Our provisional answers to A 2026
Like last year, Nyske and Nico were benchmarkers for paper A. We both concluded that this was not an easy paper. Though we both identified the same relevant issues and problems to be solved in the paper, we sometimes made different decisions or took a different approach. We hope that the Exam Committee will take different solutions into account for this paper, as we feel that in view of the information in the paper that would be justified.
This was a classic “chemistry-style” paper, with various different claim categories that all seemed to have their own specific issues involved. While generally it was clear what was novel in view of the prior art, what can be considered to be inventive was less clear.
Sometimes a careful sorting of terminology was required, in particular regarding the distinction between the composition and the coating, which resulted from the composition being applied to a substrate and then dried/densified to obtain the coating with the original starting materials disappearing, and the relationship between the substrate, the cooking surface, and the different layers. Usually you can rely on the text of the client’s letter to provide you the proper claim terminology, we feel that was less so in this paper. The text in the client’s letter needed careful revision to arrive at a clear and consistent claims set. For example, their seems to be a subtle difference between the sol-gel coating (final product) and the sol-gel composition (mix of precursor and gel starter), but the respective wording does not seem to be used consistently in the paper. For example, in par. [006] it is said that all sol-gel compositions are inorganic – which is true for the finished coating but not for the mix of precursor and gel starter. In addition, in view of the complexity of the paper and the amount of different issues to contend with, we would not be surprised if many candidates missed these more subtle issues and we hope that the marking scheme will have some leniency in this respect.
The invention appears to rely on certain combinations of sol precursors and gel starters. These components are individually disclosed in D2, but specific combinations are new according to the two-lists selection principle. The question is however which combinations would be inventive. Par. [010] mentions that all coatings the client prepared have good non-stick properties, are scratch resistant and safe to use with food. One of us interpreted “all coatings we have prepared” as being the coatings in the table, and the listed advantages of “all coatings” to be a basis for inventive step. However, the advantages mentioned in par. [010] seem to match the general advantages mentioned in par. [001] and [006] of D2. For the specific combination of TEOS and citric acid it is mentioned that this achieves “by far our best results”, so this seems to be the safest option to claim as it seems to provide the largest benefit (see Table 1, hardness 12-15). But what exactly the benefit is over the prior art remains unclear since D2 neither mentions specific combinations nor hardness values.
The precursor and gel starter are organic components which, according to paragraph [007], are no longer present in the final coating. This creates a practical difficulty when claiming the end products, such as the coated cookware item or possibly the sol-gel coating itself. One could consider claiming the end products using a parameter (specifically the hardness, which seems objectively and reliably measurable since an ISO standard is mentioned) but in our (admittedly E/M-biased) view this is too much of claiming a result to be achieved. This leaves product-by-process claims as a realistic option.
The automatic spraying system appears to differ from D2 in three respects:
- a moving speed between 0.1 and 0.8 m/s (as D2 says that the speed may be lowered to 1.5 m/s in case of complex areas the skilled person would not seriously contemplate the lower part of the range as disclosed in D2);
- the way in which the sprayer is moved and positioned to spray horizontal surfaces and vertical or inclined surfaces;
- the use of different sol-gel compositions (e.g. ratios of 4:1 and 2:1) for horizontal surfaces and for vertical or inclined surfaces.
Features (1) and (2) appear very non-unitary with the rest of the claims. For this reason, the claims below mainly focus on feature (3), which has at least some form of overlap with the rest of the claims. Also, the ratios 4:1 and 2:1 are quite specific as they are single numerical values, and therefore offer quite limited protection. The technical effect seems to be achievable already if a lower TEOS-to-citric-acid ratio is used for the vertical or inclined surfaces than for the horizontal surfaces. However, this wording is not present in the paper, so it is unclear whether this formulation would have been expected (although it would arguably still be new and inventive over D1 and D2).
It should also be noted that an automatic spraying system using the novel or inventive sol-gel composition would not necessarily be novel over D2, because the composition is not a structural feature of the spraying system itself. However, this could be addressed by a use claim, for example “use of the automatic spraying system to apply a sol-gel composition according to any of claims X–Y”. The claim set below does not include such a claim, since claim 8 already follows a somewhat similar approach. However, this would still be a viable option.
Note that one of us took a different approach and went for the speed range in the independent claim for the spraying machine and adding that the machine is suitable for applying a sol-gel composition to a cooking surface of cookware. Inventive step was defended based on par. [014] saying that the moving speed can be adapted to apply the coating efficiently and thereby optimise production costs. Such a claim seems to provide the broadest protection for the spraying machine but unity of invention seems shaky.
Below you’ll find a claims set that we think is defendable. However, as already noted, this is not the only claims set that we consider to be a reasonable solution to the paper.
What is not included in the claim set below?
- A product-by-process claim directed to the sol-gel coating itself. This could have been possible, with the cookware item then being claimed as a dependent claim on the coating.
- A method of making the sol-gel composition itself, for example by combining the sol and gel components in the desired ratio and without including the subsequent drying step. However, the product claim directed to the composition itself appears to provide better protection, and the maximum of 15 claims is already easily reached.
- Finally, what about the reference to ISO 14705 of 31.12.2016? This might suggest that a parameter claim could be possible. As explained above, we didn't interpret this as a claimable parameter, but instead used the ISO standard in the introduction to demonstrate that the claimed sol-gel composition and resulting coating provide a technical effect / improvement over the prior art.
1. A sol-gel composition comprising TEOS (tetraethylorthosilicate) and citric acid in a ratio by weight of between 1:1 and 6:1 of TEOS to citric acid.
2. The sol-gel composition of claim 1, wherein the ratio by weight is 4:1 of TEOS to citric acid.
3. A method of coating a substrate using the sol-gel composition of claim 1 or 2, comprising:
- providing the TEOS and the citric acid in the ratio by weight of between 1:1 and 6:1 of TEOS to citric acid;
- performing a gelation by adding the citric acid to the TEOS to obtain the sol-gel composition;
- applying the sol-gel composition to a substrate to be coated;
- performing a drying-densification of the substrate at more than 250°C.
4. The method of claim 3, wherein the substrate is a metal substrate of a cookware item.
5. The method of claim 4, wherein the metal substrate is an aluminium layer of the cookware item.
6. The method of claim 3 or 4, wherein the cookware item comprises one or more horizontal cooking surfaces that are horizontal during cooking and one or more non-horizontal cooking surfaces, the method further comprising:
- providing a first and a second sol-gel composition of TEOS and citric acid, wherein the first sol-gel composition comprises a first ratio of TEOS to citric acid and the second sol-gel composition comprises a second ratio of TEOS to citric acid, wherein the first ratio is higher than the second ratio; and
- applying the first sol-gel composition to the one or more horizontal cooking surfaces and the second sol-gel composition to the one or more non-horizontal surfaces.
7. The method of claim 6, wherein the first ratio is 4:1 of TEOS to citric acid, and/or wherein the second ratio is 2:1 of TEOS to citric acid.
8. The method of any one of claims 3 to 7, wherein applying the sol-gel composition to the substrate comprises using an automatic spraying machine.
9. A cookware item (10) comprising a metal substrate (21), wherein the metal substrate comprises a cooking surface, wherein the cooking surface is coated with a sol-gel coating obtainable by the method of any one of claims 3 to 8.
10. The cookware item (10) according to claim 9, wherein the metal substrate comprises an aluminium layer (21) which comprises the cooking surface.
11. The cookware item (10) according to claim 10, wherein the metal substrate further comprises another metal layer (22) underneat the aluminium layer (21).
