EP 3 248 477 B1 relates to an insertion device and to a rod making machine for the tobacco processing industry.
The insertion device=a trough, minimises the risk that, if a rod-shaped article, such as a filter segment, is missing in a trough of the insertion device, the suction air collapses in such a way that other rod-shaped articles arranged or picked up in the trough can no longer be held or can no longer be held precisely, so that they may be inserted at the wrong places in the strand or applied to the strand. Suction channels=20.
Brief outline of the case
Claim 1 as granted lacked N over D1=EP 0 895 723.
The patent was maintained by the OD according to AR5’.
Both proprietor and opponent appealed.
The board confirmed that the patent as granted lacked N, but held that the patent as maintained lacked IS.
Eventually the board decided that the patent could be maintained according to AR8.
When dealing with N over D1, the proprietor attempted to read into the description additional features implied by the problem to be solved. The board held that according to established case law, this was not permissible, and referred to the CLBA, 10th edition, II.A.6.3.4. The board added that this has not changed as a result of G 1/24, which expressly refers to the existing case law on the interpretation of claims, cf. Reasons 10.
The proprietor justified the filing of AR1dis, 2dis and 4dis after the communication under Art 15(1) RPBA with G 1/24.
AR1dis, 2dis and 4dis were not admitted in the procedure under Art 13(2) RPBA.
The proprietor’s point of view
AR 1dis, 2dis and 4dis are based on AR 1, 2 and 4, with their independent claim additionally containing a disclaimer.
As exceptional circumstances justifying admissibility, the proprietor argued that the legal situation regarding the interpretation of claims has changed since G 1/24 and that the AR are manifestly allowable because they would remove all objections.
In the opinion of the proprietor, the disclaimer is not such a limitation, but rather a clarification of already implicit features, and not in the sense of a mere clarification that is not admissible under R 80, but with a limiting effect.
The board’s decision
The board reminded, with reference to the N discussion, that the legal situation relevant to the present case has not changed as a result of G 1/24; on the contrary, it has been confirmed by this decision.
In the event that the proprietor derives from G 1/24 that the granted independent claim must now be interpreted more narrowly in light of the description, and that therefore N over D1 is given, the board could not understand why this should justify the filing of AR with limitations for exactly the same purpose, which would then actually be unnecessary. The board was unable to follow the proprietor’s line of argument.
As regards the manifest allowability, the board did not consider this to be the case at all, but rather held that the disclaimer raises a whole series of new legal questions, starting with its allegedly clear and direct disclosure, which the board doubted, to its admissibility as a non-disclosed disclaimer under the conditions defined in G 1/03, on which the proprietor had not commented.
For these reasons, the board did not admit AR1dis, 2dis and 4dis to the proceedings.
Comments
The role of the disclaimer
It is quite flabbergasting to read that a disclaimer cannot as such be a limitation, but rather a clarification of already implicit features, and not in the sense of a mere clarification that is inadmissible under R 80, but with a limiting effect.
May be föhn was coming down the Alps on the day of the OP before the board.
Application of G 1/24
That applicants/proprietors want to use G 1/24 in order to read in the claim a different interpretation than that directly and unambiguously derivable from a claimed feature by the skilled parson, does not come as a surprise.
When looking at recent case law of the boards, it does not appear that G 1/24 will revolutionise claim interpretation at the EPO. Limiting or broadening statements found in the description are simply ignored in presence of a claimed feature which is clear for the skilled person.
See for instance T 1846/23, commented on the present blog; T 1465/23, commented on the present blog or T 1561/23, also commented on this blog.
On the procedure
The patent bears the classes A24D 3/02 and A24C 5/32. According the ESR, the search was carried out in A24D and A24C.
D1=EP 0 895 723 is classified in A24C 5/32.
Claim 1 as maintained lacks IS over D3=US 4 044 659, classified in A24D3/02
It is thus difficult to understand why neither D1 nor D2 were not found during the original search.
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