Saturday 19 June 2010

T 1312/08 – The Extension Trap Again


In a recent post, we have seen a case where surprisingly, adding features to a claim led to an extension of the extent of protection conferred by the claim. The present decision provides another example of such a situation.

Yesterday we have seen that the patent under consideration lost its priority claim, which resulted in additional prior art and the rejection of the main request for lack of inventive step. The patent proprietor then presented a first auxiliary request, simply adding an (apparently limiting) feature (click to enlarge):



Here is what the Board had to say:

[2.1] Claim 1 according to the first auxiliary request differs from claim 1 according to the main request, which is claim 1 as granted, substantially insofar as protease (c) having an α-keratin-hydrolyzing activity at 10°C of not less than 0.09x10^-3 μg/mPU·min is produced from a microorganism that is
(I) Bacillus sp. KSM-KP 43,
(II) Bacillus sp. KSM-KP 1790
(III) Bacillus sp. KSM-KP 9860
(IV) a mutant of Bacillus sp. KSM-KP 43, Bacillus sp. KSM-KP 1790 or Bacillus sp. KSM-KP 9860, or
(V) a transformant containing a gene from Bacillus sp. KSM-KP 43, Bacillus sp. 1790 or Bacillus sp. KSM-KP 9860 coding said protease.

The Board remarks that claim 1 as granted did not contain any limitation as to the specific type of protease (c) apart from the required α-keratin-hydrolyzing activity at 10°C that had to be not less than 0.09x10^-3 μg/mPU·min.

Moreover, claim 1 as granted required inter alia an amount of proteases (c)+(d) equal to 0.01 to 0.5% by weight (as powdered enzyme product).

The amended claim 1 allows because of its wording “A detergent composition comprising ...” the presence of arbitrary amounts of additional components apart from those specifically listed as components (a) to (d).

Moreover, the wording of this claim, by requiring that the composition comprises as component (c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10-3 μg/mPU·min and that the protease (c) is selected from the classes (I) to (V), does not exclude the possible presence of additional proteases having an α-keratin-hydrolyzing activity at 10°C that is not less than 0.09x10^-3 μg/mPU·min apart from those specifically listed in the claim as component (c), which additional proteases were part of the original protease (c) in the claim as granted but are no longer part of this specific component in the amended claim.

As a consequence, claim 1 according to the first auxiliary request allows an amount of, for example, 0.5% by weight, of proteases (c) plus (d) and an additional amount of 0.1% by weight of additional proteases having an α-keratin-hydrolyzing activity at 10°C that is not less than 0.09x10-3 μg/mPU·min not belonging to the five classes specifically listed in the claim.

In such a case, the amended claim 1 would encompass compositions containing a total amount of proteases (c) and (d) as defined in the granted claim of 0.6% by weight, i.e. an amount of proteases greater than the upper limit of granted claim 1.

Consequently, the extent of protection of amended claim 1 according to the first auxiliary request has been extended with respect to that of the granted claim 1 (see, for example, T 2017/07 [headnote]).

Consequently, this request contravenes the requirements of A 123(3).

Now that the Boards are aware of the possibility of extending the protection by adding features, be very careful when amending composition claims.

To read the whole decision, you may click here.

4 comments:

Anonymous said...

Should the granted claim not be interpreted as allowing other proteases in addition to the proteases (c) and (d)? That would make the 123(3) problem go away.

Alternatively, if the granted claim should be interpreted as comprising exactly two proteases, i.e. a unique one falling under (c) and a unique one falling under (d), then imo claim 1 of auxiliary request 1 should also be interpreted as comprising exactly two proteases. Again no 123(3) problem.

To give a somewhat simpler example:
Granted claim: "a table comprising a leg whose length is 50cm".
Amended claim: "a table comprising a leg whose length is 50cm, wherein the leg is made of steel".

The Board seems to say that the amended claim infringes 123(3), because the table could, in addition to the leg made of steel, have a leg made of wood whose length is 60cm. However, it seems pretty clear that this table is also covered by granted claim 1.

Anonymous said...

Anonymous, that is not the issue.

The point is that when you have a granted claim with i) an amount of ii) a class, then you can run into problems with 123(3) when you narrow the class to a sub-class - because you then remove the original amount limitation of the broad class.

Consider a granted claim with 0.1-0.5 of class A (class A having members A' A'' A'' etc),

Product with 0.1 A' and 0.6 A'' (= 0.7 of A) would not infringe the claim.

Claim is amended to 0.1-0.5 to A' (looks like narrowing the claim)...but now the original limitation of 0.1-0.5 of A is removed

So the product with 0.1 A' and 0.6 A'' (= 0.7 of A) would now infringe the claim - hence falls foul of 123(3)

That is my understanding of the issue at any rate

Anonymous said...

It seems that in order to avoid the A 123(3) EPC objection the amendment should have been worded stating that protease (c) is "only" produced from micro-organisms of type (I) to (IV). Thus excluding all other proteases with feature (c) produced by other ways.

In fact, the use of "comprising" is useful because it leaves the content of the claim open, but is sometimes quite tricky in its consequences.

Conclusion: Caveat comprising :-))

Anonymous said...

@Anon of 13:35:
The way I read granted claim 1, it does not limit the amount of a class. The claim states that an element from a class is present, and then limits the amount of that element. The amended claim then states that the element is from a subclass of the class. In this interpretation, there is no extension of the scope of the claim. And this interpretation of granted claim 1 seems to be in compliance with the Board's literal reading of the amended claim.

So to be precise, I disagree with the Board's "Moreover, claim 1 as granted required inter alia an amount of proteases (c)+(d) equal to 0.01 to 0.5% by weight (as powdered enzyme product)." In my view, claim 1 as granted requires a protease (c) and a protease (d) in an amount (c)+(d) equal to 0.01 to 0.5% by weight, and allows the presence of arbitrary amounts of additional components, including proteases, apart from those specifically listed as components (a) to (d).

"Consider a granted claim with 0.1-0.5 of class A (class A having members A' A'' A'' etc),"

Sure, but granted claim 1 is of the type "[composition comprising] 0.1-0.5 of an element of class A". Clearly 0.1 A' and 0.6 A" does infringe this claim.