Europaisches
`Patentamt
`
`European
`Patent Office
`Office europeen
`des brevets
`
`111111111111 1111111111 1111111111 111111111111111 IIII 1111
`Sanger, Phillip Simon
`GWIP Ltd
`Highdown House
`11 Highdown Road
`Leamington Spa
`Leamington Spa CV31 1XT
`ROYAUME UNI
`
`European Patent Office
`80298 MUNICH
`GERMANY
`
`Questions about this communication ?
`Contact Customer Services at www.epo.org/contact
`
`Formalities officer
`Gouby, Yannik
`
`18.10.2021
`
`!A
`
`pplication No./Patent No.
`13803074.7 - 1005 I 2932185
`
`OPPO01
`
`Reference
`MOY _O_ 1050_EP
`
`Applicant/Proprietor
`Qinetiq Limited
`
`EPA/EPO/OEB Formblatt/Form/Formulaire :
`
`F2331
`
`Empfangsbescheinigung Ober den Zugang des vorstehend bezeichneten Schriftstucks
`Acknowledgement of receipt of the document specified above
`Recepisse du document specifie ci-dessus
`
`Linter Bezugnahme auf die Mitteilung im ABI EPA 7/2010, 377 wird gebeten, die Empfangsbescheinigung
`mit Empfangsdatum und Unterschrift zu versehen und umgehend an das EPA zuruckzusenden:
`
`With reference to the Notice in OJ EPO 7/2010, 377, you are requested to date and sign the
`acknowledgement of receipt and return it to the EPO immediately:
`
`Conformement au communique paru au JO OEB 7/201 O, 377, vous etes prie d'indiquer sur le recepisse la
`date de reception du document, de signer le recepisse et de le renvoyer sans delai a I' OEB:
`
`• Ober die Online-Dienste des EPA (als Anlage zu EPA Form 1038) / through EPO Online Services
`(as annex to EPO Form 1038) / par les services en ligne de l'OEB (en tant que piece jointe au
`formulaire OEB 1038),
`• per Fax I by fax I par telefax (+49 (0) 89 2399-4465 or +31 (0) 70 340-3016)
`• oder per Post/ or by post/ ou par courrier.
`
`Empfangen am / Received on / Re9u le :
`
`/ Reiurn address i Adresse de" reiour ■
`0ROcksende-Adresse0
`■
`(Umschlag /envelope/ enveloppe ISO C4 / DL / C6/C5 / C6)
`
`■
`
`Unterschrift / Signature:
`
`0
`oci
`0
`
`CNV1HOS.ln3a
`N3HONnw 86~08
`1we1ua1ed sa1.1cis1~do.m3
`
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`
`Empfangsberechtigter/authorised recipient/
`le destinataire ou la personne dument mandatee :
`
`moJaJ ap assaJp'Q' / ssaJppe um1al:::J / assaJp'Q'-apuas)!00l:::J
`
`page 1 of 1
`
`YG03567
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 1 of 38
`
`

`

`Europaisches
`Patentamt
`European
`Patent Office
`
`Office europeen
`des brevets
`
`I llllll lllll lllll lllll lllll lllll lllll 111111111111111111
`
`Sanger, Phillip Simon
`GWIP Ltd
`Highdown House
`11 Highdown Road
`Leamington Spa
`Leamington Spa CV31 1 XT
`ROYAUME-UNI
`
`L
`
`7
`
`_J
`
`European Patent Office
`Postbus 5818
`2280 HV Rijswijk
`NETHERLANDS
`Tel: +31 70 340 2040
`Fax: +31 70 340 3016
`
`Formalities Officer
`Name: Gouby, Yannick
`Tel: +31 70 340 - 4074
`or call
`+31 (0)70 340 45 00
`
`Application No./ Patent No.
`13 803 074.7 - 1005 /2 932 185 /01
`
`Ref.
`MOY _O_ 1050_EP
`
`I
`
`Date
`18.10.2021
`
`I
`
`Proprietor
`Qinetiq Limited
`
`Decision revoking the European Patent (Art. 101 (3)(b) EPC)
`
`The Opposition Division - at the oral proceedings dated 21.09.2021 - has decided:
`
`European Patent No. EP-B- 2 932 185
`
`is revoked.
`
`The reasons for the decision are enclosed.
`
`Possibility of appeal
`This decision is open to appeal. Attention is drawn to the attached text of Articles 106 to 108 and Rules 97 to
`98 EPC.
`
`Opposition Division:
`
`Registered letter
`EPO Form 2331 07.19TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 2 of 38
`
`

