Friday, 28 February 2014

A close shave for paper C 2014

Paper C 2014 of the European Qualifying Examination (EQE) was held last Thursday (27.02.2014). The paper concerned razor cartridges that featured improved tension of the skin and a fencing element to avoid cutting yourself. 

First impression is that this paper is considerably harder than paper C of 2013. Priority issues played a role both in the application itself and in the prior art. Getting the effective dates and list of evidence right in this paper was the first challenge to take. 

To determining the effective dates of the claim, one had to spot that the applicant of A1 and of A6 was the same. Although this information is given twice: both in the client's letter and on the application this is easy to miss. As result the priority claim of A1 is not valid for subject matter that was previously disclosed in the priority document of A6. A6 itself could be used for attacking all claims that lost priority. Getting this wrong would cost you only one novelty attack though so this issue should be survivable. 

Below are our attacks for the claims:




Claim 1: Two novelty attacks one based on A6 and one based on A4
Claim 2: Added subject matter. A.123(2)
Claim 3 with polyurethane: Inventive step A3+A5
Claim 3 with biodegradable: Inventive step A3+A6
Claim 4: Inventive step A2+ A3
Claim 5: idem
Claim 6: Novelty A5



96 comments:

  1. I think this Paper was quite long to be finished in 5 hours. The number of pages is 29, that is 5 more than the usually 24 pages of old Papers to be done in 6 hours.
    Many issues to be treated: loss of priority due to A6, an A. 123(2) attack, two attacks for claim 3 (not starting from the novelty attacks for claim 1, ranges, use-claim.
    A plurality of issues that were medium difficulty but surely not to be treated in 5 hours!

    ReplyDelete
  2. I agree with Anonymous (12:19 PM) above.

    What does "idem" mean for Claim 5?

    ReplyDelete
  3. Agree with the first comment, too long to be handled in 5 hours ! The priority issue was a big mess, I hope they will allocate at least 20 marks, it is needed to be paid correctly to be honnest.

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  4. Ok, I googled "idem". :-)

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  5. In the reactions I received so far shortage of time was a common complaint. It took myself a bit long than last year too.

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  6. I agree, the time was a problem (but isnt't it always at the C-exam?). I didn't find a good CPA for any of the claim 3 embodiments why I left claim 3 and then only had very short time to attack claims 3 at the end on the exam. I got the thing with using A6 for the second embodiment (I hope to get some point for that) but I grasped the wrong CPA (I took A5 as CPA for the claim 3 embodiments and went with A5+A2 for alternative 1 and A5+A6 for alternative 2). Not good at all...
    /Mark

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  7. I have all the attacks listed above. However, I did a double f... up; firstly not spotting that A6 was not a European application, and secondly not spotting that the applicant was the same for A1 and A6, i.e., the same invention issue. This is of course rather embarrassing, but shit happens on the last day of the exams with a total lack of sleep. This lead to a 54(3) attack on on claim 1 using A6. It should of course be 54(2) attack. The two major mistakes more or less cancels out. Not sure how they will mark this part...? Luckily, I had the A4 as a back-up attack on claim 1, and the rest of your suggested attacks seem to correspond to mine. There should be some hope, at least.

    ReplyDelete
    Replies
    1. Hmm, seems like exactly the same happened to me. I have attacked all claims using basically the same attacks suggested above, except for those two mistakes. I knew that time would be an issue when I saw the number of claims and the number of documents... so I was in a rush didn't pay sufficient atttention to the prior art issues...

      Delete
  8. I feel that claims attracting more points could be claim 3 and 4. Probably also claim 1, considering the two novelty attacks. What about the priority issue? In general, do you have any idea of the possibile points distribution?

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  9. 2014 Paper C was brutal.

    Far too much information for 5 hours. Careful analysis was needed wrt A6 and there was insufficient time to formulate coherent arguments for the other claims.

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  10. I am also intrested in the possible points distribution. Anyone have any idea - please share it!
    /Mark

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  11. I likewise missed A6 as propper basis for an Art. 54(2) attack for the mentioned reasons and took A5 as CPA with regard to claim 3. As the rest appears to correspond to the proposed solution, there is still hopefully hope. Time is always an issue, but by applying the standard claims attack method, it appeared doable, although in a rush.

