EP 2 091 029 B1 relates to “Hazard recognition utilising a temperature measurement device integrated in a microcontroller”. The maintained claims relate to a fire detector.
Brief outline of the case
After two boards decisions T 2378/13-1 and T 2378/13-2, interspersed with a successful petition for review, cf. R 5/19, the OD decided maintenance in amended form. The opponent appealed and the board eventually decided maintenance according to AR2.
In the relevant requests all granted method claims were deleted.
The case is interesting in that it deals with the adaptation of the description.
The amendment to the description in accordance with the last MR consists of aligning paragraphs [0001] and [0011] to [0013] with the amended wording of claim 1, and specifying the term ‘hazard detector’ as ‘fire detector’ in paragraphs [0013] to [0015], [0017] to [0019], [0021], [0022], [0025], [0027], [0028] and [0030], and in the deletion of paragraphs [0046] to [0048] relating to the method claims.
In AR1, paragraphs [0031] to [0035] and [0044] and [0045] were additionally deleted, but not paragraph [0042].
In AR2, based on AR1, paragraphs [0036] to [0043] were additionally deleted.
According to the present decision, the latest MR was not admitted under Art 13(2+1) RPBA, the latest AR1 was deemed infringing Art 123(2), and maintenance according to AR2 was decided.
The opponent’s point of view
AR1 was infringing Art 123(2): the description had been amended in an unallowable manner, as it contained subject-matter that had not originally been disclosed. Furthermore, there was a breach of Art 84 due to lack of support and lack of clarity.
The proprietor’s point of view
The proprietor requested that the patent be maintained in amended form in accordance with the MR, and that the appeal proceedings be stayed pending a decision by the EBA in Case G1/25.
In the alternative, it requested that the patent be maintained in amended form in accordance with AR1 or AR2.
As far as AR1 is concerned, the proprietor argued that paragraph [0042] discloses features of the claimed fire alarm.
The board’s decision
The present appeal proceedings relate solely to the adaptation of the description.
Basis for the amendments
The basis for the amendments to be made to the description is therefore the last valid version of the patent prior to the first interlocutory decision of the OD, i.e. the patent as granted, EP 2 091 029 B1.
No stay of proceedings in view of G 1/25
The board held that the deletion of paragraphs in the description is required by Art 123(2) and consequently, the question of staying the proceedings in light of the G 1/25 referral does not arise.
This referral G 1/25 does not concern the question of adapting the description to the claims on the basis of Art 123(2), in this instance due to the deletion of paragraphs. G 1/25 concerns the adaptation of the description to the amended claims in the light of the requirements of Art 84, where the amendment leads to an inconsistency between the claims and the description.
AR1 infringes Art 123(2)
The board agreed with the opponent that the failure to delete paragraph [0042] in AR1 constitutes extension of subject-matter which infringes Art 123(2).
The disputed paragraphs [0031] to [0045] are contained in a section of the description which, without exception, repeats the wording of the granted method claims and explains their technical effect.
Although paragraph [0042] does not explicitly refer to a method, the board was convinced that this is unambiguously apparent to the skilled person from the overall context of paragraphs [0031] to [0045].
This is all the more so as paragraph [0042] is almost identical in wording to granted method claim 10. The board failed to see why it should be immediately and unambiguously apparent to a skilled person from paragraphs [0031] to [0045] that the features and effects of the previously claimed method specified therein should be reflected in the structural features of the fire alarm.
What is decisive is not the formal numbering of the paragraphs of the description, but the technical content and the context of disclosure of the relevant passages. Even in the case of consecutively numbered paragraphs, it must be examined in each instance whether selective deletions give rise to new technical information or place existing information in an altered technical context, thereby giving it a different content.
In the present case, the impermissible extension does not arise from the mere fact that individual paragraphs have been deleted, but from the fact that the selective retention of paragraph [0042] establishes a connection between the temperature compensation described therein and the claimed fire detector which is not immediately and unambiguously apparent to the skilled person from the original disclosure.
The fact that the category of the invention is not specified in paragraph [0042] does not unequivocally mean that the content of paragraph [0042] can be construed as a feature of the claimed fire alarm. This is particularly so because the wording of paragraph [0042] is almost identical to the wording of granted method claim 10.
Contrary to the proprietor’s arguments, it is also insufficient for the present examination of inadmissible amendments to merely establish that paragraph [0042] was originally disclosed. This is undisputed. The selective deletion of paragraphs [0031] to [0035] as well as [0044] and [0045] constitutes an impermissible amendment.
The fire detector subject-matter of the maintained claims 1-7 is described throughout as using the temperature measurement signal as an additional hazard detection input. In contrast, the method previously claimed is described throughout as comprising a hazard detector with only a single signal input and a measuring device whose optical path is temperature-compensated.
Nowhere in the patent or the filed application it can be directly and unambiguously inferred that, in the method, the temperature measurement signal is in fact used as an additional hazard warning input in addition to temperature compensation.
For the board, the connection between the fire alarm now claimed and the fire alarm originally claimed, as established by the deletion of paragraphs [0031] to [0035] and [0044] and [0045] goes beyond the content of the application as filed.
The core of the objection under Art 123(2) namely, the question of whether selective deletions from the description create a new technical context does not require any further clarification of the terminology.
Hence AR1 was not allowable.
Comments
The decision is interesting in that selective deletions of parts of the description when one claim category is deleted, here methods claims, can lead to an objection under Art 123(2).
As the device ultimately claimed was a fire detector, the description could in any case not contain any reference to a more general device like a hazard detector. Without adaptation, this would in any case have led to an inconsistency under Art 84.
Without deletion of some parts of the description, relating to granted but not maintained claims, there is no doubt about the fact that there is an inconsistency between the claims and the description.
G 1/25 should help in removing such inconsistencies irrespective of what has been said in T 56/21.
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