`

`Date 18.10.2021
`
`Sheet 2
`
`Application No.: 13 803 074.7
`
`Chairman:
`2nd Examiner:
`1st Examiner:
`
`Urbahn, Stephanie
`Dekker, Derk
`van Berlo, Andre
`
`Gouby, Yannick
`Formalities Officer
`Tel. No.: +31 70 340-4074
`
`Branch at The Hague
`
`Enclosure(s):
`
`16 page(s) reasons for the decision (Form 2916)
`Wording of Articles 106 - 108 and Rules 97-98 EPC (Form 2019)
`Minutes of oral proceedings
`
`to EPO postal service: 12.10.21
`
`Registered letter
`EPO Form 2331 07.19TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 3 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`I. FACTS AND SUBMISSIONS
`
`1
`
`2
`
`European patent 2 932 185 having the title "METHOD OF MODIFYING A
`SHAPED CHARGE" is based upon European patent application No. 13 803
`074.7 filed on 13-12-2013. It claims priority of GB 201222474 filed on
`13-12-2012.
`
`The mention of the grant of the patent has been published in the European
`Patent Bulletin of 30-05-2018. Proprietor of the patent (PP) is
`Qinetiq Limited
`Cody Technology Park
`lvely Road
`Farnborough
`Hampshire GU14 0LX
`GB.
`
`Notice of opposition has been filed by Opponent 1 (0)
`DynaEnergetics GmbH & Co. KG
`KaiserstraBe 3
`53840 Troisdorf
`DE
`on 28-02-2019.
`The Opponent requests revocation of the patent in its entirety based on
`Art. 100 (a) EPC Lack of Novelty/ Lack of Inventive Step
`Art. 100 (c) EPC Added Matter
`Art. 100 (b) Insufficiency
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 4 of 38
`
`

