tag:blogger.com,1999:blog-479165730362492593.post1088105947554989908..comments2024-03-27T10:16:07.154+01:00Comments on DeltaPatents EQE Paper C: Ranges and purposive selectionDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger30125tag:blogger.com,1999:blog-479165730362492593.post-83900022547495718452010-11-24T09:08:20.666+01:002010-11-24T09:08:20.666+01:00In principle, a good happen, support the views of ...In principle, a good happen, support the views of the authorgeneric cialishttp://www.agir-galiza.org/noreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-36492156751542448952010-04-26T16:11:55.933+02:002010-04-26T16:11:55.933+02:00Guys - marks are awarded in Paper C for use of inf...Guys - marks are awarded in Paper C for use of information and argumentation<br /><br />For claim 4 plastics - you have various marks for identifying the features from A4 (everything except the sub-range) and arguing why they are disclosed - this is the same for Art. 54 or Art. 56.<br /><br />You will also get points for arguing why the sub-range is either not novel (if it is not novel) or lacks inventive step using PSA (if it is novel over A4)<br /><br />So whichever approach you take you will get 'some' marks for stating the features of Claim 4 that are found in A4 - depending on well well you did it - you obviously will not get any marks for arguing inventive step if it lacks novelty, and are unlikely to get any marks for arguing lack of novelty if it is fact novel.<br /><br />Frankly what the situation boils down to is either:-<br />DeltaPatents are incorrect, or,<br />The C-Examiners do not understand the GL<br /><br />because the GL are absolutely clear on this exact issue - and I find it very hard to believe that the C-Examiners do not set the exam in accordance with the GL.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-15175446768535929532010-04-26T14:19:24.850+02:002010-04-26T14:19:24.850+02:00How likely is it that both attacks (novelty and in...How likely is it that both attacks (novelty and inv. step) will attract marks?<br />My impression of the Exam Committee is that they are quite right/wrong-minded (i.e. full marks or no marks) at least as regards paper C.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-135374626180558752010-04-23T21:13:27.845+02:002010-04-23T21:13:27.845+02:00Hello Delta-Patents,
I had the same solution, i.e...Hello Delta-Patents,<br /><br />I had the same solution, i.e. a novelty attack on claim 4 and an inventive step attack on claim 5. <br /><br />I am quite sure that this is the expected solution. however, the other solution (two inventive step attacks) also appears reasonable (the majority of my friends had the second solution)<br /><br />well... lets wait for the Examiner's reportAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-91902896748882686932010-04-15T11:10:02.430+02:002010-04-15T11:10:02.430+02:00To DeltaPatents,
Well done on coming down on one ...To DeltaPatents,<br /><br />Well done on coming down on one side of the fence at least, takes guts to maintain your position as a Firm (as the original post seemed to be one tutors opinion, not that of the whole Firm.)<br /><br />We shall see what the outcome is, and I for one will be very interested in the contents of the DP C-2010 model solution if the Exam committe disagrees with you.<br /><br />Apart from this issue, keep up the good work, speaking as a trainee the DP training material and courses that I used have been excellent preparation (I used the D Questions booklets and the C paper methodology course and books)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-51919860629464912632010-04-14T19:15:33.183+02:002010-04-14T19:15:33.183+02:00I talked to one examiner and one member of the Boa...I talked to one examiner and one member of the Board of Appeals of the EPO who both shared my opinion that an IS-attack is likely to be required for claim 4 (plastic). The requirement of a "purposive selection" is to avoid that any narrow, far-away removed from the ends, random selection from the broader range is novel. As soon as there is an indication, that the range has not been randomly selected (because the effect is better inside than outside the range), a purposive selection can be assumed. The question whether the effect is surprising/unexpected or not has absolutely nothing to do with a "purposive selection", because this question belongs to inventive step (see GL C IV 11.11 and C IV Appendix 3.2).<br /><br />I would be glad if Deltapatents could provide an example of a purposive selection having the same effect as the broader range.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-51194343474574303822010-04-14T14:55:47.612+02:002010-04-14T14:55:47.612+02:00We already had a relook at the paper when you gave...We already had a relook at the paper when you gave your opinion the first time and didn't find any new facts that made us change our opinion. We are all quite sure that it must be a novelty attack.