Monday, March 01, 2021 Pre-Exam 2021 - claims analysis part: our answers

As in the legal part, when you check your answers with ours, note that the order of the statements within a question may be different!

Please feel invited to comment!

Note: the legal part is discussed in our other blog post: here. 
First impressions and general comments can be posted here.

[Update 4 March 2021 7:15:] We have compiled a version of the paper, in English; it is available here. In our version, the sequence of the questions and statements corresponds to the order as was presented to some candidates; other candidates obtained the questions (in the legal parts) and the statements within a question (in the legal parts as well as in the claims analysis parts) in different order. The sequence/numbering of the questions in our version of the paper corresponds to that used in this blog post.

Our claims analysis answers are given below.

[Update 2 April 2021 8:45:] 
The Examiner's Report was published yesterday on the EQE website (Compendium); all our answers to Q.11-Q.20 correspond to the answers in the Examiner's Report, possibly except 12.3. No statements were neutralized in the claims analysis part, except possibly 12.3 (see below).

[Update 7 April 2021, 8:30:]

The Examiner's Report on the Compendium pages has been updated: the answer given in the updated version of the Examiner's Report to 12.3 (12.4 in the Examiner's Report) is FALSE.

[Update 8 Feb 2022:]

Today, decision D 2/21 was published. The Disciplinary Board of Appeal reasoned:

"17. For the above reasons, the answer "False" cannot be considered to be the only correct answer that can be given to statement 12.4 [corresponding to 12.3 in the version on this blog] when taking an informed and objective view or interpretation of the wording of the facts underlying the pre-examination question 12 and the statement 12.4. As a consequence, the question of whether or not statement 12.4 is correct cannot be answered with either "True" or "False" as required by a "multiple-choice" question in the pre-examination."

Part 3 - A glass composition for use as a photochromic lens

[Update 8 March 2021: added the claim sets]

QUESTION 11 -

Set of claims I, used in several questions:

I-1. A glass composition for use as a photochromic lens comprising:

silicon dioxide;

component A;

component M; and

component X.

I-2. The composition according to claim I-1 wherein component A is present in the composition in a content of about 10% to about 30% by weight.

I-3. The composition according to claim I-1 or claim I-2 wherein component A is selected from the group consisting of sodium oxide, sodium carbonate and boron trioxide.

I-4. The composition according to claim I-1 wherein component M is present in the composition in a content of 5% to 10% by weight.

I-5. The composition according to claim I-4 wherein component M is present in the composition in a content of 15% by weight.

I-6. The composition according to any one of claims I-1 to I-5, wherein component X is selected from the group consisting of compound alpha, compound beta and compound gamma.

I-7. The process according to any one of claims I-1 to I-6, wherein component M is selected from the group consisting of: lime, zinc oxide and alumina.

I-8. A process for manufacturing a photochromic lens from the glass composition according to any one of claims I-1 to I-7, which comprises the following steps:

(i) mixing components A and M together in a first vessel to obtain a first mixture;

(ii) heating silicon dioxide in a second vessel to an high temperature;

(iii) adding the first mixture from step (i) to the second vessel from step (ii) to form a second mixture;

(iv) adding component X to the second mixture;

(v) forming a photochromic lens; and afterwards

(vi) allowing the photochromic lens to cool to a low temperature.

I-9. A photochromic lens obtainable by the process of claim I-8.

11.1 Claim I-1 is limited to a glass composition which is only for use as a photochromic lens

    False: “for use as a photochromic lens” is to be interpreted as ‘suitable for use as’ but which allows other uses.

11.2 The protection of claim I-8 extends to the photochromic lens directly obtained by the process

    True: According to Art 64(2) EPC/Art. 28(1)(b) TRIPS, protection of a process claim extends to the directly obtained product by that process. A manufacturing claim is a process claim.

11.3 A photochromic lens which is identical to the photochromic lens of claim I-9, but which is not obtained by a process of claim I-8, falls under the scope of claim I-9

    True: Product-by-process claim. Here, the method steps are only used to define the properties of the product, but are otherwise not limiting.

11.4 Claim I-4 covers a glass composition for use as a photochromic lens, comprising silicon dioxide, sodium oxide in a content of 10% to 30% by weight of the composition, component M in a content of 5% to 10% by weight of the composition, and component X

    True: The claim does not specify features/limitations which are not present in the given glass composition (sodium oxide is an example (type of) of A)

 

12.1 Claim I-5 is clear

    False: Claim I-5 is dependent on claim I-4 which already limits M to 5-10% by weight. The additional feature of claim I-5 is thus contradictory with claim I-4.

