EP 2 445 068 B1 relates to a gas insulation apparatus such as a gas circuit breaker, using an insulation gas containing CO2. CO2 is a more environmentally friendly alternative to the commonly used SF6.
The invention employs zeolite to adsorb the decomposition products, thereby suppressing their accumulation and maintaining stable insulation and arc-extinguishing performance.
Brief outline of the case
The patent was maintained according to AR58.
At stake is the feature F1.6 wherein the zeolite (20) is housed in a perforated zeolite case (21) arranged inside the closed vessel (10).
The patent as granted, as well as all the four groups of AR, one comprising AR58 were held non-compliant with Art 123(2). The patent was thus revoked.
Claim 1 of Group 2 of requests replaces the expression “perforated zeolite case” with the wording that the zeolite case is “perforated with perforations“.
The proprietor’s point of view
The proprietor argued that the skilled person would understand “perforated” as implying a plurality of holes, relying on UK dictionary definitions in some documents, and therefore would exclude a single hole. It also submitted that under the EPC, the UK definitions should take precedence over the broader US definition in another document, which also covers a single hole.
The proprietor further argued that an interpretation according to which the zeolite case could have a single hole would not be technically meaningful, since it would not permit sufficient gas exchange with the surrounding insulation gas.
Group 2 of requests
The proprietor relied on G 1/24 and argued that the description and drawings must always be consulted when interpreting the claims. According to the proprietor, paragraphs [0035] and [0066] would lead the skilled person to understand the claimed perforations as vent holes that are present in a number sufficiently large to enable the desired gas exchange.
The board’s decision
For the board, feature F1.6 extends beyond the content of the application as filed.
Feature F1.6 requires that the zeolite be housed in a “perforated zeolite case“. The application as filed, however, does not use the term “perforated“. Rather, the only disclosure concerning the holes in the zeolite case disclose a large number of vent holes formed in the zeolite case.
For the bord, the term “perforated” does not convey the limitation that a large number of vent holes are formed in the zeolite case. Its ordinary meaning encompasses embodiments having only one or two holes. As one or two holes are not “a large number of vent holes”, such embodiments are not directly and unambiguously derivable from the above sentence.
The board held that there is no legal basis for preferring one dictionary definition over another because of its geographical origin or language.
The relevant question is how the skilled person would understand the term “perforated” in the technical context of claim 1. The documentary evidence relied on by the proprietor does not establish that, in that context, the term “perforated” necessarily means that the zeolite case has a large number of vent holes. Some documents relate specifically to that context, they are general-language dictionaries, while other concern unrelated technical fields.
Claim 1 as granted contains no limitation as to the degree of gas exchange to be achieved by the perforated zeolite case. Such a functional requirement therefore cannot be read into the claim and relied on to exclude covered embodiments as not being technically meaningful.
Group 2 of requests
The amendment in group 2 does not overcome the objection under Art 123(2) The amended wording encompasses embodiments in which the zeolite case has only two holes.
From a legal standpoint, G 1/24 cannot be understood as generally permitting limitations disclosed only in the description to be read into the claim where those limitations are not reflected in the claim wording itself. This has been confirmed in a series of recent decisions of the boards of appeal, including T 2488/22, cited by the opponent.
Accepting this kind of argument would effectively allow an applicant or proprietor to omit from an amended claim a limiting feature disclosed in the application as filed and then avoid an objection of intermediate generalisation by arguing that the omitted limitation nevertheless remained implicitly part of the claimed subject-matter. Such an approach would undermine the purpose of Art 123(2) as a safeguard against obtaining protection for subject-matter resulting from amendments that impermissibly generalise the original disclosure.
For compliance with Art 123(2), all technically meaningful embodiments falling within the scope of an amended claim must be directly and unambiguously derivable from the application as filed, see, for example, T 873/24, Reasons 2, cited by the opponent. This is not the case for embodiments with only two holes.
Comments
It is interesting to note that the proprietor, being a Japanese company, prefers a UK dictionary to a US dictionary. One wonders why?
Dictionaries can sometimes help when it goes about the definition, but if a feature can be broadly defined by the skilled person, they are no good. Speaking about a perforated case means that 1 perforation is sufficient.
Some sugar dispensers have a single hole in the cover. Salt or pepper dispensers can have a plurality of holes in the cover. All those covers are “perforated”.
Whatever happens, a claimed feature should in general receive the broadest technical interpretation from the skilled person. Feature F 1.6 and its amendment can comprise, one, two or a plurality or vent holes.
One wonders why the proprietor did stick with “perforated” and did not include in its claim a plurality of vent holes, plurality meaning n>2 holes.
As far as G 1/24 is concerned, only limitations valid for all embodiments originally disclosed can be “read” in the claim under G 1/24. Limitations only present is some embodiments cannot be read in the claim.
If the description contains a broadening statement, valid for all the claims, then it can also be read into the claim.
A reminder: under G 1/25, the description should be adapted to the latest version of the claims. Either the definition in the claim is brought into the description or vice versa. However, care should be taken to respect the requirements of Art 123.
T 2488/22 has been commented in the present blog. Indeed, G 1/24 cannot be held to have rendered Art 123(2) obsolete.
Should G 1/26 be admissible, I doubt that the situation will change.
Comments
5 replies on “T 0001/23-G 1/24 and added matter-Dictionaries do not necessarily help when it comes to G 1/24”
You state “One wonders why the proprietor did stick with “perforated” and did not include in its claim a plurality of holes, plurality meaning n>2 holes.”
However, given the board held that one or two holes are not “a large number of vent holes”, is it not the case that “plurality meaning n>2 holes” would also encompass embodiments which were not directly and unambiguously derivable from the original application. It seems the problem is the applicant envisaged a “large” number of holes but never defined what large meant. With no definition of an unclear term such as “large”, it becomes very difficult-if not impossible-to amend the claim while complying with Arts. 84 and 123.
I completely agree. I also take issue with the idea that “plurality” means n>2. n=2 is also plural.
The meaning of ‘perforations’ may vary according to the context – in the case of a perforated ear drum, a single tear would suffice but in the case of tea bags, it could be considered to be directed to a large number of openings, see https://www.youtube.com/watch?v=TuboMBtHnDA
@ PP
“Perforations” were not originally disclosed, and this is enough to assess the non-compliance with Art 123(2). Attempting to define the meaning of “perforations”, as having, depending on the circumstances, one or more holes is thus doomed to fail for this reason alone.
If the application/patent discloses a zeolite box with “perforations”, would you take a perforated ear drum or a tea bag as closest prior art? I would not. The information in your comment was interesting, but somewhat besides the point.
@ Anon 1 and 2,
In principle, I can agree with both of you. My comment was not thought through. My apologies.
However with reference to the drawing, the zeolite case 21 is shown having a large number of “air holes” 22, see § [0035] of EP 2 445 068 A1. Large is itself not clear, but by consulting the drawing, cf. G 1/24, the skilled person gets an idea of what is meant by this term. The zeolite case and the air holes are the same for both embodiments, so that according to G 1/25, it can bee read into the claim.
It would also have been better to define the function of the zeolite and the “air holes” in the case 21: they allow maintaining the insulation performance and the arc-extinguishing performance of the gas circuit breaker, see § [0047] of EP 2 445 068 A1. This might have been too limiting for the proprietor, but now it has lost his patent, which is worse.
That a “large number of air holes” cannot be replaced by “perforations”, as this infringes Art 123(2) goes without saying.