<br /><br />If the Exam committee thinks otherwise, we will see so in August and will discuss it at the tutors meeting with the exam committee in October. At the moment I don't see any point in repeating our arguments.DeltaPatentshttps://www.blogger.com/profile/07830354704918972593noreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-7974052795516921792010-04-14T14:40:05.151+02:002010-04-14T14:40:05.151+02:00Anyone from DeltaPatents had a chance to relook at...Anyone from DeltaPatents had a chance to relook at the paper and reconsidered their opinion?<br /><br />Or are you still convinced that Claim 4(plastics) requires a novelty attack?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-32882639079550515752010-04-12T20:04:12.571+02:002010-04-12T20:04:12.571+02:00The effect mentioned in A3 perfectly matches the e...The effect mentioned in A3 perfectly matches the effect mentioned in A1 (jigsaw puzzle!). Hence, if they really expected a novelty attack (which I do not believe) based on A4, then the Exam Committee really tried to fool us, because then the effect mentioned in A3 is nothing but a trap. I cannot believe that.<br />According to my experience, if the Exam Committee gives you a hint how things fit, then you can follow the hint.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-8663072834468653222010-04-11T23:13:53.318+02:002010-04-11T23:13:53.318+02:00I would say, if A1 said that in the given range of...I would say, if A1 said that in the given range of 1-3 um, a good spraying effect can be obtained, the situation would be different, because this may also imply that outside this range, a good spraying effect can also be obtained. This would not be a purposive selection.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-38406173877691983212010-04-11T18:53:45.780+02:002010-04-11T18:53:45.780+02:00"My personal opinion (we may find out later w..."My personal opinion (we may find out later what the C committee thinks of this) is that if an applicant gives a new effect for a subrange, he deserves the benefit of the doubt if it seems credible that such an effect exists. If the applicant indicates the same effect to a greater extent, this effect must be surprising." - No, the question whether an effect is surprising or not belongs to the assessment of inventive step, not to novelty.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-66853360416913032402010-04-09T16:50:42.913+02:002010-04-09T16:50:42.913+02:00Agreed with the last poster - any other interpreta...Agreed with the last poster - any other interpretation of [0012] A1 does not make sense.<br /><br />I think everyone is in agreement (finally) that a purposive selection can be a sub range with the same effect as the broad range but attained to a greater extent - and NOT a different technical effect is required (perhaps amend the training material to make this clear Joeri/Jelle?).<br /><br />The question is now does A1 [0012] back this up? I reckon so - [0012] implies that tests were carried out in the 1-3 range and that these were better than outside this range.<br /><br />I am a bit surprised that DeltaPatents still does not see this though<br /><br />Perhaps actually writing the novelty attack may help - when you hit the brick wall of - 'how do you argue that it is not a purposive selection? - other than simply blindly stating so?<br /><br />Arguing that the technical effect is the same does not help as the GL are clear that the technical effect may be the same (but better)<br /><br />Arguing that the proprietor is somehow not correct about the effect being maximised in the narrow 1-3 range is not credible - where is your evidence to the contrary.<br /><br />Then try to write the Art. 56 attack.<br />Much simpler - eh?<br /><br />Take home message is to take what the paper is giving you. It gave strong hints that the range was a novel selection (for plastic alternative over A4) and further gave a pretty straightforward Art. 56 attack for the same missing feature - so why try to be too clever about things?<br /><br />Especially as you are already arguing a lack of novelty (no selection of the sub-range) of the same feature over A6 for the ceramic variant - why would the examiner test the same thing twice?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-54098879923467490542010-04-09T15:38:12.481+02:002010-04-09T15:38:12.481+02:00The more I think about A1 [0012], the clearer I se...The more I think about A1 [0012], the clearer I see that the Examining Committee wishes an inventive step attack for claim 4.<br /><br />The inventor of A1 came - after some experimentation - to the conclusion that exactly in the relatively small interval 1um to 3um the effect is stronger THAN OUTSIDE THIS INTERVAL. This observations implies that the inventor of A1 found this specific intervals by explicitly testing different sizes of the holes. (A1 does not state that this effect surprising, but it does not say that it is non-surprising either.) All we can say is, that the effect is stronger within this interval than outside this interval.<br /><br />The inventor of A4 found out that in the relatively large interval of 0,1 um - 20 um, the effect is better COMPARED TO A NON-POROUS MATERIAL. In other words, the inventor of A4 started from non-porous materials and found out that in the given interval, there is an effect. However, he did not further investigate the effect within the interval.<br /><br />A1 is cleary a further development of A4.<br />A1 is nothing but a very typical case of a purposive selection.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-66821823415062291872010-04-09T11:48:18.318+02:002010-04-09T11:48:18.318+02:00Hi Jelle,
