EP 3 392 719 A1 relates to a process cartridge and an electrophotographic image forming apparatus which uses the same.
Brief outline of the case
The ED refused the application for infringement under Art 76(1) over the parent and the grand-parent application. The applicant appealed.
It all turned out whether a coupling member, for example an Oldham coupling (in the figure 21-22-23), could be omitted or not.
The board agreed with the ED, that this could not be the case.
AR1 was admitted by the board, in spite of representing an amendment to the applicant’s appeal case.
The board remitted to the ED for further prosecution.
The case is interesting in that the ED and the applicant used the so-called “essentiality test” or “three-point test” in order to assess whether the removal of the feature from claim 1 constituted added subject-matter.
This test is defined in the Guidelines, H-V, 3. , with the same wording both in current edition of the Guidelines and the edition of November 2019 in force at the time of the decision under appeal.
The point at stake
According to claim 1 of the earliest application as filed, the process cartridge (7) comprises, among others,
- a drum coupling member, provided on one axial end of said electrophotographic photosensitive drum, for engaging with the first main assembly drive transmission member and transmitting a first rotational driving force to the electrophotographic photosensitive drum … ;
- a shaft coupling member, provided on one axial end of said developing roller, for transmitting a second rotational driving force … ;
Claim 1 of the earlier application as filed includes the same features in a similar wording.
In claim 1 of the MR, the specification that the shaft coupling member is provided on one axial end of the developing roller has been omitted in the second feature.
For the ED, the third criterion of the “three-point test” was not fulfilled, and the applicant was of an opposite point of view.
The third criterion reads as follows:
“(iii) the skilled person would recognise that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).
The board’s position on the three-point test
The board, adhering to recent case law of the BA, considered this test unsuitable for drawing conclusions on questions of added subject-matter and referred to the Case Law of the Boards of Appeal, 10th Edition, II.E.1.4.4, especially points b) to e)
Assessment of added-subject matter is rather (to be) based on the so-called “gold standard“, i.e. whether the skilled person using common general knowledge can derive the amended subject-matter directly and unambiguously from the content of the application as originally filed, or in cases such as the present one, from the content of the earlier and earliest applications as originally filed.
The “essentiality test” can be regarded as a tool in this assessment but it represents only a necessary and not a sufficient condition.
In other words, even if an amendment “passes” the test, it does not necessarily mean that it meets the requirements of Art 123(2) or 76(1). This is also stated in the above-cited passage of the Guidelines: “However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as ‘the gold standard‘”.
Applying the “gold standard”, the board concluded that Art 76(1) was infringed.
Comments
The “essentiality test” stems from T 331/87, Reasons 6 ( OJ 1991,22), and found its way in the GL.
As early as 2012, the board expressed its doubts about the essentiality test in T 2311/10, Reasons 2.5. In this decision, the OD did not correctly apply the “essentiality test”. As problem, the OD took the OTP from the problem-solution approach in order to apply the “essentiality test”. This was manifestly wrong as it would make the application of Art 76(1) or 123(2) dependent from the prior art.
As more recent decisions criticising the “essentiality test”, now “three point test”, and considering it potentially in conflict with G 2/10, one can quote T 619/18, Reasons 1.1.3, or T 1270/20, Reasons 3.7.1.
In T 2420/18, the proprietor claimed that the “three-point” test was applicable, the opponent claimed the opposite. In the end the board decided according to the “gold standard”.
My experience shows that the “three-point test” is a good tool to decide whether an intermediate generalisation is allowable or not. The problem to take into account must be the problem defined by the applicant/proprietor or implied by the same, and not the OTP.
When a feature is taken from a particular embodiment and added to a claim it should be established that
- the feature is not related or inextricably linked to the other features of said embodiment
- the removal of the omitted features from the embodiment passes the “three-point test and the overall disclosure justifies the generalising isolation of the feature and its introduction in the claim.
Correctly applying the “three-point test” does not lead to a result which would not be in accordance with the “gold standard”.
As long as the “three-point test” is to be found in the Guidelines, EDs or ODs, as well as the parties may apply it in their dealings with first instance divisions.
It is however not recommended to use the wording “three-point test” when dealing with the boards. They seem to be allergic to this wording.
Comments
Leave a comment