EP 3 429 451 B1 relates to vacuum cleaner filter bags made primarily from recycled plastic.
Brief outline of the case
The OD admitted the late ground of added matter under Art 123(2).
The OD decided that the addition of the norm DIN EN 15347:2007 (D8) in claim 1 as granted and in AR 1, 4, 7, 10, 13, 16, 19 and 22 infringed Art 123(2).
In its statement of ground of opposition, the opponent did not query the addition of the norm in claim 1. He merely consider that the mention of the norm did not allow to differentiate the claimed subject-matter from the prior art.
Its deletion in AR2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, 20, 21, 23 and 24 infringed Art 123(3).
AR 6A, 9A, 12A, 15A, 18A, 21A and 24A were not admitted by the OD. AR 3A was admitted but held not allowable under Art 123(3).
The patent was thus revoked by the OD.
The proprietor appealed.
The board decided that the deletion of a feature in claims 1 and 14 of AR2 in opposition, the MR in appeal, did not infringe Art 123(3) as G 1/93 applied.
The file was remitted to the OD for further prosecution.
The introduction/deletion of the norm in the claim
The norm D8 was mentioned expressis verbis on page 4, lines 7-10 and on page 9, lines 16-18 of the original description.
The norm had been added by the ED in claims 1 and 14 when issuing the communication under R 71(3), in order to bring the claims in accordance with Art 84.
The proprietor did not query the addition of the norm in reply to the communication under R 71(3). It is only in AR2 and 3 filed after receipt of the summons to the OP before the OD that the proprietor deleted the norm from the claims.
The opponent’s point of view
For the opponent, the MR did not meet the requirements of Art 123(3). This was also the position of the OD.
The opponent argued that the deletion of the feature “according to the standard D8 in claims 1 and 14 extended the scope of protection compared to the granted version, as it had technical relevance“.
The norm distinguishes between standard and non-standard plastics and therefore restricts the range of available plastics.
For the proprietor, the MR did meet the requirements of Art 123(3).
The board’s decision
Since the disputed feature, “according to the standard DIN EN 15347:2007” (D8), which had been added in the granted independent claims during the grant procedure, has been deleted again, the requirements of Art 123(2) were fulfilled.
According to G 1/93 it is admissible to delete an undisclosed feature without any technical meaning from a claim without infringing Art 123(3). In the reasons 4 it is stated: “Nor should the view expressed in T 231/89 that an added, undisclosed feature without any technical meaning can be deleted from a claim without infringing Art 123(3) be disputed”.
For the board, this was also true in the present case, since the norm merely provides a “scheme for the characterization of plastic waste”, i.e. a kind of labelling of the starting material for the production of the fibres.
In contrast, the norm did not set any requirements for the recycled plastic.
According to this norm, a plastic waste can also be labelled “Not classified” or “No information”. Nowhere in D8 is it therefore stipulated that certain plastic waste must not be used.
Even the possible impairment due to contamination, does not constitute an exclusion of plastic waste.
The feature inserted in the granted claims implies at most that the source material for the recycled plastic is plastic waste.
However, this is also the case after the deletion of the feature, since claim 1 still refers to recycled plastic(s). If plastic is to be recycled, it is necessarily “plastic waste”, because only waste can be recycled.
In this respect, the feature does not constitute a further limitation of the range of usable plastic waste and can be deleted without infringing Art 123(3).
Comments
A similar conclusion was reached in T 270/22, Reasons 3.2, with the same parties.
The position of the opponent was in itself contradictory. On the one hand, he considered that the addition of the norm D8 in the claim did not allow to differentiate the claimed subject matter from the prior art, but on the other hand, considered that its deletion infringed Art 123(3).
If the norm D8 does not allow to differentiate the claimed subject matter from the prior art, then it does not add any technical feature to the claim. It follows that its addition in the independent claims cannot infringe Art 123(2), which the opponent agreed with, and its deletion cannot infringe Art 123(3).
As the norm was mentioned expressis verbis in the original disclosure, its addition to the claim could not infringe Art 123(2). There was thus no undisclosed feature in claims 1 and 14 as granted. It follows that G 1/93 was not directly applicable, but only by analogy.
It is clear that for an OD it is easier to decide under Art 123(2) and/or Art 123(3), as then, it does not have to deal with the substantive aspects of N and IS. As the present case was remitted to the OD, it will now have to decide on N and IS.
Amendments to the claims in the communication under R 71(3)
The present case reminds once more that amendments carried out by the ED when issuing the communication under R 71(3) have always to be taken with caution.
In the present case, it took until the opposition for the then applicant to consider the addition as superfluous. He should have reacted after the receipt of the communication under R 71(3).
Deletion of a norm in claim cannot be generalised
The proprietor was lucky in that the norm D8 could clearly be considered as not representing a technical contribution. This is not generally valid, as the insertion of a norm in a claim, makes a technical contribution, by defining properties of the claimed subject-matter.
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