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  12. @Mark, there are 2 suggestions for point distribution on the eqe forum 2014 C-paper. Have a look.

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  13. Can someone please explain to me the A3+A6 attack? I did A3+A5+A6 and don't understand how to get rid of A5.

    ReplyDelete
    Replies
    1. Which feature do you require of A5 in order to complete your attack on claim 3B?

      Delete
    2. I understand why you would like to make this a partial problem situation. It works more smoothly in terms of objective technical problems and incentives to combine.
      The problem is that, as a skilled person, you first have to take a foam from A5 and then you have to replace that feature again by the foam of A6. You end up without any feature from A5 in your product.

      I think it would be fair to give full marks for both options.

      Delete
  14. I don't think the point distribution has been fixed yet, so its hard to speculate.

    Missing the A6 attack on Claim 1 will certainly not cost you the paper.

    Claims 3 and 4 will probably be worth more points than claims 2, 5, and 6. Beyond that is anyones guess.

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  15. The fact that the biodegradable material is used in the foamed state. Only A5 teaches the use of the foam to solve the technical problem (i may be wrong although...)To me A6 shows the properties of the foaming we are looking for as a drawback.
    By the way is A3+A6 a partial problem approach?

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    Replies
    1. I don't think you need A5 as well to attack claim 3B.

      A3 uses an elastomeric material. Claim 3 has a bio foam. The effect is that impact on the environment is reduced (A1, [12]). A6 uses bio foam to reduce quantity of plastic. So it solves the problem.

      Delete
    2. I thought that since bio materials also exist in the rigid form (which I understood as "unfoamed"), as mentioned in A1, starting from A3, to reduce the impact on the environment, I would just have replaced the ridig platic of A3 with rigid biodegradable material. That's why I missed the incentive to use it as foamed.

      Delete
  16. also as someone stated on the eqe forum "We also had a strange thing in French: claim 3 of A1 recited "tendre la peau en amont", which seem to mean the opposite of "tension the skin forward of the cutting edge" (english version) and was contradictory with paragraph 2 of A1 (which states that the guard is "en aval" and not "en amont", whereas in english the guard was still stated to be forward of the cutting edge).
    I thought that it was a translation error (or an interpretation error from my side) and disregarded it but I heard some people say that they missed the claim 3 attack because of this."
    All I can say is that it added much trouble for the french exam!

    ReplyDelete
    Replies
    1. You are right, there is a confusion in [0002] of A1 for the French version, "en aval" would have been "en amont" in order to remain consistent with [0006] of A1, and in [0010] it is mentionned "en aval" although claim 3 mentions "en amont". We have "un bon mill├ęsime" this year ! I might almost pronosticate a better year than 2007 :o)

      Delete
  17. The added subject matter was not obvious for me. The information was just that a new claim was added in the examination. The description wasn't modyfied. Ther was no word like in other C-exam that the subject of the new claim 2 didn't exist in the description. In my opinion this exam was terrible, especially the number of annexes and claims as in previous 6-hour-exams. I'm hoping for a fair exam in 2015 ;-)

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  18. It seems many people agree with saying this paper C 2014 was designed for 6 hours and not 5 hours. Hence, if it is considered there are 20 marks per hour (5 hours x 20 = 100 marks), I would say this exam should be marked with 120 marks, otherwise how to take into account the missing hour for the candidates? Does it make sense?

    Another comment : candidates who detected the priority issue will be unfortunately penalized since it seems many of them ran out of time to handle claim 4 and 5 ( two IS, many marks), finally candidates who have been very "fortunate" to not see the priority issue end the exam with more marks than the other candidates, it is really crazy this year !

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  19. Just to confirm the novelty attack on claim 6. A5 is the one disclosing the tool "for women" and so on....right?

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  20. Any of you have the paper C?

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  21. I think the paper doesn't give any information on who the applicant of the priority document of A6 was (only for A6 itself). The applications being "identical" can only refer to the contents (as other formalities as filing date and application number are obviously also different). It also doesn't state that the priority claim is actually valid.

