EP 3 288 403 B1 relates to cartridges for aerosol-generating systems.
Brief outline of the case
For the OD, claim 1 as granted lacked N over D3=WO 2015/117701. AR1 suffered the same defect.
The OD decided maintenance in amended form according to AR2.
Claim 12 as granted related to a method of manufacturing a cartridge for use in an aerosol-generating system.
The board held that claim 12 as granted lack N over D3. Claim 12 of AR1 was held to infringe Art 123(2). The proprietor filed an AR1’ in which claims 12+13 were deleted. AR1’ was admitted.
The case was then remitted to the OD for further prosecution.
Claim 12 of AR1 contains the following statement
“fixing a heater assembly comprising at least one heater element to the open end of the housing so that it extends across the opening of the housing”.
The board’s decision
The board considered that the term “it” in claim 12 is indeed ambiguous. Grammatically, it may refer either to the heater assembly or to the heater element. Furthermore, both possibilities are compatible with the technical context provided by the description and convey a clear technical teaching to the skilled person.
Thus, claim 12 covers two technically reasonable scenarios:
Either the heater assembly (scenario A) or merely the heater element (scenario B) extends across the opening of the housing.
The original application, page 20, lines 3 to 7 directly and unambiguously discloses scenario B. Regarding scenario A, the application, page 22, line 22, discloses the option that the heater assembly is fixed to the housing, but neither explicitly nor implicitly that the heater assembly extends across the opening.
The board was aware that there are conflicting approaches as to how claim interpretation and the assessment of Art 123(2) interact in the case of ambiguous claims.
The Board was also aware of decision T 0873/24, which referred pertinent questions to the EBA. Neither party has, however, requested that the present appeal proceedings be stayed pending the decision in case G 1/26.
A first approach requires that all technically reasonable “interpretations” must comply with Art 123(2), cf. T 1791/16, Catchword.
A second approach appears to require that an ambiguity first be resolved by interpretation before compliance with Art 123(2) can be assessed, cf. T 0367/20, Reasons 1.3.9; T 0847/24, Reasons 3.5.
The present board did not agree with the second approach. Specifically, it disagrees with its apparent implication that, in case of ambiguities, a claim must be interpreted in such a way that no violation of Art 123(2) arises.
In other words, compliance with Art 123(2) cannot be a precondition for the correct claim interpretation, but must instead be assessed after that interpretation has been established, cf. T 2488/22, Reasons 21 and 22. Otherwise, this would contradict the underlying rationale of Art 123(2) and the “gold standard”, cf. G 2/10.
At the same time, the present board did not share the view that leaving an ambiguity in a claim unresolved is tantamount to leaving its interpretation open, as was apparently assumed in T 0367/20, Reasons 1.3.9. Rather, an unresolved ambiguity may simply result in a broader interpretation.
In the present case, the board interpreted claim 12 as encompassing a situation in which either the heater assembly or the heater element extends across the opening of the housing, i.e. as equivalent to a claim which expressly states, in the relevant part, “fixing a heater assembly (30) comprising at least one heater element (36) to the open end of the housing so that [the heater assembly or the heater element] extends across the opening of the housing (24)”.
Since this interpretation covers a scenario which is not directly and unambiguously derivable from the application as filed, the board judged that claim 12 infringed Art 123(2).
Comments
We are apparently in presence of two different approaches when it comes to added-matter in presence of an ambiguous feature in the claim.
A first approach requires that all technically reasonable “interpretations” must comply with Art 123(2), cf. T 1791/16.
A second approach requires that an ambiguity first be resolved by interpretation before compliance with Art 123(2) can be assessed, cf. T 0367/20, Reasons 1.3.9; T 0847/24, Reasons 3.5.
The present board did not agree with the second approach.
However, it is not apparent at all that a claim must be interpreted in such a way that no violation of Art 123(2) arises as the present board seems to assume in T 0367/20 and T 0847/24.
In view of G 1/24 and taking into account that the description has always to be consulted, it could however be concluded that the interpretation of the claim should take precedence over the assessment of Art 123(2).
However, if the claimed feature is ambiguous and the description does not allow to resolve the ambiguity, then all possible technically reasonable interpretations play a role.
If in this situation, one of the technically reasonable interpretations is not directly and unambiguously derivable from the original disclosure, then Art 123(2) is infringed.
It is thus difficult to see two different approaches. At least in case of an ambiguity in the claim which cannot be resolved by consulting the description, the net result appears to be the same. The second approach does however take into account G 1/24.
In T 0392/25,Catchword, the board held thatan ambiguous passage in the description cannot provide a direct and unambiguous basis for an amendment of a claim merely because the claimed subject-matter corresponds to one possible interpretation of that passage.
I am not sure that the questions in the referral pending under G 1/26, really allow to resolve the above problem.
On the procedure
The ISR established by the EPO only mentioned 3 documents of category A.
D3=WO 2015/117701 was not mentioned in the ISR, but
- is prior art under Art 54(3) and
- has the same proprietor as that of the opposed patent.
Something must have gone wrong in the top-up search as the patent and D3 bear the same IPC class A24F 47/00. The ISR was carried out in A24F.
T 0367/20 has been commented on this blog.
T 2488/22 has been commented on this blog.
In T 0392/25, the board came to a similar conclusion as in T 0367/20.
Comments
2 replies on “T 0977/25-Ambiguous claim and ambiguous description-What about added matter?”
One thing I don’t understand in this decision is: the heater assembly is said to comprise the heater element.
If the heater element extends across the opening of the housing, then clearly the assembly – of which the heater element forms a part – extends across the opening; you cannot have one element extending across an opening and then say that an assembly comprising that element does not extend so, in particular noting that the claim does not specify “all of the heater assembly” so that in my view only part of the assembly already suffices to satisfy the claim feature “the assembly”.
Any ideas why the Board made the distinction it did? Or am I missing something here?
@ LF,
In the present case, either the heater assembly (scenario A) or merely the heater element (scenario B) extends across the opening of the housing.
The original application, page 20, lines 3 to 7 directly and unambiguously discloses scenario B. Regarding scenario A, the application, page 22, line 22, discloses the option that the heater assembly is fixed to the housing, but neither explicitly nor implicitly that the heater assembly extends across the opening.
This is the fundamental problem underlying the decision. It is clear that the heater element extends across the opening of the housing. However, it cannot be inferred that the heater assembly actually extends across the opening. It might be obvious to extend the heater assembly across the opening, but this is not directly and unambiguously derivable from the description. It is thus anything but clear that the assembly – of which the heater element forms a part – extends across the opening.
As two interpretations are possible, both have to be directly and unambiguously derivable from the original description. It cannot be left to the applicant/proprietor to decide which interpretation is the right one, as this would deprive Art 123(2) of any substance.