Paper C 2021 - First solution
We're still working on double checking the solution to Paper C 2021, but we didn't want to delay posting a solution any longer.
My first impression was that the first half was a bit more work than the second half. The claims related to some fairly complex mechanical structures, so in the first half you spent quite some time getting a grip on things. The second half had more tricky features though, although perhaps a bit less work.
A funny detail is that some of the dramatis personae of Paper C 2015 returned in this paper. In 2015 Mr. Eilasie Kacez of Sabela Sports Industries asked the attorney Ms Molly Dorsett Pauley to file an opposition against Winterwute Corp. Now in 2021, Eilasie Kaceth (the same person?) switched jobs, but again asks Ms Molly Dorsett Pauley to file an opposition against Winterwute Corp.
We found the following attacks against the claims in the first part
Claim 1:
Not novel against A3
Claim 2:
Not inventive against A3 + A4 + A6
Claim
3: Not novel against A3
For the
claims in the second part
Claim 4:
Not novel against A5
Claim 5:
Not inventive against A4 + A5
Claim 6 +1
: added subject matter, no disclosure for spacers and 35% of RZCH
Claim 6+5 +
range 17-23 has partial priority from P2. Is not inventive against A4+A5
Claim 6+5 +
range 23-35 has the filing date. Is not inventive against A2+A6
Claim 6 is an or-claim, one part of which can be attacked with added subject matter (6+1). The other part seems a first for Paper C, as it can claim partial priority. Given the worry of the client in his letter, I suppose you need to do two attacks on claim 6+5 to counter the possibility that part of claim 6 might remain.
A2 has a tantalizing section with tourists sneaking a peak from a half finished device. I couldn't see how to utilize this though.
Some analysis blocks
Effective dates of the claims (to be handed in)
Information provided by client:
Annex 1 claims priority of the applications NO20150000333 and NO20150000355.
NO20150000333 has the following parts of Annex 1: [1] to [11] of
the description and figures 1 to 3. NO20150000333 has only one claim
and it is identical to claim 1 in Annex 1.
NO20150000355 is identical to the following parts of
Annex 1: paragraphs [1] to [22], claims 1 to 5 and figures
1-5. Annex 1 was granted for European application EP16180339.8, which was
filed containing all parts of NO20150000355 and additionally [23] of Annex
1.
Claim 6 was added during examination.
Claim 6 is of particular concern to us because we want to
commercialize our devices using an elastomer containing not only
17 to 23 % by weight of RZCH but also, and in particular,
containing 23 to 35 % by weight of RZCH.
Claim 1(indep): Basis in NO 333 (already as a claim), entitled to the priority of NO 333.
Claim 2(1),
3(ind), 4 (ind), 5(4): Were
present as claims in NO 355 and not in NO 333. Have a basis in [12]-[22]. This
was first described in NO 355. Entitled to the priority of NO 355.
Claim 6: added during
examination. It requires that the elastomer contains 17-35% RZCH. Covers two
embodiments (‘OR’ in the dependency)
First embodiment: claim
6(1) “elastomer in spacer in between reservoir and anti-buoyancy means”.
Basis for the composition of the elastomer in the spacer is in A1 [11], where
it shows 13-47%. This gives no basis for the claimed narrower range. An objection
is raised under Art.100(c), Art.123(2) EPC. No date is given to this claimed
embodiment.
Second embodiment: claim
6(5) “elastomer in seal in between the segments”.
Basis for the composition of the elastomer in the seal is
A1 [22] >=17%, pref 23% and
A1 [23] alternative range 23-35%
In line with GL H-IV
2.4, this gives a basis for the range from the
lower value 17 to the highest mentioned value 35. Thus no added subject-matter.
Of this composed range,
the complexity lies in that the part 17-23% is disclosed in [22], present in NO
355 And that the part 23-35% in only present at filing of A1. This thus leads
to a nice partial priority (first time ever in paper C).
Thus we have to split
claim 6(5) into two (conceptual) parts:
a) 17-23% entitled to priority of NO 355.
b) 23-35% entitled to
the filing date of A1.
Evidence list (to be handed in)
A3, A5 and A6 are
published before the first priority date and can be used under Art.54(2) EPC
for all claims.
A4 is a European
application published after the first priority but before the second priority.
A4 can thus be used under Art.54(2) EPC for claims entitled to the second
priority or having the filing date, being claims 2, 3, 4, 5, and 6.
A4 has an effective filing
date before the first priority and can be used under Art.54(3) for claim 1.
A2 is an excerpt from
an article published on 06.08.2015 which lies after the second priority date
but before the filing date of A1. The content of the article was discussed a
week earlier, also in the same period. This can be used under Art.54(2) to
attack claims entitled to the filing date, being claim 6(5) 23-35% option.
Fig.1 of A2 was visible
from a tourist barge at a shipyard of the Calypso Foundation in the harbour of Warnemouth
in the last week of May 2015. This lies before the second priority date. The
tourists could see that workers strung wire ropes through duct channels in the
pieces of steel to assemble them into an elongated structure. The tourist were
not bound to secrecy. Available to the public is also the part of Fig.1 which
could be visually observed. The footnote of A2 makes clear that the number of
strands of the wire cannot be observed. This prior use, as evidenced by A2, can
be used to attack claims 2-6.
The footnote of A2 describes common general knowledge known since 1970. This can be used under Art.54(2) for all claims.
Definitions, examples, properties (analysis, part of it to be used in your answer)
- Reservoir A1 [02] is any compartment surrounded by a wall, out of which compartment water can be pumped out and into which water can be let in.
- Electromechanical components necessary for underwater hydroelectric energy storage A1 [02]: an electric motor 14, a pump 15, a turbine 16 and a generator 17.
- Buckling resistance A1 [04] means that at the deployment depth the reservoir does not collapse
irrespective of the amount of water pumped out of the compartment
- Anti-buoyancy means A1 [05] Anti-buoyancy means ensure that the device as a whole does
not rise irrespective of the amount of water pumped out of
the compartment. Known are anchors attached to the
seabed, or ballast whose weight provides a downward force. A1 [09] The anti-buoyancy means of the first embodiment comprise holding
means and a ballast body 27
connected thereto. The weight of the ballast body 27 provides a downward
force. Preferably, the ballast body 27 is made of concrete and rests on the ground 22 of a
body of water
- First reinforcing arrangement A1 [13] may be a framework of reinforcing beams
- Second reinforcing arrangement A1 [15] may be a stiff mesh of steel bars
- Tensioning
tubes A1 [19]: duct
channels or boreholes or other types of cylindrical cavities extending
lengthwise within the walls of the reservoir sections.
- Reservoir sections A1 [21] may be implemented as pipe segments
- Epipelagic depths A2 P.3, i.e. depths down to 200 m below sea
level. Shallow depth A1 [14]
- Mesopelagic depths A2 P.3, i.e. depths between 200 and 1 000 m below sea level. Lower depth A1 [14]
- Devices which store energy underwater: subsea storage tanks for petroleum products, hydroelectric power plants. A2 p.3, l.10
- Gasket is a sealing layer A5 [06]
- Bumper: elastic spacer A5 [11]
Feature-effect
pairs
A1 [05] Anti-buoyancy means ensure that the device as a whole does
not rise irrespective of the amount of water pumped out of
the compartment.
A1 [10] Holding means facilitate deployment and
enable servicing because the reservoir can be brought into and out of the holding
means as needed.
A1 [11] Spacers are made from an elastomer
to reduce the impact if the reservoir is
inadvertently moved against the spacers
A1 [13] First reinforcing arrangement:
the forces arising from the hydrostatic pressure are
at least partly counterbalanced. The beneficial effect is a reduction of the net resulting
mechanical stress on the reservoir's wall; A1 [14] the range of usage is extended to lower depths (for instance depths greater
than 200 m below sea level), where the higher hydrostatic pressure allows more
energy to be stored than at said shallow depth
A1 [15] Second reinforcing arrangement as a stiff mesh of steel bars 34 laid into the
ballast body if the latter is made of concrete - improves stiffness, so the ballast body is able to better
withstand any bending strain it is subjected to; A1 [16] allows safe deployment of the device in locations where the
ground of the body of water is uneven.
A4 [10] reinforces ballast (concrete with stiff mesh
of steel bars) for resting on uneven seabed [11] -> D2 for claim 2
A1 17] Using
more than 7 strands requires a more complicated braiding technique,
which is considerably more expensive.
A1 [19] Internal tensioning system of wire ropes strung through tensioning tubes is inherently
protected from outside damage. A1 [21] The internal
tensioning system of wire ropes guarantees a long service period.
A5 [07] A wire rope rigging as in the tank of figures
1a and 1b is preferred because the wire ropes are shielded against external
damage so that a long service period can be expected -> D2 for claim 5
A1 [21] Reservoir sections
10 may be pre-manufactured at low cost.