`

`Datum
`Date
`Date
`
`3
`
`4
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`The following evidence has been submitted within the opposition period:
`1, AP! data ~h~---et
`J.. AP! d~t;i ~h~t
`:l AP! data she-E.:t
`4.
`.l RC (fata :.h:f.!<et
`.i Rt d.ita sh~:i?t
`S,
`.i Rt d.ita sh~:i?t
`6,
`7. US6283214
`8. A H'WROOJDE·-DE5lGNED 'iiVELL PERFORATOR \a'VffH EXCEPTmNAL PERFORMANCE, David
`Da,1i~on, fMn Fratt, Uth tntern«itimi<il Symp-,:t">kin1 tin i\,lm~tit.'>, Midr .. md,. South Afrirn,
`March 1998
`9. SPE 15'9005 Opfoni5Jng Pmfor~fo,g Charge De5ign for Sfanulaitkm, CHnto,ri C Q:wattleba,wm f:t
`aL, tapyrlght 2012
`10. US 3100445
`U .. WO WI2/082J.86 {dt~d in the~ IPRP as 07}
`12. SPE 38-:141 tn·fpr-o\femei'fl-s: in Perfr:itafo~ fl.etfontiai1c:i? fn Hfgh Carri:pi·:essi\r-e St·rei~th, fkH::ks,
`P.S .. Smith et aL_, t.--opyright: 199i
`13, LS-DYNA User's mam$a I May 1999
`14. LS 0 t.WNA E:<:arnpte~ r.n.inual March 1998
`15. 'lntrodl.u.-:ti.on to AP! 19!:l Settkm 1\/ t~stir~ on so1mhton.e tores ~md s.haim-d eha~e tr:<shnij for
`l'' and 21/S'' :.y~tems', DYNAermrg~ti(;~, [WAPS,, ~~,iv~mb~;r lOH
`16. Ei-::tr.~.ct from ·'fundamentals of sh.iped CJ~rge'!i: William~ Wahers, 21 fon~ 1939- thapters
`1,4
`17. Exv·.ict from 'funda,rnenta!s of Sfuip~d C!1arg~5··, WilH~m P \VaJter'S_ .. 21 Jum~ 1989"" (h.;:1,pt:er
`14
`18. CA:2.1 %3BSA1
`19. W020(J9117543Al
`20. LS,OPT Us~(s f-.,11lOUi3J, D~(~mber .ZOW
`21. SANDlA 'Optknfled Umk.:11 Sh.ciped Charge t1-esi~n Usit\~ the S-CAr o..·,de' 1988
`22.. s.P~'\N 20H Oilfield n,view
`2:3. :wu. Mosdfiv wd:is,iti~
`
`The Opposition Division (OD) refers in the further procedure to the above
`documents as D1 to D23.
`
`In a letter received on 12-07-2019, the proprietor requested the rejection of the
`opposition (Article 101 (2) EPC) and the Patent maintained as granted (Main
`Request) or as per one of the four auxiliary requests AR1-AR4 submitted with
`said letter.
`Oral Proceedings were requested if the Main Request is refused, whereby the
`further request was made to allow the Patentee to have the opportunity to join
`the proceedings by video conference.
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 5 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`5
`
`6
`
`7
`
`8
`
`9
`
`In a letter received 23-10-2019 0 referred to T 489/14 and the questions rising
`therefrom which have been referred to the Enlarged Board of Appeal (EBOA) in
`pending case G1 /19. The opponent requested to issue confirmation of the stay
`of proceedings (or otherwise) until the EBOA has issued a decision in respect of
`G1/19 prior to the issue of a preliminary opinion.
`
`Summons with a preliminary opinion and an explanation why the proceedings
`were not stayed in the annex, were sent on 2-12-2019.
`
`On 26-11-2019 the PP had already submitted a letter wondering whether a stay
`of proceedings, as requested by 0, was appropriate. He also enclosed a further
`auxiliary request (AR5).
`
`On 14-4-2020 the PP submitted further auxiliary requests AR6a-d. He indicated
`to remain prepared to join the hearing by videoconference and requested
`permission for any of the inventors to speak or provide written evidence on
`technical issues arising in the proceedings.
`
`On 29-4-2020 the O argued against the request for any of the inventors to
`speak or provide written evidence. He also submitted further references D24-
`D31, as follows:
`!>2:4 - fan 2(l12 .,:\P! ,-.,~b5-itfi ~:<tr,ict - P-1:irfrifi'1tor ',Nit1)1~ssfng l'--'ttigrnm
`DZS ... (kt W12 AP{ W(lb:,it(~ ~xtrnct ... C(~tifiesition Fadlitif$ !~$t
`026 - Dec 2010 .AP\ web:';ite, e>ttril(:t - ,l'.\PI Perforator o~,Mgn R~;gisttatiofi Progrs1m .,\ppiicatk,f:
`!)27 --- f•A~lV 2tl:{}5 AP! Perfor~tm D~':,ign R~gi:s.trntion Proiram App!katl<:in
`!>28 -- final Prograrnrne --- nn 2 fompean ,md West-African P.:rforating SympositJm
`DZS ··· US 6:B-40178
`030 w SP~ 151846 '/!,. {):irnparabve Assi:;ssment of 3 3/8-in, Perforntm,; Using 'Readi'<'i/ and 'Non(cid:173)
`re.i<:til;',i Shs1µed Chs1rges·· {(t1 2000}
`!>31- US 323-SOlJ:S
`
`Furthermore he provided further arguments with regards to the admissibility of
`documents. He also reacted on the summons, in which the OD stated that claim
`1 was not necessarily related to a computer-implemented simulation and that on
`this basis proceedings did not have to be stayed awaiting a decision of the
`Enlarged Board of Appeal in respect of G1 /19. As a consequence of the
`interpretation of claim 1 by the OD, he raised an objection under Article 52(2)(c)
`EPC that the method in fact relates to a purely mental act. 0 also provided
`further arguments against the Main request and auxiliary requests AR1 to
`AR6a-d.
`
`10
`
`On 15-5-2020 the PP objected against the O's new objection under Article 52(2)
`(c) EPC, because it had not been raised before in the Notice of Opposition. He
`also filed a new auxiliary request AR?.
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 6 of 38
`
`

