The patent relates to a vacuum-cleaning apparatus comprising a vacuum cleaner and a filter bag made of non-woven fabric.
Brief outline of the case
The OD decided that the patent as granted as well as AR1 suffered a lack of sufficiency. The patent could however be maintained according to AR2.
The only appellant was the proprietor.
The board confirmed that the patent as granted as well as AR1 suffered a lack of sufficiency. The appeal was thus dismissed.
The reasons for the lack of sufficiency
In claim 1 the performance of the vacuum-cleaning apparatus was to be defined when the filter bag is loaded with DMT8 test dust “analogous to EN 60312”.
Claim 15 as granted read: Apparatus according to one of the preceding claims, wherein the filter bag has a volume in a range of 1.5 l to 8 l measured according to EN 60312.
As it was only a test analogous to a norm/standard, it was thus even more important important to correctly define the norm/standard.
In § [0002] of the patent the standard was defined as follows:
EN 60312: EN 60312 designates the norm in the Version EN 60312:1998 + A1:2000 + A2:2004. This norm will be called E1 in the blog.
At the beginning of § [0003] of the patent it is said that “The measurement of the reduction of the maximum airflow when the dust container is partially full in accordance with section 2.9 is measured at aperture 8 (40 mm)”. This implies that the measurement is carried out according to section 2.9 of standard EN 60312.
The only standard to be found in the description is that defined in § [0002] of the patent, i.e. E1.
The problem is that E1 was withdrawn and a new standard EN 60312 (A1) was published before the priority date of the patent.
The proprietor’s point of view
The proprietor argued that, when studying the description, the skilled person would directly access the relevant sections of paragraph [0003] relating to the air flow and would therefore not even notice that paragraph [0002] above refers to a version other than A1. This would be self-evident for the skilled person.
In the proprietor’s opinion, the skilled person is so familiar with standard EN 60312 that he immediately realises, at the latest when the three termination conditions are mentioned, that he must consult version A1 instead of version E1 stated in the description. This is because it is only in this version that termination conditions can be found at all, namely in section 2.9.2.3. He would therefore immediately recognise not only that there are obvious errors in the information in the patent specification, but also what was actually meant, namely section 2.9.2.3 of A1.
The board’s position
For the board, the technical disclosure must be considered as a whole, and individual sections may not be considered separately from other parts, but must be considered in their overall context.
Thus, in the description, the successive paragraphs [0002] and [0003] are directly related. EN 60312, which is emphasised in bold in paragraph [0002], is just as striking as the keywords in bold with which the sections of paragraph [0003] are titled. A skilled reader will not selectively notice the keywords “airflow” and “airflow drop”, but will overlook the fact that the same column also contains information on the standard to be used as a basis.
Paragraph [0003] specifies which test and measurement methods modified from those of EN 60312 are described in the patent as “analogous to EN 60312” (column 2, lines 10 – 14). For example, the air flow is not determined exactly according to, but “analogous to EN 60321 (section 2.9 of this standard)” with measuring chamber B (see above), column 1, line 55 – column 2, line 1.
In the next sentence of the description, reference is then made to a section 2.9.1.3 of the standard, which does not exist in either E1 or A1 and is supposed to contain three conditions for termination of the tests.
Although the skilled person is certainly generally aware of the standards relevant to his area of expertise, including IEC and DIN standard EN 60312, the board doubted that he has such detailed knowledge of their content that he would immediately think of section 2.9.2.3 on page 21 of A1 when he hears the keyword “termination conditions”.
At best, he would get there by checking a series of hypotheses, but this would require more than a reasonable effort. After first checking whether the version of standard A1 valid at the time of priority could actually be meant, despite the previous precise and unambiguous definition of E1, he finds no chapter 2.9.1.3 here either. Only if he continues to search for the three termination conditions in A1, assuming another error, can he possibly find them in section 2.9.2.3.
For the board, even if the skilled person should get that far, it is not immediately clear to him, how exactly he should proceed when measuring partially loaded filter bags with a volume of less than 2 litres.
Due to the inconsistencies regarding the wording of the standard and its relevant section, as well as the questions still open after reference to section 2.9.2.3 of A1, the brief instruction in paragraph [0003] of the patent to proceed according to section 2.9.1.3 for volumes below 2 litres does not disclose the invention in this respect so clearly and completely that a person skilled in the art can carry it out.
As claim 1 of AR 1 consisted of the combination of claims 1 and 15 as granted, it suffered the same objection.
Comments
The present case shows us clearly when norms/standards are used in patent documents, it is of utmost importance to correctly define the norm/standard, especially with its version/date of issuance.
Norms/standards are not fixed in time, but they can evolve in view of developments of technology. Some become obsolete and new ones are created, or even their content may vary with time. In this respect, they are similar to trademarks.
This is the more so important if it is not the norm/standard which is used as such but measurement of a parameter is done in analogy to a norm/standard.
The proprietor tried to show that there was a manifest error in the description, but he never tried to amend it under R 139. It is abundantly clear why he never filed such a request.
Requesting, under R 139, to add the version/date of issuance of a norm/standard is generally doomed to fail.
The absence in the original disclosure of the version/date of issuance of a norm/standard could thus well be a ground for revocation under Art 100(b).
The problems related to the variability with time of norms/standards is dealt with in the last § of the Guidelines G-IV, 7.6.
https://www.epo.org/de/boards-of-appeal/decisions/t211902du1
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