12. The cookware item (10) according to claim 11, wherein the other metal layer (22) is a stainless steel or iron layer.
13. An automatic spraying machine for applying the sol-gel composition of claim 1 or 2 to a cooking surface of a cookware item, comprising:
- sprayer (30); and
- a control system to control the sprayer to move within geometrical boundaries of the cooking surface and to apply a sol-gel composition to the cooking surface;
wherein the cookware item comprises one or more horizontal cooking surfaces that are horizontal during cooking and one or more non-horizontal cooking surfaces, wherein the control system is configured to apply a first sol-gel composition with a first ratio of TEOS to citric acid to the one or more horizontal cooking surfaces and a second sol-gel composition with a second ratio of TEOS to citric acid to the one or more non-horizontal cooking surfaces, wherein the first ratio is higher than the second ratio.
14. The automatic spraying machine according to claim 13, wherein the control system is configured to apply the first sol-gel composition to the one or more horizontal surfaces by spraying the first sol-gel composition orthogonally to a horizontal plane of the one or more horizontal cooking surfaces, and subsequently applying the second sol-gel composition to the one or more non-horizontal surfaces by maintaining the sprayer in a position which allows the sprayer to spray the second sol-gel composition horizontally and moving the sprayer to apply the second sol-gel composition to the one or more non-horizontal cooking surfaces.
15. The automatic spraying machine according to claim 13 or 14, wherein the control system is configured to move the sprayer at a speed between 0.1 and 0.8 m/s.
- Nyske and Nico
"Glad" that you also acknowledge this was a tricky paper. In terms of marking, when there have been previous paper As which are equally difficult or there has been such a mixed consensus, has the Exam Committee typically loosened up the marking scheme to accommodate this (or is this more a case of wishful thinking)? It would seem inappropriate to penalise candidates who arrived at quite different yet equally valid answers but didn't fall in within the "box ticking" mark scheme of the examiners.
ReplyDeleteThanks!
ReplyDeleteI went with claiming the product as defined by its hardness, including the ISO norm. In my opinion, this is not a result-to-be-achieved. It is a result that is actually achieved, as evidenced by Table 1 (which should then be included in the description I guess). I thought PbP is only allowable if the product cannot be defined in any other way. In this case, especially since they gave the ISO norm, it seemed to be perfectly fine to define the product by its hardness. This also avoids having to mention any specific sol-gel composition components that disappear after heating, and choosing whether or not to limit to TEOS+CA.
The method claim appeared to be more straight-forward, something along the lines of claim 3 as suggested above.
I agree with you. 9. A cookware item (10) comprising a metal substrate (21), wherein the metal substrate comprises a cooking surface, wherein the cooking surface is coated with a sol-gel coating obtainable by the method of any one of claims 3 to 8.
DeleteThis claim seems does not full fill the client wish "This fact makes us wonder whether we could also file for protection of our products as such, as product protection is essential for our business".
Claim with harness seems more appropriate and it claims a product.
Afterall, hardness 12-15: from TEOS+ CA 1:1 to 6:1
I really look forward to your comment on this .
I think if you specify that "the sol-gel coating is obtainable/obtained by a method according to...", you're in fact still defining the product in terms of product-by-process features. Which in my opinion would not have been allowable nor necessary.
DeleteBut: a product-by-process claim also does confer protection to the product as such, so it does equally fulfil the client's wishes as a claim to the product defined by its hardness. It's just that it is only allowable to claim a product in terms of process-features, if there is no other way to claim the product.
Well, indeed the claims appear a bit non-unitary. But what if you claim a cookware having a horizontal and a non-horizontal cooking surface?
ReplyDeleteSuch cookware having different types of coatings on the different surfaces clearly involves an inventive step as well.
Crap paper.
I wonder that as well. Would you still be able to pass with a claim for cookware with different coatings on horizontal and non horizontal surfaces and a method claim for that? This would be novel and inventive an unitary. It is also offers broad protection because you are not limited to a combination of TEOS and citric acid, however it would be limited in the sense that not all types of cookware can be protected.
DeleteThis is pretty much what I did, cookware with two different coatings on the curved/non curved bit, and a method for making that. It felt very weird doing it in the exam, but both claims are novel and arguably inventive + unified? So it doesn’t seem like a completely unfounded/ridiculous answer.
DeleteFurther, in the DP solution I do not see how claim 1 on the sol-gel composition itself is inventive. The technical effect and thus inventiveness only arises as consequence of it being coated on a substrate right?
DeleteThank you for the thorough and cogent analysis Nyske and Nico. I'm sure everyone will really appreciate this.
ReplyDeleteI do appreciate, however I respectfully disagree with this set of claim. In your line of argument is to be followed by not a combination of MTES & ethanol ration of 1:1 to 6:1 also not claimed? 6:1 ration had a harness of 11. None of the prior art dicsloses this ratio either.
DeleteThanks Blueberry! @Anonymous: as indicated in our analysis, we considered the option to direct the broadest claims to the combinations as listed in the table, but we had our doubts on inventive step and considered further limitation the safest option. That does not mean that none of us didn't have the broadest option in their claims.
DeleteI am glad my claim set looks very similar to yours. I claimed though in addition a method of applying a coating on a cookware having at least oen horizontal and at least one non-horizontal cooking surface and I included two different compositions in each step.
ReplyDeleteWhat do you think about such a claim? My concern is that this would not be unitary. Do you think I will be significantly penalized?
Well, this was my independent method claim, so i like it ;)
DeleteAs the solutions that people came up with vary so widely, I really don't dare to predict anything with respect to how this paper will be marked
DeleteThe inconsistent use of composition and coating really threw me off. What typically happens in these situations where a paper is poorly drafted? I am really shocked that they have given us such a badly thought out paper D followed by this for paper A. Seems like both were full of issues.
ReplyDeleteYes I agree. The paper referred to the sol gel composition having hardness between 12 to 15, while they clearly meant the inorganic sol gel coating. And it made me extremely unsure how to define the coating and composition properly, since I guess there should be an independent claim for both. I guess the examination committee will just threw it off again as either “it should have been clear” or “ it didn’t affect the inventive or essential features “ which is true… but in patent drafting especially in understanding info from clients really EVERY term matters. And honestly we should not have wasted exam time just because of inconsistency from the information we get. Really annoying…
DeleteI don't understand how the spraying claims are unified with the method claims. As they have limited budget sure unity is needed. Also how are the spraying claims new over of features of the device of D2. The sprayer of D2 is suitable for all compositions too. Also for the sprayer, they say there speeds work for them but that's not a technical effect.
ReplyDeleteI'm so confused.
That was my thinking about the spray as well and I decided to claim only the method. I thought that the spray machine would be the same as D2.
DeleteI agree. From my understanding of paper A, claims must be unitary. This led me to not claim the spraying machine in an independent claim.
DeleteI agree. I did not claim a spraying machine because of the unitary requirement, but I used some of its features in dependent claims referring to the method claim.
DeleteThere was a way to claim the sprayer, but the speed was not the way to go. The client themselves noted that the speed can be adapted, and specified that 0.1 m/s - 0.8 m/s was required for their applications, but nothing suggests that it can't move faster/slower than that. The trick was in the simplification of the set-up over the prior art.
DeleteDid the same regarding the simplification. This went hand in hand with the horizontal and non-horizontal surfaces. So the spraying machine must only be adapted to spray in two distinct angles.
DeleteD2 taught to use a sensor and, in combination with the FIG, to continuously adapt the angle to the surface.
I can't see how removing the sensor comprises a technical effect. It's simply an alternative to how to cover a non horizontal surface without any technical effect.
DeleteMy conclusion is they messed this up royally. There is no correct answer as per every other Paper A I've seen at least over the last 10 years
It's unified through specifying that the spraying machine is suitable for applying a composition to cookware, which is partly achieved by limiting the speed and partly through saying that it is 'for' coating cookware. The machine of D2 is for coating airplanes and spaceships parts, and the figure shows that - that sprayer in figure of D2 would be larger than an airplane seat. GL F-IV, 3.1 (ii) and (iii).
DeleteI think this corresponds in broad lines to my approach.