12.2 Claim I-7 is unclear due to its dependency on claims I-1 to I-6

    True: Claims I-1 to I-6 are composition (product claims) and do not relate to a process; a claim stating “the process according to any one of claims I-1 to I-6” is thus unclear.

12.3 Claim I-8 is unclear due to the use of the term low.

[Update 2 April 2021 8:45:] No answer indicated in Examiner's Report. The reasoning in Examiner's Report suggests FALSE, but the absence of an answer suggests that it may be neutralized or is still subject to review. The reasoning given in the Examiner's Report of 1 April 2021 (wherein this is statement 12.4) provides:

"The term “low” in feature (vi) in claim I-8 is clearly distinguished from the term “high” in feature (ii) of claim I-8. Furthermore, the description of the application defines the term “high” in paragraph [009]. Accordingly, in the context of the whole disclosure of the application, the term “low” is considered to be clear.

In any case, if a relative term is not the only feature to distinguish the subject- matter of a claim from the prior art, the use of the relative term may not be objected to under Article 84 EPC. The word “low” is not the only feature to distinguish the claim from the prior art, as none of the prior art discloses the claimed process. Although broad, the term is not necessarily unclear [GL 2019 F-IV 4.6.1]."

The Examiner's report argumentation is discussed in the comments to our "Results" blog (here). Please feel invited to contribute to the discussion there.

[Update 7 April 2021, 8:30:]
The Examiner's Report on the Compendium pages has been updated: the answer given in the updated version of the Examiner's Report to 12.3 (12.4 in the Examiner's Report) is FALSE.

Our original answer and notes:

    True: ‘low’ is an undefined relative term; in addition, the description does not indicate that ‘low temperature’ has a generally accepted meaning in the art.

    Note: the claim does not only use the term low" but also the term "high" so that it may argued that "low" is not a relative term as such, but relative to the other "high". But even when considering that, the claim is not clear to to the term "low": Refer to GL F-IV 4.6.2 "Clarity objections", which provides: 

"Relative or similar terms such as "thin", "wide" or "strong" constitute a potentially unclear element due to the fact that their meaning may change depending on the context. For these terms to be allowed, their meaning must be clear in the context of the whole disclosure of the application or patent." 

While the application does provide preferred ranges for a "high" temperature, there is not a single range or value mentioned of what would be a "low temperature". So, one cannot conclude whether "low" means less than room temperature, even lower, or just a bit less than "high" while still several hundreds degC (quite high), not even when considering the whole disclosure, such that the statement "Claim I-8 is unclear due to the use of the term low" (but not so much due to the term high) is TRUE. [Updated 17 March 2021]

12.4 Claim I-1 contains all essential features of the glass composition of the invention

    False: According to [009] of the client’s application, it is essential that the content of component M is between about 5% to about 10% by weight. This thus represents an essential feature.

 

13.1 D1 discloses a component X being selected from the group consisting of compound alpha, compound beta and compound gamma

    False: D1 does not disclose any species/examples of X. Disclosure of X as a genus does not imply disclosure of its species.

13.2 The subject-matter of claim I-1 lacks novelty over D1

    False: D1 shows the combination of A, M and X only as a selection from three lists (‘multiple list selection’). The specific combination is thereby not disclosed by D1.

13.3 The subject-matter of claim I-2 lacks novelty over Example 2 of D2

    True: D2 second example’s disclosure of 30% by weight of A anticipates the claimed end-point of the range of about 10% to about 30% of A.

13.4 The subject-matter of claim I-4 is novel over Example 3 of D2

    False: D2 third example’s disclosure of 7% by weight of M falls within the claimed range of 5-10%.

 

QUESTION 14

During examination the applicant files a new set of claims II to replace the originally filed claim set I:

 

II-1. A glass composition for use as a photochromic lens comprising:

silicon dioxide;

component A; and

component M.

II-2. The composition according to claim II-1 further comprising component X.

II-3. The composition according to claim II-2 wherein component M is not zinc oxide.

II-4. The composition according to claim II-2 wherein component A is present in the composition in a content of 10% to 30% by weight.

II-5. The composition according to claim II-2 wherein component X is selected from the group consisting of compound alpha and compound beta.

14.1 Claim II-3 is allowable under Article 123(2) EPC

    True: True, claim II-3 corresponds to claim I-1 but with an allowable disclaimer (‘not zinc oxide’) according to G2/10.

