Our solution for Paper A 2023 - Electric plaster for skin problems
Here's our attempt at this year's paper A.
The topic was electric plasters for treating skin. A voltage was created by placing a triboelectric material between two copper sheets. The voltage is then transferred to the skin. This can have a medical application, treatment of wounds, or a non-medial application, treatment of wrinkles.
EQE aficionados might consider this a sequel to paper C of 2012. First impression is a well made paper without major problems. The focus was mostly on E/M issues.
You can find our attempt and discussion at the 'read more' below.
[Update 14/3/2023:] We also added the full text and figures of the paper at the end of the blog post for easy reference.
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
For claim 1, we expect the following elements.
- a device, and some limitation making the device wearable on skin.
- a flexible substrate.
It's
debatable if flexible should limit the substrate, or perhaps the device
itself. We’ve opted for the former, but I could imagine claiming a flexible
device instead.
-
the first and second sheet.
The sheets should be electrically conducting and attached to the substrate. Also the substrate should isolate the sheets from each other. One can can quibble whether the latter is enough, I could imagine claiming that the sheets are electrically isolated from each other as well.
- a
triboelectric material, and some limitation to indicate its function in the
device.
The location of the triboelectric material should not be limited to the ends of the sheets.
- a
first electrode (4a) and a second electrode (4b), the gap between, and some indication
of their relationship with the rest of the components.
A disadvantage of this wording is that it may seem that electrode and sheet are sperate elements, even though they could be aspects of the same thing. Another wording could avoid this impression, but it would hurt the clarity. We don’t expect this to be needed.
A bit of care is required for claiming the gap, since Document D2 also shows a gap (8), where an electric field will form. If you’re not careful you might have a non-novel claim. We have opted for a functional limitation to distinguish from D2, as this gives a clear and broad claim, while still distinguishing from D2. In our claim the electric field should be applied to the skin, which D2 doesn't do. It is not necessarily impossible to claim this aspect structurally, but the paper gives little guidance towards a good wording for this. So we expect the functional approach to be expected.
As to the dependent claims, we’d expect the two main embodiment types (plaster and bandage) to get a claim. For the bandage it seems worthwhile to claim the position of the sheets with respect to the substrate as this is quite different than in D1/D2, and thus a strong fallback.
Details that we picked out for dependent claims further include the position of the triboelectric material, the folding of the sheets, and the use of wires. Note that we have embodiments with 1 and with 2 wires. We’ve opted for an and/or claim to cover this, but one could avoid an or-claim using ‘as least one of’.
For the materials, we invested four of our 15 claims. Although 3 materials are mentioned for the sheet and 3 materials for the triboelectric material, we’ve claimed only 2 of each. The reason being that only 2 materials seem to work well. Finally, there is one combination that is best. This follows from the table as well as from the description. For the electrodes we also have an advantageous material, an antibacterial composition.
There are two applications for the device: medical and non-medical. A method claim for the medical application is not possible, so we’ve added this as a limitation in a device claim. For the non-medical application, we added a method claim, though a use claim would also be possible. Note that the claims should be limited to intact skin, otherwise you’d get a medical effect as a side effect.
Claim 1. A
device (14), which is wearable on the skin, the device comprising
- a flexible substrate (1),
- a first sheet (2a) and a second
sheet (2b), both attached to the substrate (1), the first sheet and the second
sheet being both electric conductors, the substrate electrically insulating the
first and second sheet,
- a triboelectric material (15) attached
to a part (3b) of the second sheet (2b), a part (3a) of the first sheet overlaying
the triboelectric material (15) and being arranged to adhere to and separate
from said material (15) when the substrate (1) is deformed causing a voltage to
appear between the first and second sheets (2a, 2b), and
- a first electrode (4a) and a second
electrode (4b) forming a gap (8) between them, the first electrode (4a) and the
second electrode (4b) being electrically connected respectively to the first
sheet (2a) and the second sheet (2b), the first electrode (4a) and the second
electrode (4b) being arranged to apply an electric field to the skin (11) when
the device is worn on the skin at the gap.
Claim 2. A
device as in Claim 1, having the shape of a plaster.
Claim 3. A
device as in Claim 1, having the shape of a bandage.
Claim 4. A
device as in Claim 3, the first sheet (2a) and the second sheet (2b) being
attached to opposite faces of the substrate (1).
Claim 5. A
device as in any of the preceding claims, wherein the part (3b) of the second
sheet is an end of the second sheet, and/or wherein the part (3a) of the first
sheet is an end of the first sheet.
Claim 6. A
device as in any of the preceding claims, wherein the first electrode (4a) and/or
the second electrode (4b) are electrically connected respectively to the first sheet
(2a) and the second sheet (2b) via an electrical wire (5a, 5b) extending
through the substrate (1).
Claim 7. A
device as in any of the preceding claims, wherein the first sheet (2a) and the
second sheet (2b) are attached to a top face of the substrate and fold around
the substrate extending along a bottom face of the substrate (1), the ends of
the first sheet (2a) on the bottom face forming the first electrode (4a) and
the second electrode (4b).
Claim 8. A
device as in any of the preceding claims, wherein the triboelectric material is
polytetrafluoroethylene (Teflon) or poly (4,4'-oxydiphenylene-pyromellitimide)
(Kapton).
Claim 9. A
device as in any of the preceding claims, wherein the first sheet and the
second sheet are copper or zinc.
Claim 10. A
device as in any of the preceding claims, wherein the triboelectric material is
Kapton and the first sheet and the second sheet are copper.
Claim 11. A
device as in any of the preceding claims, wherein the first electrode and the
second electrode are silver.
Claim 12. A
device as in any of the preceding claims, wherein the first and second electrodes
are coated with an antibacterial composition.
Claim 13. A
device as in any of the preceding claims, wherein the first and second
electrodes are interdigitated.
