Board 3.3.05 referred the following questions to the EBA
1.May a decision be considered to be “required” for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?
2. (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?
2. (b) If the answer to question 2.a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?
3. (a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?
3. (b) If the answer to question 3.a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?
The problems raised during the procedure
Claim 1 as granted contains the following feature (F1.3): “wherein the ratio of titanium to nitrogen is in excess of 3.42”.
In claim 5 as filed, the ratio 3.42 was defined as weight %.
This ratio was deleted in claim 1 as granted.
In the original description, the passage page 13, l 11-14 defined the ratio as weight ratio, i.e. to be at a level at which the boron is no longer able to combine with the nitrogen.
In the passage page 13, l 24-27, there was the same ratio, but without the indication of weight %. In the second passage the ratio of 3,42 was introduced in order to prevent combining of the boron with the nitrogen, the nitrogen being combined with titanium.
The claims do not contain a similar context.
The proprietor considered that the only possible interpretation is that of weight %, whereas the opponent considered the deletion of weight % as an undue generalisation. Claim 1 as granted encompassed also molar ratio.
In the claims of the parent and the grand parent application, the claims relating to the ratio were expressed in weight %, but the descriptions were identical.
The case hinges on the question as to what extent the information found in the description may influence the interpretation of claim 1 and what possible interpretations of the claim need to be originally disclosed.
The board’s reasoning
The board considered that in some decisions the principles of G 1/24 as to the role of the description in claim interpretation also apply to the assessment of the requirements of Art. 76(1) and 123(2).
The board noted that a few decisions question the applicability of the principles of G 1/24 in the realm of Art 123(2), only nevertheless to apply them for the sake of argument.
Two-step approach in assessing added matter
Generally, most of the decisions have adopted a two-step approach for the assessment of added matter.
In a first step, the patent claims were interpreted from the point of view of a skilled person and also taking account of the description, in order to determine the subject-matter they contain after the amendment, cf. G 2/10, Reasons 4.5.2.
In a second step, it was assessed whether the subject-matter of the amended claim – established by way of interpretation – contained subject-matter extending beyond the content of the application as filed.
Decisions that are sometimes regarded as not following a two-step approach do, on closer analysis, proceed in two logical stages: they first interpret the claims from the point of view of a skilled person in order to determine the subject-matter they contain after the amendment and only subsequently assess whether they contain added subject-matter in the light of the gold standard.
These two stages were also applied in decisions which question the applicability of the principles of G 1/24. The conclusions drawn differ substantially. These differences stem from the way in which the claims were interpreted at the first step of the assessment in order to determine the subject-matter they contain after the amendment.
The underlying reason resides in the extent to which the description was relied upon when interpreting the claims. Only a small number of decisions disregard the description entirely.
Three different ways to apply G 1/24
From this analysis, the board concluded that there were 3 different ways to deal with the situation.
For all those approaches the board quoted a series of decisions.
- First approach: consulting the description only to define the skilled person.
- Second approach: no broadening or limitation of claims based on the patent specification.
- Third approach: holistic approach permitting broadening and/or narrowing of the interpretation in view of the patent specification.
In the third approach, the focus then lies on the question as to whether a limitation (or broadening) to be read into the claim can really be derived from the patent specification as a whole.
Claim interpretation is accordingly seen as the result of both reading the claims and consulting the description and drawings as a unitary process, see e.g. T 439/22.
The resulting legal problem
Underlying these differing views is the unresolved question of the extent to which the fact that the claims are the starting point and the basis for assessing the patentability of an invention limits consideration of the content of the description and figures when interpreting the claim (see questions 2a and b) as well as, in the specific application of Art 123(2), the question of which of the conceivable interpretations of a claim need to be originally disclosed (see questions 3a and 3b).
Assessment of added matter in the present case
The three approaches in the case law regarding how the description is to be consulted in the first step of the assessment of added subject-matter would lead to different outcomes when applied in the case at hand.
- First approach: the amendment to claim 1 would be deemed to add subject-matter.
- Second approach: same conclusion as for the first approach.
- Third approach: the weight ratio of titanium to nitrogen must exceed 3.42 in order to prevent boron from combining with nitrogen, whereby it is also indicated that nitrogen is scavenged by titanium. The description of the patent in suit contains no other disclosure concerning the titanium to nitrogen ratio.
Applying the third approach
For the board, it is immediately apparent that the correct interpretation of the ratio in feature F1.3 is that it relates to a weight ratio. This interpretation is also consistent with the purpose of this feature, namely to scavenge nitrogen by means of titanium in order to prevent boron from combining with nitrogen.
Since titanium and nitrogen normally combine to form TiN, the addition of an equimolar amount of titanium to the steel alloy represents the theoretical minimum required to scavenge all of the nitrogen, that is, the stoichiometric amount. When expressed as a weight ratio relative to nitrogen, this corresponds to a value of 3.42.
Therefore, it is reasonable to assume that the patent in suit only refers to the stoichiometric amount. The consequence is that feature F1.3 of claim 1 is interpreted more narrowly than a broad technical interpretation of the claim alone would suggest. In other words, the open ratio is only to be considered in relation to a weight ratio, with all other options, such as a molar ratio, being disregarded.
The third approach would thus lead to the conclusion that feature F1.3 fulfils the requirements of Art 123(2).
For the board, a decision of the EBA is required to determine which of the approaches to consulting the description set out above is to be followed.
The board clearly pleaded for the admissibility of the referral.
Comments
I see the present referral as a new attempt to introduce the same holistic approach as that set out in T 439/22. It is certainly not a coincidence if the same LQM has acted in T 439/22 and in the present case.
In my humble opinion, the two other approaches are clearly blown up in order to allow introducing the third one.
As the board was able to determine that the ratio of 3,42 could only be considered as being expressed as weight %, I have some reasonable doubts about the admissibility of the present referral.
Other decisions are also quoted in the so-called third approach, but they look more like having been put there so as not to base the whole argumentation on T 439/22.
If among all reasonable technical interpretations of the claim, duly taking into account the description as required in G 1/24, one of those is giving the skilled person a new technical information, then we are in presence of added matter.
It cannot be left to the applicant/proprietor to rely on the one interpretation found in the original description, to choose the one for which there is no added matter.
In T 0981/23, commented in the present blog, the board held that, if a claim allows for two different interpretations which are both technically reasonable for the skilled person, its meaning is not clear for the latter from the wording of the claim alone.
What applies to Art 84 necessarily applies to Art 123(2).
In T 2488/22, also commented in the present blog, the board held that limiting the claims based on the description and drawings when such limitations are not derivable from the claims’ wording would deprive Articles 123(2) and 100(c) from their meaning and purpose. The approach is clearly opposing a holistic interpretation of the claims. What applies to a limitation should apply mutatis mutandis to a broadening: it cannot be read into the claim. This is the position adopted by all the boards applying G 1/24, but T 439/22.
It is also interesting to note that the present referral is based on an incomplete copy-paste action. While in the original claim the weight ration was always stated in weight %, this part has been deleted in the granted claim 1.
On the other hand, it can also be assumed that if the proprietor deleted weight % in claim 1 as granted, which is the result of a third generation of divisional applications, the proprietor had good reasons to do so.
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