EP 3 202 693 B1 relates to a transfer apparatus which picks up an electronic component from one storage unit, and places this electronic component in another storage unit.
Brief outline of the case
The opposition was rejected, and the opponent appealed.
The board held that claim 1 as granted contravened Art 123(2) due to an intermediate generalisation. The same applied to AR I-IV. The patent was thus revoked.
The proprietor requested the board to refer a certain number of questions about intermediate generalisations to the EBA. This request was rejected by the board.
The critical part of claim 1
Feature F1h, reads as follows:
- “the holder unit (21) is installed on an axial frame (22) via a sliding unit (24) so as to be capable of moving forward in a centrifugal direction going apart from a centre of the rotary pickup, and of retracting in a centripetal direction directed towards the centre”
The opponent’s point of view
The opponent argued that the OD erred in its finding since the original disclosure did not provide a direct and unambiguous basis for a sliding unit without its detailed structure of original paragraph [0056] comprising the slide shaft 24b, the sleeve 24a and the arm 24c.
The proprietor’s point of view
According to the proprietor, the skilled person was aware of multiple types of sliding units. Furthermore, it was apparent to the skilled reader of the application as filed that the more specific details of the sliding unit were not mandatory or essential.
In particular, the skilled person would understand from original disclosure that first, in, a general description of the rotary pickups and the elements, including the sliding unit, were given, wherein exemplary additional details were provided in the following paragraphs.
In the particular case of the sliding unit, the description gave additional details such as the slide shaft 24b, the sleeve 24a and the arm 24c, which were not indispensable for providing the movement functionality of the holder unit of original claim 2, whereby original claim 1 broadly defined the transfer unit.
The proprietor argued that the feature of the sliding unit was not extracted from a group of several features at the same level, and that the overarching mechanism, i.e. the sliding unit, on a higher level did not have any specific structural or functional relationship with the details, i.e. the sleeve, the slide shaft and the arm, on a lower level. In sum, by omitting the features of the sliding unit detailed in paragraph [0056] of the original description, the skilled person was not presented with new technical information.
The proprietor further argued that the alleged intermediate generalisation in claim 1 as granted met the criteria established by case law as explained in the CLB, 10th edition 2022, II-E.1.9 and in section H-V, 3.2.1 of the Guidelines.
As such, claim 1 as granted would meet the requirements of Art 123(2). In particular, the proprietor was not aware of a situation in which the above criteria were met but the requirements of Article 123(2) were not fulfilled.
The board’s decision
Based on the description, the board held that the latter related to one and the same embodiment with only one way of carrying out the functional movement of the holder unit via a sliding unit, the sliding unit comprising a slide shaft, a sleeve and an arm.
The board was of the view that the skilled reader would derive from the description a detailed description of the “rotary pickup”, which is to be considered as a whole. It follows that the only realisation of the movement of the holder unit via a sliding unit that can be directly and unambiguously derivable for the skilled person in view of the original disclosure is with sliding units with the structural features of paragraph [0056].
The board concluded that the introduction of the feature “sliding unit” in combination with the omission of its structural features such as the sleeve, the slide shaft and the arm, results in a new technical teaching, namely providing the functional movement of the holder unit via sliding units with different structural features, than the ones that are necessary to carry out the sole originally disclosed embodiment of realising the claimed movement of the holder unit via a sliding unit.
The board also noted that even in the part of the Guidelines cited by the respondent the criteria are explicitly referred to an aid, but that the “gold standard” is in any case to be respected.
Comments
According to the Guidelines F-IV, 6.5, functional features are, in principle allowable in a claim, even where only one example of the feature has been given in the description, if the skilled person would appreciate that other means could be used for the same function, see for instance T 274/14.
In this respect, reality is somehow different as divisions of first instance and boards, in general, require a plurality of examples in order to allow a functional formulation for a features.
In the present case, the proprietor even argued that the skilled person was aware of multiple types of sliding units, but none of those were not originally disclosed in the context.
This made the difference as manifestly only one way of carrying out the sliding unit was originally disclosed, i.e, the sliding unit comprised a sleeve, a slide shaft and an arm.
In T 164/21, referring back to T 1906/11, it was held that, to determine whether an amendment conforms with the requirements of Art 123(2), the only relevant question is whether a skilled person faced with the amended version of a claim as compared to a skilled person having seen only the original version of said claim would derive from that amended version any additional technically relevant information.
In the present case, the board found that the functional formulation did add technically relevant information.
It is only in the absence of any clearly recognisable functional or structural relationship among the features of a specific combination, see T 2787/19, or if the extracted feature is not inextricably linked with the omitted features see T 352/19 then the „golden standard“ of G 2/10 is satisfied.
It is also difficult to say that the sliding unit as originally disclosed was not inextricably linked with the other features of the transfer unit.
As the questions for a referral to the EBA were all about how to asses an intermediate generalisation, it does not come as a surprise that the board did reject the request for a referral to the EBA.
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