T 0291/04 () of 28.2.2005

European Case Law Identifier: ECLI:EP:BA:2005:T029104.20050228
Date of decision: 28 February 2005
Case number: T 0291/04
Application number: 96307427.3
IPC class: A61B 10/00
Language of proceedings: EN
Distribution: D
Download and more information:
Decision text in EN (PDF, 58.985K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: Instrument for measuring saliva viscoelasticity to determine female fertile period
Applicant name: Kosasky, Harold J.
Opponent name: -
Board: 3.2.02
Headnote: -
Relevant legal provisions:
European Patent Convention 1973 Art 123(2)
European Patent Convention 1973 Art 84
European Patent Convention 1973 Art 56
Keywords: Extended subject-matter (no, after amendments)
Clarity, inventive step (yes)
Catchwords:

-

Cited decisions:
-
Citing decisions:
-

Summary of Facts and Submissions

I. The appellant (applicant) lodged an appeal on 18. November 2003 against the decision of the examining division posted on 29 September 2003 on the refusal of the European patent application No. 96 307 427.3. The fee for the appeal was paid on 20 November 2003, and the statement setting out the grounds of appeal was received on 9 February 2004.

II. The examining division held that the application did not meet the requirements of Articles 123(2) EPC, 84 EPC, and 56 EPC having regard to the document:

D1 = US-A-4 779 627 (cited in the application).

III. Following a communication of the board, the appellant requested with letter of 2 February 2005 that a patent be granted on the basis of the following:

Claims:

1. to 7 filed with letter of 2 February 2005,

Description:

pages 1, 2, 8 to 22, 24 to 26 as originally filed,

pages 3, 6 filed with letter of 12 March 2002,

pages 4, 5 filed with letter of 2 February 2005,

pages 7, 23 filed with letter of 15 November 2004,

Drawings:

Figures 1 to 28 as originally filed.

IV. Claim 1 reads as follows:

"A component for an instrument for determining the female fertile period by measuring the viscoelasticity of saliva, said component comprising a stratum composed of a rigid material, a surface (350) of said stratum having a random distribution of peaks (352) and valleys (354) characterised in that the average depth of said valleys (354) as measured from the plane defined by the top of the peaks (352) is in the range of 10 picometers to 100 micrometers and the total area of the walls of said valleys (354) below one half of said average depth being from 35% to 65% of the total area of said stratum surface (350)."

V. In support of his request, the appellant relied essentially on the following submissions:

The newly filed claim 1 was drafted so that the objection of extended subject-matter raised in the decision under appeal was overcome.

The claim was also clear, since it was obvious in the context of the description that the plane defined by the tops of the peaks meant the plane defined by the top of the highest peaks, and that the valleys were those valleys which had the highest peaks and defined by valley sides or walls which defined maximum valley depths.

The subject-matter of claim 1 implied also an inventive step, since no document of the available prior art suggested the range of values for the average depth of the valleys and the distribution of the total area of the walls as claimed in the characterizing portion of the present claim 1.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments

The features of the present claim 1 are disclosed in the originally filed claim 16 in conjunction with Figure 28 and the corresponding description, and on page 20, lines 14 to 32 of the original description.

The dependent claims 2 to 7 correspond to the original claims 18 to 23. The description has been adapted to the newly filed claims.

Therefore the present documents meet the requirements of Article 123(2) EPC.

3. Clarity

The board does not agree to the findings of the examining division according to which the average depth of the valleys was not clearly defined, since neither the definition of the valleys was clear, nor the definition of the plane used for the measurement of the depth of the valleys. In the light of Figure 28 and its description it is obvious for the skilled person that the term "valleys" (354) defines the deepest valleys in the surface and not the subvalleys at the slope of these valleys. Furthermore it is also obvious that the term "plane defined by the top of the peaks" defines that plane which is defined by the highest peaks. These definitions of the valleys and the plane are in line with the definition of the valleys and the base profile which were normally used for the determination of the peak-to-valley height (or roughness) of a surface (see for example DIN 4760).

Therefore, claim 1 gives an unequivocal teaching to the skilled person, and meets the requirements of Article 84 EPC.

4. Inventive step

4.1 D1, which is considered to represent the closest state of the art, discloses a component for an instrument for determining the female fertile period by measuring the viscoelasticity of saliva, said component comprising a stratum composed of a rigid material, a surface of said stratum having a random distribution of peaks and valleys (roughness, see claim 5).

4.2 Starting from D1, the object underlying the patent application in suit may be regarded as to provide a sufficiently small surface for the saliva sample (in order to ease the operations by keeping small the dimensions of the instrument), but still such that the adhesion of the saliva to the surface is higher than its cohesion (i.e. the saliva sample separates under traction before separating from the support surface) (see description, page 3, line 15, to page 4, line 13).

4.3 This object is achieved by the provision of a stratum surface, wherein the average depth of the valleys as measured from the plane defined by the top of the peaks is in the range of 10 picometers to 100 micrometers and the total area of the walls of said valleys below one half of said average depth being from 35% to 65% of the total area of said stratum surface.

4.4 The provision of such a surface is not suggested by the available state of the art. D1 discloses a roughness of the surface in the order of 10 to 20 thousandths of an inch corresponding to 250 to 500 micrometers (see column 3, lines 12 to 27). With respect to these values it is obvious that the average depth of the valleys according to claim 1 of the application is clearly below the corresponding depth of the valleys described in D1, and that the stratum surface defined in claim 1 is neither known from nor suggested by D1.

The further documents of the available state of the art do not disclose the claimed range of values either.

4.5 Accordingly, the subject-matter of claim 1 involves an inventive step.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance with the order to grant a patent on the basis of the following version:

Claims:

1 to 7 filed with letter of 2 February 2005,

Description:

pages 1, 2, 8 to 22, 24 to 26 as originally filed,

pages 3, 6 filed with letter of 12 March 2002,

pages 4, 5 filed with letter of 2 February 2005,

pages 7, 23 filed with letter of 15 November 2004,

Drawings:

Figures 1 to 28 as originally filed.

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