EP 2 908 723 B1 relates to high-density mapping catheter tips and to map-ablate catheter tips for diagnosing and treating cardiac arrhythmias.
The whole discussion is about the words “extend through” in the following sentence, called feature F in the rest of the blog: “wherein the proximal portion of each of the longitudinally-extending arms (188, 190, 192, 194) extends through the proximal bushing (206)”.
D15 is an excerpt from the Shorter Oxford Dictionary, Oxford University Press, 6th edition 2007, containing, inter alia, the entry “through”.
The same discussion occurred in T 1345/23, which resulted from a divisional application of the present application.
Brief outline of the case
The OD revoked the patent since in its opinion, all requests on file infringed Art 123(2).
The proprietor appealed the revocation.
The board held that there was no infringement of Art 123(2) and remitted to the OD for further prosecution.
The proprietor’s point of view
The expression “extends through” could not only mean that the proximal portion of the arms extended “from one end of the bushing to the other“, i.e. “through the entire bushing“, as alleged by the opponent.
It could also more broadly mean that the proximal portion extended “along within the bushing“, i.e., phrased differently, “part of the way through” or “at least partially through” the bushing.
This second interpretation is broader than the one defended by the opponent and encompassed it.
Whether the proximal portions of the arms extended through the entire bushing and thus terminated proximal to it, or whether they instead terminated within the bushing – and if so, where – was wholly irrelevant in the context of the claim.
It was also a well-established principle in the case law that the terms of a claim should normally be given their broadest technically sensible meaning. The skilled person would therefore interpret said feature in accordance with the second interpretation. This conclusion was also not inconsistent with the patent specification, which did not support one interpretation over the other.
Paragraph [0097] of the application as filed disclosed explicitly that the arms “exit[ed] from the distal end of the proximal bushing“. This implied necessarily that the arms extended part of the way through the bushing, i.e. along within it, otherwise they could not “exit” from it. This was also derivable from the figures, for example from Figure 33.
The opponent’s point of view
The ordinary and broadest technically sensible meaning of “through” was “from one end to the other“. The feature at stake meant that the proximal portion of the arms extended through the entire bushing, i.e. into and out of it. Both linguistic and technical considerations, in particular when considering said feature in the context of claim 1, supported this interpretation.
The examples given in D15, according to which “through” could also mean “along within“, were all associated with the idea of movement. In contrast, claim 1 defines only static features, so this other meaning could not apply to said feature.
The phrase “extends through” does not mean or encompass “extends partially through” or “extends part of the way through” as asserted by the proprietor, but expressly excluded them, just as, for example, the word “dead” expressly excluded “partially dead“.
The board’s decision
The board did not agree with the approach taken in T 1791/16, see catchword and Reasons 11, that all technically reasonable interpretations of an ambiguous claim must be considered in assessing whether the claim contains added subject-matter, and that it is sufficient that one of these interpretations leads to added subject-matter in order to conclude that the claim is not allowable.
Rather, the board considered that it must first be determined how the skilled person skilled would interpret feature F before it can be assessed whether this feature is disclosed in the application as filed and, accordingly, whether it adds subject-matter, see T 367/20, catchword, commented in the present blog.
Furthermore, the terms in a given claim must be interpreted in a uniform, consistent and objective manner, see T 177/22, Reasons 3.1 to 3.3, including for the purposes of assessing e.g. added subject-matter and novelty.
In the present case only the narrower of the two possible – and both technically reasonable – claim interpretations could lead to added subject-matter.
Hence, in the present case the approach suggested in T 1791/16 would also require a deviation from the established practice to interpret a claim in doubt rather more broadly than more narrowly.
The opponent argued that the word “through” in its ordinary and broadest interpretation means “from one end to the other“, so that feature F must be interpreted as requiring the proximal portion of each of the arms to extend through the entire bushing, i.e. into and out of the bushing. This interpretation is referred to hereinafter as interpretation (a).
The proprietor did not dispute – and the board agreed – that the word “through” can have this meaning and that interpretation (a) is technically sensible. The OD’s finding that feature F extends beyond the content of the parent application as filed is based on this interpretation.
However, as submitted by the proprietor, the word “through” can also mean “along within“, as supported, inter alia, by the dictionary definition A.2 given in D15.
Interpreted with this different meaning, feature F requires the proximal portion of each of the arms to extend “along within” the bushing, i.e. along a certain distance within the bushing. This second interpretation is referred to as interpretation (b).
The board agreed with the proprietor that interpretation (b), like interpretation (a), is both linguistically and technically sensible. The opponent’s arguments to the contrary were held unconvincing.