ReplyDeleteSome differences:
- I had the metal substrate as optional (in a dependent claim), as D1 disclosed the existence of ceramic cookware with a sol-gel coating.
- For the two coatings solution, I only required one to be a TEOS/CA sol-gel (and noticed in the Summary that actually, they both could be 'generic' sol-gels)
I agree on the lack of unity, and this made it tricky (especially when including the machine claims)
Also, for those interested, I provided the solution of the AI system we use in the other Paper-A post.
Hi Gerben, good catch on the ceramic cookware. Based on this, it indeed seems valid to omit 'metal' from the independent cookware claim.
DeleteI respectfully disagree because ceramic cookware was only mentioned in D1. Will the sol-gel composition of the applicant achieve the same advantageous result on ceramic cookware? This information is not given in the paper.
DeleteMore specifically, the advantageous technical effect of the composition is that, after application to a metal substrate and drying, the resulting coating has a hardness of at least 12. Accordingly, the nature of the substrate is technically relevant to that effect. In the absence of any teaching showing that the same effect can be achieved on substrates other than metal, the scope cannot be broadened to encompass substrates in general.
DeleteThank you, Gerben and Nico. But what about §12 of the letter "All our cookware, such as the pan (10) shown in the figures, has a metal substrate, which is necessary for the cooking surface to warm up efficiently"? Hopefully, even if unnecessary limitation, "metal" will not be punished with negative points.
DeleteAs an E/M candidate, I would have drafted a claim like claim 13 in real life. However, my understanding of the EQE is that they generally do not want us to claim what they believe to be method features as features of a device using a functional formulation - the fact that the patentability of the spraying machine rests solely on how the machine applies the coating ("the control system is configured for...") seems dubious to me.
ReplyDeleteAgain, this is 100% a claim I would have gone for in everyday practice, I'm just not sure it's what the examination committee expects. I personally included these features in a method claim only, and didn't claim the spraying machine in an independent claim.
I might be totally wrong. As I said earlier, having to ask oneself these types of questions proves that the lack of E/M and chemistry division of papers for A, B or C is completely inappropriate, no matter how much they want us to believe the opposite.
Also, unity of invention is shaky at best
DeleteAgree, the structure of the spraying machine seems to me identical to the one in D2. The distinguishing features results from a particular use of the spraying machine (in particular, the speed). I also included these features in dependent method claims. Hope the Examination Committee will have the same reasoning.
DeleteThe control system is not the same though, and the cooking surface to be sprayer also implies structural limitations on the sprayer. The control system of D2 is configured to apply the coating to substrates relating to aeronautics; whereas the control system claimed is configured to apply it to cooking surfaces. The inventiveness appears to be in the control system and its adaption to applying to spraying cooking surfaces (horizontal and non-horizontal at particular speeds; or alternatively, adapted to apply two different sol gel compositions). However, there doesn't appear to be unity with either formulation in my view with the sol-gel composition as the composition vis-a-vis the apparatus does not confer inventiveness.
DeleteI think this paper was (figuratively speaking) unforgivable unclear.
ReplyDeleteI still don't see anything which suggests the softer should be disclaimer. "All the coatings that we prepared have good non-stick properties and are scratch
ReplyDeleteresistant and safe to use in contact with food." Everything i learned about paper A tells me to include all compositions listed as nothing suggests the least hard composition is not as claimable as the hardest. The client wanted broadest protection possible.
I also limited to metal substrate as these coatings on ceramic substrates were not enabled in the description.
But suggested because aluminum is a metal
DeleteAs Indicated above, I'm not sure whether it was expected to go for all the combinations in the table or just for TEOS + citric acid. The latter is probably the safest in view of inventive step, but it might be narrower than what the drafters of the paper intended.
DeleteThank you Nyske and Nico for this provisional answer. Do you have any thoughts on what the consequence is likely to be for, instead of disclosing the sol composition in terms of the precursor and gel starter (i.e, TEOS (tetraethylorthosilicate) and citric acid), disclosing the same feature in an independent claim by way of parameter (i.e., the inorganic sol-gel coating has a hardness of 12 - 15 as measured according to the known ISO 14705 norm of 31 December 2016)? I included such parameter in the independent method claim (similar to your claim 3) to characterise the inorganic sol-gel coating. My prediction is a loss up to 50% of the available marks for that independent claim for such lack of clarity, and then no further penalisation for using that parameter in the remaining claims, but perhaps I'm being hopeful. I made the mistake of claiming the result to be achieved (I knew it felt wrong in the exam, but under the time pressure, I did not reflect on whether it would be an allowable result to be achieved). In hindsight, I knew it was obviously impermissible.
ReplyDeleteIn view of the inconsistent "inorganic" language with respect to the sol-gel composition, I also included a composition claim as follows:
A sol-gel composition obtainable from a combination of TEOS (tetraethylorthosilicate) sol precursor and a citric acid gel starter in a ratio by weight of between 1:1 and 6:1 of sol precursor to gel starter, wherein the sol-gel composition in the form of an inorganic sol-gel coating has a hardness of 12 - 15 measured according to ISO 14705 of 31 December 2016.
The hardness feature in that composition does not seem necessary, in hindsight, but presumably it doesn't actually limit the scope as such because the resulting inorganic sol-gel coating necessarily has a hardness of 12-15.
Claim 1:
A method of obtaining a coated cooking surface, comprising:
(a) performing a hydrolysis step and adding an organic sol precursor during the hydrolysis
step;
(b) performing a gelation by adding an organic gel starter to the sol precursor in a ratio by
weight of between 1:1 and 6:1 of sol precursor to gel starter so as to obtain a sol-gel
compostion;
(c) applying the sol-gel composition to a metal substrate (21) having a cooking surface to be
coated;
(d) after application of the sol-gel composition to the metal substrate (21), performing a
drying-densification at temperatures above 250°C so as to obtain the coated cooking surface having an inorganic sol-gel coating (20);
characterised in that the inorganic sol-gel coating (20) has a hardness of 12 - 15 as
measured according to the known ISO 14705 norm of 31 December 2016.
I think it was not necessary to add the hardness feature to the method claim, because it is an inherent result of performing the claimed method
DeleteGiven the large variety of answers that peopel (including Nico and myself) have come up wit, I really don't have a clue as to how this paper will be marked. So I really can't tell what deductions to exectpt (if any maybe?). Currently we can only give you our considerations. As explained above, we considered the hardness a result to be achieved, and maybe even a reach-through claim. After all, who can predict which precursor + gel starter will give the required hardness? I personally decided to leave out the "inorganic" as the paper said all sol-gel compositions (coatings?) are inorganic. So I considered it an implicit feature which would not influence the scope of the claim.
DeleteI actually don't understand how the paper could have such discrepancies in terminology. In particular, "all sol-gel compositions are inorganic" in paragraph 6 and "the organic part of
ReplyDeletethe initial components decomposes" in paragraph 7.
As an E/M candidate, I found difficult to infer clearly the meaning of these passages.
That's definitely an error. It should probably read, "all sol-gel coatings" are inorganic. The sol-gel compositions were definitely organic and the precursor and gel starter were described as such. I have a bio background, so I understood what was being said in view of the remaining disclosure in the paper, but I feel like that wasn't fair for E/M candidates.
DeleteFurthermore, to add even more ambiguity, paragraph 16 explicitly states that "The other coating was a combination of TEOS and citric acid". This passage making unclear the distinction between the sol-gel composition and the resulting coating.
DeleteShambolic lol! The assumption should be that the client knows the science, and you know the law. If the client says the composition is organic, you should not have to speculate (as the Exam Reports always try to hammer home) and apply scientific rationale as to whether that 'fact' is accurate.
Delete*says the composition is inorganic
DeleteIf two of the benchmarkers prepared substantially different answers (which are both equally valid), the Exam Div must take this into account when preparing the mark schemes. If the question paper was as unclear as it was in terms of what the invention was, the mark scheme must reflect that same level of ambiguity, otherwise it is just a lottery as to who can guess the correct invention. Previous years make it obvious what the invention is and how the claims should look.