A1 [22] Sealing layer
should comprise an elastomer to provide a watertight joint. For
long-term stability against deformation, the elastomer should contain at least
17 % by weight of RZCH. Preferably, the amount of RZCH is 23 % by weight or
less. This means that the 20 elastomer is not very rigid and is well suited to
shallow depths.
A4 [04] A gasket made from an elastomer may be used to ensure a watertight
connection between adjacent pipe segments. For sufficient long-term stability against
deformation, the elastomer should contain at least 10 % by weight of RZCH. The
inventors have found that the content of RZCH has to be 20 % by weight or less.
5 Otherwise the elastomer is very rigid and may not be watertight
A1 [23] 23-35%. Stability at
greater depth
A6 [12] a higher amount of RZCH to be used in the elastomer for the sealing layer, for instance 30 % by weight of RZCH results in improved long-term stability against deformation so that the reservoir can remain in service for longer -> D2 for claim 6(5) 23-35% option
Overview of the technical field in the claims and prior art
Selection of the closest prior art
Prepared by Tanja la Cour Hoekstra
Claim 1
Claimed
embodiment = underwater energy storage device.
Citable
prior art = A3, A5 and A6 under Art. 54(2) and A4 under Art. 54(3).
No novelty
attack possible in light of A4, as it misses the protrusion along the external
surface of the reservoir and holding means releasably engaging with said
protrusion.
A3, A5 and
A6 all disclose an underwater energy storage device and are therefore all
potentially suitable as CPA should none of them be novelty destroying.
A3 is
novelty destroying for claim 1. No need for an additional inventive step
attack.
Claim 2
Claim 2
depends on claim 1, but the field is limited compared to claim 1, as the
underwater energy storage device now needs to be suitable for depths
greater than 200 m below sea level.
Claimed
embodiment = underwater energy storage device suitable for depths
greater than 200 m below sea level.
Citable
prior art = Fig. 1 of A2 and A3-A6 under Art. 54(2).
A2, fig. 1
does not provide a useful disclosure as it would not be possible to derive from
visual inspection that it is an underwater energy storage device as evidenced
by that the correspondent asks if the steel structure recently assembled on the
shipyard would be a high-pressure submarine for investigating deep seas (A2,
page 2, lines 1-2).
A3 relates
to an underwater energy container array (A3, title and [1]). The device
disclosed in A3 is not suitable for depths greater than 200 m but A3 encourages
an adaptation in order to achieve the necessary buckling resistance (A3[11]). So,
A3 can be made suitable.
A4 relates
to a device for epipelagic depths (A4, title) and is unsuitable for mesopelagic
depths (A4[8]). Accordingly, A4 is not suitable for depths greater than 200 m.
Furthermore, the reservoir of A4 cannot be easily detached from the ballast pad
by releasable holding means and requires severe structural modification.
Accordingly, A4 is not suitable as CPA.
A5 is an
underwater storage tank for energy in fossil form and teaches away from having
protrusion along external surface (A5[12]). Accordingly, A5 is not suitable as
CPA.
A6 is a
low-cost one-time deployment reservoir (i.e. different purpose as it does not
need service) and it is structurally very different. Accordingly, A6 is not
suitable as CPA.
A3 must be
CPA!
Claim 3
Claim 3
depends on claim 1, but the field is limited compared to claim 1, as the
underwater energy storage device now comprises the electromechanical components
necessary to render the underwater energy storage device an underwater hydroelectric
energy storage device (A1[2]).
Claimed
embodiment = underwater hydroelectric energy storage device.
Citable
prior art = Fig. 1 of A2 and A3-A6 under Art. 54(2).
A2, fig. 1
does not provide a useful disclosure for the same reasons as mentioned under
claim 2.
A5 is not a
hydroelectric energy storage device and is therefore not suitable as CPA.
A3, A4 and
A6 all disclose an underwater hydroelectric energy storage device and might therefore
all be suitable as CPA, should none of them be novelty destroying.
The
expected attack seems to be a novelty attack in light of A3, although A3 does
not fully disclose a plurality of devices as defined in claim 1, as such
devices each have a ballast body. Thus, a plurality of devices according to
claim 1 would also provide a plurality of ballast bodies. However, the
embodiment of A3 where several reservoirs are connected to a common pump,
motor, turbine and generator, only has one ballast body (A3[6]). We nevertheless
believe this is the intended attack.
Claim 4
Claimed
embodiment = underwater energy storage device formed of sections.
Citable
prior art = Fig. 1 of A2 and A3-A6 under Art. 54(2).
A2, fig. 1
does not provide a useful disclosure for the same reasons as mentioned under
claim 2.
A3 does not
have a device formed of sections is therefore not suitable as CPA.
A4-A6 all
disclose an underwater energy storage device formed of sections and might therefore
all be suitable as CPA, should none of them be novelty destroying.
A5 is
novelty destroying for claim 4. This attack has caused quite some discussion
among both candidates and tutors, since A5[10] states that “the tank’s walls
are not built to resist forces arising from hydrostatic pressure”, which was
seen by many as an indication that the device of A5 does not have a structure
providing buckling resistance. However, in the next sentence, A5 states that
“the tank will not collapse, irrespective of the amount of water pushed away by
the fluid”, which fits the definition of buckling resistance given in A1[4]. In
this interpretation, the structure providing buckling resistance is seen as the
pipe letting seawater in and the impermeable membrane separating the
compartment in the tank (A,[8] and [9]).
Claim 5
Claim 5
depends on claim 4, but the field is limited compared to claim 4, as the
underwater energy storage device now comprises the electromechanical components
necessary to render the underwater energy storage device an underwater hydroelectric
energy storage device (A1[2]).
Claimed
embodiment = underwater hydroelectric energy storage device formed of
sections.
Citable
prior art = Fig. 1 of A2 and A3-A6 under Art. 54(2).
A2, fig. 1
does not provide a useful disclosure for the same reasons as mentioned under
claim 2.
A3 does not
have a device formed of sections is therefore not suitable as CPA.
A5 is not a
hydroelectric energy storage device and is therefore not suitable as CPA.
A4 and A6 both
disclose an underwater hydroelectric energy storage device and might therefore both
be suitable as CPA. Both A4 and A6 seem to have all features except the
tensioning tubes through which wire ropes comprising 7 or less strands of
twisted metallic wires are strung. A4 is closer as it already has lengthwise
cavities in the concrete wall (A4[3]), where lengthwise cavities are examples
of tensioning tubes (A1[19]). A6 on the other hand teaches away from having any cavities in the
concrete (A6[3]).
Accordingly,
A4 is the closest prior art.
Claim 6,
17-23 wt%
Claim 6 is
dependent on claim 5 and claimed embodiment is the same as for claim 5.
For this
part of claim 6, the same prior art is citable as for claim 5 and A4 continues
to be CPA for the same reasons as for claim 5.
Claim 6,
23-35 wt%
Claim 6 is
dependent on claim 5 and claimed embodiment is the same as for claim 5.
For this
part of claim 6, A2 is citable in addition to the prior art citable against
claim 5. We probably have to use that for something! And indeed, if comparing
A4 and A2, A2 is closer than A4 as it has all features of claim 6 except the
amount of the filler RZCH in the elastomer of the sealing layer.
Accordingly,
we have a classical C-exam swap of CPA from the parent claim to the dependent
claim as CPA for this claim is A2.
A copy of the paper (claims for part 1 and part 2, pre-printable parts for part 1 and part 2) is now available via the link in the blog post.
ReplyDeleteReminder:
ReplyDeletePlease do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 05-03-2021 16:56"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.
You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.
Thank you Lonneke and Jelle for your comments.
ReplyDeleteI completely agree with you as well.
As you pointed out, this year's paper was excessively long (+50%, +18%, and +30% compared to 2017, 2018, and 2019, respectively) and technically challenging. This alone would have made the paper more difficult had it been paper-based as intended in 2020.
But the splitting into two parts with isolated claim sets - without any adaptation - increased the difficulty beyond any reasonable extent and to a degree which is unsupported by the purpose of paper C.
In the earlier papers, all (!) annexes were relevant (but may have included some irrelevant information) and all the claims were known. So if you wanted to attack a claim and read the “wrong” annex for that claim, you were able to make up for the lost time later when you attacked the other claim that the annex was intended for. There was no penalty for reading a “wrong” annex because if you were able to extract its relevant content, you could apply it later and receive marks for that. This tested the candidate’s ability to draft a notice of opposition in line with Rule 25(1) IREE.
