EP 3 086 087 B1 relates to a photo thermal measuring device and a method for photo thermal measuring.
Brief outline of the case
Claim 1 as granted lacked N over D3=WO 2011/137547, mentioned in ESR as being of category X.
The OD decided maintenance according to AR1.
Both proprietor and opponent appealed.
In a communication under Art 15(1) RPBA, the board provisionally explained that the patent might be revoked. The proprietor then withdrew his appeal.
As the proprietor’s MR was maintenance as granted it was not admissible, due to the prohibition of the reformatio in peius.
All AR on file, i.e. also as maintained, were lacking N over D23=EP 2 975 360, not mentioned on the ESR, but PA under Art 54(3). The patent was thus revoked.
The case is interesting as it is one of the early ones in which G 1/24 came to application.
At stake was the term “Anregungsfläche“=“excitation surface”. In all valid claims on file, this surface measures 8 mm2 to 200 mm2.
The board’s decision
The skilled person would understand the term “excitation surface” to mean the cross-sectional area of the excitation light on the sample – regardless of the distance between the sample and the photothermal device. The lens system for focussing provided in in the claim produces an essentially conical light distribution. Its cross-sectional area varies with the distance to the measuring head, is minimal at the focus and has no fixed upper limit.
This interpretation is supported by the proprietor itself: on page 24 of its grounds of appeal, it states in the first paragraph that the excitation surface is co-determined by the distance between the measuring head and the sample. In the penultimate paragraph of the same page, it also emphasises that the excitation area is “massively dependent on the distance” due to the divergent beam path in Figure 6 of citation D3. The same applies to the measuring device defined in the claim.
However, this term, which is clear to the skilled person, is defined in a restrictive manner in paragraph [0008] of the description of the patent: “The term “excitation surface” means the cross-sectional area of the excitation light in the focus.”
The reference to G 1/24
The board noted that, in its decision G 1/24, the EBA clarified that the description is to be used when interpreting patent claims, but otherwise referred to the principles developed by case law.
One of these principles is that a restrictive definition of a term in the description may not be used to restrict the subject-matter of the claim, which is otherwise clearly broader for the skilled person, cf. Case Law of the Boards of Appeal, 10th edition, July 2022 – II.A.6.3.4.
This principle remains valid even after decision G 1/24, as the EBA emphasised that interpretation starts with and is based on the patent claims.
In the present case, the proprietor has created an ambiguity by the inconsistent use of the term “excitation surface” – on the one hand in the claim without limitation, on the other hand in the description with a limitation that is not customary in the art.
The board saw no objective reason why a proprietor should be permitted to deviate from the established technical terminology without recognisable justification when formulating the subject-matter from the use of which third parties are to be excluded and to refer to this only in the description.
An unrestricted right to do so would undermine legal certainty. There may be justifiable objective reasons in individual cases. In the present case, however, such a reason was not apparent to the board.
As a result, a look at the description merely shows that there is a conceptual deviation from the terminology customary in the field, which is not reflected in the claim.
Resolving this ambiguity at the expense of the person who created it without objective necessity is in line with the principle of legal certainty and the primacy of the claims as confirmed in decision G 1/24.
Therefore, the term “excitation surface” in the claim is to be understood in the sense of its customary technical meaning as “cross-sectional area of the excitation light independent of the distance” and not restrictedly as “cross-sectional area of the excitation light in the focus“.
With this interpretation of claim 1, the photothermal measuring device according to claim 1 of AR1, and of all further AR, lacked N over D23.
Comments
The position of the board is to be supported, be it only due to the fact that it confirms the existing case law.
In the present case, the claim was broader than the definition of the feature given in the description. This did not help the proprietor to avoid an objection of lack of N.
The inverse situation might also occur, i.e. a restrictive term in the claim cannot be given in the description a broader meaning.
A direct consequence is that in the future, EDs will have to check whether the meaning of a claimed feature is in accordance with the meaning given to the same feature in the description. If this is not the case, there is an ambiguity in the claim.
Such an ambiguity cannot be resolved to the benefit of the proprietor. This is right so.