    Hence "Closeshave Co. Ltd." being the applicant of the priority document of A6 is just an assumption and not a fact given by the paper. Such an assumption cannot be the basis for "destroying" the priority claim of A1 as there is no evidence that the priority document of A1 was not the first application by this particular applicant.

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    Replies
    1. The clients letter tells you on page 2, first line, that A6 is from Closeshave Co. Ltd.

      Delete
    2. Priority can only be claimed by the same applicant. Without any indications to the contrary you have to assume that the priority document of A6 was of the same applicant as A6 itself.

      Just like you always have to assume that a PCT application validly enters the EP phase. Don't invent your own additional legal circumstances to argue against your attacks. It's your job to attack the patent, not to defend it.

      Delete
  22. see client's letter page 2, first line

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  23. Ans see examiner's report C 1997 : " in the absence of contrary indications, it is important that the information given in the letter from the client should be accepted. Failure to do so can result in relevant documents being discarded and many marks needlessly lost".

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  24. Can anyone explain why the "razor head" of A2 could be considered a "razor cartridge" as claim 4 required ?

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    Replies
    1. in A1 there is the definition casrtridge also called head

      Delete
    2. I haven't found it, which paragraph ?

      Delete
  25. Can someone please upload the paper ?

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  26. I agree; there is no suggestion to equate head with cartridge. Razor cartridges are solely described as blade units. Combine this informarion with the drawings and one is left with only A4 as a novelty attack on Claim 1 and A3 as CPA for Claim 4.

    ReplyDelete
  27. In fact paragraph 2 of A1 states that "a razor cartridge typically comprises a support to which further elements are attached, e.g. the blades".
    A2 discloses that "Blade holder 21 is incorporated into the support element of a razor head".
    So I think that the razor head of A2 can be considered as a razor cartridge.

    ReplyDelete
    Replies
    1. Comprises being the operative word - paragraph 2 goes on to state the cartridge further comprises a guard and cap. To equate A2 with the cartridge of A1 as described in (0002) and as represented in Figures 1/2 is pushing the boundaries...

      Delete
  28. A1: razor = razor cartridge/blade unit + handle
    A2: blade holder + support element = razor head

    Although A1 and A2 do not use exactly the same words, they clearly disclose the same technical objects. One of the skills tested in the C exam is whether you are able to argue that two differently worded technical objects are actually the same.

    Here you may, e.g., argue that a razor can be obtained by putting the razor head of A2 on a handle and that the razor head is thus to be considered a blade unit or razor cartridge as meant in A1.

    ReplyDelete
    Replies
    1. I agree.
      In fact A6 does also not explicitly disclose a razor cartridge, only "razor blades mounted on a support" ([3]) and "a razor head" ([11] and [12]) but no one contested that the razor head or the support is indeed a razor cartridge...

      Delete
    2. Well one of the skills tested in the C exam is ability to select the closest prior art. Not simply prior art that can be construed as being in the scope of the claim, we aim here at the closest prior art for a claim defining a razor cartridge. So you tell me that in selecting the closest prior art, having A3 clearly disclosing "a razor cartridge with a fenced element" on the table, one would go to select A2 as closest prior art for a razor cartridge because
      "a razor can be obtained by putting the razor head of A2 on a handle and that the razor head is thus to be considered a blade unit or razor cartridge as meant in A1"? It seems to me that your reasoning may be valid for a feature of a claim, not actually the main definition of the product claim, especially when having to select the closest prior art.

      Delete
    3. Both A2 and A3 disclose a cartridge with a blade and a fence. The fact that A2 uses different words does not matter when selecting closest prior art. It's the same thing.

      Both A2 and A3 disclose some fencing, but the fencing in A2 is most similar to the claimed fencing. Look at the figures. It's almost identical. It works in the same way and even the dimensions are correct.

      If you want to argue that A3 is closer, you have to use the fact that it uses a plastic fence. But I don't think that that is more important than the main structure and functioning of the fence itself.

      Delete
    4. A3 discloses unambigouosly a cartridge. That's a fact. In A2, you have to argue that what is disclosed is actually a cartridge. The need of argumentation implies a minor degree of certainty. If we say "it's the same thing" as you said then I agree with the reasoning in the rest of your post.

