EP 3 212 341 B1 relates to a high-pressure cleaning system and a method for operating a high-pressure cleaning system.
Brief outline of the case
The OD decided maintenance according to AR1. The proprietor appealed.
The proprietor challenged the admissibility of the opposition.
The board decided maintenance over a new MR.
The opponent challenged the amendment of § [103] of the description, both as far as clarity and added matter is concerned.
§ [103] of the patent as granted
[0103] If the detected discharge unit deviates from the discharge unit according to the recommendation 116, the user can be provided with a corresponding information. For example, a note is displayed on the dispensing unit 100. It is also possible for the high-pressure cleaning device 12 and/or the gun 28 to block the dispensing of cleaning fluid until a dispensing unit is connected to the gun 28 or has been selected in accordance with reference 116.
[0103] If the detected discharge unit deviates from the discharge unit according to the recommendation 116, the user can be provided with a corresponding information. For example, a note is displayed on the dispensing unit 100.
The opponent’s point of view
Lack of clarity
The opponent contended that by amending the description according to claim 1 of the MR, an ambiguity as to the understanding of the term “recommendation” in feature 1.7 was generated.
Feature 1.7 reads: “‘that an indication (116) comprising a recommendation (118, 120, 122) of at least one dispensing unit (48, 52, 56, 60, 64, 70) is provided at the dispensing unit (100) by the user’s preference”.
Added matter
The opponent further contended that the amendment made to § [0103] of the description in the main request led to a change in the understanding of claim 1, in particular with regard to the term “recommendation”, which had not been originally disclosed in this way. This constituted an infringement of the requirements of Art 123(2).
The board’s decision
On the alleged lack of clarity
The common usage of the term “recommendation” basically implies freedom of choice for the recipient of this recommendation, in this case the user. In this respect, the term is not vague, but clear in itself and unambiguous with regard to its meaning.
For this reason alone, there is no need to interpret the term against the background of the description, which, moreover, according to the board’s understanding, did not contradict this understanding either before or after the amendment in the MR.
On the other hand, it is not clear what the opponent understands by the term “forced recommendation”.
In any case, the term “recommendation” does not imply that such a recommendation is implemented without further intervention by the user, i.e. by force and without any recognisable possibility of corrective intervention, as is the case with an automatically forced setting.
As a result, the amendment to paragraph [0103] of the description according to the MR has no effect on the subject-matter of claim 1 according to said request.
On the added matter
However, in view of the reasons given with respect to an alleged lack of clarity, the amendment has no effect on the understanding of the term “recommendation” and consequently also not on the subject-matter of claim 1, which itself remained unchanged in the MR compared to the granted version.
Accordingly, the requirements of Art 123(2) do not prejudice maintenance according to the MR.
Comments
Art 84 primarily relates to the claims which have to be clear on their own. It only relates indirectly to the description in requesting the claims to be supported by the latter.
The present decision shows once more that, when a claimed feature is clear on its own, there is no recourse needed to the description.
In the present case, the interpretation which could be derived from the description did not contradict the one the skilled person could infer from the description.
I would go one step further, and state, that even in case of a contradiction or different meaning imparted in the description, what matters is the technical teaching the skilled person derives directly and unambiguously from the claimed feature.
I am thinking here at the example of a “ventilator“, used in recent discussions. The claim merely defines a ventilator, but according to the description, the same ventilator is blowing hot air. Another example I also used in recent discussions, relates to a “perforated layer” in the claim, whereas the description gives specific indications about the size of the perforations.
If the “ventilator” features in the original claim, any ventilator will be N destroying. If the ventilator results from a limitation, an objection under Art 123(2) will be raised.
If the “perforated layer” features in the original claim, any perforated layer, even with one perforation of any size, will be N destroying. If the “perforated layer” results from a limitation, an objection under Art 123(2) will be raised.
Any amendment of the description should be checked for conformity with Art 123(2), as this Art is not limited to the claims, but includes the description and the drawings. Adapting the description to support the claim, does not, a priori, result in added matter. I am still waiting to see one example in which the adaptation of the description to the claims has resulted in the revocation of a granted patent for added matter.
I might further remind, that in my opinion, Art 69(1) relates to the scope of protection, and consists of two sentences, which have to be read concurrently and not in isolation. At least, it is a reading which is in accordance with Art 31 VCLT.
Comments
2 replies on “T 179/23 – No recourse to the description in order to interpret a claim”
Daniel, thanks. Before I read the entire EPO file, perhaps you could comment on the question whether the post-grant amendment to para 103 of the description made necessary by the opposition, mandatory for the TBA to allow, or necessary for maintenance of the patent.
Regardless of all that though, does in fact the description approved by the TBA include the as-granted para 103 or the post-grant amended 103? Silly question, I realise, but I don’t immediately see where the answer is.
Dear Max Drei,
The amendment of § [103] was apparently made by the proprietor on its own volition. The board simply acquiesced that Art 84 was not touched.
The description approved by the TBA includes only the post-grant amended § [103]. In its submission, the proprietor explained that the amended § [103], replaces the granted § [103]. The difference lies in the deletion of the second part of the granted § [103].