ReplyDelete"The precursor and gel starter are organic components which, according to paragraph [007], are no longer present in the final coating. " As someone who has not studied chemistry since graduating from high school, I don't think it is possible to determined from the names of the precursors and gel starters given in the paper whether both of them are organic or only one of them is. If candidates like me are expected to make that distinction, the examination board should have provided the chemical formulas so that it is clear whether carbon atoms are present.
ReplyDeleteI do agree. The only hint in the paper was: "organic precursors" in paragraph 7. I missed that.
DeleteWhat was your product claim accordingly ?
*in paragraph 8
DeleteMy product claim is correct because I knew that the final product would not comprise the precursor or gel starter.
DeleteAs a mechanical engineer, I was surprised that you cook two organic parts and are left with some inorganic stuff. Does it convert? Does the organic parts have inorganic components?
DeleteAnd the non-toxicity seemed to be connected to the final coating being inorganic.
Could Deltapatents please delete the above comment I posted at 10:54am today as it is irrelevant and may have caused some confusion?
DeleteThe post is irrelevant because we don't need to know whether the gel starter is organic or not. Neither do we need to know how the organic stuff becomes inorganic.
DeleteOhh dear god. I completely missed the aspect where the coating lost its components during the process. I claimed a device with the coating comprising both components, a method of coating and then a coating at the end. I think I’ve failed based on the above answer.
ReplyDeleteI did the same mistake. However, this was not so clear from the wording of the paper, since it stated that all sol-gel composition are inorganic. I do not know if they will take this into account when marking.
DeleteTo clarify as a chemist: the COATING is inorganic, but it may still contain organic RESIDUE. The way it was worded was, in my opinion, quite ambiguous. In general, this paper used some unexplained terminology which gave people with a chemistry background an unfair advantage. I hope/assume that they will take this into consideration.
DeleteThanks for the clarification - so how does organic stuff convert to inorganic stuff? Is there a reaction going on?
DeleteI was puzzled because the two components you put in are cooked away. So whats left? How is a coating forming from this.
9. A cookware item (10) comprising a metal substrate (21), wherein the metal substrate comprises a cooking surface, wherein the cooking surface is coated with a sol-gel coating obtainable by the method of any one of claims 3 to 8.
ReplyDeleteThis claim seems does not full fill the client wish "This fact makes us wonder whether we could also file for protection of our products as such, as product protection is essential for our business".
I really look forward to your comment on this .
Depends. Is your method claim related to preparing the coating itself, or applying a coating? Also, it depends on how you claimed the coating. If you chose the sprayer speed route and claimed the coating broadly, you will have N/IV issues in view of D2, which suggests using such coatings in cookware.
DeleteAs I mention below, I think it is unclear what "product" refers to, but at any rate, this claim 9 is a claim defining a cookware item "as such", I would say. It is characterised by the coating being *obtainable by* the specified method, but that also covers cookware items with an identical coating obtained in a different way, so basically a cookware item with a TEOS/CA sol-gel coating
DeleteI agree with Gerben, I also was not sure what the "product" was that was referred to, cookware or the coating? I made sure my method claims were drafted such that both were at least directly obtained products. Just an additional safety net.
DeleteA cookware item (10) comprising a metal substrate (21), wherein the metal substrate comprises a cooking surface, wherein the cooking surface is coated with an inorganic sol-gel having hardness 12-15 according to ISO. dared...
ReplyDeleteSeems more appropriate and claims a product.
Afterall, hardness 12-15: from TEOS+ CA 1:1 to 6:1
Seems like a nice claim
DeleteAny neutralizations?
ReplyDeleteProbably. If not, they really wanted a lot of people to join the new system, lol
DeleteHello stranger. Could you explain what you mean by that? :) I want to pass!
DeleteI respectfully disagree with this set of claim. In your line of argument is to be followed by not a combination of MTES & ethanol ration of 1:1 to 6:1 also not claimed? 6:1 ration had a harness of 11. None of the prior art dicsloses this ratio either.
ReplyDeleteThis comment has been removed by the author.
DeleteSee comments and analysis above. The option of including the combinations of the table was considered and may have been intended. I just found it hard to decide upon inventive step or not based on the info in the paper. As explained above, the hardness felt like a result to be achieved or even a reach-through claim. That was why both of us edeiced against putting it in the claim. Currently, we can't tell you what the answer is, we can only give you our considerations.
DeleteHi Nyske, I wonder why you considered it a result-to-be-achieved? Table 1 shows the hardness of 12-15, so the result is achieved, right?
DeleteGL F-IV 4.11 states: Parameters are characteristic values which may be values of directly measurable properties (e.g. the melting point of a substance, the flexural strength of a steel, the resistance of an electrical conductor) or defined as more or less complicated mathematical combinations of several variables in the form of formulae. The characteristics of a product may be specified by parameters related to the physical structure of the product if those parameters can be clearly and reliably determined by objective procedures which are usual in the art.
This seems to be the case for the hardness parameter in the present paper? Why else would they provide us with the specific ISO norm if it was not intended to put it into the claim?
It reminds me a bit of Q5 of the D1 paper, which also defined a product (the tiles) by a desired parameter (the heat-resistance up to a specific temperature). Just because the parameter happens to be a desirable one, that doesn't seem to mean that a product defined by that parameter is a result-to-be-achieved?
The proposed claim set misses what the client actually wanted. The client specified that they wanted product protection, as it is essential in their business. Limiting to TEOS/Citric acid while their own data shows that practically all combinations would lead to a satisfactory result is therefore a significant limitation which is not aligned with the client's interest, as it would allow competitors to easily work around the patent.
ReplyDeleteUsing the sprayer speed as a limitation is only an issue for unity if you also claimed the composition. If you only claimed a method for manufacturing cookware with a coated surface and some form of said cookware, then unity is maintained. It may very well be that the exam committee envisioned a composition claim, but in this exam, you had to make choices:
- Claim in a way that aligns with what the client clearly wanted; or
- Claim in a way that allows for as many claim categories as possible, even if it would lead to more limiting protection.
Overall, I assume that multiple solutions will be considered acceptable, as has been the case in previous years.
On the drafting itself, there are a few issues worth noting:
- Claim 6 depends on "claim 3 or 4" but refers to "the cookware item," which only has antecedent basis in claim 4.
- Claim 3 restates the ratio of TEOS to citric acid in its first method step, even though this is already fully defined by the dependency on claim 1 or 2. This is unnecessary repetition that adds nothing to the scope of the claim.
- The preamble of claim 13 states that the machine is "for applying the sol-gel composition of claim 1 or 2," suggesting one composition. However, the body of the claim then defines the machine as applying a first composition to horizontal surfaces and a second composition to non-horizontal surfaces. The preamble and the characterizing portion do not sit well together.
- Claim 9 depends on "any one of claims 3 to 8," which includes claim 6 (the method using two different compositions for horizontal and non-horizontal surfaces). However, claim 9 refers to "a cooking surface" coated with "a sol-gel coating," both singular. When read through claim 6, the cookware item would have two differently coated surface types, which does not match the singular language in claim 9.
- Claim 6 also drops the word "cooking" partway through: the preamble mentions "one or more non-horizontal cooking surfaces" but the method step refers to "the one or more non-horizontal surfaces." Minor, but it is the kind of inconsistency that can cost a clarity mark.
No disagreeing with the other points raised, but a little comment that "a" or "an" of something is not equivalent to "one" of something; it can be "one or more".
DeleteBut what is their product? Only the cookware? Or also the coating?
DeleteThey made quite clear that the product is cookware with the coating
DeleteI considered whether to include an independent claim directed to the composition comprising TEOS and citric acid. Ultimately, I decided against it, as neither the client’s letter nor the cited prior art provides any indication that such a composition would, in itself, be novel and inventive.