One could also come to the conclusion that the claim is not supported by the description.
The present decision illustrates the necessity that, before grant, claims and description are aligned with each other.
On the procedure
It is somehow surprising that the patent was granted in the form it was.
For a start, the ED did not check before grant whether claims and description were aligned with each other.
Lack of N was with respect of a document classified as X in the ESR. The board confirmed the position of the ED.
That the ED did not find a document PA under Art 54(3) is as well surprising.
However, the blame does not only lie with the ED.
Comments
13 replies on “T 1999/23-Application of G1/24-Undue limitation of a claimed feature in the description”
The board says:
“5.6 In its decision G 1/24, the Enlarged Board of Appeal made it clear that the description is to be used when interpreting claims, but otherwise referred to the principles developed by case law.
One of these principles is that a restrictive definition of the term in the description may not be used to limit the subject-matter of the claim, which is otherwise clearly broader for the skilled person (see Case Law of the Boards of Appeal, 10th edition, July 2022 – “RdBK” – II.A.6.3.4).
5.7 This principle remains valid even after decision G 1/24, since the Enlarged Board of Appeal has emphasised that interpretation begins with and is based on the claims.”
But this is not one of the principles that the EBA identified or endorsed:
“12. From this case law the following principles of claim interpretation can be extracted:
1) The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
2) The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.”
A disingenuous decision from the board of appeal, which is clearly doing its best to ignore the EBA. Not surprising.
@ Anonymous 24 Jul. 2025
What the EBA said in Reasons 12 of G 1/24 corresponds to the Headnote.
In the present case, the board consulted the description when interpreting the claim.
It is therefore not acceptable that you claim that the board’s decision is disingenuous, and that the board was doing its best to ignore the EBA. The contrary is true and your conclusion is plainly derogatory towards the board. It would actually deserve to be deleted.
The board noted that the proprietor has created an ambiguity by the inconsistent use of the term “excitation surface” – on the one hand in the claim, without limitation, and on the other hand in the description, with a limitation that is not customary in the art.
In view of the broad interpretation given to the term “excitation surface”, and not the limited interpretation given in the description, the board concluded that all the requests validly on file were lacking N. The board was right in doing so.
What else could the board have done in applying G 1/24? Whether this ambiguity falls under Art 84, clarity, or under Art 84, support, does not have to decided. There is an ambiguity.
The board simply reminded of a long line of case law according to which, a restrictive definition of a term in the description may not be used to restrict the subject-matter of the claim, which is otherwise clearly broader for the skilled person,
To my knowledge, G 1/24 has not rendered this case law obsolete, even if in its decision the EBA referred to a different case law.
G 1/24 does certainly not say that the description can be the dictionary of claimed features.
The decision shows manifestly that the description cannot be used as a dictionary allowing a limited interpretation to the term “excitation surface” in claim in view of the description.
If the proprietor wanted the term “excitation surface” to receive a more limited interpretation, the latter should have introduced said limitation in the claim. As the proprietor was clearly not interested to bring this limitation in the claim; he must thus bear the consequences. In other words, you cannot have your cake and eat it.
You most probably dislike the fact that the board did not accept that a claimed feature can be given a different meaning in the description, but this is not a reason to have such a derogatory attitude.
I personally wish more decisions of this kind to be taken by the boards following G 1/24.
What has happened here with a limited interpretation in the description applies mutatis mutandis to a broader definition of a claimed feature in the description. Both ways of hiding interpretations of claimed features in the description are not acceptable.
The board was disingenuous in stating “the Enlarged Board of Appeal … referred to the principles developed by case law.
One of these principles is that a restrictive definition of the term in the description may not be used to limit the subject-matter of the claim”
The board attempts to present this as a principle that was endorsed by the enlarged board when that is not what happened. The enlarged board identified two specific themes in the case law that they approved of and no more. The board should have been more precise.
@ Anonymous
The board has been extremely precise and has done what was required to be done by the EBA, i.e. to consult the description. The EBA has referred to principles developed by case law. The board did exactly the same.
