EP 3 566 628 B1 relates to a vacuum cleaning device with a foldable wand to provide a storage configuration.
Brief outline of the case
The OD rejected the opposition.
Upon appeal from the opponent, the board decided that claim 1 as granted infringed Art 123(2) and revoked the patent, the same applied to the AR on file.
Claim 1 of the main request defines inter alia the following features, which were added during the examination proceedings:
– a locking arm guard extending from the second hinge member (651) generally along the second longitudinal axis and around a distal end of the locking arm (677); and
– a locking arm sidewall extending generally away from the first longitudinal axis and at least partially around the locking cavity (1412), wherein the locking arm sidewall is configured to receive at least a portion of the locking arm guard when in the extended position.
The proprietor’s point of view
The proprietor argued that Figures 6A to 6D provided a basis for the added feature “locking arm guard” as defined in claim 1. According to the proprietor, the skilled person would derive from Figure 6B of the divisional application as originally filed that the locking arm guard extended around a distal end of the locking arm.
The skilled person would also derive that the specific design could be slightly different but that this was irrelevant, since the guarding function was guaranteed as long as the guard went around the distal end of the locking arm.
The proprietor further argued that the skilled person would not consider “wings” to be a necessary feature, because the wings are not represented with accuracy – Figure 6D showed a much smaller “wing” than the one of Figures 6B and 6C.
The proprietor further argued that the feature “locking arm sidewall” as defined in claim 1 was directly and unambiguously derivable from Figures 6B to 6D of the divisional application as originally filed, since the skilled person would recognize the receiving function from the Figures and that this function was the important part of the disclosure.
According to the proprietor, the skilled person would recognize that the receiving function provided a snug fit between the locking arm guard and the sidewall that would not allow any torsion between the wand segments when using the vacuum device. Further according to the proprietor, the skilled person would recognize that the specific structural arrangement of the sidewall was not important.
The board’s decision
Even assuming that the skilled person would derive from Figures 6A to 6D a locking arm guard and a guarding function, Figures 6A to 6D disclose only a much more specific locking arm guard than the one defined in claim 1.
For example, the locking arm guard disclosed in Figures 6B to 6D has “wings” on the sides opposite to the distal end of the locking arm, which the skilled person would consider as guarding a finger from getting clamped/squashed between the release button 678 and the hinge member 641.
Contrary to the argument of the proprietor, the “wings” do therefore have a guarding function such that the skilled person would not derive that the “wings” were not necessary and only a prototype. Assuming that a guarding function is derivable from Figures 6A to 6D, the “wings” of the locking arm guard are structurally and functionally linked to the features of the guard defined in claim 1, since they are an integral part of the guard and provide a guarding function.
The Figures are schematic perspective views of the wand from different angles which show a curved contour of the “wing”. The skilled person, seeing the drawings, would understand that there could have been difficulties in reproducing the exact contour of the “wing” from these different perspectives but they would nevertheless derive directly and unambiguously from all of the Figures (including Figure 6D) a “wing” in the locking arm guard.
The feature “around a distal end of the locking arm” encompasses embodiments in which the alleged guard goes completely around the distal end of the locking arm 677, that is to say on its end, sides and also top, whereas in the figures 6B to 6D, this structure only goes around the end plane and the sides of the locking arm 677.
Whilst the skilled person may know that other specific designs would also provide the same function, as the proprietor argued, the schematic Figures 6B to 6D only directly and unambiguously disclose a much more specific locking arm guard than the one defined in claim 1. The remaining content of the divisional application also does not teach otherwise.
Even assuming that a guarding function is derivable from Figures 6A to 6D, Figures 6A to 6D disclose a much more specific locking arm guard than the one defined in claim 1, which therefore constitutes an unallowable intermediate generalisation of the locking arm guard disclosed in the divisional application as filed.
Even assuming that the term “sidewall” is simply a label and that the skilled person would derive a locking arm sidewall from Figures 6B to 6D, the expression “the locking arm sidewall is configured to receive at least a portion of the locking arm guard when in the extended position” in claim 1 is a functional feature for which Figures 6B to 6D provide no basis.
The term “receiving” does not imply a snug fit or the alleged effect of limiting torsional movement between the locking arm guard and the locking arm sidewall. Whilst the term “receive” encompasses sidewall constructions that extend generally away from the first longitudinal axis and at least partially around the locking cavity, it does not imply a snug fit.
Comments
The present decision reminds us that taking features from drawings is a dangerous game and often ends up in added matter.
It might be true that the sidewalls could be configures to receive at least a portion of the locking arm guard when in the extended position, but this is clearly not what is disclosed in the figures.
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