ReplyDeleteI agree that the composition appears to be new and inventive in the specific context of its use for applying a coating. However, neither the prior art nor the client’s letter suggests that sol–gel compositions are used exclusively for coatings, nor that the combination of TEOS and citric acid constitutes a novel and inventive composition per se, i.e. also not used in other technical fields.
Since no further information was provided, it is difficult/impossible to assess whether the composition itself (not specific for coatings) would be novel and inventive.
Would be interested to hear others’ views on this.
In the exam, you are to assume that all the knowledge in the world is contained in the documents you are given.
DeleteYou could've claimed the coating/composition itself, but then you would need to limit your method claim to TEOS/Citric acid to establish unity, which would lead to a scope of protection which would exclude coatings that were also deemed satisfactory and were not disclosed in the prior art.
I would rewrite your claim 3 as follows:
ReplyDeleteA process for applying a sol-gel composition to a substrate comprising the steps of:
(a) providing a sol tetraethylorthosilicate as a precursor,
(b) performing a gelation by adding citric acid as a gel starter to obtain a liquid sol-gel
composition having high-viscosity,
(c) applying the liquid sol-gel composition obtained in step (b) to a substare surface, and
(d) performing a drying-densification at a temperatures above 250°C to obtain a substate
surface coated an inorganic sol-gel, wherein the ratio of sol precursor to gel starter is between 1:1 and 6:1 by weight .
Nyske and Nico thanks.
ReplyDeleteFor me it looks like that the claim set provided by you in this provisional set does not fullfill the client wish since you do not claim the product itself.
What is the product you are referring to? Claims 9-12 refer to the cookware.
DeleteHi DeltaPatent team, thanks for sharing your thoughts on this A paper.
ReplyDeleteI spent quiete some time thinking about whether to claim the composition, just as you did in your claim 1. Eventually, I chose not to do it because I could not see any advantage or technical effects of the composition itself other than that the composition could lead to an advantageous coating, which is not mentioned in the claim. (If I remember correctly, in the 2022 A paper the paper pulp claimed as an intermediate product had an advantage - mixed better than known paper pulp?).
I would love to hear your ore anybody elese's thoughts on this.
I totally agree, I also think that you can only convincingly argue novelty and inventive step when the composition is used for a coating, since this it the only technical field for which we have any information, and no indication is given that the sol-gel compositions can only be used for coatings
DeleteI can’t remember what case it is but intermediate products of an inventive process are necessarily inventive. The sol gel composition is therefore inventive per se as it the best results in forming an inorganic sol gel coating.
DeleteIf you just sat paper D, think about the glass product vs glass sheets. The glass intermediate product is still inventive even though the TE arises when in the form of resilient glass sheets.
Agreed with this approach. -FK
Deleteto 2:27: that may be the case. But when you look at claim 1, no reference to a (inventive) process is made.
DeleteBy the way, I also thought the following part (par. [007]) quite confusing:
ReplyDelete"The organic part of the initial components is consequently no longer present in the final product. This fact makes us wonder whether we could also file for protection of our products as such, as product protection is essential for our business."
As the client is in the business of selling pans, when reading just the last sentence, one would expect "our products" to refer to coated pans. However, the preceding sentence seems to use "product" to refer to the coating (material).
The fact whether or not the coating comprises organic parts seems to have little bearing on the question whether or not you can claim pans having such a coating, but seems more relevant to the question whether you can define the coating other than as the direct result of a process.
So in the end, I interpreted the sentence as a hint to include a substance-like claim for the composition. Including an independent claim for a cookware item also seemed so obvious that it would not require a separate hint.
I had the same thoughts and considerations onthis issue as you, Gerben.
DeleteNyske and Nico, could you kindly explain how did your claim set fulfill the client's wish of claiming product itself?
ReplyDeleteclaim 9-12
DeleteClaims 9-12 are PbP not product itself
Delete@Anonymous 12:17 pm: "A PbP claim is a product claim that defines the product in terms of a manufacturing process" F-IV, 4.12
Deleteyes, isn't it, that is what is claimed in claim 9? "wherein the cooking surface is coated with a sol-gel coating obtainable by the method of any one of claims 3 to 8."
Delete"obtainable by the method of any one of claims 3 to 8". For me this is part of process feature
I can't understand what is the issue... I thought you were objecting that those claims are not product claims. They are, as PbP claims.
Deleteclaim 9 is product by process claim as it comprises "obtainable by the method of any one of claims 3 to 8".
DeleteWe have been told often in EQE we must avoid such claims.
I respectfully disagree with this generic statement. But even if we assume that this statement is true, does that make any PbP claims non-product claims (referring to your initial comment)?
DeleteRegarding the comment “We have been told often in EQE that such claims must be avoided”: according to my training notes, the recommended approach is to prioritise structural features, then functional features, followed by parameters, and only if none of these options is suitable to use a PbP claim.
DeleteIn the present case, it seemed appropriate to use a PbP claim. Such a claim still provides absolute protection for the product, which is what the client explicitly requested. Moreover, it appeared to be the only realistic option, because the hardness alone represents a result that cannot easily be expressed through other features. The relevant features responsible for the hardness arise from the precursor components, which disappear during the chemical process and are therefore no longer present in the final coating.
@T exactly, here is the catch. The relevant features responsible for the hardness arise from the precursor components, which disappear during the chemical process and are therefore no longer present in the final coating. This is possible only if you heat above 250°C.
DeleteIf that is missing pdt don't have the hardness
@Anonymous March 06, 2026 3:27 pm - I also considered the >250 °C feature to be essential. However, I included it in the method claim to which I then referred back in the pbp claim.
DeleteA product by process claim is a claim to a product. The process is only a way of describing the features of the product. As to whether it is advised to avoid pbp-claims in the EQE, that is partly true. The advice is to avoid claiming the product by a pbp-claim in addition to claiming the same product in terms of structural/functional features. Because then it looks like you don't know that a pbp-claim should only be used when there is no other proper way to define the product.
DeleteThank you very much for sharing the analysis. Please could somebody share some insights on how the examiner’s usually apply their ‘only mark the worst claim in each category ‘ rule?
ReplyDeleteFor claim 1 I claimed a cookware item with a metal substrate and the coating made from a composition having the required mass ratio… and having the hardness of 4-15 according to the ISO. Then in the final minutes I added a Sol-gel composition claim that had the required ratio range of TEOS and citric acid… would the worst of these be marked, or are they likely to be accepted as claims of different categories for marking purposes (composition, coated product)?
Thanks!
I recall statements from previous exams where they said that "the worst claim of every category is marked", but I cannot see how this can happen in this specific paper without reaching paper D fail rates (or worse).
DeleteTherefore, I would expect (and hope) for none or minimal penalizations around unity/multiple independent claims such that the pass rate will remain sensible. Especially if one considers 1) the nature of the paper and 2) past exams demonstrating mixed subject matter with multiple independent claims...
I suppose we will find out in late June/July...
In 2022, they were looking for a claim to the intermediate product. I (personally) think having a claim to the sol-gel composition and a claim to the cookware is a great approach.
DeleteNyske and Nico, what is the difference in scope of you claim 3 and 9?
ReplyDeleteJust to cookware?
Claim 3 you obtain coated substrate
DeleteClaim 9 coated cookware.
Nyske and Nico, is it you replied to it?
DeleteNo,it wasn't us who replied. But I agree with the answer ;-)
DeleteThank you very much Nyske and Nico for your valuable opinions. My impression on your proposed claim 1 is that, maybe it is true that the sol-gel composition resulting from the process described in the client's letter comprises TEOS (tetraethylorthosilicate) and citric acid in a ratio by weight of between 1:1 and 6:1 of TEOS to citric acid, however, as someone who has not studied chemistry since high school, I cannot be sure of that. The only information I had was the production process where the TEOS was used as a precursor and the acid was used as the gel starter. I did not know whether they would react or not to produce a new product once they were put together. Therefore, I had to draft a product-by-process claim and this is what I would do in real life. It is incorrect to claim a product comprising the precursor and starter because the client never mentions this. Another concern of mine is that whether the product is new and whether I should have claimed the process instead...
