is entirely silent about fire protection
20.2 T Unclear statement since it suggests D1 is the CPA whereas question indicates that D2 is CPA. But indeed no indication in D1 that the plate's material could be replaced by solid wood
20.3 T Appears to be true. Since the claim requires stepped edges, this appears to support its non-obviousness
20.4 T D1 teaches that a material having a high melting point is preferred, teaching away from the use of aluminium (having 600C melting point according to [0016] of client's application, being significantly lower than the 1300C of steel which is preferred by D1, see [0002] of D1).
11.2 F According to [0014], must have a thickness of at least 8cm (solid oak) or 10cm (other wood), so claim is broader than justified. See GL F-IV 4.5.2
11.3 F Claim is defined by reference to another entity, namely a door frame, which appears not to be standardised. See GL F-IV 4.14
11.4 F According to [0014], must have a thickness of at least 8cm (solid oak) or 10cm (other wood), so claim is broader than justified. See GL F-IV 4.5.2
12.1 F According to [0014], must have a thickness of at least 8cm (solid oak) or 10cm (other wood), so not an unnecessary limitation
12.2 T The plate being watered is a preferable yet optional feature, see [0009]
12.3 T Feature d) is a preferable yet optional feature, see [0016]
12.4 F For the door leaf to be suitable for a fire protection door, the door leaf "must" be closable by a door closer, see [0002]
13.1 F D1 shows a door leaf with wood fibres distributed in the plate 105 and in which the calcium silicate releases moisture when heated, see [0003] of D1
13.2 T D1 is silent about aluminium, only mentions steel and metal in general, see [0002] of D1
13.3 F D2's door has all claimed features. Note that solid wood contains wood fibres (see [0009] of client's application).
13.4 F D2 biases the door in a closed position using a rock (which is a weight) and cable and thus anticipates the claimed embodiment before the "or" statement
14.1 T Note that a door closer can be seen as a form of biasing means for biasing the door leaf into a predetermined position (namely closed position)
14.2 T The first embodiment falls within the scope of the part of claim I.8 after the "or" statement
14.3 T The second embodiment falls within the scope of the part of claim I.8 before the "or" statement
14.4 F According to [0017], a stepped edge is not suitable for a sliding door. Claim I.10 thus excludes the second embodiment
15.1 T D3 lacks a door closer which according to [0002] of the client's application is required for a door to be (suitable as) a fire protection door
15.2 T D3's fibers are cardboard fibers and not wood fibers as claimed in claim I.2 (of which claim I.6 depends). Note that in our opinion, cardboard fibers are not (necessarily) wood fibers - D1 simply states that its (particular kind of) cardboard comprises wood fibers
15.3 F D3 has a cable and weight and thus anticipates the claimed embodiment before the "or" statement. Note that the claim does not require a door closer but rather a general biasing means.
15.4 T D3 does not disclose the door leaf having a stepped edge. (also, according to the client's application [0017], a stepped edge is not suitable for a sliding door)
16.1 T Combination not disclosed by way of dependency, but appears to correspond to the door described in [0014]-[0016]. Note that the claim is not limited to a fire protection door, hence the thickness requirement may not apply. (*) On the other hand, one may still argue intermediate generalisation wrt. description since the support on which is relied on does relate to a fire protection door and thus the associated limitations, such as the thickness, should be incorporated in the claim.
16.2 F Combination not disclosed by way of dependency + unallowable intermediate generalisation wrt. description, e.g., since cable + weight (embodiment 2, sliding door) is combined with stepped edge which according to [0017] is not suitable for a sliding door.
16.3 F See 16.2 argumentation - covers combination of sliding door with stepped edge.
16.4 F No support for the plate being made of a material containing fibers other than wood fibers
17.1 T D1 is from same field, being fire protection doors. D2's door is suitable for fire protection, but is from a more remote field, namely vintage art. D3 also different field.
17.2 T D1 and D2 both have pivoting + closing doors, D3 is rather sliding + opening. D2 most similar construction, having plate of solid wood.