14.2 Claim II-1 is allowable under Article 123(2) EPC

    False: The claim omits component X but which according to [011] provides the photochromic characteristics to which the invention pertains; there is no mention X can be omitted in a glass composition for a photochromic lens; its omission is thereby not directly and unambiguously derivable from the application.

14.3 Claim II-4 is allowable under Article 123(2) EPC

    True: The combination of claims II-4, II-2 and II-1 corresponds to originally filed claim I-2.

14.4 Claim II-5 is allowable under Article 123(2) EPC

    True: The combination of claims II-5, II-2 and II-1 is based on originally filed claim I-6 when directly dependent on claim I-1 and claiming two of the three options (alpha, beta, gamma)

QUESTION 15

A further amended set of claims is filed during examination:

 

CLAIM SET III

III-1. A glass composition for use as a photochromic lens comprising:

silicon dioxide;

component A which is present in a content of 16% by weight;

component M which is present in a content of 5% to 10% by weight; and

compound alpha which is present in a content of 10% by weight.

III-2. The composition according to claim III-1 wherein component A is selected from the group consisting of sodium oxide, sodium carbonate and boron trioxide.

III-3. The composition according to claim III-1 or claim III-2 wherein component M is selected from the group consisting of lime and alumina.

  

15.1 A valid argument for why the subject-matter of claim III-1 has an inventive step over D2 is because using compound alpha as component X results in a photochromic lens, the colour of which is surprisingly more resistant to temperature changes than when compound beta or compound gamma is used

    True: D2 only discloses X in form of beta and gamma; according to [012], these do not have the advantageous effect of providing resistance to color changes due to temperature changes.

15.2 A combination of D2 and D3 could be used to validly attack claim III-1 for lack of inventive step

    False: D3 is Art. 54(3) and thus not part of the state of the art for inventive step.

15.3 D2 can be considered to be the closest prior art for claim III-3 because it relates to the same technical field, i.e. the field of photochromic lenses

    True(*): D2 is indeed from the same field; D1 is from a more remote field being glass compositions for bottles.

    (*) False can also be argued: see comment below

     [Update 2 April 2021 8:45:]
     The statement was not neutralized in the Examiner's Report. Only True was considered correct.

15.4 The objective technical problem to be solved by the subject-matter of claim III-1 with respect to D2 is the provision of a photochromic lens, the colour change of which is resistant to temperature changes

    True(*): This is indeed the technical effect of using alpha as X.

     (*) False can also be argued: see comment below.

     [Update 2 April 2021 8:45:]
     The statement was not neutralized in the Examiner's Report. Only True was considered correct.
     The Examiner's report argumentation is discussed in the comments to our "Results" blog (here).
     Please feel invited to contribute to the discussion there.

(*) Your answer to 15.3 and 15.4  may depend on whether you interpreted claim III-1 as in essence defining a photochromic lens, or rather as defining a glass composition which is a precursor to a photochromic lens (e.g., by still having to be manufactured from a glass composition, as defined by the preamble and step (v) of claim I-8). We more or less expect the intended answers to be ‘true’ . 
However, there are certainly good arguments to be made for ‘false’; in particular doe [015] clearly define that a composition is obtained from mixing components and that this mixture (the composition) is the formed into a photochromic lens: the lens can thus not be consider to be a composition, but is is made from a composition. It may thus be argued that the composition is rather a composition for use in making a photochromic lens or a composition for a photochromic lens, than as a composition shaped to be used as a photochromic lens. It would be like "a plastic used as a cup": such phrasing is unclear as to whether it defines a plastic usable to make a cup from, or as a cup made out of plastic.
Also see various comments posted to this blog w.r.t. 15.3 and 15.4. [Expanded 5 March 2021]

Part 4 - Protection device comprising a receiving part for receiving a tablet computer and a cover part

 

The following set of claims IV was filed together with the second European patent application. This set of claims IV will be used in several questions:

IV.1 Protection device comprising a receiving part for receiving a tablet computer and a cover part.

IV.2 Protection device according to claim IV.1, wherein the protection device comprises a hinge between the receiving part and the cover part.

IV.3 Protection device according to claim IV.1 or IV.2, wherein the receiving part comprises a flat base, preferably as shown in Fig.1.

IV.4 Protection device according to any preceding claim, wherein the receiving part comprises an elastically deformable means for securing the tablet computer within the receiving part.

IV.5 Protection device according to claim IV.4, wherein the elastically deformable means comprises four elastically deformable corners.

