EP 3 266 221 B1 relates to a method of mounting at least one hearing device component inside a hearing device shell as well as a hearing device.
The method comprises a step of threading where a fixture means (16) is passed through a small hole (18) drilled or modelled in the side wall of the hearing-device shell (12). The hearing-device component (14) is attached to the “second end” of the fixture means (16) inside the shell.
The “first end” of the fixture means (16), which protrudes to the outside, is manipulated to drag the component (14) into a predetermined position against the inner wall of the shell.
Once in position, the component (14) is fixed to the inner wall using adhesive. Finally, the portion of the fixture means (16) protruding outside is cut off so that the remainder is substantially flush with the outer shell wall.
Brief outline of the procedure
The patent was maintained according to AR3. The opponent was the sole appellant as the proprietor withdrew its appeal. In its decision, the OD acknowledged that the terms “hence” and “while” have different meanings “in the general case”.
The board decided revocation of the patent. Claim 1 as maintained was not compliant with the requirements of Art 123(2). Other requests had the same defect or were not compliant with Art 123(3) or not admitted under Art 13(2) RPBA.
Claim 1 of AR3 is based on original claims 1, 3 and 4.
We will concentrate on the problem of added mater in claim 1 as maintained.
The whole discussion is about the interpretation of “while” vs. “hence“.
The proprietor’s point of view
First, the proprietor argued that the terms “while” and “still” used in feature (g) were redundant because both terms expressed “simultaneity“. The proprietor further argued that by the time the “cutting” in step (g) takes place, the “fixing” in the preceding step must logically be complete, rendering the state described in the “while” clause as per feature (g) an inevitable implication of the preceding steps.
Secondly, the proprietor argued that “hence” could also mean that a result is achieved that was not there before.
Thirdly, the proprietor argued that the phrase introduced by “while” in feature (g) did not express a technical content and, in agreement with G 1/93, Headnote 2, should be ignored for assessing compliance with Art 123(2).
The board’s decision
The board noted that the amendments underlying feature (g), which were apparently proposed by the ED in its communication under R 71(3), introduce subject-matter which extends beyond the content of the application as filed.
The board further noted that “hence” indicates a consequence, whereas “while” indicates simultaneity.
The board held that replacing the term “hence” with the expression “while” does not meet the “gold standard” under Art 123(2).
For the board, when reading the description, the skilled reader would understand that the step of applying the adhesive comprises a sub-step of curing the adhesive/glue.
For the board, the operation of cutting off a portion of the “fixture means” protruding to the outside of the shell occurs after the adhesive has been cured. The curing of the adhesive ensures the fixation of the hearing-device component into a “predetermined position”.
The proprietor’s first argument
The proprietor’s first argument is unconvincing because it relies on a false equivalence between the act of “fixing“, i.e. applying adhesive, and the result of “being fixed“. While applying adhesive is an action, establishing a secure bond, curing, is a process that takes some time.
The application as filed explicitly defined a sequence of curing followed by cutting. Feature (g), however, permits a sequence where the adhesive is applied and the cutting is performed “after applying” but potentially before curing is complete. There is no direct and unambiguous disclosure in the application as filed for the use of the term “while” in feature (g).
The proprietor’s second argument
This argument is not convincing either, because it is contradicted by the word “still” used in the description as filed, which implies that the remaining “fixture means” penetrating through at least a part of the hole in the axial direction thereof was present before the cutting action.
Moreover, this argument does not address the fundamental deficiency: there is no direct and unambiguous disclosure in the application as filed for the use of the term “while” expressing “simultaneity” in feature (g).
The proprietor’s third argument
G 1/93 concerns features that are not disclosed but are added merely to limit the protection conferred by the patent as granted without providing a technical contribution to the subject-matter of the claimed invention.
The “while” clause mentioned in feature (g), however, fails this test right from the outset since it does provide a distinct technical contribution. By replacing the causal “hence“, implied by curing, with the temporal “while“, the amendment changes the technical teaching of the claimed method.
It thus allows the manufacturing process to be accelerated, i.e. cutting before curing, and permits the use of different tooling, e.g. external holding devices.
There is thus a technical contribution to the claimed manufacturing method. The text “while a distal end of the remainder of the fixture means still penetrates” represents a “weaker” limitation replacing the “stronger” limitation as expressed by the phrase “once the adhesive is cured” which underlies the method originally disclosed.
By substituting a strict “autonomous state” with the looser temporal limitation of the “while” clause, the amendment generalises the teaching to cover an “assisted state”. G 1/93 does however not permit using an undisclosed feature to broaden the claimed subject-matter.
Comments
The present case illustrates once more the danger for an applicant/proprietor to accept, without restriction, amendments introduced before grant in the communication under R 71(3).
It is indisputable that “while”, expressing a simultaneity, has a technically different meaning than “hence”, expressing a consequence.
When in the original disclosure, the cutting action is disclosed after curing, the claim cannot be amended to encompass a cutting action occurring before curing.
Once the OD acknowledged that the terms “hence” and “while” have different meanings, it should have concluded that the replacement of “hence” by “while” was infringing Art 123(2), when “consulting” the original description.
On page 7 of the original disclosure one reads: “in the context of the invention the step of applying adhesive also comprises curing said adhesive in dependence on the type of adhesive used”. Curing has to be completed in order to be certain that the component is a its determined position.
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