EP 3 256 179 B1 relates to injectable implants for sculpting, augmenting or correcting facial features as the chin.
Brief outline of the case
The OD rejected the opposition and the opponent appealed.
The board held that claim 1 as granted infringed Art 123(2).
The patent was maintained according to AR1.
The reasons for which claim 1 as granted infringe Art 123(2) are interesting.
Claim 1 as granted relates to composition comprising a crosslinked hyaluronic acid (HA) crosslinked with 1,4-butanediol diglycidyl ether (BDDE) having inter alia the following properties:
- wherein the composition has an elastic modulus between 500 Pa (+/- 50 Pa) and 900 Pa (+/- 90 Pa) at 5Hz;
- wherein the composition exhibits an extrusion force between 4N (+/- 0.4N) and 15N (+/- 1.5N) at 13 mm/min
The opponent’s point of view
The ground of opposition under Art 100(c) precluded the maintenance of the patent as granted. The reason for this was that the numerical values in parentheses in claim 1 defined ranges which did not correspond to the meaning of “about” in the context of endpoints of ranges as set out in paragraph [00028] of the application as originally filed.
As there was no support for the deletion of “about”, AR 1 also contained added subject-matter.
The proprietor’s point of view
Paragraph [00028] of the application as originally filed disclosed that the modifier “about” meant that a numerical value could be modified by +/-10%.
Claim 1 thus had a basis in the application as filed.
The board’s decision
Claim 1 of the granted patent differed from claim 1 of the application as originally filed by the features in brackets, which replaced the modifier “about“.
For the board, in the application as filed, the meaning of “about” in the context of numerical values, i.e. that values could be modified by +/- 10%, does not apply to endpoints of ranges.
According to paragraph [00028], the lower endpoint may be reduced by 10% and the upper endpoint increased by the same percentage.
Claim 1 of the patent defines that the lower endpoint may be increased by 10% and the upper endpoint reduced by 10%, and therefore the claim defines a range that was not originally disclosed.
The patent could thus not be maintained as granted.
Comments
The board was certainly right in deciding that claim 1 as granted infringed Art 123(2).
The +/- 10% were originally disclosed, but not for the end values.
If a given margin, e.g. +/- 10%, is mentioned in the original disclosure, the term “about” in a claim can be replaced by +/- 10% without infringing Art 123(2).
On the deletion of about
In T 1677/13, Reasons 3, the board held that the deletion of the term “about” before numerical values does not infringe Art 123(2) according to normal practice under the Case Law of the Board of Appeals, unless the skilled person would understand, from the whole content of the application as filed, that an exact value as such could not have been meant, as was the case in T 934/96.
In T 875/11, the board held that deletion of “about” before specific numerical values in a claim, only the absolute value is then claimed as a limit value, which value, in each case, was itself clearly disclosed to a skilled person. The deletion was thus allowable.
In T 356/16, the deletion of “about” in the upper limit of “less than about 0.3 mm” and in the lower limit “between about 0.008 mm and about 0.1 mm” present in the application as filed, in order to claim a thickness range of 0.008-0.3 mm infringed Art 123(2).
Reminder
According to the Guidelines F-IV, 4.7.1 terms such as “about” or “approximately” are applied to a particular value (e.g. “about 200°C” or “approximately 200°C”) or to a range (e.g. “about x to approximately y”), the value or range is interpreted as being as accurate as the method used to measure it.
According to the Guidelines F-IV, 4.7.2, if the application suggests that the use of terms such as “about”, “approximately” or “substantially” extends either the interval claimed by a value and/or range outside the error margins of the measurement system or the structural unit beyond the manufacturing tolerances or any other tolerance that the skilled person would take into consideration in the technical field concerned, then the wording of the claims becomes vague and undefined and an objection under Art 84 should be raised.
Proofreading before filing
Proofreading of the original description before filing would have avoided the problem.
In lots of cases an objection under Art 123(2) arises from mistakes which could be easily avoided by proofreading before filing.
If the description discloses two separate embodiments A and B, A+B has not been disclosed, even if the skilled person could easily envisage the combination A+B. When the description discloses embodiment A and alternatively embodiment B, the combination A+B is clearly out of bounds. I often came across such problems in examination or opposition.
On the procedure
In its first communication the ED raised an objection under Art 84 relating to the use of “about” in claim 1 as filed. In reply to this objection, the applicant deleted about and replaced it with values +/- 10% for the end ranges.
The ED did not spot the discrepancy with the statement in paragraph [00028] and proceeded to grant. As the then applicant was happy to get a patent, it did not check whether a potential problem of added matter was not excluded.
In the present case, in AR1 “about” was deleted in claim1 as well as the +/- n% which lead to the problems under Art 123(2).
According to T 1481/05, Reasons 3, the board held that features in parentheses introduce an ambiguity as to the content of the claimed subject-matter. For this reason alone, the ED should not have decided grant. The only items in parentheses acceptable in claims are for reference signs, cf. R 43(7) and Guidelines F-IV, 4.18
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