`

`Datum
`Date
`Date
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`4
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`On 5-6-2020 the EPO indicated, via an-e-mail of the formalities department,
`with reference to the Notice of 20 April 2020, that oral proceedings may be held
`by videoconference in opposition, if all parties to be summoned and the
`opposition division agree. The parties were requested to indicate whether they
`agreed to the oral proceedings scheduled for 01.07.20 to be held as a
`videoconference on the same date.
`
`On 8-6-2020 via e-mail, the PP agreed, but the O did not agree to the
`videoconference for the Oral Proceedings.
`
`On 18-6-2020 the summons to attend oral proceedings were cancelled in view
`of the Coronavirus. The parties were notified that a new date would be set.
`
`On 3-12-2020 new summons to attend oral proceedings were issued for
`21-09-2021.
`
`On 21-7-2021 0 submitted further arguments against the Main request, auxiliary
`requests AR1 to AR6a-d and AR?.
`
`On the same day 21-7-2021 also PP submitted further arguments and filed
`further auxiliary requests ARB, AR9, AR 10 and AR 11.
`
`On 30-08-2021 0 submitted a letter pointing out that the number and nature of
`the 14 auxiliary requests filed is excessive.
`
`On 21-9-2021 Oral Proceedings were held per video conference.
`During the Oral Proceedings two new auxiliary requests were filed, but these
`new auxiliary requests AR3-new and AR4-new were not admitted to the
`procedure.
`The earlier filed requests on file were maintained and relabelled at the end of
`the Oral Proceedings as follows:
`I I Previous Label
`I Request
`I Main
`i
`
`I claim 1 + method of manufacture
`I
`!
`
`I I claim 1 + computer implemented
`
`I
`I
`
`I claim 5 amended
`I
`!
`I ! claim 5 removed
`I I claim 1 + 3 + angle
`
`I
`I
`
`!
`
`18
`
`i
`
`I
`I
`
`! AR2
`i
`I AR3
`i
`! AR4
`i
`I AR5
`i
`
`EPO Form 2916 01.91TRI
`
`I I as granted
`
`!
`I
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 7 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`5
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`AR6
`I
`I
`AR?
`ARB
`I
`AR9
`I
`AR10
`I
`AR11
`I
`AR12
`I
`AR13
`I
`AR14
`I
`
`19
`
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`
`I '
`
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`
`I '
`
`I
`I
`I
`I
`I
`
`I '
`
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`I
`
`I '
`
`I
`I
`I
`I
`I
`I
`I
`
`AR4
`
`AR5
`
`AR6a
`
`AR6b
`
`AR6c
`
`AR6d
`
`AR9
`
`AR10
`
`AR11
`
`I
`I claim 1 + reactive liner
`I
`!
`I
`I AR2 + liner according to fig 4 or 6
`I
`~--····················
`I ! claim 1+2
`
`I
`1
`I
`I claim 1+3
`I
`!
`I
`I claim 1+4
`I
`!
`I
`I claim 1+5
`I
`I ,
`I
`I claim 1+6
`I
`!
`I ! claim 1 + hole shape
`
`I
`1
`I
`I AR10 + claim 1 +2+4
`I
`!
`
`Feature analysis
`The features of claim 1 of the Main Reguest are as follows:
`1 a A method of optimising a shaped charge liner design
`1 b for use in an oil/gas well perforator
`1 c in order to form a desired hole shape in a rock formation, the method
`comprising
`1 d comparing the desired hole shape to a library of known liner designs,
`1 e the library comprising data relating to the hole shape formed by each liner
`design within the library;
`1 f selecting the liner design that produces the closest hole shape to the desired
`hole shape;
`1 g varying at least one parameter of the selected liner design to form a modified
`liner design;
`1 h modelling the hole shape that the modified liner design produces;
`1 i repeating the varying and modelling steps until the hole shape of the modified
`liner design converges towards the desired hole shape.
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 8 of 38
`
`

`

`Datum
`Date
`Date
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`6
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`The examination is being carried out on the following application documents
`
`Main Request
`
`Description, Paragraphs
`
`1-74
`
`of the patent specification
`
`Claims, Numbers
`
`1-8
`
`of the patent specification
`
`Drawings, Sheets
`
`11-28
`
`of the patent specification
`
`Auxiliary Request 1
`Claims, Numbers
`
`1-8
`
`filed in electronic form 15-5-2020
`
`Auxiliary Request 2
`Claims, Numbers
`
`1-8
`
`filed in electronic form 21-7-2020
`
`Auxiliary Request 3
`Claims, Numbers
`
`1-8
`
`filed in electronic form 15-7-2019
`
`Auxiliary Request 4
`Claims, Numbers
`
`1-7
`
`filed in electronic form 15-7-2019
`
`Auxiliary Request 5
`Claims, Numbers
`
`1-6,8
`
`filed in electronic form 15-7-2019
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 9 of 38
`
`