Claim 14. A
device as in any of the preceding claims for treating a wound.
Claim 15. A
cosmetic method of smoothing skin wrinkles, comprising
- wearing a device according to any of
the preceding claims on intact wrinkled skin.
We look forward to your comments!
Sander, Roel, Jelle
(c) DeltaPatents
Annex - the complete paper - copied from Wiseflow "EPO – EQE Compendium"
NB: when copying, the line numbering got lost. Please click on the figures for a full-size view.
Client‘s letter
Dear Ms Vande,
[001] Our company sells healthcare devices to doctors and the general public.
We are
specialised in wearable devices for treating skin wounds and other skin
problems.
[002] It is known that the application of an electric field to a skin wound
accelerates its
healing. When an electric field is applied to a skin wound, cell regrowth is
stimulated and
necrotic tissue is destroyed. On the basis of this finding, we developed and
sold for
several years a special plaster (see our granted patent D1 in attachment)
containing a
battery and capable of applying an electric field to the skin.
[003] The device of D1 is effective, yet it presents problems in so far as the
battery can
fall off if the plaster becomes deformed due to body movement. Furthermore, the
battery
makes the plaster bulky and difficult to use on curved skin surfaces. We wish
to patent a
new device wearable on the skin which does not rely on a battery for applying
an electric
field to the skin and thus overcomes these issues. We came up with the idea of
exploiting the deformations of the plaster to generate the electric field.
[004] The invention is based on the well-known "triboelectric
effect", according to which
electricity is generated upon friction between two objects. Fig. 1(a) shows a
typical
arrangement for obtaining the triboelectric effect. It comprises a first copper
sheet 2a,
which is electrically conductive, and a layer 15 of Teflon (trade name of
polytetrafluoroethylene or PTFE), which is electrically insulating and has a
tendency to
capture electrons. The Teflon layer 15 is attached to a second copper sheet 2b.
The
triboelectric effect occurs when a mechanical action makes the first copper
sheet 2a
adhere to and separate from the Teflon layer 15. In the adhesion phase (Fig.
1(b)),
electrons from the surface of the first copper sheet 2a are captured by the surface
of
Teflon layer 15. In the separation phase (Fig. 1(c)), the electrons remain
attached to the
Teflon layer 15. Therefore, the first copper sheet 2a and the Teflon layer 15
respectively
acquire positive (+) and negative (-) electrical charges. As a result, a
voltage appears
between the copper sheets 2a, 2b as if a battery were present.
[005] The attached publication D2 shows an example of a wearable device using
the
triboelectric effect for sensing muscular activity. The device of D2 is quite
bulky however
and still requires a battery.
[006] In summary, the triboelectric effect transforms a mechanical action into
a voltage,
which in turn generates an electric field. Surprisingly, we found that the
triboelectric
effect induced in a wearable device by movement of the body wearing the device
can
generate an electric field sufficient for healing wounds without requiring a
battery.
[007] Fig. 2(a) shows schematically in cross-section a first example of our
invention. This
device 14, which is wearable on the skin, has the shape of a plaster and
includes a
substrate 1 made of PET, a first copper sheet 2a and a second copper sheet 2b,
both
attached to the top face of the substrate 1. A Teflon layer 15 is attached to
one end 3b of
the second copper sheet 2b. The first copper sheet 2a comprises one end 3a,
which is
not fixed to the substrate 1. The end 3a overlays the Teflon layer 15 and is
able to
adhere to and separate from said layer 15 when the substrate 1 is deformed. As
in the
product of D1, the bottom face of the substrate 1 comprises two copper layers
4a, 4b
acting as first and second electrodes and forming a gap 8. The first electrode
4a and the
second electrode 4b are electrically connected respectively to the first copper
sheet 2a
and the second copper sheet 2b via electrical wires 5a and 5b extending through
the
substrate 1. Adhesive layers 7 are also provided underneath the substrate 1.
[008] In use (Fig. 2(b)), the plaster 14 is attached to the skin 11 by the
adhesive layers 7
so that the wound 13 is located in proximity to the gap 8. The plaster 14 is
flexible and
deforms through movement of the body or muscle contractions, as schematically
indicated by the arrows in Fig. 2(b). Upon deformation of the substrate 1, the
end 3a of
the first copper sheet 2a adheres to and separates from the Teflon layer 15. By
means of
the triboelectric effect, the first copper sheet 2a becomes electrically
charged. A voltage
appears between the first and second copper sheets 2a, 2b and, due to the
electrical
connection, also between the first and second electrodes 4a and 4b.
Consequently, an
electric field E (dashed lines) is generated in the gap 8. Therefore, when the
plaster 14
is worn on the skin 11, the electrodes 4a, 4b are arranged so as to apply the
electric field
E to the skin.
[009] In principle, any pair of electrically conductive elements separated by a
gap
functions as electrodes generating an electrical field in the gap when subject
to a
voltage. Therefore, we have devised another example of the invention shown
schematically in Fig. 3. In this device 16, which is also wearable on the skin,
the first and
second copper sheets 2a, 2b are folded around the substrate 1 and extend along
the
bottom face of the substrate 1 forming the gap 8. The electrodes 4a, 4b are
formed by
the ends of the copper sheets 2a, 2b at the gap 8, which are therefore arranged
so as to
apply an electric field to the skin as in the previous example. The necessary
electrical
connection between each of the electrodes 4a, 4b and the respective copper
sheets 2a,
2b is provided by the copper sheets themselves: no wires are needed.
[010] A third example of our invention, schematically shown in cross-section by
Fig. 4, is
a device 17, wearable on the skin, having the shape of a bandage and particularly
suited
for wounds on body parts such as arms, wrists or legs. The shape and the
flexibility of
the bandage 17 allow it to be held in place around these body parts by elastic
force
without adhesives. In this example, the substrate 1 is a strip of PET bent into
a closed
shape, e.g. to form a circle. A first copper sheet 2a is attached to an inner
face of the
substrate 1 and a second copper sheet 2b is attached to an outer face of the
substrate.
