EP 3 440 496 A1 published as WO 2017/176143 relates to a method and apparatus for augmented reality display on a vehicle windscreen.
Brief outline of the case
The applicant appealed against the ED’s decision refusing the European application because the requirements of Art 123(2) were not met.
The board confirmed the refusal.
Compared to original claim 1, two features A and B were added.
The applicant’s point of view
The applicant submitted that “para. [0033] discloses two measures which can be combined in a synergetic manner to provide an improved effect in solving the invention’s object”, the two measures corresponding to features A and B, respectively.
According to the applicant, this synergetic effect means that the skilled person would understand the two measures as being used in conjunction, rather than as alternatives.
As such, a skilled person will derive from the two last sentences of in para. [0033] that ‘also‘ clearly intends to describe two measures provided in conjunction with each other to provide for an improved effect in solving the invention’s object.
For the applicant, paragraph [0033] conveys to the skilled person the following three technical teachings:
- Feature A,
- Feature B, and
- Features A and B.
The applicant further challenged the proposition that, if a disclosure could be understood as encompassing several possibilities, none of those possibilities could be directly and unambiguously derived.
It argued that such an approach would be inconsistent with established principles for the assessment of added subject-matter and is plainly incompatible with real-world practice, since any disclosure expressed by an “and/or” relationship would automatically become ambiguous and incapable of providing a basis for amendment, despite the fact that the skilled person clearly derives the individual alternatives and their combination from the original disclosure.
The applicant submitted further that, had the disclosure in paragraph [0033] formed part of the prior art for an application with a claim corresponding to present claim 1, it would clearly have been regarded as anticipating the claimed subject-matter.
The board’s decision
The board held that the application as originally filed provides no direct and unambiguous basis for a method comprising a combination of features A and B, in particular not in paragraph [0033] of the application as originally filed, as submitted by the applicant.
The wording of paragraph [0033] allows for three different interpretations as to the relationship between the two teachings concerning the prevention of occlusion.
According to a first interpretation, the luminosity and/or transparency of the attribute image is/are adjusted in addition to the adjustment of its location, i.e. features A and B are combined.
According to a second interpretation, prevention of occlusion is achieved by adjusting either the location or the luminosity and/or transparency of the attribute image, such that features A and B do not coexist.
According to a third interpretation, paragraph [0033] discloses both the combination of features A and B and the selection of either feature A or feature B.
The second interpretation cannot be excluded on the basis of the wording of paragraph [0033].
The fact that the combination of features A and B is encompassed by a first possible interpretation of paragraph [0033] is not sufficient to establish that this combination is directly and unambiguously derivable from the application as filed.
An ambiguous passage in the description cannot provide a direct and unambiguous basis for an amendment of a claim merely because the claimed subject-matter corresponds to one possible interpretation of that passage.
For a feature, or a combination of features, to be directly and unambiguously derivable, the skilled person must be able to recognise that feature, or combination of features, as part of the technical teaching of the application as filed, without having to resolve an ambiguity in the disclosure by selecting one of several possible interpretations.
In the present case, the claimed combination of features A and B can be derived from paragraph [0033] only by adopting the first interpretation, according to which the two measures are cumulative. However, paragraph [0033] provides no direct and unambiguous basis for concluding that the first or the third interpretation, rather than only the second interpretation, is the one disclosed.
The skilled person would therefore have to resolve the ambiguity in paragraph [0033] in favour of the first or third interpretation in order to arrive at the combination now claimed, which does not amount to a direct and unambiguous derivation of that combination.
This follows in particular from the fact that the two last sentences of paragraph [0033] disclose separate measures for preventing occlusion or obstruction of the operator’s view, without establishing that these measures are in fact to be applied in combination.
The alleged synergetic effect of features A and B does not establish that their combination is directly and unambiguously disclosed in paragraph [0033]. It merely suggests that combining the two measures would be technically advantageous and therefore that the skilled person might consider such a combination.
