The patent relates to method of obtaining a two- or three-dimensional formed structure of an AIMg alloy plate product.
Brief outline of the case
The opponent appealed the rejection of its opposition.
The board held that the patent as granted was infringing Art 123(2). The same applied to the AR 1-9.
AR 10 was not admitted under Art 13(2) RPBA.
The patent was thus revoked.
The case is interesting for the reasons which lead to the infringement of Art 123(2). It boils down to what the skilled person understands under “shaping” and “forming”.
Claim 1 as granted
It includes, inter alia, the following wording:
“shaping or forming said alloy plate at a temperature in a range of 200°C to 400°C wherein the shaping or forming process is selected from the group of bending, pressing, roll forming, stretch-forming, and creep-forming.
The proprietor’s point of view
The requirements of Art 123(2) were fulfilled. It was evident to the skilled person reading the application as originally filed that the terms shaping and forming had the same meaning. This was apparent from numerous passages in the description as originally filed, which showed the interchangeability of the terms.
In particular, this interpretation was confirmed when comparing claims 1 and 2 as originally filed with the corresponding passages in the description as originally filed. The reference of claim 6 as originally filed to claim 1 as originally filed further corroborated this.
It was directly and unambiguously derivable from the combination of claims 1 and 2 as originally filed that the temperature range of 200°C to 400°C also applied to the forming of the alloy plate.
The board’s decision
The point of debate was whether forming at a temperature in a range of 200°C to 400°C was directly and unambiguously derivable from the application as originally filed.
The application as originally filed do not disclose a forming process in a range of 200°C to 400°C. Such a temperature range is only specifically disclosed for shaping. This is also corroborated by the fact that the description refers to “hot shaping” or “hot shaped” but not to “hot forming“. Claims 3 and 4, which further specify the temperature range, only relate to “being shaped”.
Claim 1 of the application as originally filed relates to a forming method which includes shaping the alloy plate at a temperature in a range of 200°C to 400°C. This is in line with the original description.
Claim 2 as originally filed refers to a plate product being formed using a shaping or forming process. The “being formed” is construed in the context of claim 1 to refer to the broad meaning of claim 1.
In the context of “using a shaping or forming process“, forming is not considered to have the same meaning as “being formed” since it is limited to one or more of the specified process steps. It is not unambiguous that all the process steps listed, i.e. bending, pressing, roll forming, stretch-forming and creep-forming, are supposed to qualify as both shaping and forming. Some of the steps could be considered shaping while others would be forming. This is also in line with the description.
Claim 6 of the application as originally filed refers to the “formed structure” and to the “forming operation“. This is corroborated by the original description.
The skilled person understands in that context that the meaning of the word “forming” is apparently broader than the expression “shaping“. The forming process comprises the shaping step as part of it.
The skilled person would thus understand that forming and shaping are different processes, otherwise listing the two of them would be meaningless; they would not directly and unambiguously be considered synonyms.
The board held that, in view of the incoherent use of the terms “forming” “being formed” and “formed product” in the application as originally filed, there is ambiguity as to the intended meaning of “forming“.
Therefore it is not unambiguous that forming is supposed to be a synonym of shaping. Consequently the temperature range of 200°C to 400°C cannot be unambiguously associated with the forming step.
The step of “forming said alloy plate at a temperature in a range of 200°C to 400°C” is thus not directly and unambiguously derivable from the application as originally filed.
In summary, the requirements of Art 123(2) prejudice the maintenance of the patent as granted.
The conclusion reached for the MR also applies to AR 1 to 9 with respect to Art 123(2). These requests are consequently not allowable either.
Comments
The present decision might look severe, but is full in line with the way the boards apply the requirements of Art 123(2).
What deserved the proprietor was the incoherent use of the terms “forming” “being formed” and “formed product“, giving rise to doubts about the meaning of “forming”.
It is nothing new that an unclear feature can lead to added matter.
See for instance T 1791/16, Reasons, point 11 or T 241/13, Reasons 1.3.1, second §.
https://www.epo.org/en/boards-of-appeal/decisions/t211760eu1
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