`

`Datum
`Date
`Date
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`7
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`Auxiliary Request 6
`Claims, Numbers
`
`1-8
`
`filed in electronic form 15-7-2019
`
`Auxiliary Request 7
`Claims, Numbers
`
`1-7
`
`filed in electronic form 26-11-2019
`
`Auxiliary Request 8
`Claims, Numbers
`
`1-7
`
`filed in electronic form 21-4-2020
`
`Auxiliary Request 9
`Claims, Numbers
`
`1-7
`
`filed in electronic form 21-4-2020
`
`Auxiliary Request 10
`Claims, Numbers
`
`1-7
`
`filed in electronic form 21-4-2020
`
`Auxiliary Request 11
`Claims, Numbers
`
`1-7
`
`filed in electronic form 21-4-2020
`
`Auxiliary Request 12
`Claims, Numbers
`
`1-7
`
`filed in electronic form 21-7-2021
`
`Auxiliary Request 13
`Claims, Numbers
`
`1-8
`
`filed in electronic form 21-7-2021
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 10 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`8
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`Auxiliary Request 14
`Claims, Numbers
`
`1-5
`
`filed in electronic form 21-7-2021
`
`Description and Drawings are for the auxiliary requests the same as for the Main Request
`
`II REASONS FOR THE DECISION
`
`20
`
`21
`
`22
`
`With regards to the request to issue confirmation of the stay of proceedings until
`the EBOA has issued a decision in respect of G1 /19, the OD is of the opinion
`that claim 1 does not necessarily claim a computer-implemented simulation,
`because no reference is made to a computer in the claim. The first question
`referred to the EBOA for decision in G1/19 clearly relates to a computer(cid:173)
`implemented simulation. Because of this difference in subject-matter between
`the claim and G1 /19, the OD decided and informed the parties in the summons
`of 2.12.2019 not to stay the proceedings.
`In the mean time G 0001 /19 (Pedestrian simulation) is available anyway from
`10-3-2021.
`
`With regards to the requested permission for any of the inventors to speak or
`provide written evidence on technical issues arising in the proceedings the OD
`noted that that no written evidence of any of the inventors has been submitted.
`With regards to spoken submissions during Oral Proceedings at least condition
`(ii) of GL-E Ill 8.5, namely
`"the party making the request has f ndicated the name of the person, the
`subject-matter of the submission and the person's qualification to speak on this
`matter;" has not been fulfilled. The OD therefore refused the request.
`
`Interpretation of the claims
`- The term "a library of known liner designs" in feature 1 d in combination with
`"each liner design within the library" in feature 1 e does not require that there are
`multiple different liner types (as A and B in figure 17 of the application, where
`the library indeed merely is shown as a table of information) in the library.
`Varying at least one parameter of the selected liner design (in feature 1 g) could
`for example also relate to a different size of liner.
`The OD is of the opinion that the wording chosen in the claim allows a very
`broad interpretation.
`- 0 argued that it is not clear which measurable parameter is to be prioritised by
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 11 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`9
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`23
`
`24
`
`25
`
`26
`
`27
`
`the skilled person in order to make a determination as to which is 'closest in
`feature 1 f. The OD notes that clarity is no ground for opposition. The OD does
`however note that also 'closest allows a very broad interpretation, such as for
`example the diameter or the depth of the hole, see also the discussion below
`under Insufficient disclosure.
`
`Main Reguest: Patentable invention (Article 52 (2)(c) EPC)
`
`According to the PP the skilled person would understand that claim 1 as granted
`is at least implicitly computer implemented and PP objects against the
`admittance of this new ground of opposition, which has been lated filed.
`
`The OD sees the Article 52(2)(c) EPC objection of the opponent as an
`objection, which had not been explicitly raised in the Notice of Opposition. The
`OD notes however that on page 10 of said Notice, the explicit remark that "It is
`noted that claims 1 and 7 are not limited in any way to computer
`implementation." is considered implicitly directing to Art 52(2)(c) EPC.
`The OD notes that the objection has been raised as a consequence of, i.e. is
`occasioned by, the interpretation of the division that claim 1 does not
`necessarily relate to a computer-implemented invention, and that it, prima facie,
`does see an interpretation of claim 1 as a purely mental act.
`The OD therefore admits the objection into the procedure.
`
`According to the PP the skilled person would understand that claim 1 as granted
`is at least implicitly computer implemented, particularly due to the complexity of
`the modelling (step 1 h), which could only be performed by a computer.
`
`The division does not agree.
`The complexity of the modelling is not defined by the claim and can therefore
`not be a criterion to establish that a computer is required, see also
`GL G II 3.5.1. In view of the OD the modelling can be performed as a mental
`act, whereby the library can be interpreted as some mentally memorised data.
`In other words the 1st hurdle of the two hurdle approach (COMVIK) as
`discussed in Case Law G0001 /19, see particularly for example §78,79 and 125,
`has not been passed.
`The claim therefore lacks any technical means and does not meet the
`requirements of Article 52 (2)(c) EPC.
`
`28
`
`First Auxiliary Reguest (previously labelled AR7):
`Extended subject-matter Art. 100 c) EPC with Art. 123 EPC
`
`Claim 1 of this request has been amended as follows:
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 12 of 38
`
`