Compared to interpretation (a), interpretation (b) imposes fewer limitations on the proximal portion of the arms, requiring only that the proximal portion extend along a certain distance within the bushing, rather than from one end of the bushing to the other, or into it and out of it.
The proprietor’s proposed alternative wordings “extends part of the way through” or “extends at least partially through” are based on this understanding. At the same time, by leaving open where and how long the proximal portion extends within the bushing, interpretation (b) does not exclude that the proximal portion also extends from one end of the bushing to the other, i.e. through the entire bushing.
Indeed, if the proximal portion extends from one end of the bushing to the other, then of course it extends part of the way through the bushing, i.e. “along within” it. The board therefore agreed with the proprietor that interpretation (b) is broader than and encompasses interpretation (a).
The board concluded that, on the basis of the wording of feature F alone, and in the absence of any context, it cannot be concluded which one of the two aforementioned interpretations takes precedence over the other. One can only arrive at such a conclusion when interpreting feature F in the technical context of claim 1.
Comments
Claim 1 as granted covers embodiments not originally disclosed
I have great sympathy with the opponent’s position and with T 1791/16.
In the claimed invention, the arms can be said to exit generally longitudinally from the distal end of the bushing, i.e. along the longitudinal axis of the mapping catheter. It can indeed be said that the arms extend longitudinally “through the bushing”=version A. This is one way of looking at the claim, which has been favoured by the deciding board.
Another variant which can equally be envisaged by the skilled person is that the arms exit laterally from the bushing, i.e. along an axis perpendicular to the longitudinal axis of the mapping catheter. The arms do as well extend, but laterally, “through the bushing”=version B. This is a second way of looking at the claim, and whatever the deciding board might think or say, is not directly and unambiguously derivable from the original disclosure.
There is no limitation of the number of arms in the claims. All the examples show 4 arms, but the number of arms can be as little as 2 which are then joined at their distal end.
Be it with two or four arms, the arms will as well “extend through the bushing” in order to form an array of mapping electrodes.
In all the disclosed examples the bushing has the same external diameter as that of the catheter. If the distal end of the bushing has a reduced diameter it could perfectly be possible for the arms to “extend through the bushing” and exit laterally but still remain flush with the overall diameter of the catheter.
All those further possibilities are immediately apparent to the skilled person and can be considered from a technical point of view as equivalent to the claimed configuration. They are technically reasonable and sensible and cannot therefore not be dismissed.
In version A, the arms, when applied to cardiac tissue, undergo a flexion. In version B, the arms, when applied to cardiac tissue, undergo a torsion. The skilled person is perfectly able to achieve the same effect on cardiac tissue in versions A and B, by adapting the core material of the arms.
Version B being equivalent to version A, the claim manifestly infringes Art 123(2), since version B is new over version A, even taking into account the “whole content” and the context of the invention, starting with § [093] of the description.
The catchword of T 167/84, says however very clearly: “The “whole contents” of an older document [within the meaning of Art 54 (3)] do not comprise also features which are equivalents according to the document”.
What the board has actually done is to give a more restricted interpretation of the features of the claim, by reading this restriction in the claim. Going back to the catchword of T 681/01, it is established case law that “Art 69 and the protocol thereto cannot be relied on to read into the claim an implicit restrictive feature not suggested by the explicit wording of the claim“.
“Extending through”, be it in the version (a) or the version (b) as envisaged in the decision. the bushing can have two technically sensible interpretations, one disclosed, and the other one not disclosed. The present board appears to have ignored this line of case law.
An apparent autonomous line of case law
It is first interesting to note that in the present case as in T 1473/19, commented in this blog, and T 450/20, also commented in this blog, board 3.2.02 was involved, the chairman and legal member being the same. T 367/20, commented in this blog, also commented in this blog, and T 177/22 were decided by board 3.2.03, but the legal member of 3.2.02 in T 1473/19 and T 450/20, was chairman of said latter board.
We can thus see a continuity in the approach, as the same legal member was each time involved in the decision. Quoting decisions in which one has participated, is not convincing. It looks like a self-prophecy.
A stay of the procedure in view of G 1/24 should have been decided
Point 1 of the Catchword of T 1473/19, reads as follows
“Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC (Reasons 3.1-3.15)”.
As the board took the description to interpret the claim, and thereby used Art 69 and the Protocol to to that effect, the present board should have stayed the proceedings in view of referral G 1/24, which was filed months before the present decision was issued. At least, the legal member should have been aware of the potential conflict with G 1/24. One wonders why the legal member apparently pushed for issuing the present decision before the EBA had given its reply in G 1/24.
