Monday, 7 March 2016

Closest prior art for Claim 3 in paper C 2016

There has been some discussion around what should be the closest prior art for Claim 3 in paper C of EQE 2016. We received attacks on Claim 3 starting from A3, A5, and A6. In this post we'll review the arguments for selecting the closest prior art in Claim 3.

Claim 3 is a therapeutic device providing a cooling action to the hock or the hoof of a horse.

Of the provided documents  A2 and A4 can be quickly discarded. Annex 2 is not a 54(2) document for Claim 3, and annex 4 only discusses compositions not cooling devices. That leaves A3, A5, and A6 as candidates for closest prior art.

Annex 3
Annex 3 discloses a reusable therapeutic device for treating horses. The type of therapy is for treating strained muscles (A3, [01]), which conforms with the purpose of A1: treating an injured area (A1, [02]). Annex 3 does not disclose a cooling device but is used with a cooling method (A3, [10]).

Structurally the device fits claim 3 quite well, having a closed envelope, rows of pockets, and integrated fastening means. Annex 3 does not disclose a thermally active composition, but the device does contain a non-thermally active composition which could be replaced by one. The device of annex 3 does not conform to hock or hoof.

Annex 5
Annex 5 discloses a therapeutic cooling device for treating horses. This conforms better with the purpose of Claim 3. Structurally, A5 discloses a closed envelope and a thermally active composition, but not the rows of pockets, integrated fastening means, and shaped to conform to hock or hoof. Annex 5 is not reusable.

Annex 6
Annex 6 discloses a gaiter. A gaiter is a device to protect areas of a horse (A6, [04]), not a therapeutic device. Structurally A6 has the closed envelope, the row of pockets, integrated fastening means, and is shaped to conform to hock or hoof. A6 does not have a thermally active composition and is not for cooling. A6 is reusable. Also, A6 does not disclose if the outer and inner pieces are permeable to water.

What does this mean on balance? Structurally A6 is closest, but this device is used for a completely different purpose than the purpose of Claim 3. If you have an injured horse, you could take A3, A5, or Claim 3 but you can't take A6. This means that A6 is unsuitable as closest prior art.

That leaves us with A3 and A5 as potential closest prior art documents. A3 has the advantage that it is structurally much closer and is reusable. A5 has the advantage that it is cooling. Arguments related to the field and purpose of a claim are generally important closest prior art qualifiers. So the fact that A3 does not cool but A5 does, has to be taken as a serious argument in favor of A5 as closest prior art.

On the other hand, although A3 does not cool itself, this does not mean it would be unsuitable. A skilled person would use A3 to treat the same type of injuries as A5 does and moreover, he would combine it with cooling. Because of the cooling A5 has an edge, but on balance it seems that A3 is to be preferred over A5 because of the structural features.

Looking at the attacks that result from starting with A3 or A5 there is a clearer picture. To start from A5 we need four partial problems. Although we might solve them using only two additional documents (Three of the problems may be solved using A6 as D2, taking some liberties with the effect of the rows of pockets), we still have a formidable inventive step attack to perform.

Summing it up, taking into account the strength of the closest prior art arguments as well as the resulting attack, it seems that the preferred closest prior art for Claim 3 is A3.


  1. Thanks for this inuput.
    But do you know how many points are we loosing in case of wrongly selected closest prior art ?
    In old C paper, all the attacks are divided with marks for "use of information" and marks for "argumentation", but I guess if the starting prior art is wrong, then we got ZERO mark in "use of information" and we can expect some marks in the section "argumentation", or inversely ? Did the Exam Committee also give marks for "use of information" for the description of the features in the other documents?


    1. Hi First-Time-Sitter-knowing-that-is-going-to-resit (sorry to hear it btw). In general, wrong closest prior art tends to be severely punished. How many points would be available in this specific case, i.e., for an attack starting from A5, I can't say.
      I'll keep my fingers crossed for you.

    2. Hi Sander,
      I chose A6 as the CPA because paragraph [0002] of A6 relates to "bandage" (i.e. something you put around a wound). So, according to my interpretation, A6 is directed to gaiter for encircling a leg of a horse [0001], that works better than something else, in this case a bandage...
      So for me, A6 concerns, among other, a therapeutic device, and with the fact that it is structurally the closest...I took it as CPA...
      But OK, I try to justify my choices...that apparently are wrong...


  2. Thank your for you explanation!

    I have one doubt regarding the inventive step attack of claim 3. Is it required to attack both alternatives of the claim in independent attacks?. A6 already discloses both the hock and the hoof. So, can them be attacked simultaneously?

    Thank you in advance

    1. Claim 3 is an 'or'-claim. It is typically required that your attack reflects this and explicitly attacks both branches.

      It is however allowed to do this efficiently. There is no need to fully write out two completely separate attacks.

  3. Sander,

    Looking at your one-but-last paragraph, you are using the fact that A3 would lead to an attack more in line with your (probably correct) interpretation of what the exam makers would expect as an answer as reason to chose A3.

    While this may be clever exam strategy (although beyond capabilities of a time-pressured candidate) it has no basis in EPC/Case Law.

    1. Hi Kuifje. I agree that an attack starting from A5 may lead to a valid inventive step attack. But in addition to the requirements of the EPC, the Exam requires you to select from the possible attacks, the strongest one.

  4. I discarded A5 as CPA because I understood it couldn't be reusable, since A4 reads that a composition with Pag cannot be recharged with water (or something like that, I don't have the exam here). I don't know if this is right, but I'm happy that it made me take the good decision...

    I have other worries though. Strange as it is, I tend to refer to an annex with the wrong name, it happened to me a couple of times when practicing (for instance, I'm describing A6 as D2 for claim 4 but I call it A4 from a given moment on, even if clearly referring to the paragraphs and features of A6). I dread having done that in the exam too, fingers crossed... Do you think I'd still get some marks if this is the case but the examiner sees it is an obvious stupid mistake?


    1. A6=D2=A4 ???...pray God !!!