      Delete
    5. If you choose A3 as c.p.a., then you find in A2 good arguments on the disadvantages of wire-wrapped blades...

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    6. I would add that the inventive step attack based on A3 as the closest prior art could be considered as based on hindsight. If I was one skilled in the art, starting from A3 I would not only have chosen the features of A2 which enable me to obtain the claimed razor cartridge. Therefore I would have used metal as taught by A2 and not plastic.

      Delete
    7. Well then starting from A2 the person skilled in the art would have discarded straight away A3 since clearly relates to a different implementation of fenced element. Filtering out only "plastic" from A3 seems to me a bit far stretched..

      Delete
    8. I don't agree since :
      -technical effect/problem mentioned in A1: "plastics materials have a lower coefficient of friction than that of metals (note the comparison to metals, which seems to be a hint), from which the blade is made, and this provides for optimum fencing, therefore minimal skin damage";
      - A3 states "that plastics have the advantage that they have a lower coefficient of friction than metals, and thus increase the effect of the fencing".
      So starting from A2, the replacement of metal with plastics to solve the technical problem of increasing the effect of fencing seems obvious to me...

      Delete
    9. my attack on claim 4 and 5 was A3+A2 (instead of A2+A3); the only reason I choose this attack was that i did not find the claim object razor cartridge in A2, I still think that the claim object is not disclosed in A2

      Delete
  29. What I meant is that the person skilled in the art, with all the teaching in A2 about the disadvantages of razors like A3, would not look into A3 for a solution. But I see your point, clearly we can say that the test was at least built to allow the combination you proposed, of course taking for granted that A2 discloses a cartridge, a bit difficult to accept for me.

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  30. Did anyone perform a lack on novelty attack for claims 1 and 6 over A3? Is such an attack correct?

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  31. I dit, but I was feeling it was not correct while doing. By the way, to the time pressure, I did not realize that the elastomeric material of A3 was not a resilient foam material. I argued that elastomeric has to be construed as "resilient", but I had to use my personal knowledge (which should be avoided in Paper C). By the way, foam is not actually derivable from A3.
    Due to the fact that I perforemed a lack of novelty attack for claim 1, I started the I.S. attack on claim 3 from it, just saying the reasons for the choice of A3 as CPA.

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  32. Well. I think it is not clear. A1 0006 explains that "resilient foam material with a higher coefficient of friction than conventional rigid polymers....". A3 0007 discloses "The elastometic material has a higher coefficient of friction than that of the rigid material". So it is possible to understand that the elastometic material of A3 actually is a foam. If this is correct it is possible to attack claim 1 with A3 for lack of novelty. If this is incorrect thus when you use A3 as CPA for claim 3 this gives rise to a situation with two differences with respect to the CPA and then partial problems?????????

    ReplyDelete
    Replies
    1. Same properties (high friction) does not automatically mean same feature (foam). Not everything with four legs is a cow.

      For claim 3, the missing feature in A3 is 'a polyurethane resilient foam material' (or worse, 'a biodegradable starch copolymer resilient foam material'). That's a lot of words, but still only one technical feature.

      Delete
  33. Question for Delta Patents: how can A6 be used for a novelty attack on Claim 1 when A1 describes a technical feature of the razor cartridge as being fixedly mounted on a handle or detatchable whereas the razor of A6 is strictly fixedly mounted ?

    ReplyDelete
    Replies
    1. G2/98. Same criteria for priority as for added subject-matter. If you could have added the claim to A6, there is a first application problem.

      Here, I don't see any problem with the handle. It is not part of the claim and clearly not essential for the functioning of the cartridge (maybe for the razor as a whole, but that is not the invention here).

      I have more problems with the skin engaging element of A6 being placed behind the blades and the fact that A6 uses multiple blades. As a proprietor in a real opposition I would certainly use that to defend the priority claim.

      In an exam, I think it is better not to think too much and too deep. You find an earlier application from the same applicant and disclosing the subject-matter of the claim. Conclusion: they expect me to notice the first application problem and draft the novelty attack.