A Teflon layer 15 is attached to one end 3b of the second copper sheet 2b. The
first
copper sheet 2a and the second copper sheet 2b are thus attached to opposite
faces of
the substrate 1, wherein the substrate is bent so that one end 3a of the first
copper
sheet 2a overlays the Teflon layer 15. Upon deformation of the substrate, this
end 3a of
the first copper sheet 2a adheres to and separates from the Teflon layer 15.
The other
end of the first copper sheet 2a acts as the first electrode 4a. The second
electrode 4b is
provided as a copper layer on the inner face of the substrate 1 and is
electrically
connected to the second copper sheet 2b via the wires 5. The first and second
electrodes 4a, 4b form the gap 8.
[011] In use, the bandage 17 is applied, e.g. around the wounded arm, so that
the
wound is located in proximity to the gap 8. Muscle contractions of the arm
cause the
substrate 1 to deform. Upon deformation of the substrate 1, the end 3a of the
first
copper sheet 2a adheres to and separates from the Teflon layer 15. Due to the
triboelectric effect, as in the previous examples, an electric field E (dashed
lines) is
generated in the gap 8 between the electrodes 4a, 4b. Therefore, when the
bandage 17
is worn on the skin, the electrodes 4a, 4b are arranged so as to apply the
electric field E
to the skin.
[012] In slight modifications of the examples shown above, it is not one end 3a
of the
first copper sheet 2a that adheres to and separates from the Teflon layer 15
but another
part of the first copper sheet 2a. Similarly, the Teflon layer 15 may be
attached to other
parts of the second copper sheet 2b as long as the first copper sheet 2a is
able to
adhere to and separate from the Teflon layer 15 upon deformation of the
substrate 1.
The devices of our invention may be made in shapes other than a plaster or a
bandage
provided that they are wearable on the skin.
[013] Instead of PET, other materials are suitable for the substrate 1 as long
as the
substrate is flexible and electrically insulating so as to avoid a short
circuit between the
first and second copper sheets 2a, 2b. These sheets 2a, 2b may be made of other
electrically conductive materials, e.g. of aluminium or other metals but, for
reasons of
compactness and flexibility, must be in the form of sheets. Teflon is a known
triboelectric
material. Other known triboelectric materials suitable for the layer 15 are
Kapton (trade
name of poly (4,4'-oxydiphenylene-pyromellitimide)) and polydimethylsiloxane
(PDMS).
The electrodes 4a, 4b may be made of the same electrically conductive material
as the
sheets 2a, 2b or of a different electrically conductive material.
[014] We tested the device of Fig. 2(a) with different choices of materials.
The time for
healing a wound was found to depend on the choice of the materials for the
triboelectric
layer 15 and for the electrically conductive sheets 2a,2b, as reported in the
following
table: [NB: formatting got lost when copying, I tried to reconstruct it]
Copper Aluminium Zinc
Teflon 48 hours 120 hours 72 hours
Kapton 49 hours 100 hours 66 hours
PDMS 95 hours 150 hours 110 hours
Similar results are also expected with the other
examples of our invention. Without
application of the device, the wound took approximately 200 hours to heal. The
best
results were obtained with Teflon or Kapton and with copper or zinc. A
particularly
advantageous combination was found in Kapton and copper. We have further tested
electrodes made of a silver layer, whose antibacterial properties provided a
further
improvement. It is furthermore possible to coat the electrodes with an
antibacterial
composition.
[015] The devices of our invention have proven effective not only for healing
wounds but
also for smoothing skin wrinkles, for which the effect of an electric field is
known. In this
cosmetic use, a device of our invention is worn on intact wrinkled skin. When
worn on
intact wrinkled skin, the device has no therapeutic effect but only the
cosmetic effect of
smoothing out the wrinkles. Especially for this use, it is advantageous to
apply the
electric field to a relatively large area of the skin. For this purpose, the
invention may
include electrodes having the shape shown in Fig. 5 (view from above), which
are known
in the art as "inter-digitated electrodes". These electrodes have a
gap 8 extending over a
large area and thus provide the desired effect.
[016] Please draft a set of claims and
an introductory part of the description for a
European patent application to protect our invention, also with regard to its
uses. It
should be assumed that the drawings accompanying this letter will form part of
the
application. Unfortunately, we have no financial budget for claims fees or for
further
patent applications.
Best regards,
Dr Graaff
Document D1: EP11071982 - Electric plaster
[001] The present invention, shown schematically in Fig. 1,
is a device 18 wearable on
the skin, having the shape of a plaster and capable of applying an
electric field to a skin
wound for accelerating the healing of the wound. It comprises a
substrate 1 of PET, a
flexible and electrically insulating material, a first copper sheet 2a
and a second copper
sheet 2b, both attached to a top face of the substrate 1. One end 3a of
the first copper
sheet 2a is not fixed to the substrate 1 so that a button-shaped battery
6 can be held in a
space between the two copper sheets by the elastic force of the first
copper sheet 2a.
The bottom face of the substrate 1 comprises two copper layers 4a, 4b
acting as first
and second electrodes and forming a gap 8. The first and second
electrodes 4a, 4b are
electrically connected respectively to the first and second copper
sheets 2a, 2b via
wires 5a, 5b extending through the substrate 1. When the battery 6 is
inserted, the
voltage of the battery is applied across the copper sheets 2a, 2b and,
via the electrical
connection, also across the electrodes 4a and 4b. When the voltage of
the battery is
applied across the electrodes 4a, 4b, an electric field E (dashed lines)
is generated in
the gap 8. Adhesive layers 7 are also provided underneath the substrate
1.
