EP 3 018 978 B1 relates to a “Method for setting up and operating a network of luminaires”.
Brief outline of the procedure
The opposition was rejected and the opponent appealed.
The board held that claim 1+31 as granted infringed Art 123(2).
The patent was eventually maintained on the basis of AR1quater and a description to be adapted.
We will concentrate on the objection of added matter.
The proprietor’s point of view
Claim 1 as originally filed defines the transmission of “environmental, luminaire and/or control module information” to the server. This feature was amended during examination proceedings, such that corresponding feature of claim 1 of the patent defines the transmission of “at least one of … environmental, luminaire and control module information” to the server.
The proprietor argued that the normal understanding of an expression of the form “A, B and/or C” in claim 1 as filed was “A and/or B and/or C”, which was equivalent to “at least one of A, B and C”. Therefore, claim 1 as filed provided a basis for the amendment.
The proprietor added that the above understanding of the expression “A, B and/or C” was supported by the description, both from a linguistic and from a technical point of view.
This was so, firstly, because the skilled person would recognize that the application consistently used the AP (Associated Press) style, in which no Oxford comma was used after the penultimate item of a simple list of items. They would, in particular, see this from the context of paragraph [0023], column 5, line 14; and paragraph [0028], column 6, line 10, cf. the A1-publication.
In the AP style, the conjunction after the penultimate item in the list “A, B and/or C” applied to all items of the list, and meant “A and/or B and/or C”.
Secondly, the teaching of paragraphs [0027] and [0028] would lead the skilled person to the same conclusion. Paragraph [0027], column 5, lines 42 to 46, disclosed that neighbourhood information, which was an example of environmental information, could be transmitted to the server together with luminaire-specific and control module-specific information. This was a disclosure of “A and B and C”.
Paragraph [0028], column 6, lines 2 to 5, disclosed transmitting information about the connection quality to adjacent control modules, together with further geospecific and/or luminaire-specific or control module-specific information. As both the connection quality and the geospecific information were forms of environmental information according to paragraph [0008], paragraph [0028] disclosed “A and/or B or C”, which was equivalent to “A; or A and B; or A and C”.
The examples in paragraphs [0027] and [0028] only allowed the conclusion that “A, B and/or C” had to be understood as “A and/or B and/or C”, which, in turn, was equivalent to “at least one of A, B and C”.
The board’s decision
The board found the proprietor’s arguments not persuasive.
The expression “A, B and/or C”, which is found in claim 1 as filed, and also in paragraph [0008] of the published application, is, by itself, ambiguous. It can be understood as
- “A, B, or C, or any combination of them”;
- “A and B and C; or A and C”; or as
- “A and B and C; or A or B or C” (all three together or just one alone).
Contrary to the proprietor’s view, the application provides neither a linguistic nor a technical teaching that would favour one of those understandings over the other ones.
First, the skilled person would try to understand the content of the application from a technical point of view.
It would not, however, analyse the entire application for its use of the Oxford comma or seek to interpret the text on the basis of some unmentioned style guide.
Moreover, even if it did attempt such a textual analysis, the cited passages in paragraphs [0023] and [0028] are no indication of the AP-style, because not all possible combinations are actually meaningful.
To name one example: it does not appear to make sense only to signal a successful start-up when installing a new luminaire and a new control module and after maintenance work on the luminaire has been done (paragraph [0023]).
It also makes little sense to change the division of the groups without checking them (paragraph [0028]). In addition, even the AP-style suggests the use of Oxford commas whenever this would clarify the intended meaning.
From a technical point of view, the application also fails to clarify which of the possible interpretations of “A, B and/or C” is meant.
In the analysis of the application as filed, it is important to distinguish between the setting-up of the network in each group, on the basis of environmental, luminaire, and/or control module information, and the subsequent normal operating state, in which the network has already been set up, and during which the at least one of environmental, luminaire and control module information is transmitted to and from the group controller.
Claims 1 and 31 of the patent leave open how the environmental, luminaire, and/or control module information required for the division into groups during the setting-up is transmitted. As this information must have been transmitted prior to the division into groups and the selection of the group controller, the latter cannot have been responsible for transmitting it.
Paragraph [0027] of the application as published discloses the transmission of neighbourhood information in the form of a table of closest neighbours, which, according to paragraph [0008], is a form of environmental information, as well as the transmission of luminaire and control module information to the server in the normal operating state, i.e. “A and B and C”.
Paragraph [0028], which fails to clarify whether it refers to the normal operating state or some other, more fail-safe state of operation, mentions the transmission of information on the connection quality, which is environmental information, “possibly together with further geospecific and/or luminaire-specific or control module-specific information” to the server.
This can be understood to mean that the connection quality is always transmitted, possibly together with any other kind of information, if there is any, i.e. “A, possibly with further A and/or B or C”. This understanding is technically meaningful, as information about the connection quality could be useful at every stage of the setup and operation, indicating potential transmission problems that might require a renewed setup or change in the network.
There is no disclosure, however, in the application as filed for transmitting only luminaire or control module information, something that is comprised in the formulation “at least one of” in claims 1 and 31, even under the assumption that paragraph [0028] refers to the normal operating state.
Hence, given that the application as filed is ambiguous and neither the language use nor technical considerations disambiguate, there is no clear and unambiguous basis for the formulation “at least one of A, B and C”.
Hence claims 1 and 31 extend beyond the content of the application as filed.
Comments
An ambiguous formulation, which cannot be clarified on the basis of the originally filed disclosure, can indeed lead to added matter, if one of the possible interpretations has not been originally disclosed. This is nothing new at the EPO.
The present decision confirms T 2605/22, commented in the present blog.
In T 1791/16, Reasons 11, it was held that, If a claim is ambiguous/unclear, all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present.
In T 470/21, Reasons 2.1, it was held that, a reasonable interpretation of a claim is to be taken into consideration for the assessment of Art 123(2) but added that Art 69(1) may be used to interpret the scope of protection under Article 123(3) EPC, but it is not used to determine whether the requirements of Art 123(2) are met.
All those decisions were issued before G 1/24, but it does not appear that the latter would modify their outcome.
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