Comments on EQE 2010 Paper A Chemistry Part I

I have studied paper A 2010 (Chemistry) recently, first of all to see if the method you can download from this website still would have worked and secondly to see what the paper was all about. I did not draft any claims, yet wrote down in general which claims I think were expected.

After having done so I checked the eqe-online forum and found out there was quite some discussion going on about what should be claimed. Below my personal opnion and some thoughts on this. I'll probably post some more on this paper later.

In his letter, the client indicates that he would like to have protection not only to the specific invention described but that he would also like coverage for any other application that may be envisaged in the future. The client does not give any example of such a possible other application.

The letter then continues by stating the main problems of the known bio-active glasses:

- known glasses need to be ground, which results in
            o non uniform particles; some of them are too large
            o irregular in shape
            o random arrangement encourages irregular bone structure
            o use of powder may be dangerous

- known glasses cannot be drawn into fibres easily and fibres not very well absorbed in the bone

The basic idea of the invention resides in the finding that certain compositions were found that in fact can be drawn in fibres easily and that these fibres (when cut) are very suitable for ossification.

(Note that the client does not mention anything about grinding the “inventive” composition, he only talks about making the fibres!)

The prior art consists of two small documents, D1 basically corresponding to what the client already described in the letter. D2 also discloses glass compositions, but does not mention anything about the use  thereof as bioactive material.

Unfortunately (?) D2 discloses compositions that fall in the range of compositions that were found to be suitable by the client. In fact, D2 discloses the exact same compositions as in the examples provided by the client.

Thus, a composition can not be claimed as it is not novel over D2.

There is an interesting discussion on the eqe-online forum where some people are of the opinion that it was possible to add a disclaimer, thereby disclaiming the D2 compositions. Ocassionally reference is made to G1/03.

My personal opinion is that introduction of a disclaimer is incorrect:

- With respect to G1/03 it is noted that this decision relates to amendments. More in particular, the decision sets out the criteria to be met when amending an application by introducing an “undisclosed disclaimer” without offending against Article 123(2). Obviously when you are drafting a patent application you are not amending anything so that these criteria don’t apply and G1/03 is not so relevant at all. (You can disclaim anything you like in an application; it will by definition be a “disclosed disclaimer”.)

So, the argument that "D2 is from a totally remote field" is in my view irrelevant for arguing the introduction of a disclaimer.

- More importantly, D2 clearly discloses “compositions around compositions 1-3”. This means in my opinion that D2 not only discloses the compositions 1-3 but also compositions that are “close”. So, a disclaimer disclaiming the three compositions from D2 only would arguably be insufficient to create novelty over D2. The result is a strange situation where you cannot really disclaim what D2 discloses. To me this was a clear pointer that a disclaimer is not what the exam committee is looking for.

- Further to this the compositions of D2 are exactly the same as the compositions according to the client's examples. This again is (in my view) a hint that a disclaimer is not appropriate.

In this respect it is finally noted that (although not explicitly mentioned as far as I know) the composition as such only solves the technical problem of being able to be drawn into fibres more easily. All the other technical problems mentioned above seem to be solved only by making fibres from the compositions first.

All in all, I don’t think you could have claimed a composition.

(As a general comment I can add that I found this paper a bit more difficult than the paper of 2009.)