`

`Datum
`Date
`Date
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`10
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`n1ethod compns1no A,-,.,~-et-h0tl-ef.-optimising a shaped charge liner design for use in an
`oil!gas w-el! perf.orator in order to form a ®sired hole shape in a rc.'<.:k forrnation, the method
`comprising
`comparing the desired ho!e shape to a library of known liner designs, the library comprising
`data relating to the !'lcile shape formed by each liner design ••lilhin the library:
`selecting the liner design that produces the dosest hole shape to the desired hole shspe;
`varying at least one parameter of !Ile selecie.:I liner design to form a modified Hner design;
`
`modelling the ho!e shape that the modified liner design produces;
`repeating the varying .,ind modelling steps until tile hoh,:! shape of the modined liner design
`cor1verges towards the desired hole shape,_
`
`As a basis PP refers particularly to the following passages of the originally filed
`PCT application:
`- page 10, line 26-36: According to a fourth aspect of the present invention there
`is provided a method of optimising a shaped charge liner design for use in an
`oil/gas well perforator in order to form a desired hole shape in a rock formation,
`the method comprising comparing the desired hole shape to a library of known
`liner designs, the library comprising data relating to the hole shape formed by
`each liner design within the library; selecting the liner design that produces the
`closest hole shape to the desired hole shape; varying at least one parameter of
`the selected liner design to form a modified liner design; modelling the hole
`shape that the modified liner design produces;repeating the varying and
`modelling steps until the hole shape of the modified liner design converges
`towards the desired hole shape.
`- page 15, line 18: The liner of Figure 4 with an internal apex angle of 50° was
`fired into a target consistent with the arrangement of Figure 3.
`- page 5, line 16: It is therefore an object of the present invention to provide a
`shaped charge arrangement that facilitates preferential crack formation, growth
`and orientation in the rock strata.
`According to the PP it is inherent to these passages of the disclosure that the
`shaped charge liner design has to be manufactured in order to be provided.
`
`According to the OD said passage on page 26 refers to optimising a shaped
`charge liner design and not to the manufacturing thereof.
`Also the passage on page 15 of the application refers to a liner which is fired
`into a target, but not to a method of manufacturing an enhanced shaped charge
`liner design.
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 13 of 38
`
`

