Paper B E/M 2015 - A skiing adventure
Paper B 2015 (English, French, German) tasked the candidates with a ski locating system for locating a ski after it is lost in an accident. My first impression is that this was not a very easy paper. Getting the claims right requires some careful slaloming to avoid the added subject matter problems.
Claim 1
The first reading of Claim 1 already shows a few problems. The characterizing portion added by the client further defines the actuator in a functional manner: "the actuator (4a) moves automatically from the first to the second position upon separation of the ski boot (3) from the ski (1 )". But, one wonders how technically this is to be done. Furthermore, the claim refers to "separation of the ski boot (3) from the ski (1 )" and that the ski is 'for use with' the ski boot. This seems to leave the relationship between ski and boot unclear.Looking to the support for this claim, we find two embodiments for a ski, one with a two-piece ski binding and one with a one-piece binding. Only in the two-piece binding ski are the radio transmitter (5) and a switch comprised in the ski.We find that the switch moves automatically because of an elastic element. No other mechanism for moving the actuator is given, so the elastic element seems essential for the invention. The elastic element should thus have been included when amending the claim.
Should the fact that this ski has a two-piece binding be included in the claim? I think it should. With a one-piece binding the ski would not work, as the actuator is integrated with the ski.
The characterizing portion was based on D1. This documents seems to be the closest prior art. Only D1 shows a ski that allows to a skier to locate his ski when it is lost. The system of D2 tracks a ski by registering its passage past stationary radio transmitters. So unless you lost your ski close to such a transmitter it won't help to find your ski. D2 does not show a way for the user to recover his ski, and is also not suitable when the ski is lost under the snow. Therefore, for use in case of accident, the system of D1 seems much better.
Claim 2
The client has made two amendments to this claim.First of all, 'further' has been added to distinguish the switch in Claim 2 from the switch in Claim 1. This seems a good amendment, and even has explicit support (section 9, line 24).
Second, the client has added that the further switch is arranged to deactivate the radio transmitter 'when the two-piece ski binding is manually opened'. However, this phrase is absent in the application. This amendment should be corrected. Section 9 gives a close alternative, a manually operable switch.
There is a problem with this amendment though, as the text indicates that this is only one possible embodiment ("The switch 10 may be a manually operable switch."). If we take the text for its word one could amend the claim functionally. For examples as follows: "Ski (1) according to claim 1, comprising a further switch (10) arranged to deactivate the radio transmitter (5), when the ski is not in use."
However, the text gives only one specific example, which makes the support for this broader claim questionable. So we have opted for the more specific claim (see below).
Claim 3
As in Claim 1, the 'for use with' phrasing looks unclear. Following the logic for Claim 1, the preamble is amended by clarifying the relationship between ski binding, ski and ski-boot. The application shows only one embodiment in which a switch and transmitter are part of a binding, so the Claim is restricted to a one-piece binding.The original claim 5 includes the phrase 'for use in a system for locating a ski'. One could wonder if it is allowed to remove this from the claim, as the client has done. However, the new claim is almost entirely made from parts of the text (only the word 'ski-binding' remains of the original claim.) As the relevant section does not have this phrase, and neither does the mirror claim 1, it seems okay to leave it out. So we follow the clients lead here.
Claim 4
The client has included a claim for a ski-binding with the further switch. However, the application only gives support for a ski with a further switch. The application gives no basis for moving the switch to the binding. Accordingly, this claim has no support. I don't see how to salvage it, so it is removed.Claim 5
This claim depends from two different independent claims. Although unusual, this is allowed by the Guidelines (F-IV-3.4). So there is no need to split the claim. Moreover, the client does not want us to add dependent claims. The text copied from the application misses the part 'U-shaped'. There is no support for the more general 'bar'. Since we removed claim 4, we will have to correct the reference from claim 4 to claim 3. As we are now referring to the more general claim, we may as well add the same dependency for the ski version of the claim.Below is our version of the claims:
CLAIMS:
1. Ski having a two-piece ski
binding (8) for attaching for use with a ski boot (3) to the ski (1), the ski
(1) comprising a radio transmitter (5) and a switch (4)
connected to the radio transmitter (5), the switch (4) comprising an actuator
(4a) being moveable between a first position in which the radio transmitter (5)
is inactive and a second position in which the radio transmitter (5) is active,
characterized in that the switch (4) comprises an elastic element for automatically
moving the actuator (4a) moves automatically from the first to the second
position upon separation of the ski boot (3) from the ski (1 ).
