Brief outline of the procedure
The application was refused for lack of IS. An appeal followed.
In a communication in preparation for the oral proceedings, objections under Art 56, 84 and 123(2) and R 49(10) were raised by the board.
Following the communication of the board, the applicant filed a new request which was admitted under Art 13(2) RPBA20 by the board.
The board remitted to the ED with the order to grant a patent on the basis of the claims according to the MR filed as AR 4 and possibly a description to be adapted to these claims.
The original clarity objection
In the communication under Art 15(1) RPBA20, the board was of the preliminary opinion that the feature of an “acidified additive solution having a pH of between 5.5 and 7.0” in claim 1 of the previous main request was unclear.
More specifically, the term “acidified” meant that the solution was made acidic and an acidified additive solution could not have a pH of 7.0.
In addition, the board referred to a US decision in order to support his objection.
According to the decision “Athletic Alternatives, Inc. v. Prince Manufacturing, Inc.,” 73 F.3d 1573 (Fed. Cir. 1996), it was not clear whether a range using the term “between” includes the limit values of this range, cf. Point 4.2 of the reasons.
The later position of the board
The board eventually held that in the present case, it does not need to be specified whether or not the term “between” is clear, since this term is not contained in claim 1 in isolation, but in a specific context, namely combined with the statement that the additive solution is acidified.
Hence, at least in the specific context of the present case, there can be no doubt that the value of 7.0, which implies a neutral rather than an acidic pH, is excluded, cf. point 4.3 of the reasons.
Claim 1 of the main request therefore met the requirements of Art 84.
The question of ranges
It appears established case law that in case of a range of values, the end values of a closed range are part of the original disclosure, whereas in an open range, the end value is not part of the disclosure.
For example, in T 1990/10, relying on T 2/81, the board held that, on the one hand, a closed range comprised the end values, e.g. 30-35°C, which clearly means “between 30°C and 35°C”, the end values of 30°C and 35°C are part of the disclosure.
On the hand, in the open range below 35°C, the value 35°C is not part of the range.
When stating in the claim at stake that the feature “acidified additive solution having a pH of between 5.5 and 7.0”, it has to be concluded that the value pH 7.0 is part of the range.
Why was it necessary for a board to refer to a US decision when dealing with the feature of an “acidified additive solution having a pH of between 5.5 and 7.0”?
When looking at the case law about ranges it is manifest that the range “between 5.5 and 7.0” comprises the end value of 7.0.
The claim can thus be considered unclear as it implies a neutral rather than an acidic pH.
A clear claim could have looked like this: an “acidified additive solution having a pH of between 5.5 and less than 7.0”. In such a formulation, the value of pH 7.0 is clearly excluded and that of pH 5.5 is included.
What do you think?