You manifestly dislike the decision and you would have preferred if the board had read in the claim the limitation intended by the proprietor in the description. The board was right not to accept it.
If G 1/24 brings the ED to read the description before issuing a communication under R 71(3), and check that claims and description are aligned with each other, a lot will have been gained for third parties.
It is not acceptable that an applicant/proprietor tries to hide, directly or indirectly, a different interpretation of claimed features in the description. This hypocrisy of some applicants/proprietors and their representatives has to end. I actually call this cheating.
When an applicant/proprietor brings in an independent claim a feature which can be seen as limiting, but in the description blows up in the description the interpretation as something much broader, it is not acting correctly vis-à-vis of third parties. Angora cats are not to be nurtured.
Just look at what the proprietor tried to do in the Agfa/Gucci case, commented in this blog. This is not acceptable, and the same applies when a the subject-matter of a dependent claim is added to an independent claim. There is then nothing optional about this subject-matter to be left in the description.
Your qualification of the attitude of the board, disingenuous, is still derogatory.
The last sentence in your comment has been deleted. I am not writing a blog to be insulted in an anonymous comment!
Why are you then reading and commenting on my blog?
You might disagree with my views and we can discuss the matter, but I expect any commenter to stay polite towards myself.
Can somebody give me their views on my assessment of the EBA’s advice to Divisions and Boards, namely, that when determining what the claim means one must always first read the description and then, later, when advancing the reasoning leading to the decision what the claim means, discuss what is the relevant content of the description.
This strikes me as sound advice. The specification is a single document. Before one reads the claims, one should always first read the description. And, when there is a contradiction between the description and claims, one is bound to discuss any such contradiction when writing the decision that places a meaning on the claims.
In other words, it is not good enough, to take a Nelsonian telescope to one’s blind eye, approach (I see no ships) and simply not mention the contradiction. Rather, one nods to the contradiction, but then decrees what, when all’s said and done, the real meaning of the claim is.
Is there any approach more sensible than this, any approach that is better for the ongoing health of the developing case law of the EPO?
Dear Max Drei,
I have recently been heavily criticised on IPKat when I explained that, before starting any search and/or examination, I consider it an absolute necessity to first read the description, before looking at the claims. What matters are the claims and the description could even be resumed to a repetition of the claim! I was not the only one at the EPO considering that reading the description is a necessity.
However, I know for a fact that this position was not shared in all technical areas in the office. Strangely enough, in those technical areas, the production/productivity was always way higher than in other areas. In those high productive areas, lots of Nelsonian telescopes were, and most probably are still in use.
When a search report only mentions A documents, and the opponent comes with highly relevant prior art, which should have been found during the search, a Nelsonian telescope must have been used during the search. This is what I call the Super-BEST-effect: don’t find any relevant prior art, so it leads to a direct grant. I heard this a long time ago from a member of the pre-BEST “fire brigade” having been send to Berlin to help out with searches.
I have also heard with my own ears that Art 84 not being a ground for opposition, it can be ignored, and therefore there is also no need to read the description. Just read the claims, make something out of them, and then go on. If the first examiner decides grant, you should not interfere and simply sign.
I can thus only agree with what you say. If there is a contradiction between claims and the description, this contradiction has to be resolved in order for third parties to know where are the boundaries they should not trespass.
I can also only agree with the board in T 1999/23, when it considered that there is an ambiguity when comparing the claim and the content of the description. It is correct that the board did not accept this ambiguity/contradiction.
Probably you have (partially) me in mind when you say ‘ heavily criticised on IPKat’, (although I would consider it ‘challenging an opinion’ rather than ‘ criticising’ )
Let me mellow it it bit: The current interpretation of the law being as it is, of course the examiner has to read the description. (And we must not forget the last part of A.92 either!)
But in an ideal world this should not be neccessary.
Now the key question (and where we believe out opinions differ) is: Do the participants in the system accept that we are not in an ideal state, and therefore accept the need to read the description before evaluating the claims, or do the participants in the system stimulate a movement towards the ideal state by focusing more on the quality of the claims and less on the description (and, indeed, in extremis (but only in extremis) to such an extent as to ignore the description)?
