EP 2 907 930 B1 relates to a remote control device and to a system comprising a toilet device and a remote control device.
Brief outline of the case
The patent was revoked as claim 1 as granted infringed Art 123(2). AR1 infringed Art 84 and 123(2). AR 2-5 were not admitted by the OD and AR6-10 infringed Art 123(2).
The board confirmed the infringement of Art 123(2) as granted and the lack of clarity of claim 1 of AR1.
The case was eventually remitted to the OD, but here, we will deal with claim 1 of AR1.
The OD found that the additional feature of claim 1 of AR1 was ambiguous and extended beyond the content of the application as filed. It was not clear whether the condition “when” in claim 1 applied only to the power supply section’s configuration to “activate the controller” or also to its configuration to “supply the power” to the controller, i.e. to both.
The proprietor’s point of view
The proprietor submitted that it should not make a difference whether the condition, “when”, was placed at the beginning of the expression or moved to the end. Moreover, the interpretation that the condition did not apply to the power supply was not technically sensible as supplying power was a prerequisite in the sequence of controller activation. The additional feature incorporated in claim 1 of AR1 was thus not ambiguous.
Furthermore, even if it was ambiguous, the description had to be consulted to interpret the claim. It was clear that the purpose of the storage element was to store and build up power until it became sufficient for activating the controller. Hence, the skilled person understood that the control element both supplied the power and activated the controller only when the voltage was sufficiently high. Hence, in view of the patent as a whole, claim 1 specified what was originally disclosed and its subject-matter was clear.
Moreover, supplying power and activating were understood to refer to the same activity, not to separate steps – the controller was activated by power being supplied to it. Accordingly, it was clear that both activities were carried out at the same time under the specified condition as originally disclosed.
Even if the incorporated feature was construed to only cover the conditional activation of the controller irrespective of when and how power was supplied to it, this was also the key aspect of the application as filed, as disclosed on page 13, lines 17 to 21, page 24, lines 7 to 11 and page 27, line 36 to page 28, line 3.
These passages referred only to the conditional activation of the controller, not to supplying power. Accordingly, even if the condition only applied to the configuration for activating the controller, this alternative was also supported in the application as filed.
The board’s decision
The board agreed with the OD that the meaning of the additional feature in claim 1 is ambiguous. This is because the order in which the condition (“when” clause) and the two activities (to supply power and activate) are presented in claim 1 has been reversed with respect to the original disclosure.
It is true that power supply is a prerequisite for activating the controller. However, activation and power supply are not necessarily the same and need not occur at the same time or under the same conditions, plus claim 1 is not limited to this, i.e. claim 1 does not specify that the controller is activated by power being supplied to it.
Moreover, according to page 13, lines 17 to 21, reaching the predetermined voltage of the power storage element is necessary not only for activating the controller but also for transmitting a wireless signal.
Hence, in the board’s view, it is a technically reasonable alternative to the original disclosure to keep the power supply to the controller unmanaged (continuous, uninterrupted) and to control only the activation of the controller (for example by an enable or wakeup signal to a pin of the microprocessor) by the power supply section according to the specified condition.
Accordingly, this broader, alternative interpretation of the additional feature in claim 1 is not ruled out from a technical point of view.
As the additional feature in claim 1 allows for two different interpretations which are both technically reasonable for the person skilled in the art, its meaning is not clear for the person skilled in the art from the wording of the claim alone. Accordingly, claim 1 does not comply with the requirements of Art 84.
Hence, AR1 is not allowable, and there is no need to address the further objection against claim 1 under Art 123(2).
A kind of obiter dictum in view of G 1/24 and added matter
The board noted for completeness that according to the order in G 1/24, the description and drawings are always to be consulted to interpret the claims, and not only if the person skilled in the art finds a claim to be unclear or ambiguous.
The board considers this to be true not only for the question of “patentability of an invention under Art 52 to 57″ but also for the issue of Art 123(2). The board referred to T 873/23, Reasons 1.6.1 and T 2048/22, Reasons 1.2.
G 1/24, Reasons 10, otherwise confirms most of the established case law, including the principle of the primacy of the claims, cf. G 1/24, order, first sentence: “the claims are the starting point and the basis”; see also T 1473/19 cited in G 1/24, Reasons 11.
The primacy of the claims prohibits a feature which is only disclosed in the description or the drawings from being read into a claim, cf. T 1473/19, Reasons 3.16.1 and CLBA, 11th edition, 2025, II.A.6.3.4.
In the present case, the expression incorporated in claim 1 is worded differently from the description. In the board’s view, it would be inconsistent with the principle of the primacy of the claims to automatically give the claimed expression the exact same meaning as the expression in the description despite the appellant’s different choice of wording in the claim.
Therefore, following the established practice to interpret a disputed claim more broadly rather than more narrowly cf. T 1886/22, Reasons 4.1.1, last sentence, the board would, for the purposes of assessing Art 123(2), interpret the feature in question such that the “when” condition is only required for the activation. This would result in added subject-matter.
Comments
The present decision confirms a long line of case law, according to which, if different interpretations are technically sensible for the skilled person, the claim is intrinsically unclear. See for instance T 0424/16, Reasons 3.4, with two interpretations, or T 821/17, see Reasons 1.1.3 and 1.1.4, with five possible interpretations..
Consulting the description will not help the applicant/proprietor.
The present decision, albeit indirectly, confirms that G 1/24 is also relevant when it comes to assessing added matter.
If one possible technically sensible interpretation of claimed features is not originally disclosed, then, the applicant/proprietor cannot exclusively rely on the interpretation he prefers and which does not introduce added matter.
Comments
Leave a comment