EP 2 242 634 B1 relates to a system and method for producing an extruded expandable barrier. Such barriers are commonly used in various parts of a motor vehicle to prevent noise, fumes, dirt, water, and the like from passing through from one area to another.
Brief outline of the case
The patent was revoked by the OD, inter alia due the fact that the patent as granted and that the claims AR 1, 1A to 1C and 2 to 10 infringed Art 123(2).
As the only claim of AR 1G did not contain added matter, the case was remitted to the OD for further prosecution.
The case is interesting as it deals with G 1/24 and added matter.
The proprietor’s point of view
Original paragraph [0041] discloses a plurality of independently controlled heating devices along the extrusion system. Reference was made to G 1/24, in particular to points 16 and 19 of the Reasons and to the Headnote 2 of the UPC decision mentioned in Reasons 19 of G 1/24.
These arguments apply in an analogue manner to granted claim 5. In this context, paragraphs [0066] and [0067] of the application as filed should be taken into account.
The proprietor argued that the subject-matter of the patent extends to what, after examination of the description and the drawings, appears to be the subject-matter for which the patent proprietor seeks protection, i.e. the will of the proprietor.
The opponent’s point of view
Original paragraphs [0040] and [0041] do not only disclose additional features, like a profiler and a heating profile, but additional subject-matters such as hopper, a feed-throat, etc.
Paragraphs [0066] and [0067] of the application as filed are part of the description of the method and comprises many more features that are not part of the independent method claims . Therefore, granted claims 1 and 5 contain subject-matter which extends beyond the content of the application as filed.
The board’s decision
For the board, the intermediate generalisation is not allowable, and it is therefore immaterial whether paragraphs [0040] and [0041] serve to clarify that the features of original claims 2 and 6, or 5 and 6 do not relate to exclusive alternatives, but may be combined. The possibility of combining the features of these dependent claims is a necessary, but not a sufficient condition for allowability of an amendment under the “gold standard“.
This conclusion is not altered by the proprietor’s reference to G 1/24. For the boards, the description and claims as filed already express “the will” for the very reason that they were drafted by the applicant, and thus, there would not be any need for further speculation on the applicant’s the proprietor’s intentions, i.e. on what else might be the subject-matter to be protected.
Assuming arguendo that “the will” really was to be considered for examining the allowability of an amendment – which the board strongly rebuts – this concept would identify multiple different wills in the present case.
Any combination of claims 1, 2, 3 and 6, i.e. claims 1, 2 and 3, or claims 1, 2 and 6, or claims 1, 3 and 6, or claims 1, 2, 3 and 6, of the application as filed would be an equally likely manifestation of “the will” for the sole reason that the features of each combination are jointly disclosed in the embodiment of original paragraphs [0040] and [0041]. This is contrary to the criterion of a direct and unambiguous disclosure, i.e. the “gold standard“.
For these reasons, the board concluded that claim as granted contains subject-matter which extends beyond the application as filed. The above reasons apply in an analogue manner to method claim 5.
Comments
It is important to note that in paragraphs [0040] and [0041] of the originally filed description some of the features are introduced by “may”. Introducing features with “may” does not allow to later combine those features in any possible combination in the absence of a pointer.
G 1/24 is not there to allow an applicant/proprietor to express his “will” in an arbitrary manner.
In T 350/20, Reasons 2.5, it was held that too many options in a forest of optional features can lead to the infringement of Art 123(2).
In T 2241/15, Reasons 4.8, it was held that a blanket statement to the effect that all aspects of the disclosure were combinable, is not a source of directly and unambiguously disclosed embodiments.
In T 1203/13, Reasons 2, it was held that the mere fact that each passage of the description is preceded by a “may” is not sufficient to disclose a combination or generalisation of features. If everything is optional, nothing is optional.
G 1/24 cannot serve as support for claiming combinations, at the whim of the applicant/proprietor, of features loosely disclosed in the original description.
In this respect, G 1/24 should not induce a different conclusion in the three decisions quoted above here. And it is right so.
Comments
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