      Note: a similar, even more unclear, situation occurred in 2007. Also there, the first application/novelty attack was expected.

      Delete
  34. I know this is probably not correct, but here is the reason why I thought that the material of A3 was a resilient foam material:

    A1 does not define a foam as such, I have no clue what a plastic foam is, but what I know is this:

    MATERIAL: A1, 0011 it can be made of mixtures of syn/nat rubbers
    STRUCTURE: A1, 006; it has a higher coefficient of friction than rigid material and
    EFFECT: creates tension, (stretch, A1, 0010) thus prevents cutting (A1, 006+ 0010)

    MATERIAL: A3 says that elastometric material can be Rubbon or Ribbon from GRUBBER, which for me is clearly (or naivly) disclosing a rubber material (A3, 0003) natural or synthetic or a mixture
    STRUCTURE: A3 further discloses that it has a higher coefficient of friction- so it is of one of the exemplified materials than the rigid platform material (A3, 007)- so it has the same structure as the one given in A1
    EFFECT: A3 also discloses that it stretches the skin and avoids cuts (A3, 007) same effect

    For me, who has no idea of what a resilient foam material is, because I have never really seen one or worked with one, I thought that something that is of the same material, structure and effect must be the same...

    How should I know, without using knowledge that I do not have, that the material of A3 is not a foam (it has the same structure, material and effect - the foam is not defined in any other way in A1)...

    And because A3s elastomeric material for me was a foam I did a novelty attack on claim 1... (and lost time-it seems)

    A3 also has a fence I used it as CPA for claim 4 and 5 as well... I did not at all understand that the support element of a razor head of A2 was a razor catridge of A1, but I can see that that is a detail that can change a lot of things...

    ReplyDelete
  35. I am happy to note that I have the same attaks as posted by Sander. I agree with most that 8 attacks (+ extensive priority discussion) was quite a lot of work in 5h. I have two issues I would like to address:

    1. In my opinion the added matter attack on claim 2 was not that strong: it is a combination of a preferred characteristic (self-adhesive) and a preferred material (polyurethane), which combination is not disclosed but also not impossible. If both features are considered general preferences of the foam (which may thus be combined), claim 2 may just pass the A123(2) hurdle? So I searched in vain for a further (inventive step) attack.

    2. I thought I found a further novelty attack on claim 1, based on A5, untill I realized the blade of A5 does not have a straigth cutting edge. I could not find any effect (in A1 or any other annex) that a straigth cutting edge per se has any effect (let alone over a circular one). So, the distinguishing feature is non-technical and thus claim 1 is by definition not inventive over A5. The problem with this line of reasoning is that you first have to do CPA discussion, and then A5 is not suitable. The issue is that I did not know how to exactly handle such a situation where the distinguishing feature is non-technical. Do you still need to discuss CPA extensively? Because than claim 1 may just be inventive over A5, when it clearly is not.

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    Replies
    1. You have to be very careful in stating that something is non-techical; the papers will normally make clear that it is non-technical and it is not left up to the candidates (with no technical knowledge on the subject) to assert it. Obviously a blade with a straight cutting edge (and cutting along the edge of the blade in a straight movement) is structurally very different from a blade with many cutting holes (and cutting in small circular movements, see A5 [02]). No novelty attack is possible based on A5 but A5 is also unsuitable to be used as the closest prior art for a straight cutting blade.

      Delete
  36. Please, could someone tell me about "skin-engaging element" in A6. I used A6 for novelty attack of claim 1, but now thinking whether my arguments on skin-engaging element were even near fine. Having doubts - naturally.

    I made the same attacks as the above solution of DP without the other novelty attack for claim 1. Also, I missed the priority issue of claim 1. I hope that my (say "very narrow") arguments are compensated with the difficulty (i.e. length) of the exam.

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  37. Why is A4 not suitable for an inventive step attack for the two claim 3 options ?

    ReplyDelete
    Replies
    1. I think A3 is a better choice as CPA than A4, because A3 shares with the invention that it also achieves better shaving through skin tensioning.

      A4 on the other hand wants to lubricate. Starting from A4, the skilled person would not replace the lubricating element in A4 by a tensioning element as it would negate the whole point of having a lubricating element in the first place.