2. Ski (1) according to
claim 1, comprising a further switch (10) arranged to deactivate the radio transmitter
(5), when the two-piece ski binding is manually opened the further
switch (10) being a manually operable switch.
3. One-piece
Ski ski binding (8) for attaching use with a ski boot (3) to a ski, the ski binding (8)
comprising a radio transmitter (5) and a switch (4) connected to radio
transmitter (5), the switch (4) comprising an actuator (4a) moveable between a first position in which the radio transmitter (5)
is inactive and a second position in which the radio transmitter (5) is active,
characterized in that the switch (4) comprises an
elastic element for automatically moving the actuator (4a) moves automatically from the first to the
second position upon separation of the ski boot
(3) from the ski binding (8).
Sander & Jelle
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Thanks for posting your solution! I think my solution is quite similar to yours.
ReplyDeleteHowever, I considered the transmitter transmitting the frequency at a characteristic frequency to be essential. Otherwise it would not be possible to find “the” ski. In other words, if the frequency would not be characteristic for the ski, it would only be possible to find some ski because the particular ski could not be identified.
Also, I added some statement that the switch is initially brought into the first position in which it is inactive when engaged by a ski boot. I added this for clarity reasons (based on §7), but now I believe this was unnecessary. Hopefully, it is not too limiting.
Preparing the claim set took me quite a while. So when preparing the response I ran out of time. I have the impression that many others had the same problem.
I think that Claim 1 as presented above is unduly limiting and doesn't provide protection for all of the client's products. The client explicitly states in the letter that "we sell skis comprising our invention for use with two-piece ski bindings" (see para.[004] of client's letter). Claim 1 as formulated above is limited to a ski comprising a two-piece ski binding. Instead, I think that the preamble of Claim 1 should read: "A ski for use with a two-piece ski binding for attaching a ski boot to the ski.." In this way, the claim protects the ski independently from the ski binding. I have to agree with blchris' comment regarding the available time. I found that once the claim amendment had been dealt with, supporting basis discussed including R.43(2) EPC argumentation for justifying the presence of two independent claims of the same category, and the Examiner's other objections had been addressed, this left hardly any time to carry out a thorough problem-solution inventive step analysis of all three prior art documents. I think it would have been fairer had there only been two prior art documents. As it was, the inventive step analysis had to be rushed.
ReplyDeleteThanks for the comments.
ReplyDelete@blchris:I don't think the frequency need to be part of the claim. The invention would work for one ski and one frequency. Just not as good.
I had wondered if the claim should be amended a bit to make clear that the transmitter is inactive when the boot is inserted. I guess it is clear as it is, so I decided against it. In any case, this is the intended scope, so I wound not expect that making this aspect explicit would be very damaging.
@disappointed: You make a fair point there. I guess our claim 1 could be bit broader referring to the two-piece binding instead claiming the combination.
My approach was to use alternatives in claim 1 such that it covered either the ski or the one piece binding. In this way I deleted the second independent claim, and removed the R 43(2) issue. It seemed to me that justifying the "inappropriateness" of a single claim, as required by R 43(2) was very difficult and that the alternatives in a single claim gave appropriate protection to all products mentioned.
ReplyDeleteRegarding the R.43(2) EPC issue, you could argue that the one-piece binding and the ski are two different solutions to the same objective technical problem.
DeleteI agree with your position @Disappointed, but the portion of R43(2)(c) after the comma further requires that it be inappropriate to claim the two different solutions in a single independent claim. That was where I had my trouble. It did not seem to me to be "inappropriate" to claim them in a single independent claim.
Delete@Jim Bell it could be argued that it's inappropriate because the applicant has provided two different solutions to the objective technical problem: a ski with the characteristic feature; and a ski binding with the characteristic feature. Both the ski and binding share unity of invention because they share common special technical features. If the applicant were forced to combine both solutions in a claim of the form Ski + binding, then the applicant is losing out on protection for the Ski on its own and the binding on its own - thus, effectively penalising the applicant. This is why it is inappropriate to combine both solutions into one claim. At least, this is what I argued.
DeleteI assume from your post that you introduced the two solutions as different options in the form "A ski or a ski binding comprising..." I hadn't considered this option.
is there a problem with the use of the word "automatically"?
ReplyDeletecan't we consider there is a clarity risk since it could be understood as a method claim ?
Thanks for posting this Sander & Jelle!
