CASELAW - reviews of EPO Boards of Appeal decisions

T 336/21 – Patent documents cited as "A-documents" in the European/International Search Report are not representing common general knowledge

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Brief outline of the procedure

The application was refused for lack of clarity. The applicant appealed the decision.

The ED held that independent claim 1 was not clear. In particular, in feature [1.8] the term “fluorescence data” was undefined, and, consequently, the step of “generating multicomponent data” was not clear.

The board confirmed the lack of clarity for the MR and the AR1 on file.

The refusal was thus confirmed.

The applicant’s point of view

The applicant explained how the features of claim 1 had to be interpreted and that in particular feature [1.8] was clear to the skilled person.

The applicant argued with reference to the Guidelines for Examination (Guidelines for Examination, March 2021, Part F IV.4.2.) that

  • (i) each claim had to be read giving the words the meaning and scope which they normally had in the relevant art and,
  • (ii) that the claim had to be read with an attempt to make technical sense out of it.

The applicant argued that the skilled person fully and clearly understood feature [1.8] as it referred to the – as such – commonly known “multicomponenting“.

In the case in hand, the applicant argued that patent documents D5 and D6 showed that the terms “multicomponent data” and “fluorescence data” had a generally accepted meaning in the relevant art.

This was in particular the case, as documents D5 and D6 were categorized as “A-documents” in the international search report and therefore described the general state of the art.

The clarity of the features was especially evidenced in paragraphs [0026], [0028] and [0029] of D5 and paragraph [0031] of D6.  

In this respect the applicant referred to decision T 728/98 in which the board considered documentary evidence in order to establish whether an unequivocal generally accepted meaning existed in the relevant art for a term in the claims.

Fluorescence data” itself was also clear, as the skilled person was aware that this data was obtained by a test instrument having excitation and emission filters, which itself was a standard biological instrument for the purpose of PCR applications.

This was again evidenced e.g. by document D5 (see paragraph [0029]), which explained that “multicomponenting” involved the calculation of the contribution of each dye in a complex experimental spectrum, and might comprise a matrix multiplication of each measurement vector by the inverse of the calibration matrix.

The board’s position

With respect to the interpretation of the claims, the board noted that it is established case law that the claims must be clear in themselves when read by a person skilled in the art (see Case Law of the Boards of Appeal, 2019, II.A.3.1, Clarity of claims).

In decision T 728/98, which was referred to by the appellant, the board held that a claim could not be considered clear if it comprised an unclear technical feature for which no unequivocal generally accepted meaning existed in the relevant art (see headnote, point 1). In order to establish whether the term “substantially pure” was clear, the board in that case consulted the document “US Pharmacopeia“, a compendium of drug information establishing written standards used by regulatory agencies and manufacturers.

According to established case law, common general knowledge is to be found in basic handbooks, monographs, encyclopaedias, textbooks and reference books (Case Law of the Boards of Appeal of the EPO, 9th edition 2019, section I.C.2.8.1). As the common general knowledge does not normally include patent literature (Case Law of the Boards of Appeal of the EPO, 9th edition 2019, section I.C.2.8.2), patent documents are generally not suitable to establish the generally accepted meaning in the relevant art of a specific term.

The board is of the opinion that the current case is not an exception to the above rule. The passages referred to by the appellant describe a “process called multicomponenting” (see D5, paragraphs [0026] to [0029]) and a process “often referred to as multicomponenting” (see D6, paragraph [0031]).

The board is of the opinion that specific disclosures in patent literature do not document the common general knowledge of the skilled person. This is in particular the case, as both documents D5 and D6 are from the same applicant.

The categorisation of documents D5 and D6 in the search report as “A-documents” indicates that these documents represent the state of the art. However, the state of the art is not common general knowledge per se.

The content of patent documents D5 and D6 is therefore not suitable to define the generally accepted meaning of the term “multicomponent data“. As the board is also not aware of a commonly known definition of the term “multicomponent data“, it comes to the conclusion that the term has no unequivocal generally accepted meaning in the relevant art.

The applicant’s reference to patent document D5 is not suitable to define the term “fluorescent data” applying the above principles.

As it is not clear to what kind of data the feature refers and how this data has been generated, it follows that the definition of “multicomponent data” based on this term is unclear.

In conclusion, the term “multicomponent data” has no unequivocal generally accepted meaning in the relevant art and the definition given for this term in feature [1.8] is not clear either.

Consequently, independent claim 1 of the MR does not fulfil the requirements of Article 84 EPC.

The same applied to AR 1 on file.

Comments

Not a source of common general knowledge

The present decision confirms that, in general, common general knowledge cannot be found in patent documents, cf. T 1819/14, T 263/12 or T 1540/14.

The present decision applies this conclusion to A-documents in the European/International search report.  This is the more so if the patent documents meant to represent common general knowledge stem from the party itself quoting them.  

There are very few exceptions to this rule, for instance in case of very new techniques

  • T 51/87, OJ 1991, 177, like in biotechnology
  • T 1117/14, for biodegradable material in form of a sintered ceramic

Common general knowledge can neither be found in specialized journals, cf. T 1997/11, or scientific papers, cf. T 1651/13.

A doctoral thesis is also not representative of common general knowledge, cf. T 1832/14.

Source of common general knowledge

Common general knowledge is in principle to be found in standard books and reference works, cf. T 1641/11, T 263/12. 

Effect of common general knowledge on the procedure

Common general knowledge of the skilled person is never late, as it is inherent to his knowledge, cf. T 987/01 and T 378/15

Common general knowledge of the skilled person does not bring about a change in the legal and factual framework of the proceedings, cf. T 759/08.

With the RPBA20 those decisions might not any longer be applicable in appeal, unless the evidence of common general knowledge is filed, for good reasons, as early as possible in the appeal procedure that is when entering appeal.

They however do apply in opposition procedure.

https://www.epo.org/law-practice/case-law-appeals/recent/t210336eu1.html

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