It is surprising that none of the parties, or at least the opponent, did require a stay of the proceedings in view of G 1/24. At least question 2 of the referring decision, T 439/22, also commented in this blog, is encompassed by the topic discussed in the present decision. The preesent case seems to correspond to the situation hinted at in Question 2 of G 1/24.
General considerations about Art 69 and the protocol
I can only repeat what I have said before: Art 69(1) deals with the scope of protection and not with validity. The referral limited its questions to Art 52-57, but Art 123(2) and the notion of directly and unambiguously derivable should not be jeopardised.
The decisions of the boards, wanting to systematically use the description in order to interpret the claim, appear to adopt the usual way of doing of the German Federal Court (BGH). Should the EPO necessarily adopt this way of doing?
I have doubts about it, and it is to be hoped that G 1/24 will give a reply which will not throw away the EBA’s long and coherent line of case law relating to “directly and unambiguously derivable” which is abundantly clear.
Comments
7 replies on “T 1886/22 – Art 123(2) and recourse to the description to interpret an unclear feature in a claim”
Some instant reactive thoughts, just to get the ball rolling.
1. Is it not so that, if one puts one’s mind to it, one can always devise an embodiment within the scope of the claim that does not, cannot, “work”? But so what? That is not enough to render the claim void under Art 83 EPC. So it is also, I submit, with Art 123(2) EPC. Just because one can come up with a theory of what the claim means, that is not directly and unambiguously derivable from the description as filed does not prove that the claim is invalid.
2. Looking at the drawings of the opposed patent, what I cannot find is any disclosure at all of what the inside of the “bushing” looks like. All I can see is the outer envelope of the bushing and four arms entering what looks like a mouth of the “bushing”. So, I don’t find any disclosure in the application as filed of any extension at all of any arm even “into” any bushing never mind “through” 10% of it, 80% or 100% of its length. Must I read the description now?
3. The Board declares that it must first be decided what meaning the skilled person would bestow on Feature F before turning to Art 123(2) considerations. Here, if the skilled person relies on the description to illuminate what Feature F means, would that help, or not?
4. As to doing justice between the parties, suppose that this Art 123(2) issue was the only serious threat to validity, that the subject matter was new, useful, enabled and not obvious. I can sympathise with a Board that baulks at revoking the patent for this reason alone.
5. I see that both parties and their respective representatives were English native speakers. The Board not. We are here looking at a patent for mainland Europe. The language of the proceedings is not English as spoken between true blue English native speakers but, rather EFL, or “Globish”. Non-native speakers are better placed, to decide with justice.
6. The EPO must nurture its reputation for common sense and for issuing commonsense decisions. Twenty years ago I had a disagreement with the Chair of this Board when he was Chair of a humble ED. His decision that day left me deeply unhappy. I am more satisfied with his Art 123(2) Decision here than I was on that day 20 years ago. There is no substitute for long years of experience when it comes to dispensing justice between two parties in civil dispute with each other.
Dear Max Drei,
As far as Art 83 is concerned, I agree with you that neither an incorrect interpretation of the claims nor hypothetical examples can be used for disputing sufficiency of the disclosure, see for instance T 2166/17 or T 875/11. The same can in principle apply to Art 123(2).
To be clear, I also consider that the decision of the OD was incorrect. Fig 46 discloses the position of 4 “tubes”, manifestly corresponding to the longitudinally-extending arms, lying within the catheter, one of them comprising a sensor, e.g. 216, and then exiting the bushing as shown in Fig. 33 to form the longitudinally-extending arms. I agree with you that one cannot find any disclosure at all of what the inside of the “bushing” looks like. Common sense would thus guide you to consider that the 4 tubes, manifestly corresponding to the longitudinally-extending arms, “extend through” the bushing.
To me there is no doubt that the longitudinally-extending arms exit the bushing along the longitudinal axis of the catheter. Fig. 46 might not show what is happening within the bushing, but there is little doubt that the longitudinally arms “extend through” the bushing.
I have added Fig 46 to the blog to complement Fig 33.
The equivalent examples I have devised are not the result of an incorrect interpretation of the claim. They result from straightforward considerations without any need to come up with fancy ideas. It is actually by looking at Fig. 46, that I came up with equivalent configurations in which the arms exit the bushing in a direction perpendicular to the longitudinal axis of the catheter.
When looking at the notice of opposition, Art 123(2) was objected to first, under different aspects, but it was not the only apparent serious threat to validity. There were objections on the validity of the priority (not the same invention) as well as lack to IS. It is thus at priori difficult to consider that the subject matter was new, useful, enabled and not obvious. That the OD preferred to deal with Art 123(2) is understandable, as it avoids any discussion on N or IS. It might well be that the patent can be maintained, be it as granted or amended, but this has now to be decided by the OD.