But not this year. Not only was there more information to process (+18-50% compared to the last years), but two out of five annexes (40 % of the annexes!) were irrelevant for the first claim set. This shifted the ratio of relevant to irrelevant information to an unreasonable degree. Unlike in the paper-based exam, you really could read a completely irrelevant annex in the first part and were heavily penalized for that – even if you would have been able to apply this annex correctly to the yet unknown claim of part 2. Furthermore, the paper’s design made it impossible to discard irrelevant information/annexes quickly (see for example "the spacers may be of elastomer" and later "the seal may be of elastomer" mentioned by Lonneke and Jelle). Therefore, reading a given annex 20 minutes earlier or later could make all the difference – regardless of the candidate’s ability to draft proper attacks based on this annex! - because the attacks associated with the annex were confined to the first or second part. This is further exacerbated by the fact that only one out of the five annexes seems to be of key relevance for claims 1-3, providing two novelty attacks and being the CPA for inventive step. Part 1 was more about finding/being lucky to find the “right” annex A3 early enough than testing a candidate’s ability to attack, based on _all_ the information given, the claims of the patent in suit.
I don’t see how this year’s Paper C is in line with the Committees announcement that “Paper C will have the same syllabus and character as before.”
Furthermore, I don’t see how the structure of this year’s Paper C is appropriate to test a candidate’s ability to draft a notice of opposition in line with Rule 25(1) IREE.
Thank you Lonneke and Jelle for your comments.
ReplyDeleteI completely agree with you as well.
As you pointed out, this year's paper was excessively long (+50%, +18%, and +30% compared to 2017, 2018, and 2019, respectively) and technically challenging. This alone would have made the paper more difficult had it been paper-based as intended in 2020.
But the splitting into two parts with isolated claim sets - without any adaptation - increased the difficulty beyond any reasonable extent and to a degree which is unsupported by the purpose of paper C.
In the earlier papers, all (!) annexes were relevant (but may have included some irrelevant information) and all the claims were known. So if you wanted to attack a claim and read the “wrong” annex for that claim, you were able to make up for the lost time later when you attacked the other claim that the annex was intended for. There was no penalty for reading a “wrong” annex because if you were able to extract its relevant content, you could apply it later and receive marks for that. This tested the candidate’s ability to draft a notice of opposition in line with Rule 25(1) IREE.
But not this year. Not only was there more information to process (+18-50% compared to the last years), but two out of five annexes (40 % of the annexes!) were irrelevant for the first claim set. This shifted the ratio of relevant to irrelevant information to an unreasonable degree. Unlike in the paper-based exam, you really could read a completely irrelevant annex in the first part and were heavily penalized for that – even if you would have been able to apply this annex correctly to the yet unknown claim of part 2. Furthermore, the paper’s design made it impossible to discard irrelevant information/annexes quickly (see for example "the spacers may be of elastomer" and later "the seal may be of elastomer" mentioned by Lonneke and Jelle). Therefore, reading a given annex 20 minutes earlier or later could make all the difference – regardless of the candidate’s ability to draft proper attacks based on this annex! - because the attacks associated with the annex were confined to the first or second part. This is further exacerbated by the fact that only one out of the five annexes seems to be of key relevance for claims 1-3, providing two novelty attacks and being the CPA for inventive step. Part 1 was more about finding/being lucky to find the “right” annex A3 early enough than testing a candidate’s ability to attack, based on _all_ the information given, the claims of the patent in suit.
I don’t see how this year’s Paper C is in line with the Committees announcement that “Paper C will have the same syllabus and character as before.”
Furthermore, I don’t see how the structure of this year’s Paper C is appropriate to test a candidate’s ability to draft a notice of opposition in line with Rule 25(1) IREE.
That's correct. I could not agree more.
ReplyDeleteOne question is why EPO has done that ?
Why such an exam ?
why putting candidates in such strong conditions which far different from what candidates of previous years (2017, 2018 and 2019 ) had experienced.
Very strange !
Why would you want to cancel the exam? What would be the purpose? It would not give out free passes. The next exam will be next year, what would be the effect of cancellation, apart from taking away a well earned PASS grade from candidates who did manage to score 45+ points this year?
ReplyDeleteThere is no limit as to how many times you can take the exam. Cancellation has the same effect as a FAIL grade, you would have to retake the exam in 2022.
There is a lot of case law which, with some exceptions, allow you to compose a range from disclosed ranges and disclosed points. Effectively, the claimed range is an OR of two ranges.
ReplyDeleteThe problem with equating water to fluid is that you are not only using technical knowledge, but also expanding the definition of what is a reservoire. For me A5 is still not novelty destroying.
ReplyDeleteHi Jonh E. Walker,
ReplyDeleteYou are right that A4+A5 is a valid IS attack on claim 6(5). After the attack, the claim cannot stay as written. But the obvious amendment would be to limit the range. Then the A4+A5 attack does not work anymore. The client makes clear in his letter that that would not be a good outcome for him/her. That prompted me to do an auxiliary attack on the claim 6(5)
When doing the first half, I tried to use A2 based on the tourists. I concluded that the material just isn't there. But it is not unusual that one of the document does not reveal it's use until the last claim. for example, paper c 2019 hardly used A3 until the claim 6.
ReplyDeleteI'd say that A1[22] discloses two ranges: at least 17 and 17-23. The skilled person would not go against the teaching of [22] and try below 17. He’d add the 23 or less, if he wants shallow depths.
ReplyDeleteA1[23] gives an alternative, but then using a different range is an alternative by definition, one can't have two ranges at the same time. So, at least, A1 [22]+[23] give basis for the range '17-22 or 22-35' , and then 17-35 seems to be the corresponding generic-or claim of G1/15
Many thanks Jelle.
ReplyDeleteI often deal with the case law on ranges in my daily work, too. In my opinion it is quite clear that the case law concerns only disclosed values of preferred narrower ranges.
The case law is already unclear for creating a new range which excludes the preferred narrow range (T 1170/02 vs T 612/09).
There is no case law that allows/mentions the combination of alternative ranges, ie alternative embodiments. Alternative ranges should thus fall under the case law of „Combination of features pertaining to separate embodiments; application as filed is not a "reservoir“ (CaseLaw II.E.1.6.1), making the amendment unallowable under A.123(2) EPC.
First of all, I am glad we could sit the exams. Second, the exams were not tuned for online examination.
ReplyDelete- The papers were much too long for this new format. It seems that the paper versions were split without considering how it would work out. That is, for example, for paper C the claims and description was cut in two. But, you still have to read the prior art in total for the attack. Not only for the first part, but also for the second part. thus, you are reading the prior art at least twice. Typically, you make notes for all claims when reading the prior art. Thus, reading it once will give you an impression which prior art is relevant. Now you loose valuable time, as you have to read the documents twice. Very inefficient.
In addition, with prior art on paper, in the extra tab, and the window on the side I was switching constantly between the three. Herewith, I lost a lot of time (likely 10% lost).
Too bad that the committee did not optimize the paper for an online exam.
To Anon 7 march 10:39,
ReplyDeleteThe problem is that you did not only apply technical knowledge, you broadened the definition of reservoire to fluid instead of water .I think that this is not allowed. I rest my case, based on the definition given in A1, A5 is not novelty destroying.
If you equate water to fluid, as you did, you are basically broadening the definition of reservoir given in A1 to all fluids, which is not allowed.
ReplyDeleteCl 4 is novel in view of A5
Claim 3 is not limited to unshared anti-buoyancy means, so I was happy to go with the novelty attack. An inventive step attack might be A3+A4, but you are not given a lot of material for it.
ReplyDeleteClaiming two embodiments within a single claim is fine in this instance as they are alternatives within the claim. The car analogy is faulty as the car travels at variable speeds within the range (necessitating one embodiment that can do it all), while the elastomer content within the gasket remains constant over time (allowing for different embodiments satisfying different parts of the range).
ReplyDeleteThere is no Art 123(2) EPC issue. It is the limitation of an open ended range with the highest endpoint of a closed range:
[22] at least 17wt%
[23] 23 to 35wt%
Relevant case law:
"In T 1990/10 the board had to decide whether the application as filed provided a basis for the temperature range "below 35°C" in claim 1. The application as filed disclosed various temperatures, both specific temperature values ("30°C") and temperature ranges, such as open-ended ranges ("below 37°C") and closed ranges with defined upper and lower-end values ("30°C to 35°C"). The board considered that the term "below" was explicitly disclosed only for defining the broadest mentioned temperature range, namely "below 37°C". The board held that "below 35°C" was also not implicitly derivable from the broadest open-ended range "below 37°C" in combination with the upper-end value of the closed range "30°C to 35°C". Applying the criteria of T 2/81, the combination of the lower-end and the upper-end values of the closed range with the broadest temperature range would result in the temperature ranges "30°C to below 37°C" and "35°C to below 37°C", not however, in the open-ended temperature range "below 35°C"."
Yes! good to know someone thought along the same lines as me! I had the same argument for an additional inventive step attack against claim 4.
