Wednesday, 13 July 2016

Comparing the committee's solution to our solution

It seems that our solution is matching the committee's solution with only the following issue.

The committee expected for claim 1 a novelty attack based on A2 and an Inventive step attack based on A3+ A4. The inventive step attack is continued for dependent claim 3 (I.S. A3+A4+A6).
We showed the same novelty attack on claim 1 and the same inventive step attack but only for dependent claim 3.

In the Examiner's report it was stated for claim 1: "An inventive step argument was also expected based on Annex 3, because in this case it is a good ground of opposition".

A situation like this where the novelty attack cannot be continued for a dependent claim and an inventive step attack is required starting from other prior art is pretty normal in the C exam.

In the move of the committee to having less attacks but more thoroughly argued ones, it had become normal since 2008 not to do the inventive step attack on the independent claim if that claim could reasonably be attacked under novelty. Candidates who already did the inventive step attack on the independent claim were only awarded marks for the attack on the dependent claims.

At this moment it is not really clear if this approach has been broken and if/how many marks candidates lost who only did the inventive step attack on claim 3(1). Hopefully the committe will clarify matters at the tutor meeting.

Here follows a quick analysis I made of the papers since 2008 for similar situations and remarks made by the committee in those years.

  • C 2008
    Cl.1 Nov A5, I.S. A4+A2
    Cl.2(1) I. S.. A4+A2
    “The same number of marks was awarded for raising the inventive step attack regardless whether claims 1 and 2 were attacked independently or together”. 
  • C 2009
    Cl.3 (indep): Nov A5, Nov A6
    Cl.5(3) I.S. A3+A5+ common general knowledge
    “An inventive step attack starting from Annex 3 as closest prior art in combination with Annex 5 was not necessary for claim 3 per se. Corresponding marks were awarded for attacks on claim 5”. 
  • C 2010
    Cl.1 Nov A4, I.S. A5+A2
    Cl.2(1) I.S. A5 + A2
    “It was expected to provide an inventive step attack using Annex 5, as closest prior art, in combination with Annex 2. If the inventive step attack on claim 1 was not provided, marks were awarded if a corresponding attack on claim 2 was made, giving appropriate arguments”. “Claim 2 has two distinguishing features over Annex 5. These can either be dealt with explicitly under claim 2 or a reference to the first difference can be made in respect to claim 1 and the additional feature (latex) being dealt with fully”. 
  • C 2012
    Cl.1 Nov.A3, Nov.A5
    Cl.2(1) I.S. A2 + A6
    Cl.3(1) I.S. A4+A5; I.S. A4 + A6
    No remarks given by the committee 
  • C 2013
    Cl. 1 Nov A5
    Cl.2(1) I.S. A3 + A2
    No remarks given by the committee 
  • C 2014
    Cl.1 Nov.A6, Nov.A4
    Cl.3(1) I.S. A3+A5; I.S. A3 + A6
    “Claim 1 Novelty attacks were expected based on Annexes 4 and 6.
    This year, a novelty attack based on Annex 4 was not straightforward based on the French text, since Annex 4 uses different terminology in relation to the resilient foam … (translation error). In view of this, in the absence of a novelty attack on claim 1, this year, an inventive step attack could be made using Annex 3 combined with Annex 5.” 
  • C 2015
    Cl.1 Nov.A2, Nov.A5, Nov.A6
    Cl.2(1) I.S. A3 + A4
    “Claim 1: An additional argumentation as to lack of inventive step of claim 1 was not expected”