It is manifest that neither the member of the ED nor of the OD were native English speakers, but this not to the detriment of the parties as you point out.
As far as the chair of the board and the chair of the ED you had to deal with, they are two different persons bearing the same family name. The chair of the board is Mr Alvazzi Delfrate and the chair of the ED was Mrs Alvazzi Delfrate. Before being appointed to the bords, Mr Alvazzi Delfrate was examiner in mechanics, but had nothing to do with medical devices. It was Mrs Alvazzi Delfrate who was examiner in medical devices, and to my knowledge, still is. When in charge of medical devices, Mrs Alvazzi Delfrate was one of the lady examiners in my directorate. It just happens that, when the former chair of the board dealing with medical devices retired, Mr Alvazzi Delfrate succeeded him. This explains your confusion.
I do agree with you that he EPO must nurture its reputation for common sense and for issuing commonsense decisions. In the present case the decision of the OD was not correct, but I am the opinion that the parties and the board discussed a problem of Art 123(2) which indeed does not exists. There are however equivalents forms of “extending through” the bushing which cannot be considered directly and unambiguously disclosed in the original application.
Thanks Daniel. I appreciate your dealing so carefully with my questions. Yes, one can understand very well why the representative for the Applicant thought that adding “extending through” could not offend the provisions of Art 123(2) EPC.
I had to smile though. The person who was chair of the ED I appeared before, decades ago gave all the appearance of being male. Later I gathered, rightly or wrongly, that he had advanced to DG 3.
The possibility of both a Mr and a Mrs Alvazzi Delfrate at the EPO never occurred to me. Thanks for putting me straight about that.
Dear Max Drei,
Interesting questions and comments deserve a correct reply, or at least as correct as possible.
My confusion came from the fact that, since you had to do with medical devices, you could have had to do with Mrs A.D rather than with Mr A.D. My apologies for the mishap.
Since the 4 tubes of Fig. 46 end up in the 4 arms of the mapping array of Fig. 33, it is manifest that they have to “extend through” the bushing. Any other interpretation would not be reasonable.
But then we come into a real problem, as “extending through” also covers, as I have tried to show, embodiments which could not be directly and unambiguously derivable from the original application documents.
No apology needed, Daniel. But your invocation of Fig 46 only adds to my delight, that this is a good case for debating the “Bermuda Triangle” relationship between Articles 54, 84 and 123(2) EPC.
When does a “tube” turn into an “arm”. A tube enters one end of a bushing and out the other end comes an “arm”. That each tube is contiguous with a different one of the arms is self-evident to the skilled reader. The device can’t function, otherwise.
Thus, the tube/arm combination extends “through” the bushing, that’s clear. That the arm extends part of the way through and that the tube extends part of the way through is also directly and unambiguously derivable. Trouble is, it’s not clear to me what the feature “arm” in the claim includes and excludes, or what “tube” includes and excludes. As soon as that is made clear, I can then decide whether the claim offends Art 123(2). Trouble is though, making that clear adds subject matter.
Dear Max Drei,
To be honest, I found out the designation “tube”. Fig. 46 is explained in § [062] and only the sensor 216 and its position near the bushing is discussed there. There is no reference sign for the “tubes”. It is manifest to me, for the benefit of the proprietor, that each tube inside the catheter ends up in a respective arm, so we have 4 “tubes” ending as 4 arms.
I can agree that it is not clear what happens inside the bushing and when the “tube” transforms itself in an arm. One could say that each tube transforms itself in an arm when electrodes are applied to the tube. At least the tube/arm must necessarily “extend through” the bushing.
I do however consider that the claim infringes Art 123(2) in that it covers equivalents which have not been disclosed. This could be overcome by specifying that the arms extend through the bushing along the longitudinal axis of the catheter.
Hi, Daniel. I hesitate to continue replying because I suspect that our conversation might not be very interesting for other readers. But your last para made me smile (again).
We don’t know what happens inside the bushing. Perhaps inside it the four strands are spiral-wound or folded, so that they do not simply extend in a straight line between the distal and proximal ends of the bushing. Therefore, adding a statement that they extend “along the longitudinal axis” strikes me as objectionable under Art 123(2). As is so often the case, the more one strives by amendment to cure a problem under Art 84, the deeper the hole one digs under Art 123(2) EPC.
Lastly, I still haven’t how your “equivalent” argument under Art 123(2) sees off my argument under Art 83 EPC (that, if one sets one’s mind to it, one can always conceive an embodiment covered by the claim that does not work, and therefore the conception of such an embodiment is not enough to invalidate the claim under Art 83, EPC).
But never mind. On now to the next thread, eh?