IV.6 Protection device according to any preceding claim, wherein the cover part comprises a flat and rigid section.

IV.7 Protection device according to any preceding claim, wherein the cover part is divided into three parallel sections that are respectively joined by parallel hinges, and which are foldable into a triangular prism shape.

16.1 Claim IV.7 defines that the cover part is divided along its longer dimension into three parallel sections that are respectively joined by parallel hinges, and which are foldable into a triangular prism shape

    False: Claim IV.7 misses “along its longer dimension”

16.2 Claim IV.3 meets the requirements of Art. 84 EPC

    False: Reference to a figure; the flat base could have been defined in words (see, e.g., claims IV.4-6) which means that a definition by reference to a figure is certainly not allowable.

16.3 A protection device comprising a receiving part for receiving a tablet computer and a cover part having two hinges between the cover part and receiving part falls within the scope of claim IV.2

    True: ‘comprises a hinge’ does not exclude the presence of two or more hinges

16.4 Claim IV.4 lacks clarity because of an incorrect dependency

    False: No problem with the dependency; the receiving part is already defined in claim 1.

 

17.1 D1 destroys the novelty of the subject-matter of claim IV.4

    True: D1 discloses a frame made of elastically deformable material as the receiving part (‘tablet computer held tightly therein’) and a cover part in the form of the folded flaps.

17.2 D1 destroys the novelty of the subject-matter of claim IV.2

    True: The bottom part of the shipping box can be considered as a receiving part (“flat base and four walls for receiving the tablet computer”) and the flaps as the cover part; the flaps are attached to the walls via hinges.

17.3 D1 destroys the novelty of the subject-matter of claim IV.6

    True: ‘according to any’ = OR claim. D1 is at least novelty destroying for claim IV.6+IV.1 (the broadest alternative) and thus novelty destroying for the claim. Namely, D1’s flat base is rigid and flat.

17.4 D1 destroys the novelty of the subject-matter of claim IV.7

    False: D1’s flaps (or other features) do not seem to be arranged as three joined parallel sections.

 

18.1 The subject-matter of claim IV.4 is novel over D2

    False: See [002] of D2: “Both the flat base and the peripheral wall deform elastically for receiving and securing the tablet computer in the receiving part”; this anticipates at least the combination of claim IV.4 + IV.1, i.e., the broadest claimed alternative.

18.2 The subject-matter of claim IV.7 is novel over D2

    False: See [004] of D2; while it is not disclosed that the hinges are parallel, this seems to be implied by the sections being arranged in parallel and joined by hinges.

     (*) True can also be argued: D2 [004] refers to Fig.3 in D2, but the figure shows 4 sections folded into a triangular prism whereas the description says three. You may consider this an error in a prior art document, and use GL G-IV, 9 to conclude that either the figure is correct and the text wrong (such that D2 shows a cover split into 4 sections rather than the claimed 3 so that the claim is new) or that multiple corrections of [004] and Fig. 3 are possible (such that D2 must not be taken into account, so that the claim is new).  See comments posted to this blog. [Added 5 March 2021]

     Note that the claim is limited to a cover part that is divided into exactly 3 sections (i.e., consists of 3 sections) rather than that it has 3 or more (comprises 3 sections). ("IV.7: Protection device according to any preceding claim, wherein the cover part is divided into three parallel sections that are respectively joined by parallel hinges, and which are foldable into a triangular prism shape.") 

     [Update 2 April 2021 8:45:]
     The statement was not neutralized in the Examiner's Report. Only False was considered correct.
     The Examiner's report argumentation is discussed in the comments to our "Results" blog (here).
     Please feel invited to contribute to the discussion there.

18.3 The subject-matter of claim IV.6 is novel over D2

    False: See [004] of D2; the cover part comprises three flat and rigid sections and thus “a” flat and rigid section as required by the claim.

18.4 The subject-matter of claim IV.5 is novel over D2

    False: D2’s entire peripheral wall is made of silicone and deforms elastically, and thus also its four corners (Fig. 3 shows that the peripheral wall has four corners).

