EP 3 469 889 B1 relates to a mushroom cultivation apparatus.
The “hydraulic unit” (108) in extended position enables the tiltable fungi cultivation module (104) to tilt at different angles, enabling the worker to easily harvest the cultivated fungi.
Brief outline of the case
The patent was revoked by the OD as all requests on file were infringing Art 123(2).
The board confirmed the revocation.
The proprietor’s point of view
Claims had to be interpreted in the context of the patent as a whole from the perspective of a skilled person willing to understand and in a way which made technical sense of the technical terms.
The proprietor submitted that the skilled person reading the application as originally filed would understand that the “hydraulic unit” referred to in paragraph [0011], i.e. column 2, lines 28 to 32; of the A1 publication, amounted to or was at least a sub-part of the “hydraulic drive system” disclosed later in that paragraph; see column 2, lines 48 to 50. Other, alternative drive systems were disclosed separately in column 2, lines 50 to 54.
Accordingly, the skilled person would understand that the fungi cultivation module was preferably coupled to the at least one horizontal support unit by a “hydraulic drive system“, with the “hydraulic unit” being a specific (sub-)component of – and thus implicit in – a hydraulic drive system of this kind, as was well known to the skilled person.
The proprietor thus concluded that the skilled person would understand that the disclosed alternative drive systems, manual, pneumatic, electrical, were intended to replace the hydraulic drive system as a whole, i.e. including its “hydraulic unit“. Therefore, omitting the hydraulic unit when claiming the other drive systems did not extend beyond the content of the application as filed.
The opponent’s point of view
Claim 1 as granted contained an unallowable extension of subject-matter due to the omission of the feature “hydraulic unit“.
Paragraph [0011] of the application as originally filed did not mention any coupling of the proposed drive systems to a horizontal support unit. The description as originally filed, and in particular paragraph [0024], made it unambiguously clear that the hydraulic unit was a passive element, meaning that a different drive system (including manual actuation by an operator) impelled the cultivation unit while the hydraulic unit merely kept it in place.
The hydraulic unit and the drive system – in whichever form were disclosed as distinct elements. Due to its particular role, the hydraulic unit could not be omitted from the claimed subject-matter without extending beyond the original disclosure.
The board’s decision
The parties disagreed on the meaning of the term “hydraulic unit“, which is used in the application as filed but not present in claim 1.
The board noted that the determination of what is disclosed in the application as originally filed is distinct from claim interpretation.
The meaning of a term used in the application as filed must – like in claim interpretation be determined not in the abstract on the basis of the skilled person’s CGK alone, but taking into account the specific context in which the term is used.
The term “hydraulic unit” in the application as filed could be understood as alleged by the proprietor, i.e. as necessarily referring to a sub-element of a “hydraulic drive system”, only if read in isolation.
If the term is assessed in the specific context in which it is used in the application as filed, the skilled person understands it differently. In particular, the application as filed discloses the “hydraulic unit” and the “hydraulic drive system” as two separate elements with distinct roles.
The skilled person learns from paragraph [0011] that the connection of the plant cultivation module to the horizontal support unit by the at least one hydraulic unit is disclosed as being at the core of the invention intended to address the drawbacks in the prior art. The application discloses several ways of actuating the module, and thus the hydraulic unit which enables these functionalities.
In particular, paragraph [0024] discloses that the hydraulic unit allowing the tiltable plant cultivation module to tilt at a desired angle can be actuated manually. Paragraph [0024] further discloses that the hydraulic unit also allows the tiltable plant cultivation module to stay at the desired position, this being the solution to a drawback discussed in relation to the prior art. This is independent of the manual actuation aspect, i.e. the particular drive system used.
Hence, the term “hydraulic unit” in the application as filed cannot be understood as only referring to an “active” hydraulic unit, i.e. a hydraulic unit being actively supplied with pressurised fluid.
Rather, it also encompasses the kind of “passive” hydraulic damper typically used to secure a position once a force has been exerted, cf. paragraph [0024]. .
A passive hydraulic unit is compatible with pneumatic, manual, see paragraph [0024] of the application as originally filed, and electrical drive systems, and so the skilled person would have no reason to believe that adopting a non-hydraulic drive system implies that the hydraulic unit is or can be omitted. On the contrary, the hydraulic unit is functionally and structurally linked to the tiltable fungi cultivation module and the horizontal support unit.
Consequently, paragraph [0011] does not support. a tiltable fungi cultivation module coupled to at least one horizontal support unit by at least one hydraulic, manual, pneumatic or electrical drive system, since the application as originally filed only discloses such coupling by means of a hydraulic unit, independently of the drive system chosen.
Consequently, omitting the hydraulic unit – which is disclosed as having a particular role in the context of the movement between the cultivation module and the horizontal support unit and which is thus functionally and structurally linked to them – from the subject-matter of claim 1 results in an unallowable intermediate generalisation.
During OP, the proprietor argued that the hydraulic unit allegedly implicit in the drive systems of claim 1. This interpretation was as well dismissed.
Comments
From T 367/20, catchword, and T 873/23, Reasons 1.6.1, as well as from the present decision, it is established that claims have to be interpreted in the context of the patent as a whole from the perspective of a skilled person willing to understand and in a way which made technical sense of the technical terms, including consulting the description.
In a second step, it has to be assessed whether the claimed subject-matter was disclosed in the application as filed.
In the present case, the context of the whole disclosure was such that the “hydraulic unit” (108) could not be omitted, as it was present independently of the way actuation of the tiltable plant cultivation module (104).
T 367/20, which predates G 1/24, was commented in the present blog.
T 873/23, which follows G 1/24, was also commented in the present blog.
Although, G 1/24 is nowhere mentioned in the board’s decision, defining the context of the invention in the description, boils down to “consulting” the description.
Comments
2 replies on “T 1141/24-Contextual determination of the disclosure of the application as filed”
When it comes to the “meaning” of written text, the “con-text” in which that text appears is always definitive.
Putting it another way, one cannot even begin to ascribe a “meaning” to text until one has digested the con-text in which that text swims.
Does anybody take issue with that? I assume not. How could anybody?
So, if “consult” in G1/24 means nothing more or less than “construe the claim in context”, who could possibly disagree with that? Credit to you, Daniel for capturing the essence of G1/24 is so few words.
The task remaining, to drive the enquiry into whether or not there is truly an “inconsistency” between two elements of the same document, namely the claim and the description, being an inconsistency that is truly not acceptable under the provisions of the EPC, must surely be one that any EPO Examiner (or TBA member) of ordinary intelligence can handle as part of their daily routine duties. Oder?
Dear Max Drei,
Your comment made me realise a mistake in the last sentence in my comments. I wrote “decision” instead of “description”. I amended it, but you got the right view on it.
As examiner, I always considered most important to read the description before searching or examining an application. How on earth can you know what the claims are about, and especially the independent claim, when you do not know what is in the description? Any independent claim is the result of some generalisation, but how can you decide its boundaries and patentability if you do not know what is in the description, i.e. what is the context of it. As director, this is always something I was insisting upon.
It might take some time, but this time is not wasted. Only by knowing what is the context in which the claim is embedded, you can come to a correct decision. A board might have another opinion, but this is the rule of the game.
I would say that an examiner has to consult the description before starting to search or to examine, or before granting (inconsistencies…). When staring to deal with an opposition, the same applies. It does not cost much more to do it correctly, but the satisfaction you gain from it is an excellent reward.
G 1/24 might have looked somehow startling when it came out, but the more I get to see how it is applied by the boards, besides in T 439/22-2, the more I realise how important it is.