EP 3 365 744 B1 relates to a remote controlled demolition robot.
Brief outline of the case
The patent was maintained according to AR2 and the opponent appealed.
The opponent argued that claim 1 as maintained was not in conformity with Art 123(2) due to the omission of the “outriggers” (15).
The board agreed with the opponent. AR1+4 suffered the same drawback. AR 2+5 were not admitted.
AR3 was lacking IS over D3=US 8,380,402, classified as Y in the SESR.
The patent was revoked.
The opponent’s point of view
By applying the so-called “three-point essentiality test” the opponent concluded that the removal of the terms “top control switch” and “outriggers” from original claim 1 violated Art 123(2).
The proprietor’s point of view
The proprietor submitted the following arguments:
(a) The opponent had misconstrued the “three-point essentiality test”, which was no longer considered appropriate by the EPO.
(b) “Outriggers” were a common and important feature of “demolition robots” of the type illustrated in Figure 1 of the opposed patent. However, it was not essential that they were controlled simultaneously with the tower, drive means, arm members and hydraulic breaker or hammer.
Furthermore, the skilled person derived from their common general knowledge that “outriggers” were not a necessary feature of a “remote-controlled demolition robot”, otherwise they could not recognise such a “robot” in document D3.
In addition, “hydraulic hammers” were commonly deployed with excavators, which however did not have any “outriggers”. The claimed subject-matter did not provide new technical information in view of Figures 2A and 2B. The “outriggers” would only need to be there if the “top control switch” was there. The “top control switches” were however optional.
The board’s decision
The board noted that the OD and the opponent have applied the criteria as set out in the EPO Guidelines H-V.3.1, items (i) to (iii). But the decisive standard to be applied is in fact the “gold standard” according to G 2/10.
The board held that the omission of the “outriggers” and their control inadmissibly adds subject-matter to claim 1.
For the board, it is immaterial whether or not the “outriggers” are controlled simultaneously with the other elements of the claimed “robot”.
In the case at hand, the “outriggers” are not disclosed as optional but in fact in functional relation to the remaining features of the “robot”. In other words, the originally disclosed “demolition robot” uses the “outriggers” – together with at least the “drive means”, the “arm member(s)”, the “tower” and the “body” – to perform its functions.
Accordingly, also the passage at page 14, lines 26 to 30 of the original description, invoked by the respondent, does not disclose the “outriggers” as being optional but merely explain an optional function of the “top control switches”.
The CGK is frequently invoked to justify that an implicit feature is “directly and unambiguously derivable” from the original disclosure.
The board referred as example to an electric appliance connected to the mains in a common household must have an electric plug. By the same token, for an omission to be “directly and unambiguously derivable, using common general knowledge”, there can be no room for speculation about the circumstances that lead to the omission.
The board did not dispute that demolition machinery without “outriggers were part of the CGK. However, in the case at hand, all the embodiments presented in the application as filed feature a “demolition robot” with “outriggers”.
It might well be that, confronted with the appropriate task, the skilled person would modify the original “demolition robot” and omit the “outriggers”, using their CGK, without the involvement of an IS.
But this is not the same as being “directly and unambiguously derivable” from the application as filed. Finally, the lack of antecedent for “the outriggers” introduces ambiguity in original claim 1. But such ambiguity cannot be used to prove that the “outriggers” and their control need not be part of the “remote-controlled demolition robot”.
Original claim 1 further stresses that the “outriggers” indeed form part of the claimed subject-matter and nothing in the description as originally filed indicates that they were merely optional.
Comments
The outriggers are part of the robot
Paragraph [0013] of the patent states the following:
“The robot further comprises outriggers 15 that may be extended individually (or collectively) to stabilize the robot 10.”
This passage is to be found word for word on page 5, lines 3-5 of the original disclosure.
The board referred to page 14, lines 26 to 30 of the original description which reads:
“Alternatively, the top switches may be used to control both the outriggers and a tool through a different functional allocation of the top switch actuations”.
Paragraph [0013] does not define the outriggers as being merely optional. Only the control button were considered optional. If the outriggers are not optional, the control button for the outriggers cannot be optional.
The passage on page 5, lines 3-5 and the reference to the outriggers in original claim 1 are much more pungent than page 14, lines 26 to 30 of the original description.
IS has nothing to do with added-matter
The board is right when it considers that omitting the outriggers is possible without requiring IS, but this different from “directly and unambiguously derivable”.
For instance, it might be obvious for the skilled person to add A and B, but if the combination of A and B has not been originally disclosed, Art 123(2) is infringed.
Claim 1 as granted was also violating Art 123(2)
If claim 1 of AR2, according to which the omission of the outriggers violated Art 123(2), this is certainly the case of claim 1 as granted in which the outriggers are also omitted. There was thus no need whatsoever to resort to the essentiality test as the violation of Art 123(2) was manifest.
It is also manifest that the ED has not “consulted” the description as paragraph [0013] is abundantly clear. As the file predates G 1/24, this should happen in the future.
The presence of the outriggers in original claim 1 was another sign for the ED and the OD that added matter was likely.
In view of the outcome of the appeal, the present patent should never have been granted.
Essentiality test-nowadays three point test
Criterion (i) was manifestly not fulfilled as the removed feature was explained as essential in the originally filed disclosure, cf. “comprising outriggers”. In the present case, there was actually no need to refer to the “essentiality test.
The boards disapprove the “essentiality test/three-point test”, but, whether they like it or not, correctly applied, it leads to the same result than the “gold standard”, i.e. showing whether there is a new technical information added or not to the original disclosure. The essentiality test is no more than a tool like the problem-solution approach.
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