 

19.1 Under Article 123(2) EPC, there is basis for amending claim IV.1 of the originally filed application as follows:

Protection device comprising a receiving part for receiving a tablet computer and a cover part, wherein the receiving part comprises a flat base and four elastically deformable corners for securing the tablet computer within the receiving part, and wherein the cover part comprises a flat and rigid section

    True: Supported by the combination of claims VI.6, 5, 4, 3 and 1, while deleting the optional ‘preferably as shown in Fig. 1’ part

19.2 Under Article 123(2) EPC, there is basis for amending claim IV.1 of the originally filed application as follows:

Protection device comprising a receiving part for receiving a tablet computer and a cover part, wherein the receiving part comprises a flat base and four elastically deformable corners for securing the tablet computer within the receiving part, and wherein the cover part is flat

    False: While the first embodiment has a flat cover part, it is also rigid, which is now omitted from the claim without this being directly and unambiguously derivable from the application.

19.3 Under Article 123(2) EPC, there is basis for amending claim IV.1 of the originally filed application as follows:

Protection device comprising a receiving part for receiving a tablet computer and a cover part, wherein the cover part is divided into three parallel sections that are respectively joined by parallel hinges, and is foldable into a triangular prism shape, each section being flat and rigid, and wherein the hinges and the sections are made from the same material such that the hinges are formed by folds of the cover part

    True: Seems to be supported by the second embodiment (with the wording ‘parallel’ in conjunction with the ‘sections’ coming from claim IV.7).

     [Update 2 April 2021 8:45:]

     (*) False can also be argued - see K's comment on our "Results" blog (here), who indicates:

"If "a receiving part being a flat base and having four elastically deformable corners" applies to all embodiments of the invention, then taking the receving part from [005] requires to take it in the way it is disclosed as applying to all embodiments of the invention. Therefore, it is necessary to include the flat base and the four elastically deformable corners in the claim. As this was not done in the amended claim [and those features are necessary to hold the table computer in the receiving part], the statement is FALSE."

     The statement was not neutralized in the Examiner's Report. Only True was considered correct.
     The Examiner's Report (where it is statement 19.4)provides:

"TRUE - This amendment is based on the combination of IV.1, IV.7 and [005] of the description of the application. The invention is defined in paragraph [003] of the description of the application to have the receiving part being a flat base and having four elastically deformable corners. Thus, this receiving part applies to all embodiments of the invention. Therefore, it is not necessary to include the flat base and the four elastically deformable corners in the claim. Thus, this amendment complies with Article 123(2) EPC."

     The Examiner's report argumentation is discussed in the comments to our "Results" blog (here).
     Please feel invited to contribute to the discussion there.

19.4 Under Article 123(2) EPC, there is basis for amending claim IV.1 of the originally filed application as follows:

Protection device comprising a receiving part for receiving a tablet computer and a cover part, and further comprising a hinge between the receiving part and the cover part, the receiving part comprising a base, the base being flat

    True: This corresponds to the combination of claims IV.3, 2 and 1 while omitting the “preferably as shown in Fig. 1” part.

 

QUESTION  20

For this question, assume that the following Claim V.1 was the original claim filed in the client patent application.

V.1 Protection device comprising a receiving part for receiving a tablet computer and a cover part, wherein the receiving part comprises a flat and rigid plastic base and four corners for securing the tablet computer within the receiving part, characterised in that the four corners are elastically deformable and the four corners extend from the peripheral edge of the base and the four corners are made of silicone having a greater thickness than the base.

20.1 A valid argument as to why D2 may be considered the closest prior art is that it discloses a base made from the same material as the corners

    False: Claim V.1 actually defines that the base is made of a rigid clear plastic and that the corners are made of silicone, and thus not that the base is made from the same material as the corners. The reasoning is thus based on a feature not part of claim V.1

20.2 A possible technical effect of the invention defined in claim V.1 with respect to D2 is that it allows better protection of the screen of the tablet computer

    False: D2 states that its thickness of the whole receiving part may be increased uniformly. Only having thicker corners seems to rather reduce cost/address environmental concerns, see [003]. In fact, according to [003], the protection may be slightly decreased.

20.3 For the purpose of assessing inventive step of claim V.1, a valid argument is that D1 does not relate to the technical field of protection devices

    False: A shipping box is arguably also a protection device.

20.4 Claim V.1 is in the correct two-part form with respect to the disclosure of D2

    False: For at least the reason that D2 does not disclose a rigid plastic base; this should be in the characterizing portion.

Our Pre-Exam 2021 blog is composed of three separate blogs:

• first impressions with your comments as to first impressions, the Pre-Exam 2021 as a whole, the e-EQE platform, etc
• legal part with our answers to the legal questions
• claims part with our answers to the claims analysis questions

We look forward to your comments!

Comments are welcome in any official EPO language, not just English. 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 02-03-2021 22:23"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.

Thanks!

(c) DeltaPatents