ReplyDeleteHorrible paper I thought - It was like the old-style papers with three prior art docs and quite a few issues to sort out with the claims, but we only had three hours rather than four. I thought there were a lot of close calls to make on the amendments. Feeling very unconfident about this one.
@Article 84 - I agreed, and had something like 'elastic element arranged to push the actuator into the second position' (I forget the exact wording now), as I felt 'automatic' was not in the spec, and claimed the features as a result to be achieved. I also included that the actuator was arranged so as to be pushed into the second position when the boot was attached - I weighed it up a lot but thought on balance that i) Claim 1 didn't make a lot of sense with out this, ii) Claim 1 would not actually achieved the advantage of reducing power consumption without this feature, which is what the client says in the letter is the important advantage and iii) the feature of 'automatic moving to the second position' is only ever described in conjunction with the actuator in the first position when the boot is attached, so it would perhaps be adding matter to extract one of these alone.
I also agreed that claiming ski+binding felt too risky as it wouldn't cover the client's products, so avoided explicitly claiming the binding in Claim 1.
I missed the need for 'one-piece' on Claim 3 - agree with you guys on this now I've looked at it again. Damn.
@ Still recovering: thanks for your point of view.
ReplyDeleteIn fact, I have also specified that the element is arranged to push the actuator into the second position.
regarding the combination ski+binding in claim 1, I believed it was possible to argue that the binding not essential: it was said that "the switch and the transmitter do not form part of the binding" page 2 lines 5-6. The binding was not involved in the problem to be solved.
What about not limiting the actuator in claim 1 to the elastic element?
ReplyDeleteI considered the elastic element is not mentioned as essential in the description, further there is no need for such element to carry out the invention but only need for means for actuating (implicit), i.e. means for moving by any type of force (common general knowledge), and its removal from the claim does not requiere modification of other features from claim.
I think essentiality of the invention is on the switch movement per se rather than on how the switch is moved, e.g. elastically.
For claim 1, I added the feature "elastic element" and also "to transmit at a characteristic frequency". Don't know if the second feature is necessary, but also don't think it does much harm to the claim.
ReplyDeleteFor claim 2, I added the "further" and "manually operable" ( also don't know if the second feature was necessary.
Cancelled claim 4, and added "wherein the ski binding is a one-piece binding"...
Claim 5, added the "U-shaped" feature.
A little worried because I chose as closest prior art D3. Reason: it is the only prior art document directed to providing a signal to a user when a ski becomes detached from a ski boot. D1 and D2 relate to locating people on the basis that their skis are not detached from their ski boot.
Might have to retake this paper next year....
Dear all,
ReplyDeleteIn my solution to paper B, I chose to limit the first claim with the three embodiments described for the actuator 4a : metal plate, U-shaped bar or push button. In other words, I included the features from claim 5 from the set of claim suggested by the client.
I made this choice to avoid intermediate generalization: We were indeed forced to include in the first claim the elastic element 4b and in the context of the patent application, section [008] clearly discloses a 3 items closed list for the actuator 4a (metal plate, U-shaped bar or push button). So it was according to me necessary to limit the claim to such 3 options as this actuator 4a closely interacts with the elastic element 4b and there is no clue that an other type of actuator could work... So the description is clearly limited to these 3 options. Only claim 2 as filed remains very broad by not specifying the features of the actuator 4b, but since this claim is so broad and does not solve the technical problem, it was for me not sufficient to keep such a broad definition in the amended claim 1. In any case, it seems to me that it was at least necessary to discuss "intermediate generalization (H-V, 3.2.1) regarding the inclusion of the elastic element because it was not obvious to extract it from the description like that without discussing its interaction with actuator 4a. What do you think about that? But I do not see that anywhere...
An other hint actually maybe stronger seems according to me that document D3 clearly discloses that some combinations between an actuator 4a and a spring does not function in a reliable manner, as the actuator is not always pushed upwards when the ski boot is removed due to the ice. In summary not every combination of actuator 4a and spring makes a working switch. As this part of the device from D3 is very similar to the one from the present invention, it was for me an indication that claiming a broad combination between actuator 4a and an elastic element 4b would encompass non working embodiments and would consequently lack of inventive step... For me that was also the only interest of document D3 which seems otherwise useless in view of the exam. What do you think?
And in the case this reasoning is wrong, do you think such kind of limitation can cost a lot of points?
Thank you in advance for any potential feedback :-) !