WO 2017/060218 A1 relates to an electrical machine with a resonant circuit in shaft grounding.
Brief outline of the procedure
The MR included an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit.
The MR further included amended pages 12 to 14 of the description in which, additionally, new figure 4 is described in a manner identical to originally filed figure 3, albeit replacing parallel LC resonant circuit with series LC resonant circuit.
The application was refused for added matter and the applicant appealed.
The board confirmed the refusal.
The applicant’s point of view
The applicant submitted, in essence, that the passage on page 13, lines 6 to 11 of the application as filed disclosed that the resonant circuit shown in figure 3 could, as an alternative, comprise a capacitor and an inductor arranged in series instead of in parallel.
The applicant argued that a skilled person would recognise from the intended grounding function that low impedance at the undesired frequency was required and that, accordingly, the use of a parallel LC circuit in figure 3 was an evident mistake.
On that basis, the appellant relied, depending on the request, either on an added figure 4 and corresponding description passages or on an amended figure 3 and a correction of the term “parallel” into “series” in its description.
The applicant further argued that the broadly claimed term “resonant circuit” was clear and supported by the description because, in the claimed context, the skilled person would understand it as covering any resonant circuits suitable for achieving low impedance at resonance, and because the description and drawings had to be consulted when assessing patentability.
The board’s decision
Added matter-R 139
For the assessment under Art 123(2), the decisive question is not which embodiment the skilled person might consider preferable or technically more suitable, but what the skilled person would derive directly and unambiguously from the application as filed.
Even if the skilled person were to identify an internal tension between the “low impedance” reached when resonating and the “parallel” LC arrangement in the original disclosure at page 10, lines 17 to 26, that would not provide a basis for importing into the application a specific series-LC embodiment unless that embodiment were itself clearly and unambiguously disclosed.
The board did also not agree with the applicant that the original application contains an evident error in figure 3 and page 10 whose correction necessarily yields a resonant circuit comprising a capacitor and an inductor connected in series.
On the contrary, the original disclosure leaves open at least two different ways of resolving the internal inconsistency alleged by the appellant: either the statement concerning “low impedance” is inaccurate, or the indication “parallel” is inaccurate.
The original application itself does not make it immediately evident that nothing else would have been intended than a series connection, as required by R 139. The possibility that the error lies in the statement “low impedance” is, in the board’s view, at least equally plausible. A correction of “parallel” to “series” is therefore not allowable under R 139.
The appellant’s reliance on CGK and on its analysis of the impedance behaviour of series and parallel LC circuits cannot remedy that deficiency. Such considerations may explain why the appellant prefers one technical reading over another, but they do not satisfy the aforementioned strict requirement of R 139.
It follows that the new figure 4 and description passages of the MR and of auxiliary requests 3, 6, 9, 13 and 14, as well as the claims of AR 12, insofar as they introduce a concrete series-LC embodiment, add subject-matter extending beyond the content of the application as filed.
The same applies, mutatis mutandis, to AR 1+4+7+10, because the attempted replacement of “parallel” with “series” is not an allowable correction under R 139 and, absent such a correction, introduces technical information not directly and unambiguously derivable from the application as filed.
Lack of support by the description
The board agreed with the ED that, in the context of the claimed invention, the broad term “resonant circuit” is not supported by the description and that essential technical features are missing from the independent claims, contrary to Art 84.
The application as filed describes only one detailed embodiment of the resonant circuit, namely a circuit with a capacitor and an inductor arranged in parallel. No further concrete example of a resonant circuit at the claimed grounding location is disclosed. The claims, however, are not restricted accordingly and cover an unjustifiably broad range of possible resonant circuits. It is therefore not clear from the claim wording which specific circuit realisation is meant to solve the identified technical problem.
The board held that the claims themselves do not define the resonant circuit by such a functional limitation in AR 2+5+8. Nor can an unduly broad claim be rendered compliant with Art 84 merely if the skilled person disregarded certain embodiments as unsuitable.
The requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention.
Comments
In presence of two possible interpretations, and without any further indications in the description, a correction under R 139 is not allowable.
For example, Ph 15 is manifestly wrong. It can only be corrected in Ph 1,5 if, in the original disclosure it is stated that the medium has to be acidic. Otherwise, Ph 15 cannot be amended under R 139.
The present decision is also interesting in that it makes clear that the requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention.
Without mentioning G 1/24, the present board made clear that the broad formulation “resonant circuit” does not allow to go from a parallel LC circuit to a series LC circuit. When a parallel LC circuit is originally disclosed, the applicant is stuck with it.
As an electronic engineer by training, I find that transforming a parallel LC circuit into a series LC circuit is quite daring.
Something must have gone awfully wrong when the application was drafted.
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