EP 2 982 255 B1 relates to an inhalation device (e-cigarette) including substance usage controls.
Brief outline of the case
The OD found the amendment involving the generalisation of the originally claimed “release rate” to “release” in feature 1.9 of claim1 of the MR to infringe Art 123(2). The same applied to all admissible requests on file.
The board confirmed the OD’s position for all admissible requests on file, and thus confirmed the revocation.
The case is interesting as the proprietor requested a stay of the procedure in view of the pending referral G 1/26. The board refused the stay.
The proprietor’s point of view on added-matter
The proprietor argued that the term “the release” used in feature 1.9 of claim 1 of the MR was ambiguous as it had no antecedent. The skilled person would observe that this should relate to “releas[ing] at a release rate” required by feature 1.2, however it would still remain ambiguous what was meant by the phrase “control the release” mentioned in feature 1.9.
Following G 1/24, the skilled person would consult the description and observe a functional identity between the concepts of “limit logic” and “control based on amount” in the patent description, in particular when it comes to an amount determined “based on the data from the sensor and the timer”, as set out in features 1.6 to 1.9 of claim 1 as granted.
Specifically, in paragraph [0029] of the patent description, corresponding to paragraph [0029] of the description as filed, the only reason for the controller turning off the release, or reducing the release rate, was that a determined amount, i.e. determined based on data from the “sensor” and the “timer”, had reached a limit.
The board’s decision on added-matter
For the board, the proprietor need not argue that its claim is unclear to be able to apply G 1/24 to its case.
Rather, G 1/24 stipulates that the patent description and drawings should always be consulted to interpret the claims, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
What the proprietor asks for is not only that the board consults the description but also that it interprets the claims more narrowly than how the skilled person would normally understand them, indeed exactly as narrow as the embodiments in the description would justify.
However, the board finds no authority for interpreting a claim more narrowly than the wording of the claim would allow and referred to T 2027/23, Catchword and Reasons 3.5.4.
Furthermore, following the proprietor’s logic would render Art 123(2) nugatory, as any amendment would then have to be interpreted such that it would not extend beyond the content of the application as filed and referred to T 405/24, Reasons 1.2.3.
The proprietor’s point of view on the stay
During the OP before the board, the proprietor requested that the appeal proceedings be stayed until the EBA issues its decision G 1/26, see the referring decision T 0873/24, or that the present board refers questions in this regard to the EBA. The proprietor itself did not formulate any specific questions for referral.
The board’s decision on the stay
The board did not consider a stay of proceedings appropriate. Nor did the board consider a referral under Art 112(1)(a) necessary.
In the board’s view, the issues to be decided in the present case can be resolved on the basis of the established case law governing the assessment of added subject-matter.
The board also did not doubt that the principles for claim interpretation given in G 1/24 should apply irrespective of which provision of the EPC is being assessed, including Art 123(2).
However, contrary to what the proprietor appears to suggest, the principles set out in G 1/24 cannot entitle a proprietor to shield an otherwise unallowable amendment from scrutiny under Art 123(2) by resorting to a restrictive interpretation based on selected passages of the patent description.
Comments
The board’s position is to be endorsed. Although G 1/24 was about interpreting claims under Art 52-57, we should not forget that, in order to assess added-matter under G 2/10, or to determine the “same invention” under G 2/98, it is the novelty criteria which applies.
G 1/24 cannot call the established line of case law on novelty, added-matter and priority into question. If the EBA wanted to do so, it would have said this directly and unambiguously.
By referring to T 2027/23, the present board confirms the way boards apply G 1/24 and does not adhere to the position taken in T 439/22-2. According to this decision, the limiting feature should have been read into the claim (holistic approach= BGH approach).
T 2027/23 (No interpretative somersaults) was commented in the present blog.
T 405/24 was also commented in the present blog.
I consider that the referral decision in T 0873/24, a further attempt to introduce the holistic approach in T 439/22-2 into procedures of the EPO. See the comment of T 0873/24 in the present blog. The referral decision T 0873/24 for G 1/26 was also commented in the present blog.
The present decision reinforces my view that the referral pending under G 1/26 might not be admissible.
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