ReplyDelete* whether they would react with each other or not
DeleteI'm not a chemist either, and like someone elso commented too, I can't really see how an organic substance could change into an inorganic one. I just stuck to what the paper told me, which was that the you put organic stuff together and after you heat it it's inroganic. So the organic things are not present in the final product. But the organic things seem to be at the core of the invention, which for me pointed to claiming the method, an intermediate product in terms of the precursor and gel starter, and the final product as a product by process claim.
DeleteThank you Nyske for the reply. I don't think how an organic substance could change into an inorganic one is relevant, but I disagree with claim 1 proposed by DP because the paper does not mention any composition comprising TEOS and citric acid in a ratio by weight of between 1:1 and 6:1 of TEOS to citric acid. It is merely a conjecture as to what product would result from mixing the precursor and the gel starter according to the process described in the paper. if it were correct, it would rely on chemical knowledge not contained in the paper. Without such knowledge, it would be impossible to know whether, in mixing the precursor and the gel starter in the manner described in the paper, the two would undergo a chemical reaction and form a new substance or change their ratio by weight.
DeleteIn other words, the composition cannot be defined by any structural feature because none of them is given in the paper. It can only be defined by the process.
DeleteThe reaction that disintegrates the organic constituents happens with the annealing step to 250oC. Maybe you are "chemically correct", but the sol-gel composition comprising a precursor and a starter is consistent throughout the paper.
Delete@Roald Amundsen: no, the Paper never mentions a composition "comprising" a precursor and a starter. It only mentions a composition made by mixing the two.
Delete*mixing the two means adding the precursor in a hydrolysis step and then adding the starter in a gelation process. The paper does not say the resulting composition still "comprises" the precursor or the gel starter or comprises the two at their initial ratio by weight.
DeleteI see your point now. On hindsight, I can see that they potentially pointed towards a PbP for the sol-gel composition. For example §10: "sol-gel compositions **obtained** from a combination of TEOS as a precursor and citric acid as a gel starter".
DeleteIf that is the case, I would argue that although there was a clear hint that the original components are no longer present for the formation of the coating after heating, it wasn't the same in this case, unless one was using outside knowledge...
"
DeleteIf that is the case, I would argue that although there was a clear hint that the original components are no longer present for the formation of the coating after heating, it wasn't the same in this case, unless one was using outside knowledge..." how can you be sure that the gelation process wouldn't produce a new substance or change the initial ratio by weight between precursor and starter? If you are not sure, you can only claim a product by process because this is what you know about the product. Without outside knowledge you don't know if the precursor or starter still exists or retains its original ratio by weight after the gelation process.
I cannot be sure, exactly. I base my logic on what the paper tells me. And the only information I have from the paper regarding the organic-->inorganic is the following in §7: During drying and densification at more than 250°C, the organic part of the initial components decomposes, forming a hard inorganic layer.
DeleteWith my non-chemist background, having no further guidance from the paper, I assume that the sol-gel composition comprises its constituents until the heating converts it.
"Note that one of us took a different approach and went for the speed range in the independent claim for the spraying machine and adding that the machine is suitable for applying a sol-gel composition to a cooking surface of cookware." I drafted a similar claim. I also claimed a computer-implemented method in addition to a computer and a system comprising the computer and the sprayer, because the guidelines clearly teaches us "In such inventions, although different claim structures are possible, the set of claims usually starts with a method claim." (Guidelines F-IV, 3.9.1).
ReplyDeleteI briefly considered going into the CII direction as well but decided against it as the paper was already complicated enough without it.
Deleteyes, isn't it, that is what is claimed in claim 9? "wherein the cooking surface is coated with a sol-gel coating obtainable by the method of any one of claims 3 to 8."
ReplyDelete"obtainable by the method of any one of claims 3 to 8". For me this is part of process feature
i agree, it is a product-by-process feature
DeleteI drafted the composition claim as "A sol-gel composition for use in coating cookware..."
ReplyDeleteDo you see that as a significant limitation?
I don't think they should consider this as a significant limitation because this was the information given to us.
DeleteI think there are case law somewhere that non-medical use are not limiting or something similar
DeleteI think it is clear that the client wishes to protect his product, which is the cookware item (see para [007]).
ReplyDeleteI (unfortunately) formulated this claim as a cookware item comprising at least one cooking surface with a metal substrate (21, 22), wherein the cooking surface has an inorganic sol-gel coating (20, 20a, 20b) arranged thereon, which is formed from a sol-gel composition comprising a sol precursor and a gel starter in a weight ratio of 1:1 to 6:1, wherein the sol precursor is tetraethyl orthosilicate and the gel starter is citric acid.
On one hand, it is written that the “organic part” of the initial components is no longer present in the final product, since it gets decomposed during the high-temperature densification (para [007]). Therefore, it leaves it firstly unclear whether the initial components—the sol precursor and the gel starter—disappear completely, or if their “inorganic part” is left in the final product. I tend to interpret this as meaning that during the manufacturing process, only the “organic parts” are removed.
Nonetheless, this would, at the very best, justify the inclusion of the components in the claim but not the weight ratio, since these are “starting” ratios used before the process begins (see para [010]). I believe it is common sense that through decomposition and the resulting loss of mass, the ratios are going to change and are therefore not preserved in the final coating. Consequently, I interpreted the whole matter as the sol-gel coating being the final element present within the cookware item (and therefore by force inorganic), whereas the sol-gel composition is the starting substance used to manufacture the coating (see para [006]). For this, the sol-gel composition must be kept within the weight ratio of 1:1 and 6:1 (with the best results for TEOS and citric acid in the weight ratio of 4:1 as claimed in para [011]).
However, it is stated in the client letter that "all sol-gel compositions are inorganic compositions" (para [006]). Even though it might look like an error and that "coating" should have been written there, the para refers three times to the composition as being inorganic and states that such compositions have no adverse health effects. By extension, this implies that all the elements the sol-gel composition consists of—such as TEOS and citric acid—are inorganic.
Nonetheless, this is clearly contradicted elsewhere. It is explicitly stated that the precursors (TEOS, MTES, GPTMS, and MPTMS) are "organic precursors" (para [008]). The situation is slightly different with the four named gel starters, where it is not explicitly stated that any of them are organic. However, I think that this can be implicitly assumed (para. 009).
So eventually, the client letter has a major internal contradiction: it claims on one side that all sol-gel compositions are inorganic (containing no C-C bonds), yet defines them as being made of organic components (precursors and gel starters). When marking this paper, which I find quite ambiguous, I believe this is a factor that must be given due consideration.
Some free points?
Delete
DeleteAgreed. To be frank, I think no matter how they factor that into the marking process, the damage is done. The only way to fairly assess candidates' fitness to practice is to make sure the paper is clear and tests knowledge of the EPC, not ability to understand unclear material in an unfamiliar technical field.
Whether you could pick up on the organic/inorganic nature of the composition and on the fact that the final coating does not contain the precursor and the initiator was heavily dependent on your technical background, which should be almost irrelevant. If they insist on having a single paper for E/M and chemistry candidates, which I think is a terrible idea in and of itself, any technical term should be well-defined in the client's letter.
They can attribute extra points or change the marking scheme, however that will not change the fact that many candidates will have a sub-optimal solution just because they couldn't understand the invention. In the end, the ones who pass won't necessarily be the ones most able to draft claims as per European law.
I really don't think this type of paper is acceptable.
Agree 100% !
DeleteI wonder how the Examination Committee will take such contradiction into account.
