EP 2 500 056 B1 relates to a catheter grip (1).
At stake are the following features:
The generally tubular body provides a first flare (5) at the first end, a second flare (7) at the second end, and a mid-section (9) at the middle, whereby the smaller relative diameter at the mid-section aiding in positioning a user’s fingers toward the middle on the outer surface of the generally tubular body.
Brief outline of the procedure
The OD held that claim 1 of the patent as granted as well of AR1-7 lack N over D1.
AR 8-9 were late filed and not admitted.
The patent was revoked and the proprietor appealed.
The board held that claim 1 as granted did not lack N over D1, D2 and D4.
Eventually, the board remitted to the OD for further prosecution, especially in view of D4.
The proprietor’s point of view
Smaller diameter at the mid-section vs. flares
The proprietor argued that the smaller relative diameter at the mid-section was defined relative to the flares. Only in this manner could the smaller relative diameter at the mid-section aid in positioning a user’s fingers toward the middle on the outer surface of the generally tubular body, since the flares aided the user even if the fingers were not precisely in the middle of the catheter grip.
Without flares at the end, the lower diameter part could not be considered disclosed. This was the correct interpretation of feature in the light of the description in accordance with G 1/24.
The proprietor further argued that the OD did not consider whether the degree of alleged flaring in D1 was significant enough to be detected by a user, and also that the provision of flanges would clearly affect the user’s ability to detect any flaring.
Concerning the notch of D1, the proprietor maintained that it was not able to provide the defined effect since it was only perceived by the user when the fingers were at the midpoint of the catheter grip.
The board’s decision
Smaller diameter at the mid-section vs. flares
As far as the smaller diameter at the mid-section vs. flares is concerned, the board held that this was not persuasive since the suitability is based on the smaller relative diameter at the mid-section.
This does not imply that it is the presence of the flares at the ends of the catheter grip that aids the user according to the claim.
Moreover, the fact that the subject-matter of a claim is generally considered as not being limited by features which are only disclosed in an embodiment in the description is consistent with the case law before and after the issuance of G 1/24, which, in any case, acknowledges the claims as “the starting point and the basis for assessing the patentability of an invention”. See G 1/24, order and reasons 12 and 13, T 1819/23, Reason 3.3, T 2034/23, Reason 3.6.2 or T 0981/23, Reason 2.2.3.
Claims 1 and 7 do not define any relationship between the flares and the suitability defined in the claim, let alone a minimum threshold for this relationship.
This feature is a functional feature which does not require a particular diameter at the mid-section. The skilled person will understand that any smaller diameter at that region which can be perceived by a user’s fingers would achieve the defined suitability. The skilled person will understand that the smaller diameter at the mid-section of the catheter grip of D1 necessarily aids an average user in positioning their fingers toward the middle on the outer surface of the generally tubular body.
The board held that the subject-matter of claims 1 and 7 nevertheless differed from D1, so that N was given.
The board agreed that what is of relevance when it comes to acknowledging anticipation is the disclosure of the technical teaching and not literal coincidence of the particular wording used in the contested claims.
For the board, D2 does not show flares at the end of a catheter grip even if the rounding referred to by the opponent is taken into consideration. The figures of D2 reproduce some rounding of both sides of each flange.
The skilled person would not understand such rounding, typical in medical devices for obvious safety reasons, as a “flare” within the meaning of claim 1, i.e. a gradual widening which can be easily perceived without the need of such an attentive examination of the drawings.
Second, even if the rounding on the face of the flanges oriented toward the middle of the catheter grip were interpreted as a “flare”, it would not be at the ends of the catheter grip as defined in the claim. In fact, if this level of detail were to be applied to perception of the drawing, the diameter of the catheter grip would have to be interpreted as decreasing at the ends since the same rounding can be seen there.
Remittal
Only the objections based on D1 were discussed during the OP before the OD. Since the OD revoked the patent in view of these objections, there was no need and no opportunity for the opponent to present its complete case concerning other possible objections at the time.
This is irrespective of whether such a new objection would have possibly required the OD to reach a decision on its admittance.
Therefore it cannot be concluded that the current objection based on D4 should have been presented during the opposition proceedings, cf. Art 12(6) RPBA.
Comments
The board’s comment that, what is of relevance when it comes to acknowledging anticipation is the disclosure of the technical teaching and not the literal coincidence of the particular wording used in the contested claims, is certainly correct.
However, when looking at D1, one might agree that the end protrusions, like those in D2, are not flares in the meaning of the claim, but the fingers are clearly directed to the centre of the device. If N is given, IS cannot be held as given.
This is the more so, since in T 1819/23, quoted by the board in its decision, the competent board added that, in accordance with G 1/24, interpreting a claim means establishing its proper technical meaning. This is distinct from reading into it limitations that are not present in its wording on the basis of the description.
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