Monday 22 August 2011

T 786/08 – Only Words


The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application. The reason given for the refusal was that the request on file did not comply with A 123(2), A 83, and A 84.

Claims 1 and 5 of the application as filed read:
1. A substantially pure JNK-interacting protein 1 (JIP-1) polypeptide or a biologically active fragment thereof.

5. The polypeptide of claim 1, said polypeptide comprising an amino acid sequence substantially identical to SEQ ID NO:1. (my emphasis)
The application as filed also contained the following paragraph :

Claim 1 of the request before the Board read:
1. A c-Jun NH2 terminal kinase (JNK)-interacting protein 1 (JIP-1) polypeptide, said polypeptide comprising SEQ ID NO:1, or SEQ ID NO:1 with at least one conservative amino acid substitution, wherein the polypeptide specifically inhibits the activity of JNK. (my emphasis)
In what follows, the Board examines whether this claim fulfills the requirements of A 123(2):

[2] The ED […] came to the conclusion that the wording “with at least one conservative amino acid substitution” had no basis in the following passage of the published WO application […]:
“A substantially identical polypeptide sequence differs from a given sequence only by conservative amino acid substitutions or by one or more non-conservative substitutions, deletions, or insertions located at positions which do not destroy the function of the polypeptide compared to wild-type JIP-1”.
[3] The ED noted that present claim 1 no longer comprised the term “only” […], which was present [in] the published WO application, and concluded that the expression in claim 1 “with at least one conservative amino acid substitution” went beyond the application as filed because it did not exclude “additional modifications” other than conservative amino acid substitutions, unlike the original wording.

[4] It should be established whether or not the expression in claim 1 “with at least one conservative amino acid substitution” goes beyond the application as filed. The board observes that the passage […] of the original WO application […] relates to two different options linked by the term “or” (exclusive), namely
(i) a polypeptide is “substantially identical” to the given polypeptide if it differs from a given sequence only by conservative amino acid substitutions or
(ii) a polypeptide is “substantially identical” to the given polypeptide if it differs from a given sequence only by non-conservative amino acid substitutions, deletions or insertions.

Therefore, it cannot be derived from this passage (with or without the term “only” […]) that a polypeptide is “substantially identical” to the given polypeptide if it differs from a given sequence by a combination of conservative and non-conservative amino acid substitutions, deletions or insertions.

[5] It follows that the board neither sees that the selection of option (i) […], with the omission of “only”, resulting in the expression in present claim 1 “with at least one conservative amino acid substitution”, goes beyond the application as filed, nor that claim 1 relates (as the ED suggested […]) to “additional modifications” other than conservative amino acid substitutions.

[6] Therefore, the subject-matter of claim 1 does not go beyond the content of the application as filed.

I always find such Boolean reasonings mind-bending. Let us simplify the notation. “A” shall stand for “conservative amino acid substitutions” and “B” for “one or more non-conservative substitutions, deletions, or insertions located at positions which do not destroy the function of the polypeptide compared to wild-type JIP-1”

The description provides the following “definition”:
A substantially identical polypeptide sequence differs from a given sequence only by A or by B.
This is where the first problem comes in. What is “only by A or by B” supposed to mean? Does the “only” concern “by A” exclusively or “by A or by B”? In other words we have to read – I call this “option S” (for “short”) –
A substantially identical polypeptide sequence differs from a given sequence (only by A) or by B.
or rather – let me call this “option L” (for “long”)
A substantially identical polypeptide sequence differs from a given sequence only (by A or by B).
I believe “option L” is more likely, for both linguistic and substantial reasons.

Second problem: is the “or” exclusive or non exclusive? This question only makes sense when option L is chosen, because the sequence cannot differ simultaneously “only by A” and “by B”.

So, if option L is chosen and the or is non-exclusive (what I call “option LN”), we have
A substantially identical polypeptide sequence differs from a given sequence only (by A or by B or by (A and B)).
which should be equivalent to
A substantially identical polypeptide sequence differs from a given sequence by A only, or by B only, or by (A and B) only.
Alternatively, if the “or” is exclusive, we have what I refer to as “option LE”:
A substantially identical polypeptide sequence differs from a given sequence by A only, or by B only.
For some reason that is not clear to me, the Board – ex cathedra - opts for an exclusive or. And indeed, it seems to understand the “definition” along option LE, because this is what the Board appears to say in the first paragraph of point [4] of the decision.

Claim 1 claims a polypeptide having “at least one A”. The insertion of the “at least one” is not a problem, because it is implicit in the “definition”. However, there is a problem : the “only” has disappeared, which means that a polypeptide that differs from the given sequence by both at least one A and by B would be covered by the claim as amended, whereas it does not qualify as “substantially identical” according to option LE. So I would think that the ED was right to criticize the amendment.