I guess there will be a lot of appeals.
You've excluded quite a lot of the client's embodiments by limiting to TEOS and Citric acid.
ReplyDeleteI wonder if a method claim with a characterizing feature based on speed of applying the coating is, instead, the preferred independent method claim.
I'm not entirely convinced that limiting to TEOS and Citric acid is the right way to go here. As an initial point, the letter tells us that a large range of combinations can be used, such as those in the table. TEOS and citric acid are a particularly good combination, but in the absence of any discussion of the hardness in D2 there is already an argument that at least all the other tested combinations are inventive because they also have good hardness.
DeleteIn essence, the combinations are novel because of the two list principle, and in the absence of any hardness teaching in D2 there is no particular reason why you would need to choose TEOS and citric acid to have an even better hardness. Ultimately TEOS and citric acid are both in D2 anyway just as the other tested options are, so it seems like the same argument for why TEOS and citric acid are inventive would apply to the other tested combinations in the absence of any hardness teaching in D2.
I wonder which technical effect the speed of applying the coating has on the product that the client wants to have protected.
DeleteFrom GL F-IV, 4.12 : "A claim defining a product in terms of a process is to be construed as a claim to the product as such. The technical content of the invention lies not in the process per se, but rather in the technical properties imparted to the product by the process."
(Original poster) Agreed, hardness was required for novelty for the product. Unity is the big challenge. My product and method claims are unlikely to be considered to be unified.
DeleteIt would be great to have some clarification from DP on why it was proposed to have a pbp claim instead of a result to be achieved according to the ISO norm.
ReplyDeleteI am not a DP member, but my understanding would be the following:
DeleteIn this case, it seemed appropriate to use a PbP claim. Such a claim still provides absolute protection for the product itself, which the client explicitly requested. Moreover, it appeared to be the most realistic option, because the hardness alone represents a result that cannot easily be expressed through structural, functional, or parameter features of the final product.
The features responsible for achieving the hardness arise from the precursor components used during the sol-gel process. However, these precursor components disappear during the chemical transformation and are therefore no longer present in the final coating. As a result, the product cannot readily be defined by those structural features, which makes a PbP definition a reasonable approach.
Thanks T. I realise the PbP is a valid approach, but I would also argue that defining by using the hardness would be appropriate here. As you say, we don't have the structural components of the final coating but the parameter of the product, i.e., the hardness, can be positively verified according to the ISO norm. Neither solution is particularly pleasing, but I'm just intrigued to know why they preferred PbP over the hardness result.
DeleteActually, during the exam I briefly looked again at Paper A from 2022, because the situation reminded me quite a lot of the current 2026 paper. If you check the examiner’s report for 2022, a product claim was also expected there. However, in that case the product could still be defined by a structural feature, namely the “homogeneously intermixed glue”, which was responsible for the increased tensile strength of the paper.
DeleteIn contrast, in the 2026 paper there do not seem to be comparable structural features for the final coating.
Exactly, T.
DeleteI think this was a potential distinction they were trying to highlight here.
A similar paper (although a bit more straightforward, imo) was the 2009 Ch with the artificial patina. There, the patinated roofing material had to be claimed as a PbP, and not as a roofing material coated with the solution. This was because the solution reacted on the surface of the material, and therefore was no longer present in the end product.
My consideration was that you needed to include the precursor(s) + gel starters(s) for a clear claim, as otherwise nobody would know how to get to the hardness as specified by the claim.
DeleteThanks, Nyske. Do you envisage such a claim with the hardness result to be penalised heavily? It is novel and inventive but potentially has the clarity issue. I realise you can't guess exactly what the marks scheme will be, but based on previous experience such as the 2022 paper?
DeleteIt seems that most of you didn’t have a lack-of-unity issue, but I did. Still, I think each of my independent claims is well drafted on its own. I just hope the examination board won’t be too harsh about it simply because only a few people made this mistake.
ReplyDeleteDoes anyone know, how many marks will be lost for wrong dependency? I inserted some claims about the cooking surface and then had the wrong reference in one of my claims for the cookware item...
ReplyDeleteI had a claim to cookware with two layers of metal and a sol-gel coating on the top layer that I am now rather worried about...
ReplyDeleteThis claim excludes the client's embodiment of cookware with one metal layer + sol gel, but I thought this would be fine given that this is known from D2. I did not include the TEOS/citiric acid limitation (in this claim) as this excludes the other sol-gel combinations invented by the client that are not known in the art (004, 010).
In terms of inventive step, the technical effects of using two layers (adherence/conductivity) and sol-gel (non stick etc) are each known from D1. However, D1 teaches that while sol-gel is non-stick, it is alsoexpensive and time-consuming [002]. In contrast, D1 teaches that Teflon has better scratch resistance, is easy and cheap and to make, and has low toxicity [003].
I figured these might be a reasonable arguments why the skilled person considering D1/D2 would just stick to teflon. Therefore, even if the OTP is the provision of an alternative, the skilled person would not arrive at this combination? Or am I clutching at straws here?
This combined with the fact the client sells pans / included a steer to a product claim / is presenting cookware at the fair and we dont know with which coating...
Any thoughts?
This was possible, as long as you argued that the one-layered pan is directly obtained by the method claim (depending on how your structured your method claim)
DeleteBut it is not possible to write to EPO a complain regarding the clarity of the paper? A lot of candidate in this blog said that this paper was not written in agood maniera. Also there are a lot of chemical errors. EQE is not a lottery and it seams that in the last years we spent a lot of time to study how pass the EQE not how to became a good patent attorney. Last year for example paper B was very long for peaple that are not using EPO languages every day. This year is the year of paper A with a paper quote cunfuising and with a lot of inconsistency. EQE is not a lottery!
ReplyDeleteOnce you get your result you can file an appeal if you can show that your answer is a valid answer based on the information in the paper and how you interpreted it. See Art. 24 REE. But simply saying the paper was too difficult or unclear is not going to work, you need a solid, objective argumentation why your answer is valid and should have gotten more points.
DeleteCan anybody please confirm whether there will be any compensatory points?
ReplyDeleteHow do you expect anyone to know at this point without seeing the mark scheme?
DeleteThank you for sharing your valuable views conering the paper A. I would say the paper is even confusing for a chemist working closely in the field, I spent quite some time to find proper wording for claims.
ReplyDeleteI have the same logic with your proposed claims, but claim all combinations in the table. To me the reference is [5] of D2: "Such coated metal surfaces have proven to be an excellent alternative to Teflon™" and [5] of client's letter: "We discovered that applying a sol-gel coating to the cooking surface instead of Teflon™ achieves particularly good non-stick properties, even better than Teflon™. Moreover, the scratch resistance and general durability are improved." I take this as a reference that the combinations disclosed in the table are better than Teflon™ coated surface. (D2 mentions as alternative, not better), and also to me, there is no hint that we should claim only TEOS to citric acid (from my understanding best is rather a hint of a fallback claim, but not the broadest claim).
So balancing between the best and broadest, I choose to claim all combinations in the table.
Happy to get some comments ;)
I had the same considerations. The only thing that worried me with respect to inventive step was that D2 mentioned all the advantages already that the client's letter attributes to the combinations in the table. So how inventive are they in view of D2 alone?
DeleteOverall, I agree with the DP solution (thank you for the time you invested). The paper pointed towards having both a method claim and a product-by-process claim for the cookware item.
ReplyDeleteHowever, I am less convinced by the independent automatic spraying machine claim. From my perspective, this raises a potential unity of invention issue, because it is not clear that there is a single special technical feature shared with the other claims that defines a common inventive concept. The spraying machine features appear largely independent of the core invention relating to the specific sol-gel composition and its use for producing the coating.
For this reason, it might have been more appropriat to incorporate the spraying-related features into the method claim, since they all relate to the same step of the method, namely the application of the sol-gel composition to the substrate. In that way, the claim set would remain centred on one inventive concept (-> the preparation and application of the specific sol-gel composition) while still covering the technical details of how the coating is applied.