ReplyDeleteSame here Kate!
ReplyDeleteThanks Lonneke and Jelle for your analysis which already covers all mayor issues.
ReplyDeleteUnfortunately, I have to admit that I was fooled (or fooling myself) by the clients letter stating (in my words) "Do as much as you can for this notice of opposition and complete it once all data is available".
Of course I had read that no information can be added to C-I once C-II had started, but the letter of the client prevailed...
So, I happily completed the novelty and inventive step attacks of C-I after the lunchbreak.
I can only hope to get some information how many marks I lost in C-II to have a basic idea if it would have been sufficient to pass, had these answers been in the right part.
Well, at least a learning for next year's exam.
Even if you came to the conclusion that claim 6(5) was added subject matter, the attack is at best a weak attack. Yet the client specifically urged you to take care of both branches of claim 6. I don't think it would be unreasonable to expect that you than do the additional inventive step attack.
ReplyDeleteA cancelation is a red card to the EPO.
ReplyDeleteThey believe they are allowed everything.
An exam should not be a lottery.
The retake could come soonner with nothing to pay for candidates.
Fails are counted and imply to pay more and more in the retake.
regards,
@Sander/Joeri: I have done the same as A2. I drafted an inventive step attack for claim 4 (in addition to the lack of novelty per your solution) as above and then used this for inventive step attack against claim 5 too. What are your thoughts on this? I know you mentioned that you couldn't see how A2 could be used but given the above details in A2's comment which align with my reasoning, it would be helpful to know your thoughts too! Thanks again for posting your solutions/thoughts.
ReplyDeleteI still do not agree with the novelty attack against claim 4. I think it should be an inventive step attack using A2 (public) + CGK or + A5. All the past C papers (at least the ones I did, please correct me if I am wrong) required the use of all the annexes. DP's solutions does not make use of A2 (public disclosure) at all. Anyway, thank you DP for working hard to provide us with your answers
ReplyDeleteI still think A4 could be CPA for C2 as it discloses that it can be used for depth of 200m. So technically, it can be used for C2. I do hope some marks are associated with it anyway. A4+A6 seems to work.
ReplyDeleteOn another note, this paper was very very difficult and it was so tricky dealing with flicking of pages between claims and prior art, application as filed and off course, the horrendous claim formatting.
This was the issue - it was so time constraint that I barely had time to check my answers. Formatting of claims took almost half of the exam time. That cannot be right.
DeleteMy opinion is that this paper was too difficult to deal with in the new format. The formatting as mentioned above was horrendous and I think alot of candidates would have easily made mistakes simply because it was such a nightmare to deal with terrible formatted claims in the software.
ReplyDeleteAs for the paper - I agree with Deltapatents that the timing was not right in this paper. It is certainly not in line with previous papers (apart from cow 2018). In fact, this paper was on par with the cow 2018 in that it is soo confusing and not really doable within the conditions candidates faced with this year.
Plus the fact that the number of pages to read was 39 pages much higher than in C2018! tis is inadmissible!
DeleteIts clear that this paper C was absolutely difficult and at times confusing. I appreciate that DP had time to properly analyse but it is so difficult to do this in the exams this year. Things need to change. I agree with so many others that the papers this year (certainly the difficult and time given) were NOT in line with previous papers at all.
ReplyDeleteExpecting plenty of appeals this year especially for papers A, B and C.
Hi, how and when can one appeal? Does one need to wait for the results to come out or one can already submit complaints about the lengthy, complex, unclear and ambiguous content of the paper now? thx.
DeleteYou need a decision + adverse affection, as usual. Legal basis is Art 24(1) REE.
DeleteI also expect a lot of appeals this year, especially in C and B.
I would submit the complaint via the post-EQE survey by the EPO.
DeleteDoes anyone know if someone has ever succeeded to get a pass after Appeal? I heard something that they won't go through and read the answer sheet again but only check if they sum up the points correctly...is this true? thx.
DeleteThe figure in A4 does show a protrusion so A4 is Art 54(3)
ReplyDeleteNo, I’m afraid that the case law you cite is not pertinent here. T1990/10 concerns the transfer of the Term „below”. For amending ranges based on disclosed values T2/81 is the relevant decision. Please see the first paragraph here: https://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_ii_e_1_5_1.htm
ReplyDeleteThe figure of A4 actually shows a protrusion (it has the same figure lBel as the client present drawings) so A4 is Art 54(3) for C1.
ReplyDeleteI also did Art54(3) attack on C1 based on figure of A4.
DeleteI think A3 art 54(2) and A4 Art54(3) would be ok as 54(3) is a weak attack on C1.
Yep. I also did C1 Art54(3) using A4 and then
DeleteUse A4+A6 for C2
The main problem with A2 for any claim other than claim 6 is that what is publicly disclosed to the tourists hardly shows any clear features. It is not even clear if it is an energy storage device. The journalist thinks it is a submarine. Also the anti-buckling and the type of wire rope are not directly and unambiguously derivable without reading the article (which was published to late).
ReplyDeleteIn any paper C, it is very unlikely that a prior use is used for inventive step. It is difficult to argue that a skilled person would modify something that was only visible for a short while and from a distance. Or that he would solve a problem by using a feature that was shown in public only once. Very often, the prior use can be used for an additional novelty attack and some written reportof the prior use (like the article this year) can be used for inventive step against a claim with a later date.
Matt: I even mixed an Art.54(3) Attack against C1 based on A4..
ReplyDeleteYou never know when you do too many attacks and waste time.
Maybe the committee could say at the beginning how many attacks are expected.
They only say a shoot gun approach is not good.
Regarding A5, the 'will not collapse irrespective of amount of water pushed away' - is that not just talking about displacement of water, where 'pushed' is a horrible way of saying displaced. I read this as just saying that it will not collapse when underwater as it is always full of fluid. But it seems clear that the A5 reservoir would collapse if the fluid was pumped out, and that seems to be the exact test for 'buckling resistance' given in A5. So my reading is that A5 is not buckling resistant
ReplyDeleteThank you Jelle and SHH,
ReplyDeleteSHH, that is also what I thought about this issue. Since both ranges for the seal are explicitly noticed as alternatives, I concluded that a combination would extend beyond the subject-matter as originally filed.
Additionally, I remember that it was noticed in the prior art that epipelagic and mesopelagic regimes allow or require different elastomer compositions (Annex 4 [04]) for gaskets.
So, a combination of both ranges according to Annex 1 would not be directly and unambiguously derivable from the application as filed.
I am wondering whether GL H-IV 2.4 is applicable at all, since there is no disclosure of a general (broad range) for the seal in Annex 1. The only disclosure are the ranges of [22] and [23]. Or would the disclosure of the spacer-elastomer of [11] be also applicable to the seal-elastomer of claim 6(5) in accordance with Art. 123(2)?
Thank you
Ironically, since you are able to print nearly everything out, and could copy the claims down onto paper, C is the least screen-intensive paper of all. It is only the writing of your answers that requires reading the screen, and that is probably only around 1/2 of the exam duration.
ReplyDeleteI do not think it is possible to quickly disregard documents - there is always the possibility that a definition is buried somewhere, or that the second document for PSA is in a relatively distant field but happens to mention the exact technical problem you are looking for.
This means that you are having to complete all the reading of all documents within the first part - the only way to avoid this would be unless there were clear A123(2) or novelty attacks on all claims - but even then, the exam should not depend on you reading documents in any particular order.
It's hard to say if the total amount of information was excessive, that would need to be tried by someone sitting it in one go and compared to an earlier paper - that seems rather a waste of time to me - but I will say that when I saw that the full PDF was 40 pages long, I was amazed!
I felt that C1 was much tougher than C2, but only because by the time I got to C2 I had read all the documents at least once, and the big picture was emerging. I think if you tried to do C2 before C1 you would find that C2 was tough to complete in 3 hours from a 'standing start'.
Thank you for your feedback Sander.
ReplyDeleteI would disagree, it is not a weak attack because it gets rid of 6(5) in the opposed patent. This A. 123(2) attack sets in motion the revocation of the entire range 17-35% -- fully in line with the client's request.
We don't have any information concerning hypothetical amendments of claim 6 in reaction to our notice of opposition, and I don't think that attacking hypothetical amendments should be expected.
Also, should the proprietor restrict claim 6(5) to a narrower range (17-23 or 23-35) during the proceedings, we could always submit further attacks to get rid of the narrower ranges. Apart from that, it is equally likely that the proprietor realizes that 6(5) cannot be saved by limiting the ranges and simply gives up on 6(5) to save efforts and cost.
Therefore, I think that anticipating future developments of claim 6(5) must lie outside of the focus of Paper C.
