EP 2 632 311 B1 relates to a beverage machine for different spatial environments.
The connection device 10 has a pivotable bearing element 13 assembled to body 2, a connector 11 for module 3 and an arm 12 extending therebetween.
Brief outline of the case
The OD maintained the patent according to AR8Cop=AR11ap.
Proprietor and opponent appealed.
Claim 1 of Request 1=MR and AR 1′, 2, 2′ and 7 lacked N with respect to D1.
D1 relates to beverage brewing devices having moveable reservoirs.
When dealing with N over D1, the discussion concentrated on the notion of “arm”.
As the substantive issues in ARap12+12` were not discussed, the board remitted for further prosecution.
The proprietor’s point of view
The proprietor disputed only the OD’s finding that D1’s machine disclosed the “arm” claim feature. It argued that considering whether D1 disclosed an arm was an inadmissible application of hindsight.
Moreover, an arm had to be slender, which was not the case with the part of D1 identified by the OD as an arm. Furthermore, even if D1 did disclose an arm it would not be one extending between the pivotable bearing element and the connector as claimed.
It furthermore disagreed that the OD had been right to not follow patent jurisdictions of English speaking countries that found that D1 does not disclose an arm.
The proprietor has argued with reference to D1, figure 6, that the OD was wrong to find that part of the element 48, referred to in D1 as a “back section”, is an arm as claimed.
The proprietor’s argument that an “arm” is implicitly something slender hinges on its Merriam Webster dictionary definition of an arm: a slender part of a structure, machine, or an instrument projecting from a main part, axis, or fulcrum.
The board’s decision
The board was not convinced that the Merriam Webster definition sets out the skilled person’s broadest understanding of the term “arm”.
In this regard, the board referred to the Oxford English dictionary (OED), which is generally accepted as a good reference for the English language.
According to the OED on-line, which, as with the Merriam Webster reference relates to a machine, an arm is: “A projecting or terminal part of a structure, object, or machine; (in later use chiefly) spec, a mechanical part which resembles an arm in shape or size; a part which projects from a machine or piece of technical apparatus”.
The board interpreted the terms of the claim giving them their broadest definition, which is the part of the above OED definition before the first semi-colon. What comes after that is a more limited sub-sense of the broad definition.
Therefore, the proprietor’s argument that the OED definition requires the skilled person to read “arm” in the patent as limited to something that “resembles an arm in shape or size” was moot.
In the present context of a beverage machine, this means that an “arm” is a projecting part of the machine, without limitation of slenderness or narrowness.
The board also agreed with the opponent that, in the present case the skilled person may well consult the description of the patent as its “own dictionary” to understand the meaning of an “arm“, cf. published patent specification, paragraph [0040] and published application, page 11, lines 24 to 27.
This reference forms part of the description of figures 1 to 3. The word arm bears the reference 12, which can only be seen in figure 1. Nothing in the word’s context points to arm 12 being something slender. Indeed its physical appearance is not described. Moreover, whether or not the skilled person might see the width and length dimensions of arm 12 in figure 1 as having any significance in the patent, the board doubted that they would consider it slender. Rather, element 12 appears to be roughly as long as it is wide.
As the skilled person reads the term “arm” in its broadest sense, no requirement of slenderness or narrowness is implied. Therefore, whether the skilled person would consider D1’s “back section 48” to be too wide and short to be slender has no relevance to the present discussion.
The board agreed with the OD that the part of the rigid back section 48 that extends from the pivotable bearing part 26 is a projection therefrom and thus constitutes an “arm“.
Moreover, as best seen in figure 6, this arm extends from the collar portion 26 to a connector (T-shaped connector 44), thus the arm extends between the pivotable bearing element 26 and the connector 44. Whether the skilled person might not consider other projections from a beverage making machine to be arms, such as a flexible power cable, is irrelevant to the present discussion and can be left undecided.
D1’s arm does not need to have its own reference sign in order to qualify as an arm: N is assessed based on what is disclosed rather than how it might be labelled in drawings, and the part of back section 48 which projects from the bearing part directly and unambiguously presents a structural element that meets the broad definition of an arm.
Moreover, nothing in the claim suggests that the claimed arm may not be part of a larger part which comprises the bearing element. On the contrary, according to the claim, the rigid connection device 10 comprises both the pivotable bearing element 13 and the arm, so both make up parts of the connection device.
Eventually the board concluded that claim 1 of the requests at stake was lacking N over D1.
Comments
It is rare that parties haggle with a board about definitions found in dictionaries. The present case is a notable exception.
The case is also interesting as it reminds that a claimed feature is to be given its broadest interpretation.
The case is further interesting as the board refers to the patent being its own dictionary. This normally only the case in national courts, but it was necessarily the case in the present instance.
Overall, it has to be agreed with the board that D1 discloses an arm.
On the procedure
D1=WO 2007/017849 is classified in A47J31/44.
The patent bears also the class A47J31/44, and the search has been carried out in A47J.
It is thus surprising that the document was not retrieved during the IS carried out by the EPO.
Comments
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