What do you think?
The paper does not mention any composition comprising TEOS (tetraethylorthosilicate) and citric acid in a ratio by weight of between 1:1 and 6:1 of TEOS to citric acid. It is merely a conjecture as to what product would result from mixing the precursor and the gel starter according to the process described in the paper. if it were correct, it would rely on chemical knowledge not contained in the paper.
DeleteI don't think claiming a "composition comprising TEOS (tetraethylorthosilicate) and citric acid in a ratio by weight of between 1:1 and 6:1 of TEOS to citric acid" is correct.
DeleteWithout the relevant chemical knowledge not contained in the paper, it would be impossible to know whether, in mixing the precursor and the gel starter in the manner described in the paper, the two would undergo a chemical reaction, form a new substance, or change their ratio by weight.
DeleteArgee. And my feeling is that the spraying mechine in D2 is very advaced, i.e. more complete and has more functions that what's client mentioned
DeleteI went for independent spraying machine claim, mostly due to the fact client explicitly mentioned that they want to use this for applying the sol-gel composition to the cooking surface. It further prompted me that the letter uses the phrase "our machine", which is to me different than what D2 would describe since:
Delete(i) speed range is sufficiently far removed from the end points of D2.
(ii) spraying device of D2 does not apply the composition to a cooking surface, but rather onto a metal substrate used in the field of aerospace.
Therefore, I thought that unity would not be contested due to such binding of this device to the coating steps.
* the two would undergo a chemical reaction and form a new substance or change their ratio by weight
ReplyDeleteLooks like I should start reviewing the new EQE system then... I had an apparatus claim for applying the two different coatings, a method of applying the two different coatings and then a PbP claim for the cookware, with dependent claims covering the TEOS and citric acid embodiments. I think I was sticking too closely to the 2022 paper.
ReplyDeleteNyske and Nico can you give any comments on this approach?
DeleteI considered this angle, but decided against it because it felt too limited as it protects only some of the cookware that the client sells. It would have offered an opportunity to make the claim to the apparatus unitary with the other claims though.
DeleteThank you Nyske. I suppose only time will tell whether this approach could achieve a passing grade.
DeleteIt appears that this approach is not too uncommon. I opted for the same claims as either options were limiting the scope quite substantially. However, the two different coating aspect was repeated in three (?) different paragraphs. Moreover, the claim set is unitary.
DeleteHi Nyske,
ReplyDeleteI see that there are arguements for choosing TEOS and CA only and for claiming all the combinations in the table. I wonder how claiming all combinations would comply with the concept of selection invention choosing from two lists. Isn't it requiered to take a specific combination?
The combinations in the table were five specific combinations - which is a lot less than all potential combinations of the two lists of D2. Including the five combinations of the table results in an "or"-claim with 5 options.
DeleteThanks. Makes sense. Fortunatelly, I did not realise that possibilty during the exam, otherwise I would have lost even more time on deciding wheter to go with only TEOS and CA or with the 5 possible ones. Choose TEOS and CA right away after realizing the two lists. Didn't they even name their product after that combination?
DeleteHi Nyske/Nico thanks for sharing your results, much appreciated. I agree that going for TEOS + CA would be the safest option. While all selections in Table 1 would confer novelty by means of two-selections from a given list disclosed in D2, it would be much more difficult to argue inventive step. Since you typically need comparative data to support the inventiveness of the selection, I argued that the data in Table 1 (to be included in Example section) demonstrates that this is not just any selection, but provides an unexpected improvement in hardness over other combinations also covered by D2 (in generic sense). Another entry in the Table indeed reached hardness 11, which is close to the lower boundary 12, but at a completely different ratio of sol to gel starter (1:1 vs 6:1) so no good 1 to 1 comparison. I did run into the trap though of claiming the (inorganic) sol-gel coating as broadest product claim instead of the sol-gel composition. I hope that due to the interchangeable use of both terminologies throughout the entire paper this will also be reflected in the marking scheme and be considered either equivalent or a minor clarity issue which would only be penalized once.
ReplyDeleteHallo Deltapatent Team, thank you so much.
ReplyDelete1. A cookware (1) comprising a metal cooking surface (20) coated with an inorganic sol-gel
layer (21), wherein the inorganic sol-gel layer having a hardness of at least 12 when measured according
to the ISO 14705 norm of 31.12.2016.
9. Use of a sol-gel composition comprisng a combination of tetraethylorthosilicate as a sol
precursor and citric acid as a gel starter in a ratio of sol precursor to gel starter between 1:1
and 6:1 by weight for preparing an inorganic sol-gel layer having a hardness of at least 12
when measured according to the known ISO 14705 norm of 31.12.2016.
10. A process for applying a sol-gel composition to a substrate comprising the steps of:
(a) providing a sol tetraethylorthosilicate as a precursor,
(b) performing a gelation by adding citric acid as a gel starter to obtain a liquid sol-gel
composition having high-viscosity,
(c) applying the liquid sol-gel composition obtained in step (b) to a substare, and
(d) performing a drying-densification at a temperatures above 250°C to obtain a substate
surface coated an inorganic sol-gel, wherein the ratio of sol precursor to gel starter is between 1:1 and 6:1 by weight .
These are independent claims.
Seems I will have to resit 😒
I misunderstood client wish for product as claim to cookware.
Secondly, i thought selection invention as you proposed was too straight forward and can't be so in EQE. 😃
I wouldn't dismiss it yet. We don't know how they will penalise claiming using the hardness yet. Given the huge variety in claims, I can't imagine they will penalise for issues like this as much as usual
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ReplyDeleteHi Nyske/Nico thanks for sharing your results,
You claim 1 seems novel, however lacks inventive step. I believe you would argue the inventive step based on hardness.
However this composition does lead to desired hardness unless you heat above 250 °C.
So for me your claim 3 involves inventive step.
Regards
SJ
Retyping
ReplyDeleteHi Nyske/Nico thanks for sharing your results,
You claim 1 seems novel, however lacks inventive step. I believe you would argue the inventive step based on hardness.
However this composition does NOT lead to desired hardness unless you heat above 250 °C.
The inorganic sol-gel has hardness definitely not your composition of claim 1 as it might even a semi solid.
So for me your claim 3 involves inventive step, not your proposed claim 1.
Regards
SJ
Further to above comment, just checked the TEOS, and confirm it has a boiling point of 168°C.
ReplyDeleteSo your claim one not inventive as it cannot have hardness.
Regards
SJ
I sincerely do not get, why so many people argue/chose citric acid and TOES... From my understanding it goes completely against the clients wish for broad protection as half of the tested coatings are not covered. Wasn't it always the Point to really, really avoid not including these wishes?
ReplyDeleteIn my opinion, a restriction to the speed of the sprayer is much less restricting as it is used by the client under any circumstances...
I think the point is that the rule that you need to be novel & inventive overrides the rule of always including the client's wishes, and here the patentability outside of the preferred combination is really questionable.
DeleteI don't think it's that unusual for the invention to be narrower than what the client is initially asking you to patent in paper A, it's actually the case more often than not. I get that here the client was mentioning different combinations as what their products include, but I still think this reasoning applies.
We'll have to wait for July to know for sure anyway
We will have to wait to see what EPO cooks in their cookware for this paper and impose on all Candidates. Well done to those claim sets that match with their report, regardless of all other possible and successful outcomes from the client letter.
ReplyDeleteClaim 9, "wherein the cooking surface is coated with a sol-gel coating obtainable by the method of any one of claims 3 to 8" should read "wherein the cooking surface is coated with a sol-gel coating by the method of any one of claims 3 to 8"
ReplyDeleteYour suggestion would mean that you’re more limited when it comes to infringement. ‘Obtainable’ language has a wider scope of protection than using the term ‘coating’.
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