EP 3 769 722 B1 relates to a low profile delivery system for a transcatheter heart valve.
The apparatus comprises an elongated shaft (152), a pull wire (174), a handle portion (158), a slide member (192) and a flex indicating member (156).
The pull wire is connected to a distal end portion of the elongated shaft.
The handle portion comprises a flex activating member (154) coupled to the pull wire such that adjustment of the flex activating member causes the distal end portion of the elongated shaft to flex and the flex indicating member to move relative to the handle portion.
The patent is derived from a divisional application of a series of divisional applications originating from the earliest application.
The subject-matter of claim 1 of the MR=as granted relates to the disclosure of paragraphs [030] and [031] of the summary and paragraphs [0161] to [0175] of the detailed description, together with Figures 31 to 38B of the earliest application as filed.
Brief outline of the case
The patent was maintained in amended form according to AR1’.
Both proprietor and opponent appealed.
The patent was eventually maintained according to AR1’’.
Only the objection under Art 76(1) against part of claim 1 of the MR=as granted, will be discussed here.
The proprietor’s point of view
The proprietor was of the opinion that none of the deletions in claim 1 of the MR added subject-matter or implied an intermediate generalisation
The opponent’s point of view
For the opponent, the omission of the resiliency of the steerable section of the elongated shaft amounted to an intermediate generalisation.
The omission in claim 1 of the MR that the movement of the flex indicating member relative to the handle portion was to indicate an amount of flex of the distal end portion of the elongated shaft was an impermissible intermediate generalisation.
Paragraph [030] of the earliest application as filed made clear that the entire function and purpose of the flex indicating member moving relative to the handle portion was to indicate to the user the amount of flex applied to the distal end portion of the shaft. Claim 1 was, however, open to the possibility that this movement could be for another, unclaimed, purpose.
The board’s decision
While the omission of the adjustment knob was discussed in the opposition proceedings, the objection to the omission of the resiliency of the steerable section of the elongated shaft was raised and substantiated for the first time with the opponent’s SGA.
The admittance into the appeal proceedings of the objection concerning the omission of the resiliency of the steerable section is at the board’s discretion under Art12(4) RPBA. Since this objection was not complex and was submitted at the earliest possible stage on appeal, the board decided to admit it into the appeal proceedings.
However, the board considered that the objection is not convincing. Indeed, the board came to the conclusion that the definition of a pull wire in claim 1 of the MR does not amount to an unallowable intermediate generalisation.
The board held that, merely referring to an embodiment of the original disclosure and stating that an unallowable intermediate generalisation of this embodiment has been introduced is not a substantiated objection of added subject-matter.
An objection to an intermediate generalisation in a claim requires
- (i) identifying the features which are impermissibly omitted from the claim and
- (ii) explaining why the omission introduces added subject-matter.
According to established case law of the boards this explanation needs to show that the omitted features are inextricably linked with some of the claimed ones according to the original disclosure.
Only in this way it is possible to (i) identify the objection and (ii) understand the reasoning supporting the objection.
The board referred to the CLBA, 11th edn., 2025, II.E.1.9.1; as well as, for instance decisions T 1762/21, catchword, T 824/23, Reasons 1.7.1 and T 1888/22, third item Reasons 3.2.2.
However, other objections lead to the conclusion that claim 1 of the granted patent extends beyond the scope of the parent application as filed.
Comments
According to the Guidelines H-V, 3.1,the omission of features can be demonstrated with the “three-point test”, i.e. the former “essentiality test”.
Correctly applied, the “three point test” comes to the same result as that required by G 2/10, and can be used before first instance divisions.
In a series of decisions, the boards have heavily criticised the way the essentiality test was applied, especially when it comes to intermediate generalisation.
Whilst the “three-point test” is still applicable in first instance, the bords, in accordance with G 2/10, consider that features can be omitted if they are not inextricably linked with other features of the claim.
The present decision is a good reminder on how such an objection has to be presented.
The present decision is consistent with that taken by the UPC-CFI Nordic-Baltic Regional Division, UPC_CFI_380/2023, on 21.07.2025.
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