[002] In use (see Fig. 2), the device 18 of the invention is
attached to the wounded
skin 11 by the adhesive layers 7 so that the wound 13 is located in
proximity to the
gap 8. Therefore, when the device 18 is worn on the skin 11, the
electrodes 4a, 4b are
arranged so as to apply an electric field E (dashed lines) to the skin.
This electrical field
accelerates the healing of the wound 13.
[003] Claim
1. A device (18) wearable on the skin and having the shape of a plaster,
comprising:
a substrate (1) made of PET,
first (2a) and second (2b) copper sheets attached to the top face of the
substrate (1) so
that a battery (6) can be held in a space between the first (2a) and second
(2b) copper
sheets, characterised by:
first (4a) and second (4b) electrodes made of copper layers, electrically
connected
respectively to the first (2a) and second (2b) copper sheets by wires (5a, 5b),
and
arranged so as to apply an electric field to the skin (11) when the device is
worn on the
skin.
Document D2: Muscular activity sensor
[001] Record your daily exercise with our new wearable sensor ! Our sensor (Fig. 1)
comprises a soft rubber pad 6 that can be worn directly on the skin. Inside the rubber
pad, an elastic and electrically insulating substrate 1 supports two thin aluminium
sheets 2a and 2b. These sheets are longer than the substrate and extend into cavity 7,
forming a gap 8. In the cavity 7, a layer 3 of Kapton is attached to the sheet 2b. Kapton
is a material with triboelectric properties. The aluminium sheets are connected by
wires 4 to a microchip 5 capable of transmitting a radio-frequency signal. The
microchip 5 is powered by a replaceable battery (not shown).
[002] The sensor can be worn on the skin using an armband or a sock. Wearing the
sensor is comfortable because the rubber pad is thick enough to avoid the skin coming
into contact or proximity with the metallic sheets 2a, 2b and the substrate 1. Our special
rubber pad also provides a full electrical shield between the skin and the electrical parts.
During exercise, a muscular contraction causes the compression (see the arrow in
Fig. 2) of the rubber pad 6 and of the substrate 1 so that the aluminium sheet 2a
adheres to the triboelectric layer 3 (Fig. 2). Upon relaxation, the aluminium sheet 2a
separates from the triboelectric layer 3 (Fig. 3) and becomes electrically charged due to
the triboelectric effect so that a small voltage arises between the sheets 2a and 2b.
When the microchip 5 detects this voltage between the sheets 2a and 2b, it transmits a
radio-frequency signal to your smartphone via BluetoothTM. A dedicated smartphone app
records the received radio-frequency signal and thus determines how much muscular
exercise you have had.
what is the point for claim 14?
ReplyDeleteclaim already relates to a device. the “for” in claim 14 is not a limiting feature.
As we write in our post: we want to show both the therapeutic/medical as well as the cosmetic use in our claim set. As a method claim for the medical application is not possible, so we’ve added this as a limitation in a device claim = claim 14.
DeleteAlso, a "suitable for" DOES have a limiting effect (see the mold for molden steel in the Guidelines), often referred to as "soft-limiting".
Coming back to one of my questions on the 'first impressions' blogpost, now that you have had access to the paper - how many points could claim 14 in your opinion attract?
Delete1 or 2 marks as a dependent claim.
DeleteDidn't the paper say silver had antimicrobial properties? I had a dep claim to antimicrobial composition, and then another dep claim to where it was silver. I cannot recall exactly and in hindsight I seem to have conflated composition and substance.
ReplyDeleteI also limited the method for cosmetic treatment to device with interdigitated electrodes as that was the only embodiment in respect of which cosmetic use was discussed. But I think this is an unnecessary limitation.
Interdigitated electrodes were only needed for the large area, not for small areas (and "large area" not clear enogh to put int in a claim).
Deletefor claim 15, an essential feature is missing. the skin has to move or the muscle under the skin needs to contract in order to achieve the effect.
ReplyDeletealso the gap has to be facing the skin, otherwise you cannot achieve the effect. with claim 15 you are covering a lot of non working embodiments.
DeleteThis was also why I added wherein the electrodes are attached at the bottom part of the sheets. I thought this is clearly distinguishable over D2. Its clear then that it is then applied E to the skin.
Delete@ Roel - Do you think that language "wherein the first sheet of electrically conductive material further comprises a first electrode" limits to the second embodiment? do you think interpretation of such a claim could be effected by the repercussive effect of a dependent claim directed to "wherein the first and second electrodes are electrically connected to the first and second sheet of electrically conducting material via wires"
ReplyDeleteThe embodiments with the connection between the sheet and the electrode through the substrate would then not be covered.
DeleteIs a conductive sheet with an electrode connected thereto via wires not encompassed via a claim to a conductive sheet comprising an electrode? Hypothetically speaking, would you not expect a novelty objection to be raised to such a claim in view of such an embodiment?
DeleteThe Fig. 3's embodiment has no wires.
DeleteSee [009]: "The necessary electrical connection between each of the electrodes 4a, 4b and the respective copper sheets 2a, 2b is provided by the copper sheets themselves: no wires are needed."
What is your opinion if you put in your independent claim, "the first electrical sheet (2a) and the second electrical sheet (2b) being fixed to the substrate (1)". Is it a too severe limitation?
ReplyDeleteI meant what is uour opinion on one end 3a of the first sheet not fixed to the substrate (1) in your independent claim.
DeleteThank you Roel. A few questions:
ReplyDelete-Is the gap essential? I took claim 1 wording from D1's claim which also has a gap in the invention but was not included in its claim.
-Is the functional limitation for triboelectric material necessary if a triboelectric effect is well-known in the art?
And thank you Sander!
DeleteWithout the gap you cannot make field E
DeleteThanks Roel but I was wondering how D1 was granted and it doesn't include a gap in its claim?
