EP 3 638 378 B1 relates to a hydraulic unit for hydraulic rescue tools, and an equipped rescue tool.
Brief outline of the case
The patent was revoked by the OD as claim 1 as granted and of AR1 lacked IS and AR2 was not admitted. The proprietor appealed.
Claim 1 of AR1 consists of the combination of granted claims 1 and 2.
The board confirmed the lack of IS for claim 1 as granted, but not for AR1. Since other objections had not yet been discussed, the board decided remittal for further prosecution.
The case is interesting as it deals with clarity under G 1/24.
The OD’s position with respect of AR1
According to claim 1 of AR1, the electric motor (17) is formed by a disc motor (19) whose axial length (22) extending in parallel to the longitudinal axis of its output shaft (21) is shorter than its outer diameter (23) [claim 1] and the disc motor (19) is designed as an outer runner electric motor with internal fixed stator (31) and external, rotationally movable rotor (32), wherein the output shaft (21) which is designed on the rotor (32) passes through the stator (31) in the axial direction of the output shaft (21) [claim 2].
The OD did not query sufficiency, but noted a clarity problem, which as such could not be queried in view of G 3/14.
For the OD, claim 1 contained a serious contradiction, as the electric motor is defined by features of two mutually exclusive types of electric motors.
The OD therefore considered that the features that the electric motor is formed by a disc motor, and that the disc motor is designed as an outer runner motor or bell-shaped rotor with an internal, fixed stator and an external, rotatable rotor in claim 1 may not be taken into account when assessing N and IS.
Although the two conflicting designs are relatively flat motors, this is already taken into account in claim 1, according to which the axial length of the electric motor running parallel to the longitudinal axis of its output shaft is shorter than its outer diameter.
The board’s decision
Contrary to the view taken by the OD, unclear features cannot simply be disregarded when assessing N and IS. In the present case, it appears to be based on an arbitrary decision as to which of the contradictory features were taken into account and which were ignored.
Rather, the claim as a whole must be interpreted in the light of the description in accordance with established principles of case law, cf. G 1/24, Headnote and Reasons 10 and 12.
In the constructive interpretation to be applied here, the skilled person understands that a disc-shaped motor is claimed whose axial length is smaller than its diameter, which in principle can include both motors with disc rotors and those with bell-shaped rotors.
Claim 1 of AR1 is limited to such a disc-shaped motor with an external rotor and internal stator, and therefore no longer encompasses a disc motor in the strict sense. This is also the only interpretation that is compatible with and supported by the description.
Therefore, in light of the prior art considered in the contested decision, which only deals with the alternative of a ‘disc rotor’ that is no longer included, the subject matter of claim 1 according to AR 1 is based on an IS.
Comments
In T 144/12, Reasons 3, it was held that Feature F is so unclear that it cannot be taken into account when assessing N and IS.
In T 872/09, Catchword 1, it was held that legal certainty requires that a claimed subject-matter cannot be regarded as novel over the prior art on the basis of an ambiguous feature.
In T 422/06, two features, the ‘intensive mixing’ and the ‘non-detrimental amount’ were already present in the claims as granted, so that they could not be objected under Art 84. The term ‘no detrimental amounts’, cf. Reasons 1.5.1, is not suitable to distinguish the claimed subject-matter from the prior art disclosed in D1. The term ‘intensive mixing’, cf. Reasons 1.5.2, was not suitable to distinguish the claimed method from that disclosed in document D1.
In T 571/05, Reasons 2.2, claim 1 of the MR contains the terms “substantially free of macrovoids”. Prior art D1 explicitly defines ultrafiltration polysulfone polymer membrane having all of the features of Claim 1 but contains no information as to whether its porous support is “substantially free of macrovoids”. The board concluded that the UF membrane disclosed by D1 must possess all of the features of the membranes defined in the claims under appeal, including the “substantial freedom of macrovoids” in the support of the ultrafiltration membranes. Hence the unclear terms “substantial freedom of macrovoids” could not confer N to claim 1.
Although those decisions were taken before issuance of G 1/24, they show that unclear features might not be disregarded when assessing N and IS, but they cannot help conferring N (or IS) over the prior art. Unclear features which cannot be clarified with the help of the description, cannot therefore not confer N (or IS) over the prior art.
A possible conclusion coud be the following: if it not possible to clarify the feature by consulting the description, an unclear feature can confer N (or IS) over the prior art.
In the present case, the skilled person would construe the “disk” motor as a “flat” motor, and hence there was no apparent contradiction as alleged by the OD. Whether the choice of a bell-shaped motor instead of a “disk” motor is inventive remains to be seen.
Inventive step?
Electric motors can have a inside rotor or a bell-shaped rotor, i.e. an outside rotor. This is nothing special for an electrical engineer.
When consulting the description, cf. § [0006], the advantages of using a “disk”=”flat” electric motor are explained in great detail. It allows to save space and devise a compact rescue device. Once for reasons of saving space a “disk”=”flat” electric motor is chosen to be integrated in a device, the choice between the two types of rotors, “disk” or “bell-shaped” rotor, appears rather arbitrary, as there is no other type of electric motor available.
In § [0008] it is stated that in accordance with a practical configuration, the “disc motor”, read “flat motor” is configured as a “bell shaped” rotor motor, no further advantages of using a bell-shaped rotor can be found in the description.
It therefore appears doubtful that claim 1 of AR1 is at all inventive. May be for a mechanical engineer, but certainly not for an electrical engineer.
Comments
1 reply on “T 1588/23-Unclear features cannot be ignored under G 1/24”
Hi Daniel, is there a typo in “[a] possible conclusion coud be the following: if it not possible to clarify the feature by consulting the description, an unclear feature can confer N (or IS) over the prior art?” Cannot confer…?