The patent relates to a lower profile for a balcony railing.
Brief outline of the procedure
The OD decided that the amendments made to the MR and AR 1 and contravened Art 123(2).
The patent was thus revoked by the OD and the proprietor appealed the decision.
The proprietor requested that the decision under appeal be set aside and that the patent be maintained in amended form based on the MR or AR 1 to 5, whereby the MR and AR 2 and 3 correspond, respectively, to the MR and AR 1 and 2 dealt with in the contested decision.
The opponent requested that the appeal be dismissed.
The board held that the omission of the wording “i.e. in the direction of outdoor air” in claim 1 did not result in an unallowable extension of subject-matter compared to the application as originally filed. The MR therefore fulfils the requirements of Art 123(2).
The case was remitted to the OD for further prosecution.
The case is interesting as it deals with the meaning to be given to the expression “i.e.”
Paragraph [0019] reads
[0019] The water control surface 401, or 403, comprises a descending surface 401a, or 403a, receding outwards from the lower profile, i.e. in the direction of outdoor air, i.e. a surface oriented diagonally downwards….,
The meaning of “i.e.”
The opponent’s position
For the opponent, the omission of the feature “i.e. in the direction of outdoor air” was not allowable. This feature was disclosed in paragraph [0019] of the patent application as filed, which was the only basis for feature 1.4c.
Paragraph [0019] disclosed the feature “receding outwards from the lower profile” – which defined a first direction with respect to the lower profile – only in combination with the omitted feature – which defined a second direction with regard to the balcony.
Consequently, the omission of the feature at hand resulted in an unallowable intermediate generalisation.
The opponent proposed during the OP that the abbreviation “i.e.” meant “a more precise and better definition” in light of the context of paragraph [0019].
The proprietor’s position
The interpretation of the feature “receding outwards from the lower profile” by the opponent was artificial and purpose-oriented since the water control surface in the context of paragraph [0019] of the application as filed could not protrude inwards in relation to the lower profile or balcony.
The only interpretation of feature 1.4c which made technical sense in view of the context of claim 1 was that the control water surface receded outwards from the edge of the balcony, thus complying with the definition “in the direction of outdoor air“.
The contested decision was erroneous since the allegedly omitted feature “i.e. in the direction of outdoor air” was actually contained in the subject-matter of claim 1.
The omitted wording was merely an alternative way of defining the same subject-matter already defined in claim 1, as is immediately apparent by the use of the abbreviation “i.e.” in originally filed paragraph [0019].
The board’s position
In the communication of the board to the parties in the preliminary opinion, the board agreed with the arguments brought forward by the opponent in its reply to the statement setting out the grounds of appeal that the meaning of the abbreviation “i.e.” (“id est”) in originally filed paragraph [0019] amounts to “in other words” or other equivalent expressions.
For the surplus, the board considered that, firstly, the opponent has failed to explain why paragraph [0019] of the application as filed provides a context which may change the usual meaning of the abbreviation “i.e.”.
The cited paragraph merely contains the abbreviation and does not further specify its meaning in any direct or indirect way.
This means that – from a purely semantic point of view – the skilled person reading paragraph [0019] learns that “in the direction of outdoor air” is intended as an alternative, explanatory way of expressing the feature “receding outwards from the lower profile” in feature 1.4c of claim 1.
The omission of an alternative wording for describing the same feature already defined in claim 1 does not change or, in particular, extend the technical teaching of the application as filed and, therefore, does not entail an unallowable intermediate generalisation.
Secondly, even if the abbreviation “i.e.” were to be interpreted as proposed by the opponent, this would not lead to the conclusion that the omission of the phrase “i.e. in the direction of outdoor air” resulted in an unallowable intermediate generalisation either.
The board held that , assuming for the sake of argument that the alternative definition of the feature “receding outwards from the lower profile” were better or more precise, the EPC does not contain any provision requiring the use of the best or most precise wording when amending a claim.
It can thus be left open whether the feature “receding outwards from the lower profile” encompasses an embodiment in which the descending surface of the water control surface is represented by a protrusion of the profile that protrudes outwards in relation to the profile but inwards in relation to the balcony on which the profile is mounted.
Consequently, the omission of the wording “i.e. in the direction of outdoor air” in claim 1 does not result in an unallowable extension of subject-matter compared to the application as originally filed. The MR therefore fulfils the requirements of Art 123(2).
Comments
One would have thought that the widely used expression “i.e.” is clear for any skilled person reading a claim with a will to understand and not misunderstand it.
In all three official languages of the EPO “i.e.” has a clear and unambiguous meaning like “d.h.”, “c-à-d” or “for instance”.
It is thus difficult to understand why the deletion of those terms can amount to an intermediate generalisation, but for some opponent, who absolutely wants to bring a patent to fall.
This also applies to an OD which was gullible to the opponent’s view. It is however clear if an OD can decide on an infringement under Art123(2), there is no need to delve into substantial matters like N or IS.
The present case is one of the numerous examples in which a BA has set aside a decision of an OD.
https://www.epo.org/law-practice/case-law-appeals/recent/t201743eu1.html
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