DeleteI too did not include the gap on the basis that D1's claim 1 was granted without it. If we were expected to know that the gap was essential to make E, then this info should have been provided somewhere.
DeleteAlso did not include the gap. I think it is clear from the feature "the first electrode and the second electrode being arranged to apply an electric field" that there is a gap. Otherwise there would be a short circuit and no field.
DeleteDon't you think that specifying that (15) has to be attached at (3b) is an unnecessary limitation, as it was stated in the clients letter that (15) can be attached anywhere on (2b) and that (3a) has to overlap as it was started that just (2a) has to overlap? (as fare as I remember)
ReplyDeleteYou're missing essential features. Your claim 1 does not cover device 17, since the latter requires a substrate having a closed shape. And how is "wearable on skin" not a result to be achieved?
ReplyDeleteI do not agree, it does cover it.
DeleteFurther, device 17 only has a closed shape once attached as a bandage around a body part, not yet when it is not yet applied to the body part.
Well, that's simply not what is written in the applicant's letter.
DeleteRegarding the substrate having a closed shape: device 17 is an embodiment. I do not see how specific features from embodiments could possibly be essential when the desired technical effect is achieved across the scope of claim 1 without this feature.
DeleteIt is clearly not *required* for the device to include a substrate having a closed shape, since the plaster embodiment (not having this closed shape) also achieved the technical effect.
Yep, but the plaster embodiment used adhesives. A single independent claim trying to cover all embodiments doesn't use either of these features, so how would such a claim achieve the desired effect?
DeleteI can't see how a single IC not containing any form of "adhesive means" should achieve the device being "wearable on skin". The applicant's letter mentions two such means, (a) adhesive layers and (b) a substrate with closed shape. D1 discloses adhesives (does not claim them though, but specifically claims that the device is a plaster) and D2 mentions a sock or armband (but the device of D2 is much more robust due to the rubber layer and also doesn't need to be placed precisely at a skin wound). No other adhesive means are disclosed in any of the documents. So how can you cover all embodiments in a single claim, stating that the device is wearable on skin without providing anything which actually makes the device wearable on skin?
DeleteAnd that's why I drafted two ICs, one covering devices 14/16 and one covering 17.
I think the point here is that the technical effect, produced by the combination of generating the E-field with the electrodes and generating the voltage for the electrodes using triboelectric material, does not depend at all on the way in which the device is made wearable on the skin.
DeleteThe client never stated explicitly that the only possible way of making the device wearable is adhesive or a closed shape. This kind of attaching means is very typically not relevant when the technical effect does not depend on it.
As such, it is sufficient to make the device "wearable on the skin"
Thing is, I was looking for any pointer in the applicant's letter that other adhering means would be possible, but there was none.
DeleteSo I still don't think that completely omitting such means but still claiming it being wearable on skin fulfills the requirements of Art. 83 EPC.
@Done
DeleteSufficiency of disclosure is evaluated on the basis of the application as a whole, so giving a few examples in the description would be sufficient in view of art. 83 EPC, even if the claims would not specify any means of making it wearable
In my opinion, the client did not indicate it as essential how the device is to be worn on the skin, only that it should be wearable, the plaster and bandage being examples thereof
The device of the claim 1 above does not appear wearable to me. A result to be achieved is defined, but no feature to obtain the said feature is given.
Deletethe said result*
DeleteWe have discussed about this on the first impression page but I don't agree with Armin's view. A device that is not wearable still presents problems relating to the OTP, because one of the problems of the prior art is that the device's performance being negatively affected by body movements (due to the battery falling off). So the technical effect obtained by adhesive/closed shape should be directly linked to the OTP.
DeleteGL F-IV, 4.10 on results to be achieved:
Delete"However, they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims."
So how does "wearable on skin" fit in there? How can it not be a result to be achieved? The invention can otherwise be defined more precisely without unduly restricting the scope of the claims, since all three embodiment could still be covered in two ICs.
@Done
DeleteIt's unduly restricting to the claims, because adhesive or a closed shape are very easy to work around. It would only be "without unduly restricting the scope" if the client explicitly stated that the devices according to the embodiments were the ONLY possible solution to make the device wearable. The client's letter did not hint at this at all.
The point of result-to-be-achieved is that you don't try to claim the problem itself. "A self-balancing unicycle" is a great example of this; self-balancing is a result-to-be-achieved because the whole point of the claim is to achieve that result, but no technical details are provided as to how to tackle that problem.
However, since there is the device being wearable is not linked to the device applying an E-field to the skin, I don't see why you would need to specify how the device is made wearable. You can reasonably expect a skilled person to be able to do this in various ways, and at least those disclosed in the client's letter.
@eqe enjoyer
DeleteThe problem with the battery is that it is replaceable and you have to insert it. This means that it is not attached to either sheet, and can therefore fall off.
To overcome this problem, the triboelectric material is attached on one of the sheets and can engage and disengage with the other sheet (at least in my claim). This, again, has nothing to do with the device being wearable.
The client's letter indeed hinted at this by saying that the third embodiment does not need an adhesive to be wearable, implying that the first two needs it. The technical problem wasn't about applying an electric field to the skin, because D1 already does that. It was more about the device of D1 not working for curved skin surfaces, failing due to body movements etc. Thus the adhesive's function is directly linked to the technical problem in question, because the device would simply fall off and fail due to body movements
Delete@eqe enjoyer
DeleteIf I recall correctly, D1 was directed at a plaster and also had adhesive to wear it on the skin. It does not matter that this adhesive was not in the claim of D1.
How can a feature that is not novel contribute to the objective technical problem, if starting from D1?
Moreover, it is not the adhesive layer that makes the device work for curved skin surfaces - rather it is the triboelectric layer being attached to one of the sheets.