17.3 F D3 at least does not have a plate containing wood fibers, only discloses cardboard fibers or fibers in general
17.4 F D3 lacks a door closer which according to [0002] of the client's application is required for a door to be (suitable as) a fire protection door
18.1 T According to [0006] of the client's application, solid wood is resistent to bending (note that this appears to be a general statement independent of thickness)
18.2 T According to [0007], wood provides heat insulation (general statement, independent of thickness), [009] moisture provides cooling effect (which insulates heat)
18.3 F Claim II.3 merely claims a biasing means biasing the door leaf into a predetermined position, which may also be an open rather than closed position
18.4 F According to [0016] of the client's application, the aluminium layer of claim II.1 prevents the wooden plate from drying out
19.1 T According to [0004] of the client's application, there is no need for additional stiffening which indicates a simplified construction
19.2 F Imitating the appearance of ancient doors may be considered a non-technical problem in that an aesthetic effect is trying to be reached. (**) On the other hand, one may also argue that the underlying technical effect is that the wooden door allows appearance + shape to be varied, thus allowing the appearance of ancient doors to be imitated, see [0004] and [0015] of the client's application, in which case the answer may be 'True'.
19.3 F Mere fact that D1 is a patent document does not prevent it from being combined with a journal in a particular field.
19.4 T True? Also one may argue that ultimately the combination of D1 and D2 is incompatible?
20.1 T Appears to be true, D3 is entirely silent about fire protection
20.2 T Unclear statement since it suggests D1 is the CPA whereas question indicates that D2 is CPA. But indeed no indication in D1 that the plate's material could be replaced by solid wood
20.3 T Appears to be true. Since the claim requires stepped edges, this appears to support its non-obviousness
20.4 T D1 teaches that a material having a high melting point is preferred, teaching away from the use of aluminium (having 600C melting point according to [0016] of client's application, being significantly lower than the 1300C of steel which is preferred by D1, see [0002] of D1).
Any dissenting opinions are highly appreciated!
Nico & Roel
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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.
It is common that the legal authority who issued a decision cannot change it themselves anymore. So you need to appeal.
ReplyDeleteHowever, I think for the 2014 Pre-Exam, the Examination Board or the Supervisory Board also awarded quite some candidates that originally failed an additional 1 or 2 more marks and thus a pass after they reconsidered the answers to 10.4 of those candidates in view of the five favourable decisions from the Disciplinary Board of Appeal:
the original number of candidates that passed as mentioned in the EQE Forum from the Academy and the DeltaPatents blog were 662 enrolments, 648 non-zeros, and 14 zeors (no-shows), with 555 passes (i.e., marks between 70 and 100) = 85.7% of the 648 candidates who sat the Pre-Exam and 93 fails (14.3%).
However, the official statistics showes a different number: 662 enrolments, 570 passes (86.10% of 662; 88,0% of the candidates that showed up) and 92 fails = 78 (12,0%) real fails and the 14 no-shows.
So, 15 more people passed, of which only 5 appealed.
Good for those 10 candidates, but at least interesting....
PassedInSilence
Interesting observation indeed.
ReplyDeleteNote that the Exam Committee indicated on the tutor meeting in October 2014 (see Tutor's report in epi information 4/2014):
" • A question was sent in whether the EC can consider to accept both True as False to be correct, in case of possible ambiguities in interpretation of the question/ a statement, to prevent detrimental effects to candidates that have a different, but not incorrect, interpretation than intended by the exam EC (see e.g. the D-decisions cited above [D 2/14, D 3/14, D 4/14, D 5/15, D 6/16]). The EC answered that they are not considering doing so, as it would water down the multiple choice test format".
A final afterthought regarding wether cardboard is an implicit disclosure of wood fibres.
ReplyDeleteIs it not the case that words are to be given their ordinary meaning?
In this instance, and courtesy of http://www.oxforddictionaries.com/,
Cardboard: " Pasteboard or stiff paper"
Paper: "Material manufactured in thin sheets from the pulp of wood or other fibrous substances, used for writing, drawing, or printing on, or as wrapping material"
Thus, regardless of what information is or is not provided in the documents, "cardboard", when given its ordinary meaning, is a disclosure of a fibrous wood substance.
I am rather surprised that DeltaPatents arrived at a different conclusion.
I am rather surprised that you arrive at a the conclusion that cardboard MUST be vibrous WOOD, whereas you cite Oxford Dictionaries as "from the pulp of wood OR OTHER FIBROUS SUBSTANCES"....
DeleteHowmuchwoodcanawoodchuckchuck...
ReplyDeleteNot sure if the last post made it on here, so i'll try again...
As an afterthought on whether D3 discloses a wood fibre material, it shouldn't really matter what is disclosed in any of the documents once it is accepted that words are allowd to have their ordinary meaning.
Thus, courtesy of http://www.oxforddictionaries.com/,
"Cardboard" : "Pasteboard or stiff paper"
"Paper" : "Material manufactured in thin sheets from the pulp of wood or other fibrous substances, used for writing, drawing, or printing on, or as wrapping material"
Thus, the ordinary meaning of cardboard is a material that is manufactured from (inter alia) the pulp of wood, which is a fibrous material.