      Delete
  38. Will partial marks be awarded for incorrect attacks?
    I had
    A4+A5 for claims 3(1)
    A6+A3 for claim 3(2) and
    A3+A5 for claim 6.

    ReplyDelete
    Replies
    1. Typically not a single one. Sorry

      Delete
  39. A6 does not have the feature "elastic". So the novelty attack on claim 1 seems incorrect

    ReplyDelete
    Replies
    1. [0006] "able to retain its shape" and "recover its original shape if deformed"

      Delete
    2. This is the same as resilient, see A4 [05]

      Delete
  40. there is a novelty attack for claim 2 with A6

    ReplyDelete
    Replies
    1. Yes, but you need section [0007] which is not part of the priority document of A6 (see client's letter). Consequently, there is no first application problem for claim 2, the priority claim is valid and A6 cannot be used.

      Delete
    2. Section [0007] can be used because it only gives a general knowledge

      Delete
    3. Sorry, but I don't see how that would work. Section 07 describes a special type of polyurethane foam that is self-adhesive. It does not say that all polyurethane foams are self-adhesive. Self-adhesive polyurethane foam was not disclosed in the priority document of A6.

      Delete
  41. This comment has been removed by the author.

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  42. IMPORTANT

    I´m sure that to complete the 2014 C paper we need more than 5 i.e. is absolutely impossible to do the right answers in 5h.

    I´m considering presenting a complaint (facts and argumentation below) to the examination committee, comparing the papers 2012 (6h); 2013 (5h) and 2014 (5h):

    Facts:
    i) annexes / h:
    2012 – 1.0;
    2013 – 1.0
    2014-1.2

    ii) embodiments / h:
    2012-1.2;
    2013-1.0
    2014-1.4

    iii) description paragraphs / h:
    2012-2.5;
    2013-3.4
    2014-4.4

    iv) total pages / h:
    2012-4.0;
    2013-4.8
    2014-5.8

    Additional arguments:
    a) 2014 has 3 very difficult issues in client letter against 2 in 2013 and 0 in 2012
    b) 2014 has priority vs 2012 and 2013 No claim priority
    c) 2014 has claims with different dates and 2012 and 2013 same dates
    d) 2014 is the ever biggest exam (29 pages), more technical effects, etc

    What do you think? In my opinion if several persons present these facts to the examination committee they will consider it in the correction.

    ReplyDelete
    Replies
    1. Just send an email to the EPO (eqe@epo.org) with your argumentation and you will see

      Delete
  43. Hello Delta-Patents Team,

    i did:

    Claim 1: IS A3 + A5

    Claim 2: Added subject matter

    Claim 3-1: IS A3 + A5

    Claim 3-2: IS A3 + A6

    A 4: IS A2 + A3

    A5: IS A2 + A3

    A6: No time left, i just skechted IS A3 + A5

    Do you think this is enough for a compensable fail ?

    ReplyDelete
    Replies
    1. It think it depends how you wrote the attacks as well, it seems the attack for claim 1 is not an IS, otherwise did you handle the priority issue?

      Delete
    2. For me - during the examination - A6 was only a 54 (2) document for claim 3 (starch).

      The subject matter of claim 1 was not fully deriveable from A6 in my opinion, if i use the description and drawings to interpret the claims.

      So i did not discuss the priority issue.

      Delete
  44. As WW already remarked above, the added subject matter attack on claim 2 is not very strong.

    Upon review, I even wonder if it should be there at all.

    Polyurethane is clearly disclosed as preferred in 0011 and self adhesive in 0015.

    I can come to no other conclusion than that claim 2 is clearly NOT added subject matter, unless I am missing something.

    Can somebody (Delta perhaps) give their considerations for the 123(2) attack on claim 2?

    ReplyDelete
    Replies
    1. Polyurethane [0011] and self adhesive [0015] are disclosed in different embodiments. That is why the Art.123(2) attach is ok.

      Delete
    2. Sorry, don't agree.

      Self-adhesive concerns how the foam element is attached.
      Polyurethane concerns the type of material of the foam element.