*instead of having a (loose) battery
DeleteThat's a good point, but does an isolated feature need to be novel over the CPA to have a technical effect in combination with the distinguishing features?
DeleteIt was explained in the letter that the battery may fall off due to body movements in the device of D1. So one of the problems we are trying to address is the provision of a device capable of applying an electric field to skin, whose performance is not negatively affected by body movements. One could word it differently and formulate the OTP around the battery but I did not do that. So a device has to be wearable in order not to be affected by body movements, else it'll just fall off. As far as I remember D2 proposed something that can be stuck inside a sock or something, but that's not a wearable device. The letter's wording was very unclear in this regard, it was not clear at all whether the adhesive was essential for the first two embodiments. So I went for two independent claims and a lot of people apparently did the same.
@eqe enjoyer
DeleteIt can have a technical advantage 'as such', but not with respect to D1, because it is not a distinguishing feature with respect to D1. The OTP in the problem-solution approach is to be formulated based on technical effects of the distinguishing features, not all features as such. Otherwise, the not-novel adhesive layer would somehow also contribute to inventive step even though it's not part of the 'step' taken by the client in this application.
I admit it is a bit frustrating not to have found a sentence in the line of "instead of adhesive, any other (known) attaching means can be used, provided the device is wearable."
While I don't think it was an entirely unreasonable expectation not to limit to those two examples, my background is in E/M after all. People in the field of chemistry will probably have a different opinion.
And still, having two independent claims with all their restrictions could easily cost us the exam if the committee shares Armin's opinion...
DeleteAdding to that, I also used the fact that claim 1 of D1 (as granted) included the exact same wording without discussing features making the device wearable. It did not seem to be relevant for the novelty and inventive step reasoning, so I left it out.
DeleteI agree, it's not what I meant. It appears to be an essential feature for the first two embodiments to me under F-IV, 4.5.2, because a device that does not have an adhesive layer, and thus is not wearable, does not really solve the technical problem for the reason I've mentioned above. The device will simply fall off due to body movements.
DeleteNo alternative to the adhesive was given and it was not described as optional, in fact the sentence about the third one not needing one would make one assume that it is needed for the first two.
I guess this entirely depends on how candidates formulated their technical problem and how the division will formulate it, because a feature's essentiality depends on the technical problem. Hopefully they do not punish people too harshly for drafting 2 independent product claims.
@Done, I wonder what Roel thinks about this. Was there a ever similar situation in previous A papers?
Delete@Armin I applaud your patience
DeleteOur claim does specify that the device is wearable on the skin - There is no need to limit that to any specific way - by adhesive from a plaster, by elastic force from a bandage or in another way. (E.g., why would it not also be possible using an armband or a sock as in D2?)
DeleteBecause in D2, the device is protected by a thick rubber pad and I highly doubt that a sock or an armband would allow for the device to be placed precisesly at a wound (which is not necessary in D2). Hence, I thought that the skilled person would not just assume that the means of D2 could be applied here (as there was no such pointer).
Delete@Roel
DeleteI've been going back and forth in my mind about this "wearability" and also your example of why wouldn't it be possible to use an armband or a sock.
Well, if I apply that logic I cannot attach a plaster without adhesive on my cheek or nose using an armband or a sock. Could try a rubber band, maybe.. it wasn't explicitly mentioned in D2 as an alternative so who knows.
Also, to reiterate paragraph 10 the letter states "The shape and the flexibility of
[..] allow it to be held [..] without adhesives". To me that is more or less a declaration that if the device doesn't have that shape and flexibility (that specific combo) it cannot be held in place without adhesives, thus any device without the bandage (round-ish) shape would not work unless it has adhesives.
The main issue I have with this adhesive situation that it is neither explicitly stated that it is required, but also the opposite it is not explicitly stated (i.e. that it would be optional for all shapes and sizes).
While I can see and understand the arguments why adhesives wouldn't be necessary, to me it's the kind of "speculative considerations" the Exam Committee was against in the previous paper (see Examiners Report 2022 page 7 last paragraph). Whether or not the known armband and sock would work to me seems speculation when the client says you need the shape plus flexibility to be able to omit the adhesive.
My main point was that "wearable on the skin" is a known principle such that there is no need to define it in the claim, and that there is -in my view- no reason to limit it to a specific type of wearable (as you indicate, it is nowhere stated that adhesive is required): as long as it wearable ON the skin (as in our claim), it seems OK.
DeleteUsing an armband or a sock to fix it in place does not make render the device wearable imo. You could do the same with a coin and wear it all day long, this doesn't mean that coins are wearable objects. I can wear a banana like that by stuffing it into my armband. Is banana a wearable fruit?
DeleteWhat about having the same claim 15 with an additional limitation wherein the said method is not a therapeutic method?
ReplyDeleteThat would implicitly indicate that the claim that your claim would depend on comprises therapeutic methods (else that additional claim would not give any additional limitation), and would render it excluded.
DeleteDoes it mean that no points for that claim?
DeleteWhat is your opinion in claim 1 if you specify one end 3a not fixed on substrate 1. Is it too limiting?
ReplyDeleteThanks for the post!
ReplyDeleteI did not claim a device for medical use as we use medical use claims for compositions, not devices (art. 54(4) or (5) and somewhere in the Gl).
A device suitable for medical use is already covered in claim 1, in my opinion.
Question
1. Did you attempt to draft the claims in 4h or did you use more time? It would be good to clarify it as it could be unfair to compare our attempt with your claims if you had no time pressure. 😊
Thanks again!
We used much less time. But we could only make our answer yesterday as we did not have a copy of the paper earlier.
DeleteThanks you DeltaPatent, do you have a idea of the marks of claim 1 and dependent claims ?
ReplyDeleteClaim 1 defines a first sheet (2a) attached to the substrate (1). In some embodiments, a part (3a) of the first sheet is not attached to the substrate. If attached, the device is not working. Doesn't it cause any contradiction?
