The patent relates to a breast tomosynthesis system, whereby the image quality is increased. The whole system allows optimisation of the pictures taken.
Brief outline of the case
The opposition was rejected and the opponent appealed the decision.
The board confirmed the revocation.
The discussion centred on the validity of the priority as the opponent alleged that between the priority and the granted claim, an “intermediate generalisation occurred.
The opponent requested that two questions on the topic of intermediate generalisation be submitted to the EBA.
The board rejected the request for referral.
The opponent’s point of view
The opponent argued that a number of features essential for the breast tomosynthesis system, as defined in claims 1 and 7 as granted, had been inadmissibly omitted from these claims. This amounted to an unallowable intermediate generalisation. In its arguments, the opponent cited the Guidelines H-V.3.2.1.
For the same reason, the priority was not valid and a piece of prior art under Art 54(3) would lead to a lack of IS.
The opponent argued for instance that the anode “mounted on a shaft” and “rotated by a motor” influenced the imaging process.
The opponent further argued that, as a consequence of the omission of the above features, embodiments other than those disclosed in the application as filed fell under the scope of protection.
The bord’s decision
Assessment of an intermediate generalisation
For assessing an intermediate generalisation in an amended claim for compliance with Art 123(2) it has to be established whether, because of this generalisation, the subject-matter of the claim extends beyond what was, be it explicitly or implicitly, directly and unambiguously disclosed to the person skilled in the art using common general knowledge in the application as filed. This is the “gold” standard for assessing any amendment for its compliance with Art 123(2), cf. G 2/10, Reasons 4.3.
If an amended claim comprises only some features of an originally disclosed combination and the features left out of the claim were understood, by the person skilled in the art, to be inextricably linked to the claimed ones, the claim includes subject-matter extending beyond the application as filed. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features. In such a situation the amended claim conveys the technical teaching that the effect can be obtained with the claimed features alone, which is in contrast with and extends beyond the original disclosure that the whole combination of features was needed.
The invention as claimed in independent claims 1 and 7 as granted is directed to a breast tomosynthesis system and a method of acquiring breast tomosynthesis x-ray images with such a system. In the original disclosure, the features of these claims relate specifically to optimising the acquired images by acting on the focal spot.
Features in the description concerned with other aspects of the system, such as the way the x-rays are generated or the way the breast is fixed in place on the detector, could be left out of the claims as they are not relevant to the optimisation, even if they contribute to the general functioning of the tomosynthesis system.
The omission of a scatter grid, of the qualification of “upper and lower” for the compression paddles, of the anode being mounted on a shaft and rotated by a motor, of a filter, of a collimator, of a glass vacuum tube, of the cathode in the form of a heated filament and of the form of the focusing cup, of the application as filed, is not problematic.
The person skilled in the art recognises that the omitted features do not contribute to optimisation of the acquired images by acting on the focal spot.
Some features of the anode are not concerned with optimising the acquired images by acting on the focal spot because they are irrelevant to the control of the position of the anode by the controller in order to act on the focal spot.
The person skilled in the art would have been aware of several alternative mechanical arrangements for such control and is thus not presented with technical information which was not directly and unambiguously derivable from the application as filed.
The alleged lack of clarity of the expression “focusing cup” is not relevant either. The focusing cup is for generating the x-rays, but does not contribute to the optimisation of the acquired images by acting on the focal spot.
Whether the omission of some features, embodiments other than those disclosed in the application as filed fall under the scope of protection is of no relevance. Art 123(2), unlike Art 123(3), is not concerned with scope of protection, but rather with comparison of the information linked to the amendment under scrutiny with the information directly and unambiguously derivable from the application as originally filed.
Validity of the priority
The criteria for assessing the validity of a priority for the subject-matter of a claim as set out in G 2/98, no matter whether or not the claim includes intermediate generalisations, correspond to the “gold” standard for assessing any amendment for its compliance with Ar 123(2).
In view of Art 88(4), it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which the priority is claimed.
In Reasons of G 2/98, Reasons 4, these items, as derived from the expression “in particular”, are simply listed as exemplary parts of the application documents.
Despite the opponent’s arguments, the same considerations apply to assessment of the priority claim as to added subject-matter.
The disclosure of the description and the drawings of the priority document are identical to those of the application as filed. The priority document differs from the application as filed only in that it does not contain any claims. However, the claims of the application as filed are not required in order to provide a basis for claims 1 and 7 as granted. According to G 2/98, the subject-matter of claims 1 and 7 as granted can be found in the priority document and no different technical teaching is to be distinguished.
Comments
As such the decision with respect to added matter and the validity of the priority is not surprising. It simply confirms the established practice.
It is thus not surprising that the request for a referral to the EBA was rejected.
In T 307/22, commented on this blog, it was held that an “intermediate generalization” between the priority document and the later claims can lead to loss of priority or to only a partial priority.
However, it is interesting to note that in T 460/20, commented in this blog, in a different composition, and in T 1473/19, also commented in this blog, and with as well a different composition, the same board argued that in order to assess Art 123(2), Art 69 had to be applied.
In those two cases, the chair and the legal member were the same. In T 460/20 a referral to the application of Art 69 in procedures before the EPO. In T 460/20, the questions for the referral were much too directed to the actual case and it was easy for the board to dismiss said request.
In the present case, T 1762/21.the chair was the same, but a different legal member acted.
Last but not least, the fundamental question of law, whether recourse to the description under Art 69(1) and Art 1 of the Protocol has to be systematic or not, or only when dealing with Art 123(3) or in case of lack of clarity of the claims, does however remain.
https://www.epo.org/en/boards-of-appeal/decisions/t211762eu1
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