All I did (and still do) was make a point for the second option, while of course accepting that for the time being we will have to make do with the first option.
@ BJ,
I checked on IP Kat. I clearly had you in mind when I referred to the criticisms I experienced on IPKat.. Whether it is to be considered a criticism or a disagreement can be left aside. Our opinions diverge.
As far as Art 92 is concerned, I remember that in the early days of the EPO, the Guidelines made clear that the search should be based on the claims, and as well to subject-matter to which claims could introduced in the claims during examination, in other words to features not claimed but present in the description. This statement in the Guidelines has long gone.
I still cannot agree with you that, even in an ideal world, it should not be necessary to read the description. For a start, we are far from an ideal world. Furthermore, this is actually what the EBA has ordered in G 1/24.
In the world as it is, the applicant has great discretion to draft the description and the claims as he sees fit. The problem is that it can give in the description a broader or a more limited meaning to a claimed feature. In both cases, this induces an ambiguity in what the actual scope of the claim might be. This ambiguity has to be resolved before grant or before maintenance in amended form.
If the interpretation of a claimed feature in the description is more limited, the applicant/proprietor actually claims more than what it has actually contributed to the art according to the description.
If the interpretation of a claimed feature in the description is broader, then the applicant/proprietor apparently claims less than what he intends to consider the scope of protection he intends to use against third parties.
In both cases, the applicant/proprietor deliberately obscures the scope of protection of the claims. In both cases this is not acceptable and this ambiguity has to be dealt with.
To sum it up, be it in an ideal world or not, the description has to be “consulted” before any search or examination. This has nothing to do with a possible quality of claims.
Mr Thomas,
I agree with you that the Board of T 1999/23 has been correct. The settled case law after G 1/24 remains the principle of the broadest technically reasonable interpretation (CBL II.A.6.3.4 cited in your comment). This applies because the statement in the description is a restrictive definition.
In such a case, I agree that the patent must not be allowed to be its own dictionary. However, in the case in which a definition of a claimed term in the description is broader than the ordinary meaning of that term, as in the patent at issue in the referring decision T 439/22 of G 1/24 (definition of « gathered sheet »), the rule of the broadest technically reasonable interpretation is not applicable.
My personal view in such a case is nuanced. The applicant has broad discretion in the drafting of an application and is ultimately solely responsible for the patent as granted. Keeping this in mind, an applicant must be free to include in the description a statement giving a claim term a meaning broader than its ordinary meaning and by a suitable wording, to clearly express its intent that this statement is meant to override any other meaning for claim interpretation.
This implies that the interpretation of the term in question is to be carried out on a case-by-case basis, in order to assess whether the statement is truly definitional. It seems to me that the EBA in G 1/24, when refusing to answer question 3 of the referring decision, left the door open for such a case-by-case approach.
Mr Hagel,
Your comment raises an interesting point.
In your comment you make a difference between the fact whether the description gives a claimed feature a limiting or a broader meaning in the description.
This is where I beg to disagree, although I can agree that the any decision of a TBA is a case by case decision. Both situations, limiting or broadening should be treated on a par, be it only for the safety of third parties.
I can agree that an “applicant has broad discretion in the drafting of an application and is ultimately solely responsible for the patent as granted”. But there are limits to this discretion.
Where I strongly disagree with you, is when you claim that “an applicant must be free to include in the description a statement giving a claim term a meaning broader than its ordinary meaning and by a suitable wording, to clearly express its intent that this statement is meant to override any other meaning for claim interpretation”.
Allowing a broader meaning in the description is something I do not find acceptable. On the one hand, it allows an applicant/proprietor to avoid a novelty or inventive step objection, but on the other hand, it allows it to catch third parties relying on the limited meaning of the feature in the claim.
This is exactly the point the opponent made during the OP in G 1/24. By accepting to keep in the description a definition allowing a broader meaning to the term “gathered”, the proprietor could eventually claim infringement, but in view of the claim as such he could not, and he would avoid a novelty or inventive step objection. This is well explained in the referring decision T 439/22. The opponent even expressly referred to the famous Angora cats.
