The patent concerns a device and a method for machining the inner surface of a pipe system, especially at a joint area of the pipe system.
Brief outline of the case
The OD decided that claim 1 as granted and of AR1 was infringing Art 123(2), and decided maintenance of the patent according to AR4.
Both proprietor and opponent appealed the decision.
In view of infringement proceedings in Germany, appeal proceedings were accelerated.
The board held that claim 1 as granted and of AR1 lacked N.
The board decided maintenance on the basis of AR2.
The case is interesting for two aspects:
- Claim interpretation in the light of the description
- Adaptation of the description in opposition
In the present publication we will concentrate on the limits of claim interpretation in the light of the description.
The claim at stake
“1. A machining device (100) for machining the material of a pipe system comprising a joint area between a pipe having a smaller inner diameter and a pipe having a larger inner diameter, characterized in that the device comprises:
a. protruding parts (102) adapted to position the device or at least a part of it inside the pipe having smaller diameter of the pipe system, wherein said protruding parts (102) comprises a rough sanding surface (106) and a bendable torque transmitting member,
b. steerable, actuator operable means (106 and/or 201) for removing material from the joint area of the pipe system and
c. steering device (301) for controlling the direction of the machining device in relation to the longitudinal axis of the pipe having a thinner diameter in the pipe system while removing material from the edges of a hole made to the joint area of the pipe system.
The proprietor’s point of view
The patent proprietor argued that a dedicated steering device was not required, since various passages in the description of the patent indicated that the protruding parts, by maintaining the direction of the machining device, already acted as a steering device.
The fact that the protruding parts and the steering device were defined in separate features of claim 1 did not prevent the steering device from comprising the protruding parts. In fact, also the removing means of feature b. could comprise the protruding parts. Claim 1 could thus be regarded as defining one single feature but with three different functional requirements. For the material removing function a sanding coating or surface had to be foreseen; for the steering function a certain axial length was indispensable.
The opponents’ point of view
The patent did not disclose without ambiguity a configuration wherein the protruding parts acted as a steering device. Nor did it contain any indication that the axial length of the protruding parts was a criterion for such a configuration.
Even though the protruding parts had a positioning function, they were not capable of deviating the direction of the machining device. Only a cable and a weight were mentioned as possible steering devices in the patent.
The boards decision
The subject-matter of claim 1 as granted is concerned with a device for machining the material of a pipe system. The pipe system itself, including the pipe having a smaller inner diameter, the pipe having a larger inner diameter and the joint area there-between, is not part of the claimed subject-matter, which is solely defined in terms of three structural features a., b. and c.
In feature a, it is not said what portion of the machining device the parts are projecting from.
Feature b foresees that means are provided for removing material of a joint area between two pipes.
Feature c relates to a “steering device”. For the board it is an actual physical component able to perform the task of controlling the direction of the machining device. The steering is thus not merely a functional aspect that can be assigned to one of the other components of the machining device.
The board reminded that it is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole. Nevertheless, the extent to which description and drawings can provide an aid to interpret the claims is however subject to certain limitations.
The skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense, cf. T 190/99, Reasons 2.4. A claim can thus be interpreted in the light of the description and the drawings to the extent that they contain logical and technical sensible information, cf. T 1408/04, Reasons 1.
Interpreting the claims in the light of the description and the drawings does not make it legitimate to read into the claim features appearing only in the description or the drawings and then relying on such features to provide a distinction over the prior art. This would not be to interpret claims but to rewrite them, cf. T 881/01, Reasons 2.1.
In this context, it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording. The preparatory material available on the discussions leading up to the European Patent Convention shows that even in the framework of Art 69 and its Protocol on Interpretation, it was never the scope to exclude what on the clear meaning was covered by the terms of the claims. Accordingly, many decisions of the Boards of Appeal have concluded that a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently, cf. T 431/03, Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14, Reasons 1.5.
The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader, cf. T 1018/02, Reasons 3.8; T 1391/15, Reasons 3.5. On a similar note, the board in T 197/10, Reasons 2.3, held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.
Application in the present case
Analysing especially § [0017] to [0019], the board came to the conclusion that protruding parts and the steering device must be considered different components of the machining device.
Despite the persistent reference to “embodiments of the invention” in § [0027] to [0039], the examples of Figs. 1, 2a, 2b, 4a, 4b, 5a, 6a and 6b do not have a steering device for controlling the direction of the machining device. A steering device is only disclosed in Figs., 4c, 4d, 4e and 5b.
One sentence in § [0030] would allow the conclusion that the springy protruding parts act as the steering device of the disc 201 that is in this embodiment the device for removing material. For the board, it relies on a manifestly different interpretation of the term “steering”. However, the protruding parts are not able to actively change the direction of and, hence, steer the machining device with respect to the longitudinal axis of the pipe.
The board concluded that the present case is one where the interpretation of a claim in the light of the description reaches its limits. Taking account of the deviant note in § [0030] would mean ignoring the natural reading of claim 1 and disregarding the extensive contextual information provided by the rest of the description.
A structural link between the steering device of feature c. and the protruding parts of feature a. or the material removing means of feature b. is not apparent from claim 1 as granted.
Comments
The present decision belongs to the line of case law according to which Art 69 is applicable, but under very strict conditions. Art 69 cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader.
The case is interesting in that it makes clear that even if one § of the description would allow to give to a claimed feature, here steering, a different meaning, this meaning is to be disregarded when looking at the rest of the description.
https://www.epo.org/en/boards-of-appeal/decisions/t220447eu1
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