Cardboard is therefore a fibrous wood material.
Alias Leon:
DeleteCardboard (wikipedia)
Often the term "cardboard" is avoided because it does not define any particular material.
So how can you use such an indefinite term in an exam without giving a definition?
I do think that the common knowlegde is that carboard are made of paper, which is made from wood.
I think it is not normal that some candidates are sanctioned for this kind of ambiguities...
Dear Anonymous27 February 2015 at 15:08,
ReplyDeletePlease ask the same family members:
"Can cardboard be made of other fibres than wood, e.g. from cotton?"
or
"If you have a patent on a cardboard box, does that give to the freedom to sell it?"
I am sure they will give wrong answers to at least one of these two.
NotReallyAnonymous
You would need to appeal yourself if standard legal rules are followed.
ReplyDeleteBut...: see my comment on the "First impressions" blog posted as/on Anonymous 26 February 2015 at 15:04.
Wil
Carton (matériau) = Karton (Werkstoff)
ReplyDeleteKarton (Werkstoff)
aus Wikipedia, der freien Enzyklopädie
Karton ist ein aus Zellstoff, Holzschliff und Altpapier hergestellter Werkstoff, der unter anderem in Druckereien als Druckuntergrund, in der Verpackungsindustrie zum Schutz von Packgut (Verpackungsmaterial) oder als Behälter (Schachtel oder Faltschachtel) sowie im grafischen Gewerbe und im Kunstgewerbe als künstlerischer Werkstoff und als Gestaltungsuntergrund eingesetzt wird. Im Wesentlichen handelt es sich dabei um Papier mit einer größeren Dicke.
cqdf
Confused: can you indicate why you it does/would?
ReplyDeleteSince 04.03.2015, the 2015 Pre-Exam has been published on the EQE website of the EPO:
ReplyDeletehttp://www.epo.org/learning-events/eqe/compendium/preexamination.html
I liked the Legal Questions. They were of a more varied level than in previous years. Also doable questions on PCT which were not included in the 2014 Pre-Exam.
- Question 1 : not a smooth starter - difficult to find answer to 1.4
- Question 2 : simple
- Question 3 : PCT Rule 45bis and EPO as SISA
- Question 4 : you must know that Rule 6(3) EPC was amended on 1 April 2014
- Question 5 : PCT and Euro-PCT. No priority claimed implies that the renewal fee is already due upon entry (5.4)
- Question 6 : not an easy question. For 6.1 you must realize that Art.123(2) and Rule 137(5) EPC only relate to the Euro-PCT application after entry into the EP regional phase.
- Question 7 and 8 : analysis of effective dates of subject-matter is required. If done so, the questions on state of the art and novelty are simple.
- Question 9 : sufficiency of disclosure is not a subject I would immediately expect at the Pre-Exam. The search division only has an 'opinion', the examining division can take decisions.
- Question 10 : about 'any person' in Article 99 EPC and the case law (G decisions).
I note that D3 says "thin board containing fibres such as cardboard". Even if cardboard does not ALWAYS contain wood fibres, we at least know from D1 that it CAN. Could a cardboard with wood fibres therefore be seen as a selection from a list? A selection from only one list does not confer novelty. May I ask what you think of this reasoning? I guess the counter argument is that a species confers novelty over a genus, but where do you draw the line? Thanks, alias "Hopeful".
ReplyDeleteYou now make a serious error in your thinking!
ReplyDeleteOne-list selection requires an EXPLICIT list, e.g. "cardboard comprising wood fibers, cotton fibers, hemp fibers or synthetic fibers".
The case at hand -or rather the discussion- relates to a genus-species situation: see Guidelines G-VI, 5 "Generic disclosure and specific examples".
But why would paper comprise wood fibres - other types of paper are also well-know, such as from grasses such as papyrus as we know from the ancient Egyptians.
ReplyDeleteI cite from wiki (http://en.wikipedia.org/wiki/Paper):
Paper is a thin material produced by pressing together moist fibers, typically cellulose pulp derived from wood, rags or grasses, and drying them into flexible sheets.
I must however admit that as experienced tutors analyzing the exams and understanding -we think- the exam committees thinking quite a bit, we immediately conclude that a phrase like "The cardboard comprising wood fibers distributed..." without any explicit definition (=necessary requirement) that cardboard ALWAYS needs to have wood fibres, the exam committee indicates two things:
1) cardboard exists and is a generic term for various versions, and
2) cardboard comprising wood fibres is (just) one version - and the only once explicitly named.