`

`Datum
`Date
`Date
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`11
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`The passage on page 5 does not refer to a liner design, but to a shaped charge
`arrangement and does not disclose for example whether the shaped charge
`arrangement comprises a liner at all.
`The OD is therefore of the opinion that claim 1 encompasses subject-matter
`which extends beyond the content of the application as filed.
`Auxiliary Request 1 does not meet the requirements of Article 123(2) EPC.
`
`Second Auxiliary Reguest (previously labelled AR8):
`Claim 1 of this request corresponds to claim 1 of the Main Request, apart from
`the fact that it defines "A computer implemented method" ....
`
`Art.100(a) EPC (Art. 54 EPC): Novelty
`0 argues as for the Main Request that the document D7 is novelty destroying
`for claim 1 as follows:
`us 6283214
`
`29
`
`30
`
`'in order to shoot elliptically shaped
`
`Col 3 lines 36-37 'The present invention relates to a method ... based on
`optimizing the geometry and the orientation of perforations'
`Example 4 - col 10 lines 26 to 35 ' ... the perforating apparatus will need to be
`redesigned' and 'a series of three-dimensional numerical simulations'.
`Col 10 line 'design iterations .. .'
`Abstract (at least)
`Example 4 - col 10 lines 26 to 30 -
`perforations'
`Col 10 line 51-52 ' ... desired elliptically shaped perforations ... '
`Implicitly disclosed: see col 10 lines 50-57 -
`'the perforating device ... [ ... ] ... is
`based closely upon a conventional gun design that way, the cost associated
`with performing the methods of the present Invention is lowest. In other
`words, we sought a particular shaped charge design that would involve only a
`modest reconfiguration of an existing or conventional shaped charge'
`(emphasis added)
`Implicitly disclosed - col 10 lines 50-57 (as per 1d)
`Col 10 lines 50-57 (as per 1d)
`Col 10 lines 58-67
`Example 4 col 10 lines 32 to 35 - uses OTl*HULL
`Col 3 lines 36-37 'The present invention relates to a method... based on
`optimizing the geometry and the orientation of perforations' and col 10 line 65
`- 'design iterations'
`
`Claimed feature
`Claim 1
`la
`
`lb
`le
`
`ld
`
`le
`1f
`lg
`1h
`li
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 14 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`12
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`Additionally he referred to column 10, line 36, where it is explicitly stated that
`software is used to generate the simulations. As such the document D7
`implicitly discloses that the method is computer implemented.
`
`The OD does not agree that the document D7 discloses the first feature of claim
`1 labelled "1 a":
`1 a A computer implemented method of optimising a shaped charge liner design.
`
`Although computer implementation of a method appears implicitly disclosed in
`D7, none of the passages indicated by the opponent refers to (optimising) a
`shaped charge liner design. Although optimising itself is considered very broad,
`the object to be optimised is clearly "a shaped charge liner design". Particularly
`from the last paragraph of column 10, line 58-67, the object of the design
`iterations in D7 is directed at the case of the shaped charge, rather than at the
`liner design.
`The OD is therefore of the opinion that the subject-matter of claim 1 is novel.
`
`Art.100(a) EPC (Art. 56 EPC): Inventive Step
`In view of the foregoing discussion about Article 52 (2)(c) EPC for the main
`request, the only technical feature of claim 1 consists of the computer.
`The amendment of performing a purely mental, i.e. non technical, method on a
`computer does not render the claim inventive (Art 56 EPC; see GL G VII 5.4); in
`other words the mere use of a computer for automation is considered trivial for
`the skilled man in the art.
`The OD is therefore of the opinion that the subject-matter of claim 1 is not
`based on inventive step.
`
`AR3-New Third Auxiliary Reguest filed during Oral Proceedings, not
`admitted
`P filed during Oral Proceedings a new third auxiliary request, with the following
`claim 1:
`
`31
`
`32
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 15 of 38
`
`

`

`Datum
`Date
`Date
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`13
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`The OD considered this request as late filed (GL E VI 2.2) and not prima facie
`overcoming the earlier objections. In particular the last part added to the claim
`(originating from claim 6 of the patent as granted) could still be a purely mental
`act, i.e. has to be considered as a non-technical feature.
`
`This request was therefore not admitted.
`
`33
`
`AR4-New Fourth Auxiliary Reguest filed during Oral Proceedings, not
`admitted
`P filed during Oral Proceedings a new fourth auxiliary request, with the following
`claim 1:
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 16 of 38
`
`

