EP 3 250 894 B1 relates to a method of generating batches of food items in a controlled way.
Brief outline of the procedure
The OD found that claim 1 as granted and of AR1 lacked N over D2=US 2004/0176874.
The OD decided maintenance according to AR2.
The proprietor and opponent 1/2 appealed.
The board confirmed maintenance according to AR2.
The case is interesting as it concerned the application of G 3/14 when it comes to AR2
The OD’s considerations
The OD held that the inclusion in the independent apparatus claim of the features of granted dependent process claims 3 and 6 did not formally constitute the inclusion of dependent claims, but that it was clear from the application as a whole that all the process steps disclosed were carried out by the disclosed apparatus.
For a skilled person there was no doubt that the process steps of all dependent process claims were carried out by a batching system with a correspondingly programmed control unit.
The opponent’s point of view
Opponent 1 argued that “the pre-defined sub-weight ranges” had no antecedent and were therefore unclear. In addition, features certain features of original claim 6 had originally been disclosed only as dependent method claims.
There was no disclosure of an apparatus which was configured to carry out these method steps. G3/14 did not apply when the category of the (dependent) claim was changed.
Therefore, according to G3/14 clarity of these features had to be assessed. It was unclear how the method steps were implemented in the apparatus. Therefore, the subject-matter of independent apparatus claim 11 did not meet the requirements of Art 84.
The proprietor’s point of view
The proprietor argued that the sub-weight ranges were introduced – and thereby properly defined – in original/granted claim 3 and that therefore the was clear. As decided by the OD, the features were implemented by software and therefore could be formulated as method steps carried out by computational means.
The board’s decision
The board notes that the question whether the term “subway-ranges” had an antecedent did not arise due to an amendment but could already be asked in relation to the granted claims and must therefore not be answered according to G3/14.
Moreover, the board agrees with the proprietor that according to G3/14 adding “complete dependent claims” to the corresponding independent claim of the patent must not be examined for compliance with the requirements of Art 84.
However, the board agreed with opponent 1 that this does not apply in the present case to the implementation of the method of the dependent method claim in the apparatus defined in claim 11.
However, when a complete granted dependent claim is incorporated into an independent claim of another category, here: method step -> method step carried out by an apparatus, then only the amendments related to the change of category can be examined for clarity under G3/14.
In the case of a sub-step of a method, which is implicitly executed in a computer program, it makes no difference for the purposes of clarity whether this method step is part of a computer-implemented method or is implemented in computational means in an apparatus claim, so that no ambiguity can arise.
It is obvious to the skilled person that the method defined in claim 1 has a corresponding software implementation in the controller of the batching machine. Claim 11 for the apparatus is formulated accordingly. Therefore, no unambiguity arises by adding said method step to apparatus claim 11.
Comments
The present decision makes clear that, when an independent claim of a given category (entity or action) is limited by dependent claims of the same category, an objection under Art 84 cannot be raised against this combination.
This is however not the case when categories are mixed (entity with action or vice-versa), with the proviso in opposition that then, only the amendments related to the change of category can be examined for clarity under G3/14.
Mixing of categories of claims is often a cause of problems under Art 84. A claim should relate either to an entity or to an action, cf. T 2238/10, Reason 3, T 1380/13, Reasons 1.2, or T 690/17, Reasons 1.
T 1046/05, Reasons 2,13,is comparable to the present case in that the board held that technical processes are not abstract concepts, but are carried out with or on specific objects, so that no ambiguity arose.
On the procedure
D2=US 2004/0176874bears the classification units B07C5/18, G01G19/30 and G01G19/38
EP 3 250 894 B1 bears the classification unit G01G 19/387.According the ISR established by the EPO, the search was carried out in G01G. The ISR mentioned two documents of category X and one of category A for all the claims.
It is thus surprising that D2 was not found during the IS carried out by the EPO.
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