Monday 22 February 2010

T 360/08 – Out Of The Frying Pan Into The Fire


Claim 1 of the main request read:


A biaxially oriented polyester film characterized in that a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method is not less than 7.

Main request and first to third auxiliary requests

The polyester film as defined in claim 1 of each of these requests is characterised by the value of a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method being [sic] less than 7.

Claim 1 does not, however, specify which polyester is used to form the film.

Claim 4 specifies that the polyester is “at least one selected from the group consisting of polyethylene terephthalate [PET], polypropylene terephthalate, polyethylene isophthalate, polyethylene naphthalate [PEN] and a copolymer thereof.” The polyester of claim 1 may thus be polyethylene naphthalate. Whilst polyethylene terephthalate has a peak intensity at 1615 cm-1, attributable to the presence of a benzene ring, polyethylene naphthalate does not produce a peak at this wavelength (see document E30). In the absence of such a peak, it is not possible to obtain a significant value of the ratio R at 1615 cm-1. It was suggested on behalf of the [patent proprietor] that the skilled reader of the patent in suit would, in the case of polyethylene naphthalate, understand the reference in claim 1 to a peak intensity determined at 1615 cm-1 as referring to a corresponding peak at 1636 cm-1. It is not, however, accepted that there is a “corresponding peak” for polyethylene naphthalate, the presence of a naphthalene ring giving rise to more than one peak:


The person skilled in the art is thus not provided with sufficient information to enable a value of the ratio R to be calculated for a film of polyethylene naphthalate. [1] 

I am always surprised when a single non-working embodiment is said to deprive a claim of its sufficiency of disclosure. Having said this, it might well be that the unfortunate claim wording has caused this outcome: there simply is no ‘peak’ at 1615 cm-1 for the polyethylene naphthalate. Had the claim drafter omitted the word ‘peak’ and defined the ratio R to be a ratio of intensities measured at 1615 cm-1, I think that the problem would have shifted towards inventive step.

Be that as it may, the patent proprietor reformulated the claim by inserting the working embodiments only into claim 1:

Claim 1 of the main request’ presented during the oral proceedings read:

A biaxially oriented polyester film wherein a polyester of said film is at least one selected from the group consisting of polyethylene terephthalate, polypropylene terephthalate, polyethylene isophthalate, and a copolymer thereof, characterized in that a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method is not less than 7.

However, the Board then found an even more general lack of sufficiency of disclosure. The decision contains an interesting statement on determining certain measurement parameters by reworking the examples.

Main request’ and auxiliary requests 1’ to 3’

In order to determine the value of the ratio R as specified in claim 1 of each of these requests, it is necessary to subject a film to a Raman scattering method. However, the values obtained for this ratio are dependant on the measuring conditions.

A number of the measuring conditions used by the patent proprietor are specified in paragraph [0079] of the patent in suit. In particular, it is specified that a Ramanor U-1000 apparatus was used. As indicated in document E33, a range of objectives of differing power are available to the user of the Ramanor U-1000 apparatus. It is not, however, specified in the patent in suit which objective should be used.

Document E29 […] demonstrates that significantly different values of the ratio R are obtained according to whether a 100x or a 50x objective is used. The [patent proprietor] submits that a high power 100x objective would be used, document E33 suggesting that this would give better resolution. On the other hand, document E36 sets out four reasons to prefer a 50x objective, including a suggestion that the use of a high power objective has a depolarising effect and may not provide the best signal to noise ratio. The Board thus comes to the conclusion that the skilled person would not know which objective to select.

The patent in suit contains 30 examples and 9 comparative examples, for each of which a value of the peak intensity ratio R is given. It is suggested that, by repetition of the examples, a film can be produced for which a value of the ratio R can be measured with different objectives. Only the choice of the correct objective will result in the value of R disclosed in the Tables of the patent in suit.

This is not accepted. It would require more knowledge than is available from the patent in suit in combination with the general knowledge of the skilled person to prepare a film for which it can be assumed that the value of R is the same as that given in the patent in suit. Thus, whilst the examples give information as to the temperature and the stretching ratio to be used when preparing the film, the examples do not give any information as to the form of the cross-section of the cast film or the speed of stretching of the film. Variation in these parameters would influence the properties of the resulting film. It is thus not possible to deduce the power of the objective from a reworking of the examples.

The present case is distinguished from that decided in T 143/02 firstly in that there is no most likely candidate as to the objective to be used. Secondly, the information given in the examples is not sufficient to enable a sufficiently predictable value of the ratio R to be achieved. [3]

The patent in suit thus does not provide sufficient teaching to enable the person skilled in the art to produce a biaxially oriented polyester film which satisfies the criteria specified in claim 1. [3.1]

The requirements of A 83 are not satisfied for each of the requests of the [patent proprietor]. [4] 

It cannot be stressed enough that if a claim involves results obtained with a measurement method that is not standard from A to Z, it is crucial that this method be described in all detail. Conversely, when you have to attack a patent, it is always a good idea to have a close look at the description of the measuring methods involved.

To read the whole decision, click here.

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