`

`Datum
`Date
`Date
`
`18.10.2021
`
`Blatt
`Sheet
`Feuille
`
`14
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`The OD considered this request also as late filed (GL E VI 2.2) and not prima
`facie overcoming the earlier objections. In particular it was considered not
`converging with the earlier requests and the amendments substantially changed
`the scope of the method claim and thus the object of the proceedings.
`
`This request was therefore also not admitted.
`
`34
`
`Auxiliary Reguest 3-14: Patentable invention (Article 52 (2)(c) EPC)
`This concerns the following requests on file:
`I
`i Previous Label
`Request
`I
`~
`~
`~
`'
`1 ..................................... :~ .................................................... ~ ....................................................................................................................................................... ~
`l
`1
`I
`i
`i AR3
`! AR1
`! claim 5 amended
`!
`i
`I
`I
`i
`'
`
`~
`
`~
`
`~
`
`AR4
`
`AR5
`
`AR6
`
`AR2
`
`AR3
`
`AR4
`
`EPO Form 2916 01.91TRI
`
`claim 5 removed
`
`claim 1 + 3 + angle
`
`claim 1 + reactive liner
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 17 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`15
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`I AR?
`i
`I ARB
`i
`! AR9
`i
`! AR10
`i
`I AR11
`i
`I AR12
`I AR13
`i
`I AR14
`i
`35
`
`I I AR2 + liner according to fig 4 or 6
`
`I
`I
`I claim 1+2
`I
`!
`I
`I claim 1+3
`I ,
`I
`I
`I claim 1+4
`I I
`I
`I claim 1+5
`I
`!
`I
`I claim 1+6
`I I
`I
`I claim 1 + hole shape
`I
`!
`I
`j AR10 + claim 1 +2+4
`
`I
`I
`
`According to the PP the skilled person would understand that claim 1 is at least
`implicitly computer implemented, particularly due to the complexity of the
`modelling (step 1 h), which could only be performed by a computer.
`
`36
`
`The division does not agree.
`Because claim 1 of Request 3 and 4 is the same as of the main request, the
`same reasoning applies, see paragraph 27 above (Art 52(2)(c) EPC).
`
`For the Requests 5-14, where features have been added to claim 1 of the Main
`Request, a similar reasoning applies. None of the added features comprises
`technical features, which could contribute to passing the first hurdle, see
`paragraph 27 above. Claims 1 of Auxiliary Requests 3-14 therefore lack
`technical means and do not meet the requirements of Article 52 (2)(c) EPC.
`
`EPO Form 2916 01.91TRI
`
`DynaEnergetics Europe GmbH
`Ex. 1004
`Page 18 of 38
`
`

`

`Datum
`Date
`Date
`
`1 8 . 1 0 . 2 0 2 1
`
`Blatt
`Sheet
`Feuille
`
`16
`
`Anmelde-Nr:
`Application No:
`Demande n°:
`
`13 803 074.7
`
`Ill DECISION
`
`Taking account of the amendments made by the patent proprietor during opposition
`proceedings, European patent 2 932 185 is revoked on the grounds of Article 1 00(c)/
`1 00(a) EPC because it contains subject-matter which extends beyond the content of the
`(earlier) application as filed, contrary to the requirements of Art. 123(2) EPC and the
`subject-matter of the claims does not meet the requirements of Article 52(1) EPC in
`conjunction with Article 52(2)(c) / 56 EPC (Article 101 (3)(b) EPC).
`
`OBITER DICTUM
`
`During the Oral Proceeding Auxiliary Request 2 was refused on the basis of Art 123(2)
`EPC regarding claim 5. Thereafter claim 1 of this request, assuming claim 5 had been
`deleted, was discussed further with regards to Article 54 and 56 EPC.
`
`Claim 5 of Auxiliary Request 2- Article 123(2) EPC
`The PP argued that claim 5 does not go against Article 123(2) EPC, since the two
`features that follow "optionally" at the end of this claim mutually exclude one another: " ...
`optionally the multiple parameters are varied in parallel, optionally the multiple
`parameters are varied sequentially."
`According to the PP the multiple parameters are either varied in parallel or varied
`sequentially. Although grammatically both options are also possible, a skilled person
`reading the claim would understand that this is in reality not possible.
`
`The OD however considers that it is actually possible to vary multiple parameters in
`parallel and sequentially, and that these options do not exclude each other mutually. For
`example some of the multiple parameter could be varied sequentially, whereas others
`could be varied in parallel.
`The combination of both these options however is not disclosed in relation to the
`subject-matter of originally filed claim 32 and claim 33, which each depend separately
`on claim 31.
`
`The OD therefore decided that claim 5 of Auxiliary Request