EP 3 446 216 A1 relates to a real-time environment and programmable logic controller and has been published as WO 2017/182467 A1.
The aim of the application is to enable the integration of additional functions with an indefinite function runtime into the real-time environment.
Prior art D5 discloses a real-time environment in which tasks (‘co-operative tasks’) are executed with a predefined task runtime. An additional function is executed in this real-time environment (‘pre-emptive task’). Its function runtime is within the specified task runtime.
Brief outline of the case
The MR was refused for added matter, AR1 for lack of N and AR2 for lack of IS.
The applicant appealed the ED’s decision
The appeal was eventually dismissed.
The MR was deemed lacking N over D5, AR1a was not admitted under Art 13(2) RPBA, and AR1 was lacking IS over D5.
The case is interesting as it is apparently the first decision in which G 1/24 is applied.
We will only look at the MR.
The applicant’s point of view
During the OP, the applicant referred to G 1/24 with regard to the disputed interpretations of the terms ‘task’, ‘additional function’, ‘indefinite functional duration’ and ‘wrapper function’.
According to the applicant, no additional function was disclosed in D5. Only tasks are carried out, but no additional functions. The additional functions according to the application are complex and therefore have an indefinite function duration. On the other hand, pre-emptive tasks have a fixed runtime.
At the OP, the applicant emphasised that the pre-emptive tasks would only exceed their running time in exceptional cases, for example in error situations, whereas the running time of the additional functions was basically indefinite.
During the OP, the applicant also emphasised that claim 1 makes a distinction between ‘tasks’ and ‘additional functions’. It was clear from the description that ‘tasks’ control actuators and sensors, whereas, for example, vision systems or condition monitoring would constitute ‘additional functions’.
The board’s decision
The board did not follow the applicant in its distinction between pre-emptive tasks and additional functions.
In particular, the board was of the opinion that the claimed “additional function” cannot by its nature be distinguished from a “task” – at least not with sufficient precision.
In both cases, these are programs that are intended to have (as far as possible) predictable runtime behaviour in a real-time environment. The fact that the “additional function” is labelled as “additional” and thus differentiated from the other claimed “task” is already fulfilled by the fact that the additional function is required to be terminated if the runtime is exceeded, but not by the tasks. This does not result in a substantive distinction between task and additional function.
Furthermore, it is not clear from the terms – even in the light of the description – how complex the “additional function” is in contrast to the “task” and how likely it is that the specified task runtime will be exceeded.
For one thing, the task runtime itself is not defined. Secondly, the application mentions not only vision or machine learning as examples of additional functions, but also condition monitoring, which carries out an “assessment of the condition of the production plant by measuring and analysing machine parameters”.
The board’s interpretation of G 1/24
For the board, G 1/24 does not define what it means in individual cases to consult the description and the drawings, but refers in this respect to the case law of the boards, cf. G 1/24, Reasons 1.
G 1/24 does not even expressly require that the definition of a term from the description must necessarily be used for the interpretation of a claim. The relevant question 3 was not answered as inadmissible and it follows from the answer to question 2 that such a definition cannot be disregarded, since it must be taken into account as part of the description and the drawings.
In the present case, the board referred to the description and drawings in accordance with G 1/24 and explained why, in its view, this reference would not justify a narrower interpretation of the claim wording.
In particular, it took into account that the application does not provide a definition (‘or similar information’) for the disputed terms, regardless of whether or under what circumstances such a definition would then limit the claimed subject-matter.
The present application only gives examples of additional functions, but it cannot be deduced from this how ‘tasks’ and ‘additional functions’ would differ in concrete and fundamental terms from those of D5.
Therefore claim 1 of the MR lacked N.
Comments
The present decision actually illustrates the difficulty in applying G 1/24.
As the board rightly noted that G 1/24 does not define what it means to “consult” the description and the drawings,
In the present case, the board came to the conclusion that the description could not allow a narrower interpretation of the claim in view of the description as wished by the applicant.
This is certainly due to the fact that the terms in the description were not precise enough in order to allow a distinction to be made between the prior art and the claimed features.
