EP 3 376 185 B1 relates to a combination weighing device comprising a helical screw.
Brief outline of the procedure
The opposition was rejected and the opponent appealed.
The board found that claim 1 as granted and of AR1 lacked N over D1=JP 2016-61690 and its translation. D1 was not mentioned on the ESR. The same applied to claim 1 of AR2-6.
In claim 1 of those requests, the screw (100, 100A) was defined as a non-axial member that is formed as a spiral plate-shaped member= feature f).
In other words the screw is obtained by a metal strip formed into a helical structure.
AR7 was not admitted under Art 13(2+1) RPBA.
The board remitted for further prosecution on the basis of AR8.
The board noted that claim 1 of AR8 is directed to the examples shown in Figures 7A and 7B of the opposed patent, whereby Figures 1 to 6 not showing embodiments of the claimed screw.
In Fig 7A, the screw member 101A has a shape in which the plate-shaped member is twisted around the rotation axis and is fundamentally different from that of Fig. 1-6.
The parties disagreed on the interpretation of the feature “plate-shaped”.
The OD’s definition of “plate-shaped”
The OD held that the term “plate-shaped” defined a structure that is regarded by the skilled person as “thin“, The skilled person would not regard the cross-sectional shape of the screw member shown in Figure 9B and described in paragraphs [0079] and [0080] of D1 as “thin“. D1 did not disclose a spiral “plate-shaped” member.
The opponent’s point of view
For the opponent, the term “plate-shaped” did not by itself imply any upper or lower limits on the aspect ratio between the width and height of the cross section of the spiral member. At most, the term “plate-shaped” provided a distinction over a circular rod.
The specific meaning “thin” was relative, undefined and inconsistent with the description of the opposed patent. This interpretation of the term “plate-shaped” relied upon by the OD was narrower than the broadest technically sensible meaning which the skilled reader would derive from the opposed patent. The upper limit for the width-heigh ratio of the plate-shaped member was, however, undefined and not derivable from the opposed patent. The description of the opposed patent did not define the term “plate-shaped” in structural terms.
since neither claim 1 itself, nor the description of the opposed patent, provided any definition of the term “plate-shaped“, and no justification for excluding a member with a rectangular cross-section as that of Figure 9B of D1 from the term “plate-shaped” existed. The CGK of the skilled person and the ordinary meaning of the term “plate-shaped” also did not provide an unequivocally clear definition of the term “plate” or “plate-shaped” in the present context.
The proprietor’s point of view
The proprietor argued that it was immediately apparent that the interpretation proposed by the opponent, i.e. that “the term spiral plate-shaped member at most meant non-circular“, was not in keeping with the principles established in the case law. For example, a triangular bar would not be “plate-shaped”,
A spiral “plate-shaped” member was a flat sheet that had been formed into a spiral.
The term “plate” was not unclear as the skilled person recognised a clear difference between a rod or bar and a plate. The skilled person would know a plate when they saw one, and they would know that not every rod that was non-circular in cross-section was plate-shaped, just like they would know that a rectangular bar having only a tiny deviation from square was not plate-shaped.
This could be gathered from the claim wording alone, but was not contradicted by the description. The skilled person would know that a plate would normally be understood to be a sheet with a thickness much less than its dimensions in other directions.
In the proprietor’s view the spiral screw of Figure 9B remained a spiral rod and was not a spiral plate. In other words, D1 did not disclose feature f) even if the term “plate-shape” was not clear.
The board’s decision
Neither claim 1 itself, nor the description of the opposed patent, provided any definition of the term “plate-shaped“, and no justification for excluding a member with a rectangular cross-section as that of Figure 9B of D1 from the term “plate-shaped” existed.
The CGK of the skilled person and the ordinary meaning of the term “plate-shaped” also did not provide an unequivocally clear definition of the term “plate” or “plate-shaped” in the present context.
The board agreed with the proprietor that a spiral plate-shaped member is a “flat” sheet that has been formed into a spiral, i.e. that said flat sheet has a rectangular cross-section. The thickness or height of a plate or “flat sheet” is smaller than its width so that a square cross-section is excluded.
However, the opposed patent does not impose any upper or lower limits on the aspect ratio between the width and height of the cross section of the spiral member. Such aspect ratio cannot be derived from the CGK of the skilled person, either.
There is no clear definition in the context of screws with spiral members as to when a rectangular element is “plate-shaped” and when it is not. The board thus has doubts that the skilled person would recognise a “plate-shaped” member when seeing a spiral member, as argued by the proprietor.
For the board, the wording “plate-shaped” encompasses in the present context all elongate rectangular cross-sections, which is the broadest technically sensible meaning understood by a skilled reader.
Figure 9B clearly discloses a linear member with a rectangular cross-section. The skilled person understands from Figure 9B that there is a significant or notable difference between the height and the width of the cross-section of the spiral member 31, although no precise aspect-ratio is derivable from the figures.
According to the board’s interpretation, this is a plate-shaped member so that feature f) is disclosed in D1.
Comment
The present decision shows once more that when interpreting a claim, the broadest technically sensible meaning understood by a skilled reader has to be taken into account.
It is the absence in the original disclosure of a limit of the aspect ratio between the width and height of the cross section of the spiral member which led the board to consider that feature f) was disclosed in D1.
As the figures do not comprise any scale, it could therefore be extrapolated that the claim encompassed any rectangular profile for the screw.
Effect of G 1/25?
Should a patent be granted on the basis of AR8, it will be interesting to see how the description will be adapted, provided G 1/25 confirms the necessity of adapting the description. It is manifest that Fig 1-6 do not correspond to the definition in claim 1 of AR8.
Comments
2 replies on “T 1299/23-On the meaning of “plate shaped” in a helical screw”
Interestingly, the European patent application was originally filed in Japanese.
The wording “spiral plate-shaped member” does not seem to result from a translation issue though, or if it does, that is not addressed in the decision.
Rather, I think this again shows that wording that seems limiting to the drafter and to the inventor, may turn out to be non-limiting and insufficient to distinguish the invention from the prior art. As I sometimes say when reviewing a trainee’s work, if your only argument is “X actually means Y and not Z”, then you are in trouble.
On the other hand, it’s always when you see the cited prior art that you realize how much “better” you could have drafted the patent application.
@ Extraneous Attorney,
The proprietor must have been satisfied with the translation of the application in English, as at no moment he requested a correction from Japanese to English under Art 14(2) and R 7.
With G 1/24, stating in the description something like “X actually means Y and not Z” is indeed looking for trouble. It may invite an objection under Art 84 which might be difficult to overcome without infringing Art 123(2).
An old German proverb says: “in retrospect, everyone is wiser”.
How true is this in the patent business.
One never knows what the prior art search will reveal or how the infringer might try to circumvent the patent.
And yet a too broad claim is easily be under fire.