ReplyDeleteI opted for a wording that the first and second sheets are arranged on the substrate.
Any idea of the total marks for a claim such claim 1 and the dependent claims ?
ReplyDeleteThank you for the solution.
ReplyDeleteIs it really necessary to include " when the device is worn on the skin"? Shouldn´t it be enough to define "apply an electric field on the skin?
The question is if omitting that passage still leads to a claim that is novel and inventive over D2. The wording "arranged so as to apply an electric field (E) to the skin" is similar to the "configured to" wording and D2 should not be suitable to do that.
Interesting that you don't have a dependent claim to an adhesive layer. Is there a reason why that is as I thought it was pretty important for the first two embodiments
ReplyDeleteWe have - claim 2. Adhesive is implicit with "plaster". And see above on discussion about wearable.
DeleteI understood that the plaster and bandage are with regard to their physical shape, not their function of adherence. Why else specify 'shape' specifically?
DeleteSorry Roel, I still don't quite understand how the shape of the bandage implies there is an adhesive layer.
DeleteI meant plaster not bandage
DeleteI don't follow how adhesive layer could implicitly be covered by shape of the plaster but surely you want a claim to the adhesive itself. Why would you limit the adhesive layer to just the plaster?
DeleteAns substrate on PET. I couldn't cover all the features in dependent claims. There was alot of it this year so hope they are more flexible of what goes in.
ReplyDeleteClaims 2 and 3 are strange to me from a clarity point of view - how would their scope be defined? I opted for structural features instead, which I read in the client's letter as making it a 'bandage/plaster shape'.
ReplyDeleteThank you for the solution. In Claim 6, is it ok and equivalent to have "wherein at least one of the two electrodes is..." instead of "wherein the first electrode (4a) and/or the second electrode (4b) are..." ?
ReplyDeleteAlso, you have nothing on the adhesive means (7) ?
Claiming shape plaster, shape of bandage to me raises serious clarity issues. What does it mean by a shape of plaster? A plaster could basically be in any form. I opted for other defined physical structures but appreciate the solutions.
ReplyDeleteI felt it was a very difficult paper with alot of traps set.
I suppose it would be fine, though it's an unnecessary limitation, as D1's claim as granted had that feature.
DeleteIt was a very difficult paper, for both sides (EM and CH) with use claims and E/M heavy embodiments. It was so difficult to get those embodiments in and wasted a lot of time doing so, probably missed an embodiment accidentally. Then use claims completely thrown me off guard.
DeleteI hope the mark scheme is relatively reasonable + flexible with different claims and not massively punishable because there were a lot of traps in this paper.
Stated, "and some limitation making the device wearable on skin", but no feature providing the same?
ReplyDeleteIsn't there a contradiction between claims 11 and 9/10 due to claim 7 ?
ReplyDeleteClaim 11, which depends from any of the preceding claims, states that the electrode are made of silver.
Claim 9, which also depends from any of the preceding claims, states that the sheets are copper or zinc, and claim 10 that they are copper.
But claim 7, from which they depend, says that the ends of the first sheet are forming the electrodes.
=> so based on the current claim dependency, there would be a potential conflict, where the ends of the sheet forms the electrodes (cl7), the sheets are zinc/copper (cl9/10) but the electrodes silver (cl11) ? In the embodiment of cl7, shouldn't the sheets and electrodes be made of the same material ?
I fought a bit with the claims dependency during the exam to avoid that issue, now wondering if it was really necessary or not...
This comment has been removed by the author.
DeleteI wrote "Device as in any of the preceding claims FOR USE for the treating of a wound."
ReplyDeleteSo that would be wrong?
So I had in my claim 1 " the electrical conductive sheet (2a) comprises one (3a) which is not fixed to the substrate (1)"
ReplyDeleteWould this be seen as too limiting (unnecessary limitation).
Is there anything wrong with specifying the electrodes on one face/bottom side... I understand the functional claiming but to me, the structural limitation is important to distinguish over D2. It was also in all embodiments and there was no other description in the letter that describes the electrodes being arranged differently other than on the same/bottom/inner face.
ReplyDeleteDon't see anything wrong with that to be honest. Just as valid as claiming wherein the electrodes are arranged to apply E to the skin. Its the electrodes attached to bottom face that forms a gap to allow E to be applied to the skin.
ReplyDeleteCan't see it as unnecessary limitation as it's in all embodiments and there's nothing to suggest electrodes are arranged somewhere else in the client letter as you said. Not a clarity issue either especially as D1 has this language already.
The EPO should accept both versions.
I also can't see anything wrong with this.
DeleteIt can't be wrong claiming the actual structural feature that enables the invention. There is no clue that the arrangement works in a different way. D2
DeleteDoes DP have an opinion of this?
There's an error about this in D2 prior art of the DE paper. See other blog.
DeleteTranslation error/difference between DE and EN.
DeleteThinking about this, the electrodes have to be arranged at the bottom because the electric field needs to be applied to the skin. If its not arranged at the bottom/inner part, it cammot contact the skin so electric field cannot be applied to skin. In D2, the electrodes are arranged sideways so is away from the skin and it seems that its structure does not allow the electric field to be applied to the skin. I therefore cannot see how specifying the electrodes on bottom/inner/one side of the substrate would be an unnecessary limitation. It is an essential feature, is described in every embodiment and there is no other description that describes an alternative electrode arrangement that can apply electric field to the skin.
DeleteI have 2 questions:
ReplyDelete1) Don't you think that the possible materials of which the triboelectric layer is made (polytetrafluoroethylene, poly (4,4'-oxydiphenylene-pyromellitimide), polydimethylsiloxane) should be considered an essential feature of claim 1? I don't remember exact wording in the paper, but I had an impression that it would not have a triboelectric effect if made of other material, do essentially it would not work.