      These are not features that are randomly selected from an embodiment, these are explicity disclosed alternatives, that can be combined without problem

      Delete
    3. Polyvinyl acetate is the only example of a self-adhesive foam given in A1

      A6 states in [007] that self-adhesive polyurthane is an art of polyurthane.

      So self-adhesive polyurethane is a sepecial art of polyurethane.

      A1 does not expilctly disclose this special art of polyurethane.



      Delete
  45. Floriani,

    I see you point, a little bit. However....

    Self-adhesive PU is indeed not disclosed. However, what is disclosed is that PU is preferred, and self-adhesive is preferred as well.

    Therefore these features may be combined, especially since a self-adhesive type of PU apparently forms part of the CGK (A6 0007)

    Compare it to: the application specifies 'the car is preferably a diesel car' and later 'the car preferably has an airconditioning'. As long as diesel cars with airconditioning are known, these two features may be combined in a claim.

    ReplyDelete
    Replies
    1. In my view this is a different situation than in the exam. Diesel engine and air conditioning are two independent features (no synergy). If both are preferred separately, one can reason that the skilled person also reads it as that the combination is preferred. The combination will also work in the predicted form (no synergy, no enablement issues),
      That is not the case if we talk about characteristics of generically described materials.
      For the foams, polyurethane is preferred (but also biodegradable ones).
      For the adhesion aspect, it is preferred not to use a separate adhesive but a self-adhesive foam. Only one known type of polyurethane seems to be self-adhesive. This specific polyurethane is not mentioned in A1. Using a self-adhesive polyurethane could be seen as a new selection from the group of polyurethanes. This is added subject-matter.

      Delete
  46. In A1 [0015], self-adhesive is mentioned for foams in general and for one specific example polyvinyl acetate. The general disclosure forms no basis for the specific form of self-adhesive polyurethane. Only if polyvinyl acetate actually is identical to polyurethane can this form the basis.
    A6 [0007] indicates that only one type of polyurethane foam is self-adhesive. There is no indication that polyvinyl acetate is a polyurethane.
    Claim 2 thus seems added subject-matter.

    For novelty/added subject-matter the specific embodiments must be disclosed or indicated (T1206/07: EPO's established jurisprudence; the content of an application as filed cannot be regarded as a repository from which individual characteristics can be combined for the actual creation of a particular combination.

    In your reasoning in an attack on claim 2,, you can state that polyurethane is mentioned as being a preferred resilient foam in [0011] and self-adhesive in [0015] but not for polyurethane; so the combination is not suggested.
    It is also possible to stay closer to the general reasoning that a generic disclosure of polyurethane foam is given, but not of a specific form of a self-adhesive polyurethane (a possible selection-invention). That the desire for self-adhesive foams is disclosed, but that this does not disclose self-adhesive polyurethane.


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    1. OK, compare it to a B exam. Would you argue that an amendment 'self adhesive + PU foam' is disclosed if it were a B exam?

      The essence for me is that there are two different advantages addressed by the two different features.

      0015 states that it is preferred (importantly: in a general sense, so for all foam types) to have self adhesive foams, so the feature is disclosed in combination with ALL suitable foams, so also with the preferred PU foam.

      You may end up with an A83 problem if the skilled person does not know how to obtain a self-adhesive PU, but A6 takes care of that.

      I think T17/86 T284/94 T470/05 support this approach. The addition of a feature is OK if the new combination of features solves a problem which is clearly identified, even without the other features of the embodiment.

      So addition of 'selfadhesive' is OK, it solves the problem of adhesion. Additionally PU solves the problem of cheap and easy to obtain, it may therefore also be added.

      Obviously this being a C exam, any potentially reasonable attach should be made, so it was probably wiser to make it. There is a chance that it carries points, even though I would find this unjustified

      But again, if this was a B exam case, how would you argue?

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    2. It's not two features. It's two, actually three, words and two, or more, properties, but it's only one feature. Self-adhesive PU foam is one element. You can not first add PU foam and make it self-adhesive later. At least, that's not what is disclosed by A1.
      This one feature is not disclosed in A1. Only the genus and a different species are disclosed. For a diesel engine and airconditioning that's completely different.
      The type of exam is not relevant.