The applicant’s interpretation requires selecting the cumulative interpretation from among several possible readings of paragraph [0033]. Paragraph [0033] simply does not expressly disclose an “A and/or B” relationship.
While paragraph [0033] discloses each of the two measures individually, the term “also” used therein does not unambiguously establish whether they are disclosed as separate measures, as a combination or both. The combination A+B could therefore be derived from paragraph [0033] only by resolving this ambiguity in favour of their cumulative application. Such a resolution of ambiguity does not amount to a direct and unambiguous derivation of the combination.
If paragraph [0033] does not directly and unambiguously disclose the combination of features A and B, as the board considers, it cannot, conversely, be regarded as anticipating a claim directed to the same subject-matter as present claim 1.
The board summarised its position as follows:
An ambiguous passage in the description cannot provide a direct and unambiguous basis for an amendment of a claim merely because the claimed subject-matter corresponds to one possible interpretation of that passage.
Comments
In view of G 1/24, it is necessary to consult the description before determining the interpretation to be given to a claimed feature. The principle of taking into account all possible technically reasonable interpretations, should only apply as such when the description does not allow to resolve the ambiguity.
In T 0367/20, Reasons 1.3.9, which has been commented on this blog, the board first interpreted the claim and only then assessed the compliance with Art 123(2).
The board did not share this view in T 0977/25, Reasons 33, and merely considered that an unresolved ambiguity may simply result in a broader interpretation.
The present case is similar to that in T 0977/25: if the ambiguity of a claimed features cannot be resolved by consulting the description as required by G 1/14, then all technically reasonable interpretations apply. If one of those is not directly and unambiguously derivable from the original disclosure, then the claim lacks compliance with Art 123(2).
Comments
23 replies on “T 0392/25-“Also” is ambiguous and does not mean “and/or””
About the ambiguity of ALSO:
See for example https://www.epo.org/en/legal/national-law/2024/vii/pl.html?
Box 5 Special features “EP applications refused by the EPO, withdrawn or deemed to be withdrawn may also be converted into an application for a utility model.”
Is it AND or OR?
@ Francis,
Is it not going a bit far?
An application refused results from a decision of the EPO. A withdrawn application results from an action of the applicant. An application deemed withdrawn results from the inaction of the applicant.
I have never seen all three cases at once. The conclusion should be clear for any skilled reader having the propensity to understand what is said. I let you guess the right answer.
National Law relating to EPC
VII. Conversion of European patent applications or patents into national patent applications
https://www.epo.org/en/legal/national-law/2024/vii/pl.html?
Box 5 Special features “EP applications refused by the EPO, withdrawn or deemed to be withdrawn may also be converted into an application for a utility model.”
When I read this in the context, the question raised by this use of “also” is whether a European patent application or patent meeting one of the three conditions, which can be converted into a national patent application can in addition (“AND”) or alternatively (=”OR”) be converted into an application for a utility model.
@ Francis,
With a mind willing to understand, any normal reader would inevitably come to the only logical conclusion that the sentence gives a three alternative possibilities to obtain a national utility model (=OR). Thinking of an of cumulative requirement (=AND), whatever it might be, is not on the cards.
The bottomline of the decision in this case which we had been representing before the board is: If several reasonable technical readings are exist, none of them can be used for a claim amendment as the several readings are per se ambiguous and the skilled person will stop to interpret which one is making sense in overall context just because of the use of the word „also“ instead of in addition. The BoA applied indeed the kind of pure a formalistic and unworldly approach which does exactly contravene the „mind willing to understand“ approach. Needless to say that the combination would have resulted in a grant since novel and inventive. Honi soit qui mal y pense!
Mr Kuhnen,
Thanks for your comment, which I read with great interest.
I have noted that the applicant was a US company, and we all know that US applicants have, with respect of added matter, a different view than on this topic on this side of the Atlantic. This is mainly due to their interpretation of the requirement or their case law.
