EP 2 682 491 B1 relates to a hot work tool steel having improved toughness, and a process of producing the same.
Brief outline of the case
The OD decided maintenance according to AR1.
The opponent appealed.
The board held that claim 1 as amended infringed Art 123(2) and that the description could not alter this conclusion as the claim was clear in itself.
The patent was revoked.
The problematic feature
The feature “without the Zn component” in the first step of the process of producing the hot work steel, line 11 of claim 1, is not found in claim 6 as originally filed.
The proprietor’s point of view
The insertion of the feature “without the Zn component” did not go beyond the original disclosure. It merely avoided the chemical composition of the steel disclosed in the introductory part of claim 1, lines 5 to 9, having to be repeated in the “first step”, except for Zn, the concentration of which was not restricted in the first process step.
The skilled person would interpret the expression “a first step of obtaining molten steel having a chemical composition of the hot work tool steel without the Zn component” in claim 1 as “a first step of obtaining molten steel having a chemical composition of the hot work tool steel without [the limitation as to] the Zn component“.
The board’s decision
Lines 5 to 9 of claim 1 disclose the composition of the hot work tool steel at the end of the production process, i.e. after the third process step.
It is also undisputed that, due to the expression “the hot work steel” in lines 10 to 11, the “composition” mentioned in step 1 refers to that in lines 5 to 9, albeit with an exception for Zn.
Contrary to the proprietor’s view, the skilled person interprets the expression “a first step of obtaining molten steel having a chemical composition of the hot work tool steel without the Zn” component as meaning that, contrary to the composition in the previous lines, no Zn component is present in the steel during step 1, or at least not in an amount that goes beyond that of the level of an impurity.
In other words, lines 10 to 11 do not require the absence of a limitation/restriction regarding the concentration of the Zn component, but rather the absence of the Zn component per se.
Such an interpretation is also entirely in line with steps 2 and 3, which require Zn to be subsequently added to meet the criteria for the Zn content and the Zn/P ratio in the produced steel.
Paragraph [0018] of the application as originally filed explained that Zn may be present during the first step, but there was a risk of Zn losses during the production process because of the volatility of Zn.
However, even if the skilled person looked at the application as originally filed as a whole and noticed the inconsistency between this interpretation of claim 1 and the teaching of paragraph [0018] of the application as originally filed, they would not revert the meaning of said claim feature to this teaching under the present circumstances as the feature is clear and also in line with the other features of the claim.
The board could not identify a basis for the new feature in the application as originally filed either. In fact, while claim 6 as originally filed implicitly limits the Zn concentration during the first step to the maximum concentration after step 3 (i.e. to 0.025 mass%) plus any losses due to Zn volatilisation during the production process, claim 1 of the current claim limits the Zn concentration during the first step to the level of an inevitable impurity.
However, there is no basis for such an upper limit in the application as originally filed.
Consequently, claim 1 of the claim request as maintained by the opposition division does not meet the requirements of Art 123(2).
The board added that the skilled person would also keep in mind the primacy of the claims, which also applies to Art 123(2) and referred to T 1473/19, Reasons 3.12 and would know that under the present circumstances the description cannot be used to give a different meaning to a newly added claim feature which in itself imparts a clear credible technical teaching to the skilled reader with reference to Case Law of the Boards of Appeal, 10th edition, 2022, II.E.1.3.9 b)).
Comments
It is ironical that the present board referred to the primacy of claims as mentioned in T 1473/19.
In T 1473/19, commented in this blog, the board found that
- Art 69 in conjunction with Article 1 of the Protocol thereto can and should be relied upon when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2), cf. Reasons 3.1-3.15.
In T 1473/19, the board however added that
- Although Art 69(1), second sentence, requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Art 69(1), first sentence, limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings. Cf. Reasons 3.16-3.16.2.
It is thus interesting to see how boards can cherry-pick in previous decisions.
In the present case, the board ignored in T 1473/19 the reference to Art 69 and its necessary application, even when dealing with Art 123(2). In T 1473/19, the reference to the primacy of the claims was mentioned as a kind of damper to the rather strong statement of the application of Art 69 when assessing Art 123(2).
The present decision shows that it was high time that the EBA clarified the utilisation of Art 69 in procedures before the EPO.
Comments
Leave a comment