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    3. Criteria for added subject-matter are the same in B and C.
      In my view, the disclosure of A1 allows an independent claim on a resilient foam and separate dependent claims on a self-adhesive resilient foam and on a resilient polyurethane foam.
      A claim on the combination should not be allowed.
      I do not see it as independently selectable features. Instead self-adhesive select a single species from the group of polyurethane foams. That species is not mentioned in A1, so not disclosed.

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    4. Joeri, Despite what you write, for me these are two different features.

      I read A1 as disclosing that several species of foam are possible, and that in general these species have self-adhesive as well as non-self-adhesive subspecies.

      To me it is clearly a two-dimensional disclosure.

      You state:'You can not first add PU foam and make it self-adhesive later'

      Correct, but this is not disclosure related to adapting an embodiment.

      It is a disclosure stating which (matrix of) material options exist for choosing the foam element and which consideratons may be applied while making a choice. All the options may be freely combined.

      At least that's how I understand A1. (So similar to the airco/diesel car.)

      But you are likely to be right, considering your job and experience.

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    5. D1 [011] discloses PU-foam as one possible foam, D1 [015] discloses the usage of self-adhesive foams. A skilled person will derive the usage of a self-adhesive foam.

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  47. In my opinion this is a clear case of added matter, simply because the application as filed of A1 discloses resilient foam material polyurethane in 0011 and self-adhesive foam e.g. polyvinyl acetate in 0015 but A1 never discloses the combination of self-adhesive + polyurethane. This combination is novel over A1 and thus is added-matter. A6 discloses that one type of polyurethane foam is also self adhesive but 1. A6 is not the application as filed and 2. The fact that "one type" of PU is self adhesive means that not all PU types are self adhesive and, of course, A1 is not the one disclosing self adhesive PU

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  48. A further Question to the priority issue:

    Is the subject matter of claim 1 fully deriveable from A6 if you use the description and drawings to interpret the claims ?

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    1. Difficult to judge. In my opinion you get close enough to have a reasonable attack in an opposition. You may not win.
      A possible reasoning:
      AU PR 4343 is identical to Annex 6 with the exception that paragraphs [0007], [0008] and [0011] of A6 were not present. Annex 6 will be referred to as evidence of the content of AU PR 4343.

      It is observed that the embodiment of Claim 1 of Annex 1 is disclosed in AU PR 4343.
      A6 [0003] describes a razor with razor blades mounted on a support and a retentive strip. In view of the definition in A1 [0002], this is a razor cartridge with a blade. A6 Fig.1 makes clear that the blade is straight.
      The retentive strip retains a quantity of liquid such that it is also applied to the user’s skin 9A6 [0005]). This strip forms a skin-engaging element in view of the definition in A1 [0003].
      The retentive strip is, after use in shaving, able to retain its shape for further uses, i.e. recover its original shape if deformed (A6 [0006]). The strip is thus resilient, also in view of the definition of resilient in A4 [0005].
      It is also disclosed in A6 [0006] that the strip can be made of a synthetic sponge such as a foamed polymer. A6 thus discloses the use of a foamed material.

      AU PR 4343 is thus the first application for claim 1 of Annex 1. This priority is not claimed. The effective date of claim 1 is thus the filing date of Annex 1, being 07.01.2011 [Art.87(1)].

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    2. The A6 'support' is not qualified within A6 and if one were to address the Diagram the logical interpretation is that the 'support' corresponds to the handle. It appears that due to the formulaic nature of the exam one is trying to shoehorn A1 into A6 to justify the legal point being presented in the exam.

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  49. Thank you very much !

    I am and was confused beacuse of the position and the function of the skin-engageing element of A4 and A6.

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  50. Have to say that this paper was quite a mess of effects =) Especially in A1 =) To find quickly the correct papers A2-A6 having the same effects is a key to the pass.

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  51. Does anyone know how the translation error in the french version of the paper C has been handled by the examination committee? Will there be more marks? or something to compensate?
    Thanks.

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  52. I did:
    claim 1: novelty attack based on A6 and A4, IS attack based on A5 (stright form of the cutter has no effect) and based on A3. Do I loose points if IS attacks are not correct?

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