So, as a tutor, I feel quite certain that the exam committee's intention was to indicate a genus-species situation in the paper.
However, from our experience with non-expected but not unreasonable interpretations from candidates, and -when discussing questions or complete exams with our candidates in our courses and our correction paper programs- from our discussions with candidates many candidates come up with several expected as well as non-expected reasonings. In this paper, it could easily have been prevented to get into the discussion you are having if the paper would just somewhere have said "Some other types of cardboard comprise other types of fibres than wood fibres" or "Another type of cardboard comprises cellulose fibres made of grasses" - whereby the paper would have contained EXPLICIT information that there is more than one type of cardboard. I do not know for certain why this did not came up when the exam was tested with guinea pigs -as the exam committees always do quite extensively-, but I think this is because the guinea pigs are also experienced in doing exams and also reading the paper as the exam committee intended without being aware of possible -incorrect but not unreasonable- interpretations. I think the big difference between the guinea pigs and tutors may be that we tutors have almost daily contact with candidates and understand how a trainee with only 2-3 years of experiences thinks and can deviate from what (s)he is expected to think/conclude as the trainee is much less aware and does not immediately spot typical exam structures or exam words that an experience guinea pigs does spot and know how to interprete.
I had False, as D1 does indicate that it melts and is thus not OPTIMALLY suitable, but it is actually suitable (although to a limited extend): every high-school student is taight that the melting happens because the melting uses energy the heat - so it cools!
ReplyDeleteD1 really does not teach away from using aluminium – on the contrary, it says “different ,materials can be used, but steel is preferred” and thus only discloses that steel is better – see D1, [002].
Also, D1 does not mention aluminum at all – which for the severe teaching away test would be necessary in my view.
The Guidelines are very clear that the "teaching away" requirements should be interpreted very strictly (narrowly):
GL (Nov 2014) G-VII, 4: “As a general rule, there is an inventive step if the prior art leads the person skilled in the art away from the procedure proposed by the invention. This applies in particular when the skilled person WOULD NOT EVEN CONSIDER carrying out experiments to determine whether these were alternatives to the known way of overcoming a real or imagined technical obstacle.”
Yes, D1, [003] teaches that 1300 degree melting point of steel solves all problems (withstand high temp and keep stiffness), but does NOT AT ALL teach that a lower temperature would not work at all. This, it does NOT AT ALL discourage CARRYING OUT EXPERIMENTS as to whether a lower melting point metal such a aluminium is good enough to give at least a bit of cooling (and maybe even preferred for other reasons, such as ease of handling/ tooling).
So, there can not be any doubt in my view that there is NO teaching away from using aluminum in D1.
Further, in my opinion, the Exam Committee failed to recognize that improvements are NOT required for inventive step, and a suggestion to go into a specific direction is ONLY a teaching away if it is understood to be the only possible way ("PREFERABLY steel" is a suggestion -- "NECESSARILY steel or a metal with an even higher melting point" would be a teaching away).
GL G-VII, 5.2: “The expression "technical problem" should be interpreted broadly; it does not necessarily imply that the technical solution is an improvement to the prior art."
So, even without D1 being a teaching away, aluminum can be inventive as being an alternative to steel.
ILikeAlu
http://pre-exam.blogspot.com/2015/03/results-pre-exam-2015.html?showComment=1431012085870#c4816265192618985016 ,
ReplyDeletehttp://pre-exam.blogspot.com/2015/03/results-pre-exam-2015.html?showComment=1431015027976#c2369393867032624674 ,
and
http://pre-exam.blogspot.nl/2015/03/results-pre-exam-2015.html?showComment=1431031581559#c5192398410481614991 :
three candidates posted that their appeals based on 15.2 and 17.3 have been successful and reversed by the Examination Board in interlocutory revision.
So, T has been accepted as correct for 15.2 and F has been accepted as correct for 17.3.
Congratulations for the candidates that appealed based on 15.2 and 17.3!
And compliments to the Examination Board to consider the appeals on its merits and accept that the answers to these two statements had to be reconsidered.
No news yet on appeals based on other statements, such as 20.4.
Some appeal results are now being announced following interlocutory review. Extra marks are being given for the 'wrong' answers to the cardboard questions. However, these decisions were only issued immediately after the ending of the period for appeal. I would suggest that the Examiners must have appreciated the need to change their position some time before the appeal period closed, but kept quiet about it so as not to provoke more appeals.
ReplyDelete