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Guidelines for Examination

 
 

Annex
Examples concerning essential features

Example 1 

Claim 1 relates to a method for storing gel-coated seeds having a gel coat comprising an aqueous gel having been made water-insoluble by a metal ion. The method is characterised by storing the gel-coated seeds in an aqueous solution containing said metal ion. In the description the object of the invention is defined as providing a method for storing gel-coated seeds easily without causing reduction in yield and handling properties. It was emphasised in the description that it is necessary to confine the metal ion concentration to a specific range in order to achieve the goals of the invention. A metal ion concentration outside the specific range was presented as negatively influencing yield and handling properties. The subject-matter of claim 1 - which does not indicate the specific range - therefore does not solve the problem stated in the description.

Example 2 

The invention relates to an apparatus for concave shaping of a metal strip. In the closest prior art, the metal strip is passed transversely to its length through a shaping set of rollers at which the concave shape is applied to the strip. According to the description, the problem is that the rollers are unable to subject the lateral ends of the strip to a curve-creating force and so the lateral ends normally end up planar. The distinguishing feature of the independent claim specifies that a flexible belt or web-like member is provided to support the strip in its passage through the shaping set of rollers. This feature is sufficient to solve the problem. Further features, e.g. the details of the mechanism for advancing the strip into the shaping set of rollers or the provision of at least three rollers, are not necessary to solve the problem: such additional features would unduly restrict the claim (see T 1069/01).

Example 3 

Claim 1 is directed to a shut-off device for preventing the spread of fire in ducts in ventilation systems. According to the description, the problem to be solved is to provide a duct shut-off device which in a non-activated state will offer the lowest possible flow resistance in the ducting. The description consistently discloses that this problem is solved by providing plates extending in the flow direction which are coated with a particular fire-protection paint that expands far more than the material normally used in the art. The inter-plate spacing may thus be increased, which leads to a reduction of flow resistance. However, the adhesion properties of the paint requires that the plates must have a particular length. Since the description consistently indicates that the solution to the problem consists not only in the length dimension of the plates but also in the provision of high-expansion paint, the independent claim has to include this latter feature. It is not sufficient to define only the dimensions of the plates since this implies neither the use of a specific fire protection material nor an increased spacing of the plates (see T 575/02).

Example 4 

Claim 1 is directed to an apparatus for coding television signals comprising, amongst other features, a parameter generating means which ensures that the error between the pixel data of the predicted and actual current fields is minimised. The description describes only one example for minimising the error, namely a method of least squares. What is important is that the skilled person would be able to realise how the error minimising function can be implemented: it is not relevant in this context whether the method of least squares is the only method applicable. It is therefore not necessary to further restrict the claimed parameter generating means in the sense that it uses a method of least squares (see T 41/91).

Example 5 

According to the description, the object of the invention is to provide a monitor for acquiring and processing EEG data which provides improved signal quality and is impervious to electrical noise pollution. The description indicates that this object is achieved by providing separate data acquisition and data processing modules and by using specific elements - notably a sigma-delta modulator and a decimation filter - in these modules. Since both the modulator and the decimator are of importance in achieving an improved noise ratio performance, both of these components have to be defined in the independent claim. Moreover, since the provision of separate, detachable modules is consistently presented as being of only secondary importance for noise reduction, it is not sufficient that only this feature appears in the independent claim (see T 1126/01).

Example 6 

The description states that a compound C is obtained by reacting a mixture of A and B for at least 10 minutes at 100°C. It is emphasised that A and B must be reacted for this minimum amount of time, as otherwise the reaction will be incomplete and C will not be formed. Claim 1 is directed to a process for the production of compound C, characterised by reacting a mixture of A and B for 5 to 15 minutes at 100°C. The claim does not contain all the essential features of the invention, as the description clearly states that for the reaction to be complete, it is necessary to react A and B for at least 10 minutes.

Example 7 

The description identifies the problem to be solved as providing aerosol compositions wherein the percentage of undesirable volatile organic compounds (VOCs) required as propellant is dramatically decreased, resulting in less VOC release to the atmosphere. Claim 1 specifies the minimum amount of at least 15 weight% of propellant (which is a VOC) in the aerosol, but is completely silent about any maximum amount thereof. The problem underlying the application of releasing less VOCs into the environment is solved only when the propellant does not exceed a particular maximum amount in the aerosol composition: this maximum value is therefore an essential feature of the invention. Claim 1 covers aerosols comprising any amount of propellant greater than or equal to 15 weight%, thereby covering the deficient high percentage of propellant present in conventional aerosols. The percentage of undesirable VOCs in the claimed aerosol compositions is therefore not "dramatically decreased", and so the stated aim of the present invention is not achieved (see T 586/97).

Example 8 

The problem to be solved as indicated in the application consists in improving the yield and purity of the 2-alkylthiazole-5-carboxylic acid chlorides obtained in the preparation process of the invention. Comparative examples show that once the reaction temperature is not within the range from 20°C to reflux, the 2-alkylthiazole-5-carboxylic acid chlorides are not obtained with an improved yield and purity; hence, the desired technical effect is then not achieved and the problem underlying the application is not solved. The problem underlying the application is solved only when the reaction temperature is from 20°C to reflux, with the consequence that this feature is essential to the performance of the invention and must be included in the independent claim (see T 488/96).

Example 9 

As regards diagnostic methods, the Enlarged Board of Appeal has indicated (see G 1/04 that if the deductive medical or veterinary decision phase is unambiguously derivable from the application or patent as a whole, it is to be included as an essential feature in the independent claim. In other words, if the inevitable outcome of the first three phases of such a method (see G‑II, 4.2.1.3) is a specific diagnosis for curative purposes allowing the deviation to be attributed to a particular clinical picture, the decision phase must be included in the independent claim in order to fulfil the requirements of Art. 84. However, this may cause a claim to be excluded from patentability under Art. 53(c) (see also G‑II, 4.2.1.3). The requirement that the final decision phase be included in the independent claim as an essential feature is to be applied only if it is clear from the application/patent as a whole that the inevitable result of the findings leads unambiguously to a particular diagnosis: this will have to be decided by the examiner on a case-by-case basis.