Monday, 22 March 2010

EQE C 2010: claim 1, 54(3)

Claim 1 claims a liquid dispenser with a gaseous propellant. For finding all required attacks on this claim we first have to find out what documents we are allowed to use. After determining the effective date of claim 1 (filing date LU1) and looking at the relevant dates of the Annexes, we know that there are two 54(3) documents, A4 and A6, and three 54(2) documents.

First we try to find all 54(3) attacks by looking for claim features not disclosed in A4 or A6. For A6 the situation is pretty clear. A6 only discloses a valve and not a dispenser. We can (for now) disregard this document.

A4 seems to come pretty close to the claim. Most claim features are clearly disclosed in A4. You may however have experienced some problems with finding the trapping material in A4. A4 does not disclose such material for the same purpose. However in [0005] some interesting information is provided. There is some foam-like material sticking to the inside wall and some propellant in its liquid or gaseous phase is temporarily incorporated in this foam-like material.

Although this foam-like material is not applied to the wall intentionally for the purpose described in A1, it falls within the literal meaning of the claim wording. Material sticking to a wall is a coating. Temporarily incorporated propellant is releasably trapped.

We should thus write down a prior right novelty attack using A4. Usually, such an attack is not sufficient for destroying a claim in the exam. Especially under the still applicable overlapping-states regime (EPC 1973), such an attack may not work for all designated states. Therefore an additional 54(2) attack is to be expected. You will find more information about that attack in our next posting.

Update 31/3/10: As one of our visitors correctly pointed out, Art.54(4) EPC 1973 is not applicable to Annex 1. See the comments below for more information on this topic.


  1. Why start with A5 which offers another solution to the technical problem? If the expert would start reading A5 he would not have any motivation to look for another document, because simply he would see that already A5 solves his problem (although with an alternative solution): This would not lead to the subject matter of claim 1.

  2. Why not the following attack:

    Claim 1 - Lack of Inventive Step over State of the Art in A1 + A2 (Art. 56 EPC)

    The state of the art described by the patent owner in A1 is the closest prior art because it relates to a device for reliably dispensing a predetermined dose of a pressurized liquid product (0001) and so to the field of the invention. Nearly all features of claim 1 are already disclosed in the state of the art of A1.
    A2 relates to a gas dispenser only (0001).
    A3 requires a pressurized aluminium bottle that cannot be changed due to safety standards (0003).
    A4 is a 54(3).
    A5 also cannot be next state of the art for claim 1 because although disclosing in addition to the state of the art in A1 a plastic container, A5 proposes to solve the technical problem with an alternative solution ((0006) lines 14-16). The expert starting with A5 would follow the approach proposed there (see A5, (0006)), optimize the shape of the floating particles and solve the technical problem. The expert thus would arrive at another subject matter and would not be motivated to look for a further document.
    A6 does not show any elements usable for claim 1 and is 54(3).

    A1 discloses ((0002)-(0004)) an apparatus for dispensing an aerosol ([0002] lines 4-6), which comprises a container (A1 [0002] line 5), which is pressurized (comprising a pressurized propellant means pressurized [0002] line 5);
    a liquid product to be dispensed (A1 [0002] line 6-7); a liquefied propellant which is a liquefied gas (A1 [0002] lines 6-7: „a gas which readily forms a liquid phase when it is pressurized and is then called a liquified gas“), a valve equipped on the container (A1 [0003] line 11) so is deemed to be coupled with the container. Further A1 discloses an eduction pipe which reaches from the valve to the bottom of the container (A1 [0003] line 13, dip tube), the eduction tube extends into the liquid product (implicit disclosed by (0003) line13: „a dip tube to convey the liquid product into the valve through a valve inlet“ If the dip tube would not extend into the liquid product, that would not work). Further the state of the art in A1 discloses a trapping material in which propellant is releasably trapped ((0004) lines 21-25).

    Claim 1 differs from the next state of the art in A1 in two features, namely in that the container wall is made of plastics (F1) and in that the inner surface of the container wall is coated with the trapping material (F2), while the state of the art in A1 discloses instead trapping material (in form of one or more porous bodies) freely floating inside the container ((0004) lines 21-22) thereby remaining silent about the bottle material.

    This has the effect, that the trapping material cannot lead to a malfunction of the dispenser by clogging the openings of the valve, such as the dip tube or any additional inlet ((0005) in A1) because it is instead of free floating, fixed to the container wall.

    Thus the technical problem to be solved is to avoid the obstruction of the dip tube or any additional inlet while parallel to this preventing losses of liquefied propellant.

    F1 and F2 are synergetic features, which only in combination with each other achieve the desired effect (the trapping material has to be fixed to a surface made of suitable material). Thus the features (plastics and fixing) must be taken in combination from a single embodiement that also teaches the effect . This means plastic container AND trapping material fixed to the inner side of the container wall must be disclosed in one single document in combination with each other in a form, that the desired effect is reached.

  3. A person skilled in the art has a strong motivation to seek a solution to this problem in another document, because the state of the art in A1 states the disadvantage (A1, (0005)) without offering a possible solution about how to solve this problem.

    The skilled person seeking a solution to the aforementioned problem would therefore look into A2, a document from the similar field of pressurized dispensing apparatus (A2 title, [0001]).

    A2 discloses a container with a liquefied gas that is stored within a material coated on the inside wall of a plastics can (A2 claim, [0002]). A2 further states (see (0004)), that the can is made of a material that must offer good adhesion to the gas permeable porous material and that only plastics were found to satisfy these requirements ((0004) line12). Although metals would provide higher can strengths, they do not afford a satisfactory adhesion to any of the known gas-permeable porous materials and therefore cannot be taken.

    The skilled person therefore has a strong motivation to apply this solution to the objective technical problem. Because A2 tells that only plastic material is suitable, the expert not only would, he will combine both features F1 and F2 of A2 together with the closest prior art in A1, because he needs both elements for solving his problem and thus will arrive at the subject matter of claim 1.

    Thus claim 1 lacks inventive step over a combination of the next state of the art in A1 with A2 (Art. 56 EPC).

  4. Dear eqeinputter,

    Thanks. You are the first to comment on one a posting at one of our newly introduced (and not yet advertised) weblogs. Let's hope that many will follow. By the way, I changed the settings of the weblog to allow anonymous posting.

    I will comment on your opinions about the closest prior art selection for claim 1 below the posting about 54(2) attacks. This posting was about a prior right novelty attack.

  5. Hi DeltaPatents,

    I think it's great that you guys are doing this as people are interested in the experts view before we all know the outcome in August.

    I think you have a slight problem with your Art. 54(3) attack (final paragraph) - you imply that it is under EPC 1973 - it is not the case, the DIV APP was filed after EPC 2000 came into force, so in fact the 54(3) attack works for all states, not just overlapping ones

    (well i hope this correct anyway!)

  6. You are completely right about the applicability of EPC 2000 with respect to the prior right issue. I totally missed the fact that this was a divisional. According to OJ 2007 504, the date of receipt of the divisional decides which law to use. According to the client’s letter, the divisional was filed one day after entry into force of the EPC 2000. That should have been a clear hint to me.

    The Art.54(3) attack works for all states. As a consequence, the inventive step attack on claim 1 is not needed anymore. One strong attack on each claim is enough. Luckily, we need the inventive step attack as a basis for the attacks on the claims 2 and 3 and no time was wasted with writing it down.

  7. The 54(3) attack against claim 1 is nevertheless weak, because an undisclosed disclaimer could be used to establish novelty.