EP 2 649 101 B1 relates to a process of preparing hydrogels based on a crosslinked polysaccharide, and preferably based on hyaluronic acid, or one of its salts.
Brief outline of the procedure
The patent has been revoked, mainly for lack of clarity under Art 84. The OD found the term “pouch” unclear. The proprietor appealed. Claim 1 of a new MR differed from claim 1 as granted with the feature “wherein said process is carried out in a pouch”. As it was not present in the claims as granted G 3/14 applied.
The board confirmed the revocation of most of the requests for lack of clarity, but for other reasons than the OD. AR3, although late filed under Art 13(2) RPBA, AR3 was considered clear, since claim 4 had been deleted.
The board remitted to the OD for further prosecution.
The proprietor’s point of view on the meaning of “pouch”
The meaning of the term “pouch” that is contained in the added feature at stake, the proprietor argued that this term has to be read in the context of claim 1 as a whole.
Claims 1 and 4: “pouch” vs. “appropriate receptacle”
The proprietor argued that, in view of the wording of claims 1 and 4 of the main request and of paragraphs 71 and 72 of the patent in suit, the skilled person would readily understand that the terms “pouch” in claim 1 and “appropriate receptacle” in claim 4 were specifically linked to each other, i.e. it was clear that the “appropriate receptacle” of claim 4 was necessarily the “pouch” of claim 1.
Opponent’s1 point of view on the
Meaning of “pouch”
Opponent 1 stressed that the term “pouch” was highly ambiguous since it had no generally accepted meaning. In particular, it was unclear whether this term imposed any limitations regarding for instance the level of rigidity/flexibility/deformability, size, hermeticity and/or whether the pouch was a closed envelope or it could be open to the environment
Claims 1 and 4: “pouch” vs. “appropriate receptacle”
Opponent 1 additionally put forward that it was unclear whether the “appropriate receptacle” mentioned in claim 4 of the main request, which was dependent on claim 1, was mandatorily the same as the “pouch” specified in the added feature of claim 1 of the MR. For this reason, the claims of the MR were unclear
The board’s decision
Meaning of “pouch”
In the context of claim 1, the pouch mentioned therein must be a container/receptacle whose walls exhibit some deformability/flexibility, which derives from the term “pouch” and as opposed to e.g. usual chemical reactors such as tanks, vessels or pots, and is suitable to carry out a process for preparing a crosslinked gel of hyaluronic acid or one of its salts at temperatures up to 60°C as otherwise defined in claim 1.
In the present case, although the reading of the term “pouch” is broad, it is in the board’s view sufficient to allow the skilled person to assess whether s/he is working within or outside the scope of claim 1.
Claims 1 and 4: “pouch” vs. “appropriate receptacle”
Whereas the feature of claim 1 of the MR “wherein said process is carried out in a pouch” imposes that the whole process takes place “in a pouch”, claim 4 further defines that a specific step is obtained “beforehand” and “in an appropriate receptacle”.
In view of this wording and taking into account that claim 4 is dependent on claim 1, it is unclear whether the “appropriate receptacle” of claim 4 is necessarily the same as the “pouch” according to claim 1.
Although the added feature “wherein said process is carried out in a pouch” would appear to impose that they are, the use of different terms – “pouch” in claim 1 vs. “appropriate receptacle” in claim 4 – leaves this open, which renders the scope of claim 4 unclear.
Accordingly, the addition of the feature “wherein said process is carried out in a pouch” in claim 1 of the main request introduces a lack of clarity pursuant to Art 84 in claim 4 of the MR.
While it is correct that claim 4 is dependent on claim 1 and for that reason should fulfil all the requirements of said claim 1, already the use of the different terms “pouch” in claim 1 and “appropriate receptacle” in claim 4 of the main request cannot impose that the “appropriate receptacle” in claim 4 is necessarily the “pouch” according to claim 1.
This reading of claims 1 and 4 of the main request is further reinforced by the use of indefinite articles in both terms “a pouch” and “an appropriate receptacle” in these claims. Considering that in claims 1 and 4 of the main request, the board saw no reason to consider that the two terms “pouch” and “appropriate receptacle” are specifically linked to each other as argued by the proprietor.
The board further considered that paragraph 71 of the patent in suit only shows that “an appropriate receptacle” can be “a pouch” but does not impose that it is necessarily limited to this embodiment.
Also, neither the description, nor the other claims of the main request, contain a definition or feature(s) that would impose that the “appropriate receptacle” of claim 4 can only be the “pouch” of claim 1.
Therefore, even if the description is referred to when interpreting claims 1 and 4 of the main request, G 1/24, it cannot be concluded that embodiments in which steps, according to claim 4 take place in a “suitable receptacle” that is not “the pouch” of claim 1 of the MR are excluded from the scope of claim 4.
Therefore the MR was not allowable.
Comments
A “pouch” is not to be considered as covering “a wide spectrum of receptacles that would most certainly not be suited to carry out a hyaluronic acid cross linking reaction” as the OD did.
The present decision reminds that, when an independent claim is amended by features from the description, and might be allowable, this does not mean that the dependent claims are, in combination with the new dependent claim, automatically clear.
In T 866/24, commented in the present blog, the board complained that dependent claims were not properly checked for clarity when claim 1 was deemed allowable.
T 866/24 addressed ED’s. The present decision is a reminder to OD’s.
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