Let me try to state things more graphically. To do so, I introduce alternative “C” which shall correspond to substitutions etc. which are different from both A and B.


For instance, a point lying in the intersection of domain A and domain C represents a polypeptide which differs from SEQ ID NO:1 by both “A-type” and “C-type” modifications, etc.

The “definition”, if understood according to option LE, covers the following shaded domain:


The claim as rejected by the ED covers sequences differing by [at least one] A:


I believe that this claim covers subject-matter not covered by the definition (understood along LE), because it also covers the whole domain of intersection between domains A and C. In other words, we have an A 123(2) problem.

What if the “or” is inclusive (option LN), which is, in my opinion, what the drafter of the patent intended? I would say that in this case also, there is an A 123(2) problem.

The domain covered by the definition (option LN) is:


Still, the claim as depicted above covers a domain that extends beyond the domain covered by the definition (option LN), i.e. it also covers the intersection of A and C, which is not covered by the definition.

Obviously, the difficulty would disappear if the word “only” was inserted into the claim, because then the claim would cover the following domain:


which is of course covered by the definition, according to both LE and LN.

So, at the end of the day I have to agree with the ED and disagree with the Board.

Is there an error in my reasoning? If so, please let me known where.

NB: I would like to thank my colleague Alban Sidhu who has been willing to dive into this complex subject-matter with me.

Should you wish to read the whole decision, click here. The file wrapper can be found here.

6 comments:

Myshkin said...

I would understand "differs only by A or by B" as ("differs only by A" OR "differs only by B"). It simply gives two options for the difference: A or B, not also "A+B".

Without the word "only" it would probably have to be understood as "differs at least by A or by B", which then also covers "differs by A+B" (and A+X for all X and B+Y for all Y).

If a claim states "wherein X is A or B", it will normally mean "wherein X is A" exclusive-OR "wherein X is B". The word "or" used in a claim needs interpretation and cannot as a matter of law be equated to the mathematical OR. In the present case we have "wherein the difference is equal to A or to B", at least that's how I read it.

Myshkin said...

Regarding the decision, shouldn't claim 1 be understood as excluding all other types of substitution? It covers precisely option (i), therefore is disclosed. I would say the ED's reasoning is incorrect, because claim 1 DOES exclude "additional modifications". The expression "a sequence differing from SEQ1 only by one or more modifications of type A" seems equivalent to "a sequence obtained from SEQ1 by one or more modifications of type A", which is essentially what claim 1 amounts to.

The Board's reasoning is a bit confusing in that it determines that something can NOT be derived from the description in order to arrive at the conclusion that something else CAN be derived from the description. Of course for the question whether claim 1 is directly and unambiguously derivable from the application as filed it is irrelevant whether another expression has a basis or not.

I think what the Board meant to say is that the interpretation according to which both types of substition must be present is incorrect. However, this was not the ED's reading of the passage at all, so... the reasoning is simply confusing, or I am missing something.

It could also be that I am simply misreading everything, since this is not my technical field at all.

Myshkin said...

Hmmm, I now remember a blog post from a while back where in the comments I proposed that "obtained by step A" also covers "obtained by step A and step B" where B may be anything one can imagine... Found it: T 2285/09

Well, I still think that in the present case claim 1 has an implicit "only".

Rimbaud said...

Gee! This is a very neat post!

I agree with Myshkin-00:53 (you oughta sleep).

This reminds me of a US decision making a grammar logic analysis: (partially quoted from PatentLawPractice Yahoo group, 21.7.2011):
We agree with DirecTV. The phrase "at least one of" precedes a series of categories of criteria, and the patentee used the term "and" to separate the categories of criteria, which connotes a conjunctive list. A common treatise on grammar teaches that "an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term." Willaim Strunk, Jr. & E. B. White, The Elements of Style 27 (4th ed. 2000). Thus, "in spring, summer, or winter" means "in spring, in summer, or in winter." Id. Applying this grammatical principle here, the phrase "at least one of" modifies each member of the list, i.e., each category in the list. Therefore, the district court correctly interpreted this phrase as requiring that the user select at least one value for each category; that is, at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type. [Superguide Corp. v. DirecTV Enters.,Fed.Cir.2004]

Anonymous said...

This is indeed a weirdly argued decision, but in its outcome probably correct. As Myshkin has commented above the "only" with respect to the permitted variation in the sequence listing (a very special case)is implicit, if it weren't the claim would be effectively meaningless. Would it be politically incorrect to ask whether this type of decision is what you get when you make a lawyer the chairman of a technical board dealing with comlex subject-matter??

oliver said...

May I ask you not to use this blog for personal attacks, please. The decision was issued by the Board as a whole and we do not even know whether the chairman agreed with the outcome or not.