If the claim has been restricted, be it by a feature which has a clear meaning for the skilled person, the applicant/proprietor cannot be left with a description which can give an undue advantage over what he has actually claimed.
This is exactly what happened in the Agfa/Gucci case I commented in this blog. In view of a novelty objection, the applicant restricted its claim to an “achromatic” base (without a hue), but left in the description a statement according to which the base could as well be “chromatic” (with a hue). The broad definition in the description was not accepted by the UPC LD Hamburg.
In the Agfa/Gucci case, the description should have been adapted before grant. The same applies when an independent claim is limited. This feature cannot be left in the description as being optional.
Your one way looking at the situation is therefore not acceptable.
@ Anonymous 24.07.2025, 23:51
Your comment received on 24.07.2025, 23:51, has been deleted.
Your last comment, although “anonymous”, is not so anonymous as you might think.
As far as ranting is concerned, you better start sweeping in front of your door.
It is your good right to dislike the board’s decision, and the reasons for it, but this is not a reason for continuing of insulting the board.
I will not tolerate such comments.
If you want to air your anger towards the boards, then create your own blog. But then, Mr Knowitbetter, you cannot stay anonymous!
If you want to play a power game with me, please be aware that I am sitting at the longer arm.
There is a simple reason why I, and presumably other representatives as well, define terms from the claims in the description. The reason is that the last thing you want is for the examiner to issue a clarity objection. Experience has shown that once the examiner has a clarity objection in his/her mind, it is difficult to persuade them otherwise, and the only remaining option is then an appeal. This is different from a preceived lack of N/IS, which you can often fix with additional features even if you don’t agree.
There are various terms we use in the claims which we do not consider to be unclear, but for which we can think of scenarios in which the examiner might find them unclear. This is a risk we simply can not take, so when there is even the slightest potential doubt, we have to define the terms so that at least we have a remedy.
From a representative’s point of view, in other words, the ‘clarity’ requirement is very a-symmetric. The representative has to err well on the side of extreme caution, because a tiny mistake, or even a perceived mistake, will often be incurably fatal to the client’s patent application, much more so than with other requirements.
I dare suggest that one of the reasons that there are so many definitions of terms from the claims in descriptions is related to this. There may be some element of ‘gaming the system’ or of plain disingenuity as well, but often that is not the case.
Now the big question is of course: should these definitions be cleaned up before grant….?
@ BJ,
I can agree with you that often examiners ride on clarity. This is more than often for lack of other objections to raise.
If, as an examiner, you too often come with searches only quoting A documents (what I call the super BEST effect), which more or less allows a direct grant, after a while this will look suspicious. So you better throw in some clarity objections. I am not blaming examiners, they are playing with the system. I am talking here about what can be seen and perceived and which I have experienced.
Raising a clarity objection is sometimes necessary, but it is much more efficient, to give a certain interpretation to the claim, on the basis of the description and/or on the basis of the meaning given to said feature by a skilled person, and then come up with a novelty or inventive step objection. As you say, this will make the applicant move and the representative has something substantial to say to the applicant.
This is what I have practised myself, and advised examiners I was in charge of, to do. This is way more efficient and I have never advised the examiners to draft an opinion or a communication with sole topic clarity. The rule of thumb was simple: raise a clarity objection if you are sure to be able to sustain it. If not, then fingers off.
I have seen ongoing discussions on clarity without any progress being made. As long as an examiner and a representative are haggling about clarity, examination on novelty and inventive step is not progressing.
There is certainly some element of ‘gaming the system’ or of plain disingenuity. Certainly in the latter case, this attitude has to be nipped in the bud.
My reply to your last question should not come as a surprise: YES, these definitions have to be cleaned up before grant!
Any discrepancy/ambiguity between claimed features and the description, i.e. allowing a different interpretation of the claims in view of the description, has to be cleaned up before grant or before maintenance in amended form.
I would not put this necessarily under Art 84, clarity, but under Art 84, support by the description.