thanks for commenting - it certainly is...Hi Jelle,<br /><br />thanks for commenting - it certainly is an interesting subject. <br /><br />First point - let's disengage real life from the exam<br /><br />For your real life example regarding numerous applications with selected various sub-ranges of a broad range - well Examiners expect data in real life (in my experience) - and the burden is on the applicant to substantiate.<br /><br />Second point - in the C-Paper we are the opponents. Thus the claim is granted and the burden is on us as opponents to revoke the claim. You talk about 'applicants' in your post - well of course then the opposite is true, burden on them to substanitiate their alleged 'maximised' effect, i would expect requiring some proper data <br /><br />- but in the Exam the patent is granted, the opponent needs to make their case stick - and if there is doubt, the benefit goes to the proprietors.<br /><br />So the situation in the C-2010 paper is that we have no data to cast doubt on the proprietor's statement in A1 [0012] about the better effect in the sub-range.<br /><br />This has to be taken as correct and not questioned (I think the Examiners repeatedley tell us to accept the facts of the paper as given - yes?)<br /><br />We have (as the opponent alledging lack of novelty) to then show that the sub-range is not a purposive selection - that there is in fact no novelty - this i think is very difficult to do in the exam - you can say that the sub-range is not purposive, but where is your proof?<br /><br />I real life in rebuttal the proprietor points to A1 [0012] to back up their position... and you point to..what? You have nothing to cast doubt on the credibility of maximised effect of the subrange. <br /><br />And if indeed you can cast doubt on the credibility on this for novelty....why can you not do the same for inventive step? For any of the other claims. The effect is no more or less credibile from A1 for establishing a technical effect for an objective technical problem than it is for establishing the purposive selection for novelty. <br /><br />Yet the alledged, unsubstantiated effects in the A1 are unquestioned for establishing the OTP for Art. 56 in Paper C.<br /><br />I was deeply worried about my exam paper when i first saw the original post's summary, but now i am happier. I am now convinced that the sub-range is novel and the Art 56 attack is the expected answer.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-81804786890976241882010-04-09T10:17:16.036+02:002010-04-09T10:17:16.036+02:00Just some remarks. In general a patent will be gra...Just some remarks. In general a patent will be granted/maintained if on the balance of probablities the criteria of the EPC are met.<br />The burden of proof lies on the EPO (during examination) and on the opponent (during opposition). In certain situations the initial burden of proof is shifted to the applicant/proprietor. <br />Suppose you filed a patent application (and got it granted) for a range of 20-80 with, an until then, unknown effect X. What would your client/company think of the patenting system if it turns out that the main competitor one week after the publication of your application filed ten applications each covering a different 5% subrange and each stating that effect X is attained to a greater extent (no test data given). Clearly, this cannot all be true. Should now one be granted, all or none? Should the competitor be entitled to the benefit of the doubt?<br />Clearly if an applicant/proprietor wants to have the benefit of the doubt it has to be credible.<br />My personal opinion (we may find out later what the C committee thinks of this) is that if an applicant gives a new effect for a subrange, he deserves the benefit of the doubt if it seems credible that such an effect exists. If the applicant indicates the same effect to a greater extent, this effect must be surprising. A mere statement does not seem credible to me and should thus not entitle the applicant to the benefit of the doubt. He must objectively (verifiably) have contributed a new teaching: a new value (or range), which we can easily verify by looking at the numbers, and a new effect (which can be an improved effect). The new effect must be credible and surprising. My opinion is that an opponent in a situation where it is not credible that this is the case (and it is not even clear that the proprietor was aware of the broader prior art teaching which indicated the same effect already) can simply state that the effects are the same (it is not proven that they are different, let alone surprising).<br />Maybe people with practical experience from the chemical field can comment on this.Jelle Hoekstrahttp://www.deltapatents.comnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-68212606152293842252010-04-08T14:35:18.098+02:002010-04-08T14:35:18.098+02:00P.S. about the wording of the exam