The reasoning of the board might prima facie look quite formalistic. In my view it is however duly justified. The Board did not have a formalistic and unworldly approach, but it might have understood the application too well to your liking.
In T 916/15, Reasons 1.3.1, the board was of the view, that the jurisprudence of the boards of appeal referring to “a mind willing to understand” does not apply for the purpose of assessing the allowability of amendments under Art 123(2), i.e. whether an amended feature of a claim is disclosed in the application as filed.
In T 470/21, Reasons 2.1, even pre-dating G 1/24, the board held that Art 69(1) may be used to interpret the scope of protection under Art 123(3), but it cannot be used to determine whether the requirements of Art 123(2) are met.
Those decisions are still valid under G 1/24.
“Also” cannot be considered as being clear on its own, nor in the context of the description. The board’s conclusion is thus, in my opinion, justified.
It is established case law that, if one of possible interpretation contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present.
It cannot be left to the applicant to chose the one which does not infringe Art 123(2).
This would empty Art 123(2) of its meaning and purpose.
I also (sorry for the pun), refer to T 241/13, Catchword and Reasons 1.3.1.
I understand your disappointment, but I also understand the board’s decision.
As to US law on added matter, in common with the EPO it is a novelty enquiry not one of obviousness.
Haven’t read the paragraph or the decision but my instant thought is that when it comes to whether subject matter has been added it is not enough to argue that it is obvious what the original text meant. Instead, for better or worse, it is the brutal Gold Standard that rules.
@ Max Drei,
You summarised my reply to Mr Kuhnen quite well.
The Gold Standard is what it is, but at least everybody knows were they stand.
In other words, novelty and added matter are the two sides of the same coin.
IS and added matter are two distinct aspects and they mix like water and oil: never. You might shake the bottle containing both as hard as you wish, but at the end of the day, they both separate. No stable emulsion, like a famous Irish liquor.
While I fully agree that added matter and novelty are – or at least should be – two sides of the same coin, I find the board’s comment in 1.9.4 rather glib. Added matter and novelty should be assessed to the same standard but they rarely are in practice. It is easy to say paragraph 33 would not anticipate a claim directed to the same subject-matter as present claim 1, but this seems unlikely.
If paragraph 33 does not provide unambiguous basis for the second interpretation, the logical conclusion is that it also does not provide unambiguous basis for the first or the third interpretation. Is the board really saying that none of these interpretations are unambiguously disclosed when the application is used as prior art under Article 54? I am not convinced the board would follow this. Clearly, paragraph 33 discloses some technical teaching which requires some deciphering.
This case neatly illustrates exposes some of the difficulties the “all technically reasonable interpretations” approach can cause when taken to its logical conclusion. If documents are interpreted such that these sorts of ambiguities are fatal to Article 123(2) and the same standard applies to Article 54 as it does to Article 123(2), it follows that those same ambiguities must also mean the relevant paragraph of the document cannot be in Article 54 objections. This does not tally with my experience which is that the EPO would be much more willing to try to work out what paragraph 33 means when it is part of the prior art than when it is part of the patent. I find this asymmetry problematic.
Thanks Anon. Finally, someone touched on the core of this illogical reasoning. But wait for your comment on LinkedIn 😉
Thanks Anon. Finally, someone touched on the core of this illogical reasoning.
Reading paragraph [0033] in isolation, and without reading the decision, my interpretation of ‘also’ as used therein would be that it takes the meaning ‘alternatively’. If the attribute image has been moved so that it does not prevent occlusion, altering its luminosity and/or transparency will not have an effect on the obstruction caused by the attribute.
To overcome this interpretation, the applicant would have to show why ‘also’ should take the meaning ‘in addition’ as this is not a meaning which is apparent from the disclosure of that paragraph.
