EP 2 966 358 A2 relates to a firing device.
Brief outline of the procedure
The application was refused for infringement of Art 123(2) of the MR and the applicant did not agree with grant on the basis of AR1. The applicant appealed.
The board confirmed the ED’s decision on the MR, but remitted for further prosecution on the basis of claims 1 and 8 as filed.
The applicant’s point of view on the MR
Claim 1 of the MR contains, with respect of claim 1 as filed, the following feature: “characterised in that there is no air supply within the perimeter of the outline of the combustion chamber (6)“.
The added characterising feature of claim 1 is not a disclaimer, but a negative feature by means of which only one of two clearly disclosed possibilities according to claims 8 and 9 as filed or paragraphs [0012] and [0013] is selected.
Since every air supply ultimately takes place through a “pipe” or “tube” of some kind, there is no technical difference as to whether the characterising feature refers to the air supply or to a “pipe” or “tube” provided for this purpose.
Claim 1 defines the “perimeter” of the ground plan of the combustion chamber by the fact that the air supply pipes are distributed there. In the example embodiment, there is no air supply “within” the perimeter of the ground plan as understood in this way, so that there is no contradiction between claim 1 of the MR and the disclosed embodiment.
The requirements of Art 123(2) are thus fulfilled.
The board’s decision on the MR
The characterising feature excludes any air supply “within the perimeter of the outline of the combustion chamber”. At the same time, claim 1 specifies an air supply through a plurality of tubes (1) leading upwards below the bottom of the combustion chamber, which are distributed “over a large part of the perimeter of the base of the combustion chamber”.
Contrary to the applicant’s submission, the added feature is a disclaimer, since it is an amendment to the claim consisting in the inclusion of a “negative” technical feature in the claim, thereby excluding certain embodiments or areas of a general feature.
The board referred to G 2/10, Reasons 2.2 and to G 1/16, Reasons 13, according to which an amendment in the form of words indicating subject-matter not expressly claimed is a disclaimer.
The board reminded that case law of the EBA distinguishes between “undisclosed” and “disclosed” disclaimers.
Undisclosed disclaimers concern cases in which neither the disclaimer itself nor the subject-matter excluded by it is disclosed in the application as originally filed.
Disclosed disclaimers concern cases where, although the disclaimer itself may not have been disclosed in the application as originally filed, the subject-matter excluded by it is derivable from the application as originally filed.
The board further reminded that for these two classes of disclaimers, different tests are applied when assessing whether the inclusion of a disclaimer is in accordance with the requirements of Art 123(2), and referred to G 1/16, Reasons 43 and to the Case Law of the Boards of Appeal, 10th edition 2022, II.E.1.7.2(c).The tests are to be found respectively in G 1/03 and G 2/10.
Claim 9 and paragraph [0013] of the application as originally filed refer to a “further pipe having a height of less than 20 cm” within the perimeter of the combustion chamber footprint.
This disclosure could therefore at best serve as a basis for excluding an air supply by means of further tubes within the perimeter of the floor plan of the combustion chamber in the sense of a disclosed disclaimer.
However, it cannot be used as a basis for excluding any air supply within the perimeter of the floor plan of the combustion chamber. This is because, in particular, air can also be supplied other than via a pipe, for example via recesses in the combustion grating as in D1.
In this context, the Board did also not follow the applcant’s argument that air-intake penetrations of the combustion chamber floor, for example through a combustion grating, are regarded by the skilled person as a “pipe” or “tube”, The original disclosure also mentioned pipes or tubes of infinitesimally short length and therefore there is no technical difference between an air intake via such a pipe or tube and an air intake without a pipe or tube.
The understanding of a skilled person is not determined by every theoretical mathematical or linguistic interpretation possible, but by the technically meaningful significance of a feature. It therefore does not regard every hole as a “pipe” or “tube” and does not assume that “pipes” or “tubes” are infinitesimally short.
Since the subject matter excluded by the disclaimer is not disclosed in the originally filed application documents, it is an undisclosed disclaimer.
There is no disclosure in the application as originally filed for the exclusion of an air supply within the perimeter of the floor plan of the combustion chamber according to the characterising feature.
Comments
The decision is interesting in that it brings the discussion to technical reality. A skilled person does not assume that “pipes” or “tubes” are infinitesimally short. Considering the openings in a combustion grating is far fetched.
It is to be noted that if one of two originally disclosed variants (claim 8 or claim 9) U to be claimed, a mere general disclaimer is certainly not the solution to exclude one variant. One could also consider that the disclaimer has a technical function, which also renders it not allowable.
If the patent is maintained on the basis of claim 1+8 as filed, which was the suggestion of the ED early in examination, claim 9 and paragraph [0013], should most probably be deleted or marked as not belonging to the invention.
Negative terms are not necessarily a disclaimer
In T 1738/21, the patent related to a bonded abrasive cut-off wheel whereby the last feature about fiberglass webs having a second coating, that second coating excluded wax. The absence of wax had always been part of the disclosed invention.
In T 154/06, the patent related to a bus frame with vertical pillars and horizontal interconnected struts. The wording “not forming part of the vehicle cladding” for reinforcing plates was added to claim 1 during examination, but was not a disclaimer. In the description as filed, outer panels were defined which could be removed before repair of the structure of the bus after an accident.
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