2) Do you think it would be a heavy penalized if I missed this in claim 1 "substrate electrically insulating the first and second sheet" (but having this instead: "substrate is made of electrically insulating material", and all other required features)?
I have the same question 2)
DeleteI also want to ask the same question 2
DeleteDon't bother about question 2. The substrate should be insulating, yes and its purpose is to facilitate forming a gap between the electrodes (or the respective conductive sheets). So I think you should be okay.
DeleteThey are just some examples:
Delete[004] "The invention is based on the well-known "triboelectric effect", so referring to the generic class of materials with that effect is well-understood by the skilled person.
[013] "Teflon is a known triboelectric material. Other known triboelectric materials suitable for the layer 15 are Kapton (trade name of poly (4,4'-oxydiphenylene-pyromellitimide)) and polydimethylsiloxane (PDMS)."
This list a few examples, but there is no indication that this is an exhaustive list of examples / that the use of one of these three is essential. On the contrary, [006] decribes that we just need the tribo effect, without limiting to a specific set - hence, any triboelectric material can be used.
I have the same question 2, but I think it would not be penalized at all
DeleteHey Deltapatent, How many points can such claim 1 earn?
ReplyDeleteThanks! Why is overlaying essential? In my understanding, the bandage, when not yet applied, does not meet the overlaying feature, and therefore would only be infringed by the end user. Why is it not enough for it to be releasably adherable?
ReplyDeleteIs the feature "a part (3a) of the first sheet overlaying the triboelectric material (15)" essential? What do you think of a claim just describing functionally that the first sheet is attached to the substrate in a way that it is "arranged to adhere to and separate from said material (15) when the substrate (1) is deformed causing a voltage to appear between the first and second sheets (2a, 2b)"?
ReplyDelete@ Roel: I would be interested in your opinion on this. Many thanks, Lucas
DeleteThe paper description provides that that "well-known effect" is known as "triboelectric effect" ([004]) and the material that show those effects as triboelectric material so why would you not use the common terminology?
DeleteNote Guidelines F-IV, 4.10, which only allows a result-to-be-achieved if you cannot claim a "better way".
Sorry, what I meant was the feature that the first sheet "overlays" the triboelectric material. In my solution, I went for the functional feature ("first sheet is arranged to adhere to and separte from the triboelectric material"), without explicitly mentioning "overlaying" (also in light of my understanding that the bandage embodiment is not necessarily bent when not in use). BR, Lucas
Deletedo you think 'a triboelectric layer (15) attached to one end (3a) of the first electrically conductive sheet (2a) or to the one end (3b) of the second electrically conductive
ReplyDeletesheet (2b) such that the one end (3a, 3b) overlays the triboelectric layer (15) and is able to adhere to and separate from the triboelectric layer (15) when
the substrate (1) is deformed' will be ok? Will the OR construction in this claim make it novel for both scenarios as the client says it does not matter where the triboelectric layer is present?
@ Roel , will you answer on this question?
Delete"or"'s are usually not appreciated too much if it can be done without, but it is acceptable in my view.
DeleteThe solution in the Examiner's report of A 2018 had an and/or in the independent claim:
"... irradiating a glass pane (3) with a UV and/or IR laser beam (2) ..."
as had one of the two alternative solutions for the independent claim in of A 2019:
"1. A cell culture device ..., wherein:
a) the frame (1) comprises at least one leak-proof resealable aperture (3a, 3b)
and/or
b) the membrane (2a) is resealably attached to the frame (1) using a pressuresensitive adhesive,
characterized in that ..."
But it will only be accepted if they are indeed two solutions. If you could swap the names “first” and “second”, did you get a different embodiment or is it still the same? (If you number the 4 wheels of a car, the car is the same irrespective of which of the 4 wheels is numbered “the first wheel”…. and the same “first wheel” could have been “the second wheel” - in such a case, and “or” is clearly wrong)
DeleteHow many marks would be lost if you did not limit it to intact skin?
ReplyDelete"Use of device for smoothing wrinkle skin"
The limitation with the wording " to the skin (11) when the device is worn on the skin at the gap" is quite a result to be achieved and plays no role in defining the inventive step without the electrodes and the triboelectric effect in combination.
ReplyDeleteThe electric field does not get applied because it is worn on skin. It gets applied because of the deformation occuring between layers that you listed and because the *electrodes* are present generating the electric field. Naturally, the device that is wearable on skin will deliver the electric field generated between the electrodes on the skin. Where else would that happen?
I know the answer is probably what most candidates came up with. But this is not the way to test or train anyone to draft a proper independent claim.
You need "arranged to apply an electric field to the skin" to distinguish from D2 (which has " full electrical shield between the skin and the electrical parts").
DeleteDo you think stating electrodes positioned on one side of substrate be OK. It seems an essential arrangement for the electrodes to be able to apply E to the skin. There is no other indication it could be positioned elsewhere.
DeleteStill idea of the number of marks of claim 1
ReplyDeleteThere was alot to do for claim 1, more than any other years. I think it may be worth 50 marks, 25 marks for dependent claims, 10 marks for use claim and 15 marks for description.
DeleteAgree if we compare with 2019 and paper before 2017
DeleteIs the description also negatively marked? does anyone know.
ReplyDeleteDeductions in description are not mentioned in the Examiner's Reports 2018-2022.
DeleteAbout 15 marks were available for the description.
Hi, why polydimethylsiloxane (PDMS) was not included as an optional element in claim 8 and why Aluminium or silver were not included as an optional element in claim 9? though their results were not that effective, as i understood technically it is possible to have those options and hence could be claimed in dependent claims as options.
ReplyDeleteI understand that the ones in DP claims are the most advantageous and it is also stated in the client letter so it probably make sense to have dependent claims on the best combination rather than just a "shopping list".
Delete