As stated above, the added subject-matter attack will lead to the revocation of 6(5) in accordance with the client's request. That is what the client wants. While not necessary at present, we can always submit further attacks in reaction to hypothetical amendments of 6(5) -- these are not precluded by our A. 123(2) attack.
If you don't believe Jelle and Sander, you may not believe me either. But I can give it a try.
ReplyDeleteThere is clear support in [22] for a claim 6(5) with 17-23. There is clear support for a claim 7(5) with 23-35 in [23]. A claim 8 that reads "according to claim 6 or 7" is supported too. A claim on "wherein ... is 17-35" covers exactly the same subject matter. It covers no additional embodiment and it does not cover anything that is more specific than what was already disclosed. So that claim is ok too.
The fact that the ranges are presented as alternatives and this is not a broadening of a preferred range only makes the amendment better supported. If the original disclosure expresses a preference for a specific sub-range, there could be reasons for the skilled person not to seriously consider points outside that range (although in, e.g., T2/81 and T 1170/02 even that was allowed*). Here there is no such preference and absolutely no reason why the skilled person would not consider any of the now claimed embodiments.
*https://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_ii_e_1_5_1.htm
Regarding the attack on claim 6 using A2, how can you tell only from Fig.1 of A2 (without no explanations at all) that it's an underwater energy storage device? Who would imagine that it is an underwater energy storage device instead of a ship or something if you see it in a shipyard?
ReplyDeleteRe: Claim 6 attack based on A2, how can you tell only from Fig.1 of A2 that it's an underwater energy storage device? Is there a case law or something that if you understand what you saw in Fig.1 later (e.g. with the help of A2 publication in Aug.), then it is considered as public when you saw it (in May) instead of when you understand what you saw (in Aug.)?
ReplyDeleteSorry, I posted two almost the same messages (I thought that first one failed somehow).
DeleteI am really curious how much time experienced Delta patent's patent attorneys had taken to solve C paper 2021 and provide the above solution ? that would be great to know.
ReplyDeleteThank you in advance DP!
The A2 Magazine (= the entire A2) disclosure is 54(2) for claim 6 based on par [023] because [023] was filed in 2016 and the A2 magazine (or interview) was public sometimes in 2015. You will only get 90 Marks if you didn't spot that :)
ReplyDeleteOh! I realized my mistake. You are right. Thanks a lot!!
DeleteQuestion: Do you consider this a solution for claim 5, which could potentially collect some marks?
ReplyDeleteNon-inventive over D5+D3. D5 is closest prior art because it only misses the turbine and the generator (the pump is implicitly disclosed in A5 by "pumping in/out of oil). A2 proofs that an oil tank is also an energy storage device and that storage of oil and storage of electric power via water are related fields. Therefore the POSITA will consider a combination of A5 with A3. A3 suggests the release of stored energy via the generator and turbine, which is an straight forward modification of the tank from A5 for the POSITA given the technical task to find an effective electrical energy storage starting from A5 (J. Costeaud of A2, a POSITA, did exactly that). If in addition, a ballast body or a reinforcing structure is necessary to make it work with the tank of A5, this is also provided by A3.
See below my answer to Atom.
DeleteDoes anybody know if alternative attacks provided can also attract marks or would it be zero/heavily penalised.
ReplyDeleteFor me, it seems that C2 - you can start from A4 with A6. For C6 - you combine A5 with A6
A4 seemed to be to be a more appropriate document for C2 as CPA
ReplyDeleteThis comment has been removed by the author.
ReplyDeleteTo me A4 with A6 is the best combo for C2.
ReplyDeleteA4 is the CPA.
To me A3 mentions that tank cannot be used for deep waters so why can it be that A3 is CPA.
A4 + A6 seems like a really good combination for C2.
Yes, I have the same as yours. A few others on here seems to have also taken this approach. Hopefully some marks towards it.
DeleteI also had art 54(3) in C1 using A4 and then used A4+A6 on C2.
DeleteEven if not quite the model solution, one would hope the committee would consider this alternative as it works for C2.
A1 defines buckling resistance as "at the deployment depth the reservoir does not collapse irrespective of the amount of water pumped out of the compartment" wherein it uses the wording "pumped out of the compartment", meaning the compartment will be empty once the water is pumped out, therefore, there is "mechanical stress caused by hydrostatic pressure" (A1[04]).
ReplyDeleteHowever, A5 discloses that "the amount of water pushed away by the fluid", wherein the water is replaced by the fluid (e.g. petroleum product), which means the compartment is always full of water and/or fluid, thereby there is no mechanical stress caused by hydrostatic pressure (A5[10]). A5 also mentioned that “tank's walls are not built to resist forces arising from hydrostatic pressure”.
Although A5 further discloses impermeable membrane and pipes which make the device can be used at epipelagic and mesopelagic depths and the tank will not collapse. But, it is because the inside pressure is always identical to the outside pressure, as the tank always contains water and/or fluid, and thus there is no "mechanical stress caused by hydrostatic pressure". In this case, impermeable membrane and pipes and plus the condition of full of water/fluid in the tank only make the device can be used under sea, but they themselves are not structure providing buckling resistance. For example, both sucrose and Aspartame tastes sweet, but they are totally different substances. In the present case, A1 requires a structure per se providing buckling resistance, i.e. resisting the mechanical stress caused by hydrostatic pressure, whereas A5, during the use, requires the tank full of water/fluid to make inside pressure is always identical to the outside pressure (Even without the impermeable membrane, A5 may also achieve such effect. In fact, according to such a teaching, A1 can also be used in such a way without the specific “structure providing buckling resistance”, but the buckling resistance function is also reduced), and thus avoiding the mechanical stress caused by hydrostatic pressure.
Therefore, there is no structure providing buckling resistance in A5.
The truth is the Committee tried to define two kinds of "buckling resistance" in order to make the paper a bit tricky.
DeleteI did the same attack as RF above, A5+A3, and for the same reasons.
A5 even shows the two pipes for entering a fluid and exit of water in/from the tank. It's like "inviting" the skilled man to add the EM, pump, turbine etc of A3 and make it an energy buffer.
In fact, you are also right because the "real" buckling is when the reservoir is filled with .. vacuum (or "empty" as you say). But they don't mention anything about "empty" or "vacuum" in the paper. Moreover "Hydrostatic" is not in the claim but anti-buckling is.
The hydroelectric energy buffer will work only with such a device (with vacuum).
However, the same Committee who drafts the paper requires candidates to "stick to the facts" and "not use their own knowledge". So basically one following this request could only use the definition given by A5 for "buckling resistance", although this definition seems fictive.
Then, if we admit that A5 actually has some sort of "buckling resistance" we don't discuss about whether this feature is or not in the claim. This is then simply not any longer "a difference" and doesn't belong to the problem-solution approach.
To summarize: to resist hydrostatic pressure and anti-buckling resistance are and are not the same thing according to the paper and this leads to confusion and to two totally different approaches about the CPA of claim 5 (and claim 6(5)): A5 or A4 ?
I only hope EPO will spot this and give points for both attack versions if the attacks are well argued.
Well said.
DeleteActually the system with the membrane and the pipe can be considered as anti buckling based on the definition of A1. For me the trouble is more. How to make the correspondence between the tank of A5 out of which it is impossible to pump water out and the definition of the reservoir in A1 which requires the water to be pumped out.In A5 only the petrol can be pumped out while the water can be Pushed out, not pumped out. For me A5 can only be novelty destroying if the definition of A1 is broadened, which is not allowed. Therefore A5 is not novelty destroying.
DeleteRolp, why CAN one not pump water out of the tank of A5? Is the already available pump of A5 not suitable for pumping water but only petrol ?
DeleteIMO, because the pump is only in the petroleum compartment. In the compartment where water is , there is no pump, the water can only be pushed out. Now you could argue that the petrol could be replaced by water, however it is not part of the disclosure of A5. Moreover, if I remember correctly, one of the reason that A5 could allegedly be novelty destroying is that it contains petroleum which is a form of energy in fossil form.
DeleteBut the main point is that A5 does not disclose that water could replace the petroleum. For novelty, you can only take what A5 discloses directly and unambiguously. A5 does not disclose directly and unambiguously that water can replace the fossil fuel.
@rolp: the claims do not define that water has to be pumped.
DeleteIn particular when reading claim 4+5 again, I become pretty sure that pumping oil into the reservoir falls under the claims scope of "storing energy" and that pumping oil out of the reservoir for refueling falls under the claims scope of releasing energy. How the released oil is used in the turbine/generator is not of our concern, since we explicitly should refrain from applying outside technical knowledge in the EQE.
@ Anon 18 march 2021 12:14
DeleteIndeed, however the claim refer to a "reservoir". A5 does not disclose a reservoir but discloses a "tank". Usually, I was told by deltapatents that if the terms are not the same, we must use the definitions to make them correspond. Now, the definition of a reservoir according to A1 requires that water can be pumped out, not pushed out.
