EP 3 441 375 B1 relates to laminated glass used as head-up display.
Brief outline of the case
The OD held that claim 1 as granted lacked N over D6=WO 2017/176452 or D7=US 2010/0314900. The same applied to AR1-4. Cl1 of AR5 lack N over D6. The OD decided maintenance according to AR6.
Proprietor and opponent appealed.
The board confirmed the lack of N of claim1 over D6.
The board issued a communication pursuant to Art 15(1) RPBA, in which it expressed the preliminary opinion that AR11 appeared to be allowable. The lower-ranking requests were not dealt with at that stage.
The proprietor reordered his requests during the OP, but this change was not admitted under Art 13(2) RPBA. An objection under R 106 from the proprietor was dismissed.
The patent was thus revoked.
In the present blog entry we will deal with the application of T 439/22.
Interpretation of claim 1
The patent proprietor and the opponent had different understandings of claim 1.
Claim 1 is directed to a product, i.e. the glass as such (for example after production), not to the production process or the use of a head-up display. The claim does not address the driver, the vehicle, including a car, or the light source.
The only structural features of the claim are a first glass plate, a second glass plate and an intermediate film. The display areas are not restricted in any particular way since the area is not defined as such. The size of the display areas is completely undefined. The same applies to the sequence of the areas (upper and lower), since the position of the glass is only fixed once it has been installed in the car.
Those features are not part of the claim. Nor is there any definition of the image – including the size – that is supposed to be displayed in the area.
The proprietor’s point of view
Novelty
The patent proprietor argued that the skilled person would not read Figure 15 of D6 as showing a first display area and a second display area. A single point could not be considered a display area. Claim 1 of the main request was thus novel over D6.
The patent proprietor also argued that the board’s interpretation was not in line with T 1220/21.
The board’s decision on the application of T 439/22
The bord held that claim 1 is not construed any differently in the light of the description, which, in view of G 1/24, has to be consulted when interpreting a claim, or in the light of T 439/22-2.
According to the latter, a skilled person reading the claim in the context of the description and figures will try to take a definition found in the description and figures at face value.
However, in the case in hand, paragraphs [0033] and [0036] of the patent, cited by the proprietor, do not provide any definition of the size of the head-up display area. It is only indicated that the head-up display area is an area on which an image can be reflected, cf. paragraph [0036]. Figure 2, cited in paragraph [0033], merely confirms that two areas have to be chosen such that the distance between the two is L, with claim 1 defining L as 20 mm or more.
T 1220/21 is not relevant for this case. The wording of the claim in that decision is different from the wording of the claim in the case in hand. In particular, said decision mainly deals with the expression “continuously changing wedge angle”, cf. Reasons 3.2.5, while the case in hand concerns the definition of first and second display areas.
In any case, the board would not be bound by the decision of the board in case T 1220/21, even if the claims were identical.
In view of this interpretation, the board held that claim1 as granted lacked N over D6.
Comments
If the description fails to more precisely define claimed features, G 1/24 is of no help.
The situation is different if the description contains broadening or limiting features, valid for all embodiments, then according to G 1/25, those features will be “read” into the claims.
This does, in my opinion, not mean that the definition found in the description is merely “virtually” or “intellectually” “read” into the claim and nothing changes.
What the EBA said, may be not in so many words, is that the definition found in the description is actually replacing in the claim the original feature.
Otherwise an inconsistency between claims and description would subsist.
Binding effect of board’s decisions
Only decisions of the EBA are binding for the boards. They are only bound by those and by the EPC.
The same applies in first instance, with the proviso that T or J decisions are only binding if they are cited in the Guidelines. All other decisions of boards are not binding for first instance divisions.
Citing of decisions in proceedings before the EPO
Citing decisions of boards during procedures before the EPO, be it in appeal or in first instance, does thus not help very much.
Citing decisions during OP before a first instance division is considered as late filing.
Citing decisions during OP before a board, will be submitted to Art 13(2) RPBA.
On the procedure
The ISR carried out by the JPO revealed 3 documents of category A. The SESR 1 each of category A and X.
According to the SESR, the search was exclusively carried out in B32B.
D6=WO 2017/176452, PA under Art 54(3) was not mentioned in the SESR.
D6 is classified in B32B 17/10. It should thus have been found during the top-up search.
D7=US 2010/0314900 was mentioned under category A in the SESR.
The establishment of the SESR and the examination can thus be considered as suboptimal.
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