Replacement or removal of features from a claim
The replacement of feature X with Y/ the removal of feature X does not contravene the requirements of Art123(2) EPC as it passes the 3-step test set out in GfE Part H-V, 3.1.
(i) the replaced or removed feature was not explained as essential in the originally filed disclosure because…
the description contains at least one embodiment without this feature (T66/85)
the feature is described as optional
the feature can be omitted as mentioned in…
the feature is described as removal in paragraph XXXX… the description does not require any further modifications to be made once removed…
(ii) the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H‑V, 2.4 and G‑VII, 11)… because
the technical problem the invention serves to solve is X [OTP below]. This will be discussed in more detail below.
feature X does not contribute to the solution of this problem because… it is the feature of Y that provides this benefit.
When feature X is removed, the solution to the problem is still provided…the description does not require any further modifications to be made…
This feature is not included in embodiment A, which still solves this problem.
(iii) the skilled person would recognise that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention)… because
As embodiment A, does not include this feature, it is clear that the removal of this feature would not require modification to the other features….
Basis for feature Y is found in….. Therefore this amendment does not contravene Art 123(2) EPC.
Evidence of prior use / sale / etc.
When, where, what, how
In order to show that a product was made available to the public prior to the effective date, it is necessary to provide the following information: when the prior use took place; what was made available; and under what circumstances (Guidelines G-IV, 7.2).
The evidence provided of the prior use is not sufficient because…
- no evidence that product was shown at all
- no evidence that the product was displayed such that the skilled person could have devised how it worked
- the other party have not provided any witnesses
The alleged prior use is contested by the applicant and that the alleged prior use is not established beyond a reasonable doubt, in accordance with GfE G-iV, 7.2 and GL, E-VI, 3.
DO NOT LIE/MAKE SHIT UP ABOUT WHAT CLIENT HAS OR HASN’T DONE.
Permissible intermediate generalisation (for each dependency if from claim…)
Claim X being amended to include feature Y is does not contravene Art123(2) EPC.
This is because basis for this amendment is directly and unambiguously derivable from claim X/page X line Y of the original application.
Further this feature is a permissible intermediate generalisation because
–
the feature is not related or inextricably linked to the other features of that embodiment and
may be omitted
not essential
described as optional
–
the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim.
This because feature X would still be operational without the feature Y not included in clam X…
Omitted/optional/non-essential
This is because the new combination of features solves the problem of…
Corrections R139EPC
Claim 1 has been amended to correct the term [X] to be [y]. This is because it is immediately clear that the term [X] is erroneous from reading [X].
Does it make technical sense…
Is it known in the field that it should be something else…
Is there an additional document that can be used to evidence this…
Therefore it is immediately evident that term [y] and no other term was intended.
Identify the closest prior art (1-7 marks)
- Identify the aim or purpose of the claimed invention.
- Identify the prior art docs that have the same aim or purpose. If there is only one, this is the CPA.
- If two or more docs have the same aim or purpose, the document which forms the most promising starting point/springboard is the CPA (e.g., features in common can be helpful).
Claim X
The present invention relates to
[list & give references to all problems mentioned in invention]
CPA is…
Dx is the CPA because it deals with the same technical field of [general area/problem]
more specifically it deals with a similar purpose, that of [more specific area/problem of <what>]</what>
Additionally, Dx describes a [prod/proc/use/etc of claim X] having (the most) technical features in common with the subject matter of claim X,
namely [list common features]
(T606/89 and GL C-IV, 11.7, 1st paragraph)
CPA is not…
Dy is not considered to be the CPA because, although in the same general field of [general area/problem]
it does not deal with a similar purpose, specifically [more specific area/problem of <what>].
Dy deals a different problem, namely [the problem of Dy]</what>
Formulate the OTP
- Show which features the CPA discloses
- Identify which features the CPA doesn’t disclose
- Does the CPA lack the feature or have an alternative
- ID the technical effect that the difference provides
a. Select the broadest technical effect - The OTP is how to modify the CPA to provide the technical effect
Obviousness 1. CPA ALONE
Dx does not disclose [the listed points of difference]
Dx only discloses [say why the features of Dx are unrelated to DIFFs]
There is therefore nothing in Dx to suggest use of [the listed points of difference] for [solving the OTP]
- Recognise the technical problem?
- Teach away from solution? Provide solution to OTP that doesn’t fall within claim…
- Fail to suggest solution? For each novel feature…
- Alternative solution?
- Prejudice
- Significant structural/functional modifications
We therefore submit that Claim X involves on inventive step over Dx (EPC A56)
OTHER DOC (D2)
OTHER DOC (D2)
2. The person seeking to solve this OTP would not turn to Dy because
[deals with a different problem, that of….]
- Show that Dy does not show the missing feature(s).
- Show that D2 fails to disclose motivation for solving problem…
- Explain that there are technical obstacles
- D2 teaches away from
- D2 provides an alternative solution
- D2 is incompatible with
- D2 fails to provide any solution to the OTP
Furthermore, Dy makes not mention of [DIFF]
COMBINING
10. Even if he were to turn to Dy the skilled person would find no mention at all of [DIFF]
[Say what Dy does discloses and why it’s not the same as DIFF]
Explain what the skilled person would do and why this would not arrive at claim X.
D1 + D2 +D3
REPEAT for D1 + D2 +D3 if appropriate
Explain that the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features may be an indication of the presence of an inventive step (GfE G-VII, 6)
None of the prior art documents disculse…
Alternative solutions… explain why…