In A5, the only compartment having a pump contains fossil fuel, not water. The compartment containing water does not have a pump. Thus, in A5 it is impossible to pump water out.
If now you argue that the fossil fuel could easily be replace by water, then you end up with a device that is not suitable to store energy (there is no place left to add the fossil fuel).
I am just puzzled about how to make the definition of a reservoir correspond with the tank of A5.
The guidelines say: "Each claim must be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise. Moreover, if such a special meaning applies, the division will, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone"
So my problem is, normally, the claims should have contained the definition given in A1. It does not, so how should the term "reservoir" be understood ?
@Rolp: it seems as if the connection between "tank" and "reservoir" ist made by A2, wherein the expert Mrs. Costeaud uses both terms interchangably.
DeleteShe even makes a clear statement about the similarity between the petroleum tank and the invention:
"J. Costaud: Some aspects of our prototype were inspired by old subsea storage tanks for petroleum products – in a way they are also devices which
store energy underwater, although they cannot be Used as hydroelectric power plants."
"According to this invention, a reservoir is any compartment surrounded by a wall, out of which compartment water can be pumped out and into which water can be let in."
DeleteWhen petroleum is pumped in water is pumped out and when petroleum is pumped out water is let in. This is how the tank of A5 works. So the tank of A5 is basically in line with the definition of a reservoir in A1, I don't see a problem here.
They want to see that you can switch CPAs. I was so stupid not to set up my answer with a little hindsight.
Maybe one gets points also for A4+A5 against claim 4, I can see your point too, Rolp.
As Anon says A2 also gives a pointer not to choose A5 as CPA for claim 5 "they cannot be Used as hydroelectric power plants". But A5 should be novelty destroying (I did IS A5+ CGK of A2) in order to fit the CPA switch..
I must admit I didn't have time to read A2 and A6 to the end during the exam.
Guess why.
I think this exam is going to tricky from a semantic point of view.
Candidates should record fictive definitions and wordings and mix them up in a way that "fits like a glove" to give a fictive solution to a fictive problem, in a short time, panic, stress etc if this makes one a good patent attorney .. I doubt, but this is the exam.
It should be more anchored in the technical reality.
As I emphasized above to resist hydrostatic pressure and anti-buckling resistance are and are not the same thing. Try to argue this in a real opposition procedure in front of EPO examiners... haha.
Thanks for both answers.
DeleteIn A5 the water is not pumped out. When the fossil fuel is pumped in and enters the tank, the water is just pushed out, not pumped out. The water cannot be pumped out because there is no pump in the water compartment. So it is not in line with the definition of A1.
A2 refers to precisely the tanks of A5, so it uses the term tank on purpose. There nowhere an equivalence between tank and reservoir.
"Reservoir" is used in A2, Page 4, Line 9 (EN version).
Deleteto anon 19 march:
DeleteI fail to see how this passage of A2 proves that the tank of A5 fits the definition of reservoir in A1.
Rolp, Anon, I think we can discuss for ever about that. We will see what the testers really meant when we will have the examiner's report. If you compare the C exam in the '90s with the C exam today you will notice that it changed significantly.
DeleteIn old times they were rather interested to see how many attacks you spot (like in real life). There were often 10 or more attacks to deal with although not so detailed, 9 steps etc.
Nowadays the exam is rather designed to recognize your skills in differentiating whether "a reservoir is indeed a tank". Come on... One is also supposed to admit without further judgement that "tensioning tubes" and "cylindrical lengthwise cavities" are the same thing + use this information as such.
All these synonyms and definitions, if they are too many, lead to a confusing game. I am not a native speaker so for me is very difficult to understand why the water of the A5 tank is not "pumped out". I mean , you use a pump for kind of indirectly pump out the water by pushing it out somehow. During the exam you don't have any time to think to long, you must "write down your attack".. etc
I still have confidence that the committee is aware about the fictiveness of this exam and still awards marks also for attacks that were not so straightforward or not exactly in line with the "optimal" solution given in the examiner's report.
I consider my approach of combining A5+A3 against claim 4 was well argued ,I am sure the committee will see it the same way..
Rolp, see also the entire A2, p.3, lines 9-20. It ends up with "Once assembled, you have a reservoir". The tank of A5 is described in detail in A2. CGK ... ? (this part of A2 was not citeable against claim 4)
DeleteMy point is : maybe the novelty attack of claim 4 with A5 was maybe expected. However, the ambiguities of these papers and their poor drafting makes it possible to argue that claim 4 is novel in view of A5. Why did they give a definition of a reservoir if we if we can just conveniently ignore it ? I think it just confused me and many other people. They made this paper too complicated with this complex technology and the cheer amount of definitions. As a result it seems that there are as many valid attacks as there are of candidates.
DeleteBINGO .
DeleteRegardless of the many solutions on here - it is clear that this paper was not really doable within the current framework. The formatting of claims was so difficult on paper C. I also struggled immensely with time and getting to grips with the difficult subject matter. Perhaps making all prior art documents available at the start only serves to confuse me. In C2, I also found time very tight as I ended up reading everything again.
ReplyDeleteDear Joeri:
ReplyDeleteI have to strongly disagree with both lines of argumentation. Let me explain.
Your test compares the _scope_ of the amended claim with the disclosure ("covers exactly the same subject matter", "covers no additional embodiment" etc.).
But the test to be applied is whether the amendmend is directly and unambiguously derivable from the original application.
As you will know, the case law (cf. II.E.1.6.1) states that features pertaining to separate embodiments of the application can not be combined in order to artificially create a particular embodiment. In the absence of any pointer to that particular combination, this combined selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed.
I agree that 17-23 and 23-35 are each disclosed. Note that 23 is a _prefered_ upper value for 17-infinity in [22] - and thus 17-23 is disclosed in accordance with T 2/81. However, 23-35 is disclosed as an _alternative_ to [22]. The meaning of the term alternative is unambiguous: It means that the embodiment 23-35 and 17-35 are separate embodiments.
Claim 6(5) requires 17-35. Note that this claim is a combination of the two separate embodiments; this is different from an OR-claim (17-35 OR 23-35) - even tough the scope may be the same.
According to the case law (II.E.1.6.1 mentioned above), a pointer is required to make a combinaton of two separate embodiments allowable. There is none. On the contrary, [23] explicitly says "alternative" - in direct contrast to [22], which discloses 17-23 as "preferred" to 17-infinity. Thus, in the absence of any pointer in the application as filed, 17-35 is not supported.
Furthermore, I have to strongly disagree with your second line of argumentation.
The fact that the ranges are presented as alternatives makes them unsupported by the application as filed, not better supported. The case law is very clear on this point (II.E.1.5.1). Forming a range by combination of end-points of disclosed ranges is only allowed for general+prefered ranges. And even if there is a preferred range, it may not be enough (see T 612/09 vs T 1170/02).
Also, your second line of argumentation is in direct contrast to the established principle of the BoA that separate embodiments can not be combined in order to artificially create a particular embodiment if there is no pointer to do so. The fact that there is no such preference therefore means that the combination is not allowed under A. 123(2).
Furthermore, "absolutely no reason why the skilled person would not consider any of the now claimed embodiments" is not in line with the standard disclosure test either. As mentioned above, the test to be applied is whether the amendmend is directly and unambiguously derivable from the original application.
Novelty attacks alone took forever so expect high marks for novelty this year.
ReplyDeleteI think the subject matter this year is pretty tough to understand. Then add on top all the issues we had on paper C this year I. E. Formatting.
ReplyDeleteIt so depressing seeing the solutions by DP. Dont have any of the inventive steps here. Such a difficult and complicated paper.
ReplyDeleteI've resigned myself to re-taking C as well. Two years of study wasted. I spent more time trying to understand the subject matter than dealing with an opposition. My inventive step were not good and that's probably down to confusion due to lack of adaptation of the paper onto the online format.
DeleteOne more attempt. This is Art 123(2): "The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed". There is only added subject-matter if you add subject-matter to the claim. The wording of the claim and the amendment is irrelevant as long as it does not cover previously undisclosed subject-matter. If all the embodiments (= subject-matter) covered by the claim are directly and unambiguously derivable from the original application, the amended claim is ok.
ReplyDeleteThe main problem with your arguments is that you start from the incorrect viewpoint that (features from) two embodiments haven been combined. This is not the case. Only DESCRIPTIONS OF embodiments have been combined, not FEATURES FROM embodiments. The case law you cite concerns the question of whether you can add a feature to a previously disclosed embodiment. Claim 6(5) claims nothing more than (a device as disclosed in [22]) OR (a device as disclosed in [23]). No claimed embodiment adds a feature of [23] to an embodiment of [22] (or vice versa). An elastomer only has a single % of RZCH. No combination of different percentages from different original embodiments is claimed and no new subject-matter is introduced.
