The patent relates to an insert for a wind turbine blade
Brief outline of the case
The patent was maintained in amended form according to AR33. The opponent and the patentee both appealed the decision of the OD.
For the OD cl 1 and 13 of the MR filed in opposition was infringing Art 123(2). The same applied to AR 1-31 and AR32 in opposition.
The MR in appeal corresponded to the MR in opposition, but with claim 13 deleted.
Claim 1 of the MR in opposition and appeal was identical with claim 1 as granted.
The board confirmed the decision of the OD and dismissed both appeals.
The case is interesting in that it makes clear what has to be understood by the terms “made of”.
The meaning of “made of”
The objection of added subject-matter concerns the replacement in the as filed claim 1 of the insert being “made of a head and a body” by the broader expression “comprising a head and a body”.
The proprietor’s position
The proprietor considered the originally used term “made of” not to limit the scope of the insert to these two parts and thus the term “comprising” to have the same non limiting scope as the originally filed.
The board’s position
The Board considered that the skilled person interprets the term “made of” in its usual sense as consisting of or composed of and thus listing the constituent or component parts of a thing, here the blade insert.
This reading which is perfectly clear in itself and does not need to be interpreted in the light of the description. It is supported thereby, as in all embodiments detailed there the insert is shown to have only these two parts, head 2 and body 3. This is so in the embodiments of figures 1 and 2 and also applies to all other embodiments of figures 3, 7-9 which depict an insert made exclusively of these two parts: head and body.
This applies also to paragraph  which may use the more open formulation “comprises” but then states only “two different parts”, namely the head and the body.
For the board, where “comprising” is seen by the proprietor to encompass an insert having other parts such as a neck, this seems to represent an undisclosed embodiment.
Claiming that “made of” is not a closed statement is quite daring. It can be equated with “consisting of” or the like.
It is manifest that the applicant must have realised during examination that the statement was too limiting.
In the present instance, the applicant was a Spanish company and the priorities of two Spanish applications was validly claimed. In both claimed priorities, the insert was qualified as being made of two parts (El inserto formado por dos partos definidos, cabeza 2 … y el cuerpo 3).
Even filed in Spanish, it would thus not have been possible to correct the translation from Spanish to English.
On the granting procedure
The patent should not have been granted in the form it was.
The term “comprising” was already introduced in the claim filed in reply to the Search Opinion (SO)and has never been queried by the ED during prosecution.
The amendment was underlined in the claim with annotations, but the applicant never gave any reasons why claim 1 as amended was not infringing Art 123(2). One can guess why! Never wake up sleeping dogs.
It also shows that had the original application been better proof-read, such a mishap could have been avoided.
Furthermore, the SO was issued on 30.10.2009 and the reply to the SO filed on 04.10.2010. The actual examination officially started on 13.12.2017. Waiting seven years to actually start examination is far from ideal. This might explain a lot, but cannot be seen as an excuse for letting “comprising” slip through, even taking into account the high production pressure in 2017 and the following years.
When a patent is granted with some features infringing Art 123(2), I am inclined to consider that the blame is shared by the applicant or its representative and the ED. The representative is happy to get a patent, but the ED should have spotted the problem.