I actually do...P.S. about the wording of the exam<br /><br />I actually don't see how it could be made any clearer in A1 [0012] - if they were testing the exact sentence in the GL "the effect could be the same but attained to a greater extent".<br /><br />Because [0012] states the SAME effect but maximised in the NARROW range than when the size is chosen OUTSIDE this range.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-29072449166234146372010-04-08T14:26:19.214+02:002010-04-08T14:26:19.214+02:00Original 'Anonymous' here :)
Joeri - grea...Original 'Anonymous' here :)<br /><br />Joeri - great advice on not being too clever for your own good in the exam - 'KISS' - 'Keep It Simple Stupid' is a good motto.<br /><br />In relation to 'traps'<br />My point was that the Examination committee has access to the training material - commentaries/course books - which are in general excellent. However, when one commentates on the law, different language (simpler language) is usually used in an effort to make things easier to understand for the candidate.<br /><br />Visser 'slightly' does this on page 79 6.2 part 3 where it is stated in relation to the 3 requirements of T279/89 "i.e. the technical effect of the sub-range must be different from the broad range" - however this error is corrected later, "The effect may be the improvement of a known property".<br /><br />As someone who has taken a DeltaPatents C course (which was truly excellent and well recommended) I also have your material - if you look at the A3 sheet on 'Substantive Aspects' for Novelty you also require 'a different techncial effect' for a novel selection. T198/84 actually requires no such thing.<br /><br />In fact this case is very useful to our discussion as it is about a narrow selection on the level of catalyst in a chemical process.<br /><br />The catalyst of the broad and sub range provides the SAME effect (better yield), but the narrow range of catalyst amount gave IMPROVED yield - like the GL says - subrange can be purposive for SAME effect but attained to a greater extent<br /><br />Quote from T298/84 r.7<br />"This is not the case, since the effect of the substantial improvement in yield may be believed to occur only within the selected range, but not over the whole known range ("purposive selection")."<br /><br />Sounds like the sitaution in C-2010 A1 [0012] to me.<br /><br />Anyway I think that these inconsistancies in the commentaries in comparison to the GL (and the actual case law quoted) has given the Exam committee an opportunity to make a difficult part of the exam. <br /><br />Seems to have worked<br /><br />In relation to the GL C-IV 9.8(c)(ii) - I'm glad that you have acknowledged that a purposive selection of a sub range may be based on the SAME technical effect as the broad range but attained to a greater extent.<br /><br />In summary, I believe that claim 4(plastics) was designed to test just this fact. <br /><br />Those whose knowledge of the law of selection inventions was based solely on commentaries/training materials which indicate that a different technical effect was required - fail the test and go for novelty, those whose knowledge of the law encompassed the relevant GL 'should' - do better and find the sub-range novel, and attack via Art. 56.<br /><br />If points are awarded for both attack approaches (i.e. if enough candidates have made the novelty attack) I would hope that the marking scheme favours those who attacked via Art. 56 by giving them more points - because it is 2x the work at least.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-4802239124761788582010-04-08T13:30:51.395+02:002010-04-08T13:30:51.395+02:00I also believe that the Examining Committee intend...I also believe that the Examining Committee intended an inventive step attack due to the comparison with the effect outside the range in A1 [0012]. However, I wonder whether the effects can be compared to each other because they are in a different relation.<br />A1 compares the effect with regard to the pore size within the range in contrast to the pore size outside the range, while A4 compares the effect with regard to a non-porous valve.<br /><br />A1 [0012] "greater distance when the pore size of the gas-permeable porous material is chosen outside this range)<br />and<br />A4 [0004] "greater distance as compared to a device with a non-porous valve"<br /><br />The effect is thus different and the sub-range of A1 novel (narrow ranges and limits restrictions being met)...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-91796515634064873022010-04-08T13:18:14.399+02:002010-04-08T13:18:14.399+02:00From my point of view, it appears that the Examini...From my point of view, it appears that the Examining Committee intended an inventive step attack, but, as Joeri said, the wording they used in the documents is not very clear. I also looked in the caselaw book and did not find any decision that could clarify the situation. Hence, I think that the Examining Committee should accept both solutions.