Why did they bother use with A2 and A5 in part 1?
ReplyDeleteThese documents were only needed in part 2!
Could gave saved me a lot of time if they would only be given in part 2.
The paper was definitely designed as a normal 5 hour paper paper.
To work on all claims and all prior art when reading it all.
Believing that just cutting the claim set in two results in two times half time effort is wrong.
The C committee did a too easy job to get it adapted for the online format, not to say that they did not take it serious. It is a shame.
The paper is an exam paper for 1500? 2000? 2500? candidates that gives them a ticket to the profession! That requires more care from the C committee.
I think it is safe to say/clear that there is no adaptation this year. All papers seemed to had errors and badly worded/confusing phrases. Paper A - confusion. Paper B - makes no sense and outside the remit of normal paper B. Paper C - the split created horrendous confusion and more difficulties.
DeleteIf you are going to move it online, ensure that the exams are fit for the current format. its clear these exams were not adapted for candidates in the current online format
A2 was needed in part1 for the definition s
DeleteI would also say that the subject matter for paper C this year is far too complicated. The paper is meant to be designed for all candidates. yes, there is an element of understanding the invention but it needs to be suitable for all candidates. What happened to wine bottles, ironing device etc... These are simple inventions that all candidates can grasp. They should then be focussed on writing the opposition.
ReplyDeleteI think the supervisory board will look at the papers, online format, burden on candidates and EQae 2020 cancellation effect this year.
ReplyDeleteand will - if at all - only compensate for D1-1.
Deleteadd on top of this the stress accumulated over the days. I had technical issues every single day! Started the exam already in panic! All of this despite of doing the 3 mocks without any issues. What a horrible week.
ReplyDeleteCorkscrew paper C in the year 2017 had a disclosure for the evidence of prior use A4 for a coating on the cork screw. A4 of 2017 was published in Wine Review in May 2011, which falls beyond the filing date. But this is a prior use evidence nevertheless.
ReplyDeleteThe same applies for A2 in the present exam of 2021. A2 shows three sections in Figure 1. These 3 sections are later discussed in the same document in the succeeding pages. Thus, whatever discussed in the subsequent sections are to be used as part of the public prior use, except for the "wires", which they explicitly mention not to be discernable anyone. In other words, the tourists cannot see the type of wires alone. Rest of the disclosure of A2 is part of the public prior use due to the connection of similarity between figure 1 and subsequent figures in A2.
I agree, this is a tricky situation, but going by what the Examination Committee did in C 2017, indeed the large part of A2 can be used for public prior use reference under Art. 54(2) EPC.
Mr. Sanders, rightly raises this unclarity in his above solution naming the disclosure as "tantalizing". Interesting exercise, this paper is.
The corkscrew was sold at the wine fair and could be taken home and analysed to determine the exact content and properties of the coating. The exam report made clear that they expected candidates to comment on why and how the claimed features were publicly available.
ReplyDeleteA bunch of tourists seeing some unclear structure from a large distance is an entirely different type of prior use.
So, the tested legal topic (prior use and what to derive therefrom) was the same but the facts and circumstances were different, leading to a different answer.
My point of view is that the paper C of this yea was clarly set to be difficult for the sake of being so, and definitely too long with respect to the time had.
ReplyDeleteDear Joeri:
ReplyDeleteYou are still applying a non-standard test for A. 123(2) which is in contrast to established case law.
The case law test of G2/10 for direct and unambiguous derivability of an amendment is as follows: After the amendment the skilled person may not be presented with new technical information (G 2/10, see also II.E.1.1 and II.E.1.3.7). So if an amendment results in new technical information, it does not comply with A. 123(2).
Your test is different from that standard test. Let me explain. Let’s assume the following original disclosure:
A car that can drive 17 to 23 km/h. Alternatively, the car can drive 23-35 km/h.
A claim amendment to a „car that can drive 17-35 km/h“ is not directly and unambiguously derivable from the above disclosure. Why? The description discloses two separate cars each having a specific speed range. The description does not disclose a SINGLE (!) car that can drive 17-35 km/h. A single car that can drive 17-35 km/h is new technical information. Therefore, this amendment is added subject-matter.
You are misinterpreting the claim to the single car that can drive 17-35 km/h as a „car that can drive 17-23 OR 23-35 km/h“ because you are looking at the scope of the claims.
But the OR-claim is different. It claims two embodiments, namely the two separate cars which are disclosed. The OR-claim does not create a new embodiment unlike the „single car“-claim. Therefore, the OR-claim complies with Art. 123(2), whereas the „single car 17-35 km/h“-claim does not — even though both claims have the same scope! This demonstrates why a test which looks at the scope of the claims to assess compliance with A. 123(2) must fail.
In Paper C 2021, Claim 6(5) is not an OR-claim concerning the two separate embodiments in [22] and [23], but a single-embodiment claim adding new technical information like the „single car 17-35 km/h“-claim in the above example. Therefore, claim 6(5) constitutes added subject-matter.
I hope this helps in realizing the difference between „17-23 OR 23-35“ and „17-35“ under A. 123(2) EPC.
Your analogy does not work. The car is capable of driving all claimed speeds. The elastomer can only have one weight percentage of RZCH.
ReplyDeleteBut I give up. Maybe the Examiner's report will be able to explain this to you in a more convincing way.
It does work. The description does not disclose a SINGULAR embodiment in which the weight percentage of RZCH is between 17-35. A SINGULAR embodiment where you have the choice between 17-35 is new technical information and thus added subject-matter (as set out in the above posts).
ReplyDeleteIn hope that this clarifies the above, here's another example which is even more aligned with Paper C 2021:
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[Original disclosure]: A door can be made out of wood or metal. Alternatively, the door can be made out of glass or plastic.
[Amended Claims]:
The door can be made out of wood or metal OR can be made out of glass or plastic [OR-claim, claims the disclosed separate embodiments, complies with Art. 123(2) EPC]
The door can be made out of wood, metal, glass, or plastic. [singular embodiment, new technical information, goes against A. 123(2) EPC]
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I am certain that you would see some merit in this if you open-mindedly reconsidered the above. In the end, it boils down to the fundamental difference between an OR-claim [17-23 OR 23-35] and an AND-claim [17-35].
I'm not going to post anymore because we have discussed all the aspects and details of [22] and [23] in Paper C. Thank you for the discussion and all the best to you.
I have several doubts about the paper c of this year.
ReplyDeleteANNEX 2
In particular, Annex 2 states: "The public does not have access to the shipyard but spectators on tourist barges saw what is shown in figure 1"
The terms "spectators" is different from tourist.
By looking into dictionaries: "Spectators" = a person who is present at and views a spectacle, display, or the like; member of an audience.
Therefore, the term spectators seems to indicate people interested in this event and potentially capable of understand the characteristics of the reservoir shown in figure 1 (i.e. all the features of the energy storage device - except wire ropes type).
Accordingly, I believe that the contents of the article explaining what was shown in Figure 1 could also be used as evidence of what was shown in that event to the spectators.
* * *
ANNEX 5 buckling resistance
Annex 1 discloses "the reservoir necessarily has a structure providing buckling resistance".
Annex 5 discloses "Since the inside pressure is always identical to the outside pressure, the tank's walls are not built to resist forces arising from hydrostatic pressure."
Therefore, Annex 5 clearly states that such reservoir does not have a structure providing buckling resistance.
Differently, annex 5 discloses that the buckling resistance is given by the presence of water or petrolum in it. Without the water or the petroleum, the reservoir does not have a buckling resistance structure and it collapse.
Thus, Annex 5 cannot be used for novelty attack. Moreover, this is a teaching away. Therefore, annex 5 cannot be used also as a closest prior art.
* * *
I think there will be a lot of discussions.
ANNEX 5:
ReplyDeletebuckling resistance is achieved by the presence of "a double steel wall sandwiching a layer of concrete" [0002] A5. Such double steel wall with concrete results in buckling resistance at least for epipelagic depths as evidenced by e.g. [0002] A3. As C4 only requires buckling resistance without being specific re depth, the buckling resistance is disclosed in A5.
I agree that A5 cannot closest prior art, but because of another issue, namely another purpose of A5 as e.g. A4.
This comment has been removed by the author.
Deletefollowing your reasoning:
Delete- A5 states that the reservoir has "concrete double steel wall sandwiching a layer of concrete". However, A5 states that such reservoir has tank walls not built to resist forces arising from hydrostatic pressure", i.e. they are not buckling resistant.
- On the contrary, A3 states that "double steel wall sandwiching a layer of concrete" provides buckling resistance.
Why should I consider the teaching of annex 3 as correct and the teaching of annex annex 5 as not correct?
