Brief outline of the procedure
The proprietor appealed the decision of the OD to maintain the patent according to AR 3.
The opponent withdrew its appeal.
The board confirmed the OD’s decision according to which claim 1 as granted lack of N over D1=DE 10 2006 005 765 (First document X,Y in the ISR established by the EPO!).
Eventually the appeal was dismissed and the maintenance as decided by the OD was confirmed.
The claims at stake
Claim 1 as granted as well as of AR 1 and 2 related to a “Coating machine component (1), particularly a bell cup for a rotary atomizer…. a functional element (5, 6; 8) for mechanical stiffening of the coating machine component (1)…… the functional element (5, 6; 8) is a coating (5, 6; 8) which is at least partially applied to the base body”
Claim 1 of AR3 related specifically to a “Bell cup for a rotary atomizer” and all reference to a general “coating machine component” was replaced by a reference to a bell cup for atomizer.
The proprietor’s argumentation
The proprietor’s argumentation was based on a certain narrow understanding of the feature “for mechanical stiffening”, which was only apparent when recourse was made to the description.
The proprietor’s novelty arguments were thus based on the fact that the subject-matter of claim 1 was to be interpreted narrowly and that it was in this narrow interpretation that the difference to the disclosure of D1 arose. The distinctiveness of the disputed feature thus arose from the narrow claim interpretation.
The proprietor argued that the OD’s decision on AR 1 and 2 was based on an incorrect interpretation of the feature “for mechanical stiffening” and referred to its argumentation on the MR in order to avoid repetition.
The board’s position
For the board, the disputed feature “for mechanical stiffening” is a functional feature or indication of purpose which would only be relevant as a distinctive feature in the claimed product compared to the disclosure of D1 if it were supported by corresponding structural features in the claim.
However, corresponding structural features from which a distinctiveness of the subject-matter of the claim over D1 would arise were not to be found in claim 1 as granted.
Contrary to the proprietor, the board therefore understood the wording of claim 1 broadly.
For the board, on a broad understanding of claim 1, no distinguishing feature from the disclosure of D1
By not structurally formulating the feature at issue, the wording of claim 1 is broad, but nevertheless clear.
Thus, the meaning and scope of the disputed feature follows from itself.
Consequently, according to the OD’s findings, there is no reason for the skilled person to use the description to interpret claim 1.
The OD found under points II.4.1.2 and II.5.1.2 of the contested decision that the respective subject-matter of claim 1 according to AR1 and 2 was not new compared to the disclosure of D1.
The board agreed with this finding as in both AR the alleged difference “for mechanical stiffening” was also present.
Request for referral to the EBA
The patent proprietor requested that if the Board did not follow its arguments on claim interpretation, the following question be referred to the Enlarged Board of Appeal:
“Can the claim interpretation in the context of the examination for patentability be based on the rules of interpretation under Art 69 and the associated Protocol on Interpretation?”
Rejection of the request for referral
The Board did not see any basis for referring the legal question formulated by the proprietor to the EBA in view of the lack of relevance of the question referred for a decision in the present case, cf. Case Law of the Board of Appeal, 10th edition 2022, V.B.2.3.3.
For the board, the question directed by the proprietor to a claim interpretation is not relevant for the decision on the merits. Rather, what matters in the present case is how the feature “for mechanical stiffening” is to be understood.
As explained, the disputed feature is a statement of purpose which, without being supported by structural features, does not develop any distinctiveness to the disclosure of D1.
The claimed subject matter is in itself clearly formulated and therefore, contrary to the view of the proprietor, does not require any interpretation.
Thus, the requirement formulated by the patent proprietor “in claim interpretation in the context of the examination for patentability” is not fulfilled, so that the formulated question is not decisive for the dispute.
A referral to the EBA was thus not necessary for the decision of the case within the meaning of Art 112(1)(a) EPC.
The conclusion reached by the board is fully justified.
For a start there is a long line of case law (I purposely avoid speaking about “established” case law) according to which an indication of purpose for a device/apparatus is only limiting as far as it necessarily implies specific technical characteristics or features of the device/apparatus.
In the present case, the feature although broad, was not unclear, but in the absence of specific technical characteristics/features it could rightly not be considered limiting.
There is as well a long line of case law according to which if a claim is clear, there is no recourse on the description, or that Art 69 and its Protocol is for the national judge and not for the EPO (exceptions permitted).
A statement of purpose for a device/apparatus without support by structural features, does not develop any distinctiveness over the PA. This is certainly not a scoop, but it is good to be reminded of it.
The situation is different when the statement of purpose for a device/apparatus necessarily implies technical characteristics or features. I think here of a phishing hook vs, a crane hook as trivial example.
I also refer to the Guidelines F-IV, 4.13.1.
For claims to an action I refer to Guidelines F-IV, 4.13.3. The statement of purpose is in general limiting, but this is not always necessarily the case.