Thanks Anon. Useful and perceptive comment I think. US law recognizes two categories of ambiguity. The first is when a mind willing to understand can recognize the intended meaning. The second is when even that mind cannot alight upon the intended meaning. Only the second category works, for a finding of invaliduty for indefinie ness. Just like you can never write with 100% clarity so it is, also, with ambiguity. Just because one can find an ambiguity is not a good enough reason to fail.
@ Anon.,
I consider you comment that you “find the board’s comment in 1.9.4 rather glib” disrespectful for the board to say the least.
You might not be “convinced the board would follow this”, but this is a pure allegation without any proof. I invite you to show the readership a case in which a board has behaved as you claim.
I would not exclude such a try from a first instance division, but claiming that a board would behave like this is not acceptable. Some decisions coming out from first instance divisions can be at this level, witnessing regularly that the working of at some first instance divisions being sub-optimal.
Up to the proof of the contrary, you should refrain from uttering that kind of sweeping comment against a board.
@ Anonymous
What I have said to Anon. about his comment, applies mutatis mutandis to yours.
At least on LinkedIn, neither you nor Anon. can stay anonymous. Why did either of you not have the courage to act under your name on this thread?
I have left LinkedIn a long time ago, and will not have pleasure to see any comment, so once a comment is published on LinkedIn, have the courage to publish it here.
Mr Kuhnen,
At least you had the courage to give your opinion under your name. This has to be highly valued.
As I explained before, I find the board’s decision perfectly logical and fully justified. I will not repeat myself.
@PP,
I cannot but agree with you, having read both § [0033] and the decision.
In the context of the whole application, and especially in view of the last sentence in § [0033], the direct and unambiguous conclusion is that “also” can only mean “alternatively”.
It might well have, in the drafter’s eye”, meant as well “concurrently” and this might be acceptable in US practice, but it is not applicable at the EPO. When it comes to Art 123(2), only what is directly und unambiguously derivable can be taken into account.
The mere fact that three different interpretations could be reasonably given, shows that we were far from a direct and unambiguous disclosure.
@ Max Drei,
I first refer to my comment to Anon: not convincing, up to the proof of the contrary.
What US law considers as being ambiguous or not is of little interest on this side of the Atlantic. That’s nothing new under the sun.
Absolute clarity might not be attainable, and a clever and crafty litigator might play with this concept. However, this is not a reason for the EPO to indulge in such considerations, but to deliver a title which leave as little loopholes as possible. G 2/10, G 1/24 and G 1/25 are the best way on to this aim.
in my humble opinion, this should compy with Art. 123(2) EPC. The skilled person can clearly interpret the meaning in three different ways, and selecting one of them amounts to a selection from a single list, which is directly and unambiguously drivable from the application as field.
@ Panda grosso,
A very interesting thought, but it fails to convince.
I cannot follow you as there were not three different items originally disclosed. It is only in this case that a single choice in the list is not infringing Art 123(2).
In the present case, there were three possible interpretations, which is fundamentally different.
It cannot be left to the applicant/proprietor to decide which interpretation is the right one, as this would deprive Art 123(2) of any substance.
Fundamentally different indeed. When the disclosure of three possibilities is clearly and unambiguously ambiguous as to which of the three is meant, then none of the three is clearly and unambiguously derivable by the skilled person. But (silly question) what if one, and only one, of the three possibilities is enabled by the text and drawings. Is that one possibility not sufficiently “disclosed” and does not the insufficiency of the other two disqualify them from further consideration?
@ Max Drei
Your question is not silly.
The answer is very simple: for the skilled person, only technically reasonable interpretations can be taken into account. Should only one out of three possible interpretations appears technically reasonable for the skilled person, then the two other cannot be taken into account.
This stance is not only valid when it comes to sufficiency, but also when it comes to added matter or suitability of prior art.
See for instance T 2166/17 or T 875/11 when it comes to sufficiency.
See for instance T 190/99 (mind willing to understand), T 1791/16, T 1854/20 or T 470/21 when it comes to added matter.