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-9399351244856163872010-04-08T12:19:20.359+02:002010-04-08T12:19:20.359+02:00This certainly is an interesting discussion, but I...This certainly is an interesting discussion, but I think that we used all our arguments. I only see people repeating the main argument of the first anonymous poster. He (or she) thinks that the GL tell us that the same effect to a greater extent always leads to novelty. I think that that's only true under specific circumstances (the GL says 'may') which are not met by the description of A1. My arguments for that opinion are found in an earlier comment. In September we know what the exam committee thinks.<br /><br />But I have something else to think about. The exam committee does not try to play tricks or to 'lay down traps' as one of the anonymous posters suggested. It's not the purpose of the exam committee to hide an attack in such a way that many people will miss it. They just try to test whether you know the Guidelines and how to apply them. They give you a clear question (is the sub-range novel?) and expect you to use the right tests to come to an answer (does the sub-range have a new effect?). Arguments to find the outcome of the test are in the documents (here: compare effects mentioned in A1 and in the prior art). When you follow the standard recipe, you come to the answer they expect.<br /><br />As soon as you think that the exam committee tries to play a trick by deviating from the standard recipe and that you are the clever one who wasn't fooled by the exam committee, you are usually going the wrong way. A simple test that always works is asking yourself: "Would they expect the majority of candidates in this room to do the same as I am planning to do?". If the answer is no, do something else. <br /><br />Being clever will not help you at the exam. You only have to show that you are fit for practice. I know, because I once failed a B-exam for being to clever (to be honest, only because of thinking so myself) and because I easily passed the C paper of 2007 by just sticking to the standard recipe.Joeri Beetzhttps://www.blogger.com/profile/12409253743595819144noreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-50238460430912296562010-04-08T10:39:40.912+02:002010-04-08T10:39:40.912+02:00Quite right Anonymous
The analysis of the origina...Quite right Anonymous<br /><br />The analysis of the original post also misses the critical point about [0012] of A1 - the technical effect may be the same...<br /><br />..but the technical teaching is that the subrange attains the same technical effect ot a greater extent. Thus a purposive selection.<br /><br />The GL confirm this, as an EQE candidate, I am fairly confident that following the GL is a path to success<br /><br />Joeri's post about the 'other' sentence in the GL ("an effect occurring only in the subrange is not enough") is clearly not relevant as the effect is the same - but better.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-90427238766638290982010-04-07T14:44:59.132+02:002010-04-07T14:44:59.132+02:00"The new technical effect occurring within th..."The new technical effect occurring within the selected range may also be the same effect as that attained with the broader known range, but to a greater extent."<br />This sentence from the Guidelines has not been taken into account in the above analysis.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-30028624754409783392010-04-07T13:11:34.097+02:002010-04-07T13:11:34.097+02:00The final paragraph of your original post suggests...The final paragraph of your original post suggests otherwise, and to be honest that is what confused me most.<br /><br />I can see the lack of novelty for claim 4 'plastics' over A4 - i don't agree with it, but i understand the reasoning (depends on interpretation of [0012] of A1).<br /><br />I couldn't see how the sub-range of claim 5 'plastics' was not novel over A4 (based on your original post, final para.) - but i now see that you mean that is in fact a novel selectionAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-34426315841210216182010-04-07T13:03:23.680+02:002010-04-07T13:03:23.680+02:00It's not 4 novelty attacks. You need an invent...It's not 4 novelty attacks. You need an inventive step attack for part of claim 5. There a clear new technical teaching is obtained, which was not taught in A4.Joeri Beetzhttps://www.blogger.com/profile/12409253743595819144noreply@blogger.comtag:blogger.com,1999:blog-479165730362492593.post-13420500140282488252010-04-07T12:47:21.859+02:002010-04-07T12:47:21.859+02:00I agree with Anonymous. I cannot believe that they...I agree with Anonymous. I cannot believe that they expected four novelty attacks<br /><br />"My reading of [0012] of A1 is that the narrow range of 1 to 3 produces a spray expelled over a greater distance THAN WHEN CHOSEN OUTSIDE THIS RANGE - i took this to fulfil GL C-IV 9.8(ii)c because the GL state that "the tech effect of the sub-range may be the same effect as that attained by the broad range but to a greater extent" = exactly my argumentation!Anonymousnoreply@blogger.com