This might impose in the future that applications are drafted with more care as any imprecision in the wording used in the description could be interpreted to the disadvantage of the applicant. This could for instance be the case if, both the claimed features and their possible interpretation in the light of the description, are “encompassed” in the features disclosed in the prior art.
Comments
6 replies on “T 1561/23 – G 1/24 has a first strike”
First impression I have is that G1/24 is having exactly the desired effect, namely to bestow on the Technical Boards enough “wiggle room” to do what they see as justice.
This was an ex Parte case, in which the ED and the TBA heard only the Applicant’s side of the story and had to decide whether to grant or refuse patent protection. I look forward to the first case where the Board has to do justice between i) the owner of a claim to novel and non-obvious subject matter and ii) the public as represented by the opponent. The “gathered” referral case might be one example.
Dear Max Drei,
When I read “wiggle room”, alarm bells start running.
For third parties, the wiggle room should be as small as possible, with due care given to what the applicant actually deserves, or is justified by its contribution to the art. Or are you in favour of nurturing Angora cats?
This is why I am of the opinion that, following G 1/24, adapting the description to the claim will become even more important.
I am aware that you are against it, but it appears necessary to me in order to avoid any limiting or generalising interpretation of the claims on the basis of the description.
I am as well curious to see what the referring board will decide.
Daniel the wiggle room that I had in mind is that given by the protocol to art 69. The court has to wiggle between Scylla and Charybdis, between maximum legal certainty and maximum fairness to the inventor. Wiggle room is not a bug. It’s a feature. So please do not be alarmed. Those who deliberately draft with ambiguity are going to be punished, somehow rather than rewarded.
Dear Max Drei,
When it comes to the Protocol on Art 69, it is clear that a wiggle room is an absolute necessity, be it only in view Art 2 on equivalents, although those have not been defined at the Diplomatic Conference in 2000. Art 1 represents a good compromise. Just remember Epilady/Improver and the difference in interpretation on both sides of The Channel…..
However, no wiggle room should be given to the proprietor of the patent with its “gathered” feature in the claim. No wiggle room has been given to Agfa in the Agfa/Gucci case before the LD Hamburg of the UPC, and it was right so.
Applicants and proprietors should not be given the possibility of giving a different meaning in the description to claimed features which might even be clear as such.
Deliberately drafting with ambiguity should be nipped in the bud, i.e. before grant. This means that EDs will have to read the description and not simply skip it because Art 84 is not a ground of opposition. The two prongs of Art 84, clarity and support should, again, become full part of the examination at the EPO. This point has been neglected for too long.
Once gain, Daniel, I have failed to make myself 100% clear. Talking with you is good practice for me, to make sure my words are as clear as possible.
The wiggle room” I have in mind is the freedom a Board needs, in the matter of bestowing a meaning on the claim, to get to a result that is “fair” and meets the demands of justice. I did not intend to assert that the patent owner should be given any wiggle room. For me, that is a different issue. To see where that practice leads we need only to ponder patent litigation in the USA. Endless analysis of the content of any relevant patent office prosecution file, for example. Lots of lovely attorney hours to bill out to the client, of course.
G1/24 could have given the TBA’s such a tight prescriptive answer to the questions put. I am an enthusiast for the tight prescriptive methodology of the EPO’s problem-solution approach because it clamps down tightly the flow of argument between the parties. But here, G1/24, the Boards need the opposite, namely, freedom to decide each case on its particular merits. As I said, those who chose deliberately to draft with ambiguity are, going forward, destined to get caned for their impertinence! I think we agree on that.
Dear Max Drei,
I have no hesitation to agree with you that wilfully bringing in the description statements introducing any ambiguity about the meaning of claim should be sanctioned. I would not call such a behaviour impertinent, but at least fundamentally incorrect.
It should not be allowed to use the description for giving a claimed feature a different meaning. This is why I am not at all in favour of the description being held as a dictionary for the claim.
That an applicant/proprietor should get a result that is “fair” and meets the demands of justice, applies not only at the level of the boards, but also for first instance divisions. After all, G 1/24 is not only addressed at the boards, but also to first instance divisions. It will be interesting to see how G 1/24 will be integrated in the next version of the Guidelines. .