Moreover, the wall of annex 3 is made of "marine-grade steel" while the wall of the reservoir of annex 5 is made of "double steel wall" (not marine-grade steel wall!!!). Therefore, the reservoir of Annex 3 probably is buckling resistant because of the usage of marine-grade steel while the reservoir of annex 5 is not buckling resistant because of the usage of "steel wall".
In any case, during the exam we do not have to use our knowledge but only believe in what is described in the annexes. In this paper C we have two documents that explain that the same feature in annex 3 is buckling resistant and in annex 5 it is not bucklin resistant (contrary to each other!).
Claim 1 of the DE version of Paper C says: "mit einem Haltemitteln" (singular and plural at the same time!!)
ReplyDeleteIt is clear that no proofreading happened here as such a bad mistake in the main claim of a paper C would have attracted somebodies attention immeadiately!
EPO just doesn't give a ***
True.
ReplyDeleteThe Examiners' Report is available!
ReplyDeletehttp://documents.epo.org/projects/babylon/eponot.nsf/0/7043D0BB750F0825C12586F8002C8336/$FILE/Compendium_ExRep_2021_C_EN.pdf
The Examiners' report gives the possible solution (full mark, solution). It also indicates "Alternatively to the attacks set out in the “possible solution”, marks were awarded depending on the argumentation provided, in particular for motivating why and how certain modifications would be made. Also, if an attack for an antecedent claim was based on the wrong documents, the continuation of that attack in a dependent claim was considered dependent upon the merits."
"The examination of 2021 was different from previous years in several aspects, the most important of which is that it was held online and that it was split in two parts. Technical aspects regarding the shift to an online exam are not part of this report", and "Marks for attacks on claims 1 – 3 were only awarded if the respective attack was made in part 1 of the examination". Apart from this comment, the Examiner's Report does not contain any comments as to the side-effects of the online format, nor whether that has somehow been reflected in the marking, nor to the substantive effects of the split into two parts.
The attacks correspond to those in the DeltaPatents solution on this blog post.
Please be invited to give our comments!
Although I passed and don't really want to look at another C paper, I offer the following observations/thoughts and hope they are useful.
DeleteI wrote and complained after C that the split made it very hard to complete claims 1-3 in the first half, and indeed (excluding the general marks) I got 52% of the marks for Claims 1-3 and 72% of the marks for Claims 4-6, and yet I correctly identified the attacks for 1-3, but got 4 wrong (IS 4+5) - I just ran out of time to write the answers for the first part.
As a strategy point for next time, note that you can draw up a lot of information in the 30 minutes 'printing time' - including all definitions, motivational pointers etc. This entails a huge shift in strategy and the EPO must indicate how things will be done in future, because you need to practice it.
There also needs to be guidance on what can / cannot be left until the end. For example, is it necessary to complete the form in the first half?
It is possible to write out attacks without having set out the status of all the prior art: e.g. A123(2), A54. I think I lost marks here because I never got organised to make sure I had actually set out the status of all the prior art rigorously.
I think the Examiner's report is also pretty poor when explaining the marking - I lost marks for claim 6, but although I split it up exactly as the Examiners did in their report, I can't even see which attacks I dropped marks on.
Best wishes to those taking it next year.
I wish that the Committee shares statistics on the results for C1-1 and C1-2.
DeleteSo far my colleague candidates and the comments on the blogs only show low scores for C1-1 and reasonable to good scores for C1-2, as for DH. If that is the general picture, it proves that the split was incorrectly done. And that appeals may be justified on that ground. If you appeal, request statistics.
What did others score on both parts?
M
@ Anonymous 25 June 2021 at 10:19 maybe its not what you want to hear:
DeleteI scored about 80 points in part C. Both parts make up about 50% of the total points. I must admit that I followed the Delta Patents goal oriented search (only Methodbook C, no course) and this worked out very well in both parts since you do not waste too much time on reading the entire prior art doucment but only search for relevant features in these documents. Thus, there were not that much time pressure for me in Part C for both, part C1-1 and C1-2.
Additionally, I found the technology in part c hard to understand (I am in life science).
I also agree with your analysis; the term "structure" is crucial to the answer.
ReplyDeleteAfter several successful appeals to paper B, now also a successful appeal to paper C has been published (last Friday):
ReplyDeleteAppeal D 0041/21 () of 1.3.2022
See https://www.epo.org/law-practice/case-law-appeals/recent/d210041eu1.html for the full reasoning
"3.1 The appellant has correctly identified paragraphs [0003] and [0009] in Annex 3 disclosing an underwater energy storage device as indicated in the marking scheme and has also provided respective arguments. Even if the appellant did not explicitly mention that the second embodiment of Annex 3 was considered, the mere reference to paragraph [0009] of Annex 3 leaves no doubt that the second embodiment was considered. A deduction of marks appears not to be justified.""
I reason 3.2 - 3.6, sevdral arguments are given. E.g., in 3.3:
"3.3 Regarding the feature "a structure providing buckling resistance (Annex 3 paragraph [0002])" the appellant in her answer referred to Annex 3 paragraph [0001] instead of Annex 3 paragraph [0002], which would be the correct citation as also indicated in the Examiners' Report. However, the appellant's submission that the reference to paragraph [0001] in Annex 3 is a transcription error is absolutely credible. It is evident that nothing else could have been intended, since the appellant has stated verbatim from paragraph [0002] of Annex 3 the phrase "upright cylinder made to be buckling resistant", which is the only place in Annex 3 where these words are present. Therefore, the reference to Annex 3 paragraph [0001] would have made no sense, so that an Examiner reading the answer of the appellant could not reasonably assume that this was the intended answer but rather could recognise that it is a matter of transcription error."
"4. Claim 3
The Board considers that the appellant's answer to claim 3 is correct and complete and included the points as specified in the marking scheme. It is neither apparent nor comprehensible for what reason 2 of possible 5 marks were deducted by the Examination Board.
Request that the contested decision be corrected
5. For these reasons the Board has come to the decision to allow the appeal and remit the case to the Examination Board for re-evaluation of the awarding of marks for the appellant's answer regarding claim 1 and claim 3 on the basis of the considerations of the Board as set out in points 3. and 4 above. The Board in the present appeal case considers that special reasons within the meaning of Article 12 of the Additional Rules of Procedure of the Disciplinary Board of Appeal (Supplement to OJ EPO 1/2022, 67) for not remitting the case to the Examination Board for a new decision are not on hand. The issue how much additional marks for claim 1 and/or claim 3 should be awarded would clearly be an exercise which could not be done without making a value judgement, which is not a function of the Disciplinary Board of Appeal.
6. Since the decision under appeal is set aside the request for reimbursement of the appeal fee is granted (Article 24(4) REE).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Examination Board for re-evaluation of the awarding of marks for the appellant's answer regarding Paper C, part I, claim 1 and claim 3.
3. The appeal fee is reimbursed."
Appeal D 0041/21 () of 1.3.2022 [continued]
DeleteThe DBA is surprisingly detailed as to the merits of the answer. They explain why this is nevertheless in line with the general rules/case law on the limitation of their competence in reasons 1 and 2:
"Request that the contested decision be set aside
1. In accordance with Article 24(1) and (4) REE and the Disciplinary Board's of Appeal consistent case law (following D 1/92, OJ EPO 1993, 357), decisions of the Examination Board may in principle only be reviewed for the purposes of establishing that they do not infringe the REE, the provisions relating to its application, or higher-ranking law. It is not the function of the Disciplinary Board of Appeal to reconsider the entire examination procedure on the merits. This is because the Examination Committee and the Examination Board have some latitude in their evaluation which is subject to only limited judicial review by the appeal board.
Only if the appellant can show that the contested decision is based on serious and obvious mistakes can the Board take this into account. The alleged mistake must be so obvious that it can be established without reopening the entire marking procedure. An example of an obvious mistake would be a question whose wording was ambiguous or incomprehensible (D 13/02). That would be clear straight away, without any reference to marks awarded, from the meaning that common sense would ascribe to the wording of the question concerned.
2. Even if according to its case law it is not the function of the Disciplinary Board of Appeal to reconsider the entire examination procedure on the merits, what would be necessary in order to evaluate and conclude whether more or at least two more marks were to be awarded, the Board considers the appeal to be allowable. This conclusion can be arrived at on the basis of the appellant's submissions in the statement of grounds of appeal by a comparison between the marking scheme and the excerpt from the appellant's answer paper without reopening the entire marking procedure. The appellant demonstrated in the statement of grounds of appeal that the answer regarding Paper C, claims 1 and 3 complied with the Examiners' Report using the correct citation of the specific reference in the relevant documents. There are only a few minor deviations and differences compared to the Examiners' Report as set out below (points 3. and 4.) and also pointed to by the appellant itself, which, however, do not render the answer wrong or incomplete."