Brief outline of the case
The patent results from a divisional application of EP 06803097 /1 922 044 and was published as WO 2007/030599.
The opponent appealed the decision of maintenance in amended form.
Eventually the patent was revoked as claim 1 as maintained infringed Art 76(1).
Claim 1 reads:
“A wound dressing apparatus (100) comprising:
a composite wound dressing with multiple layers arranged in a superposed relation, the multiple layers including ….. in fluid communication with the interior of the wound dressing;
a pump system (104) comprising ……, and self-contained regulation or control means (126);
a vacuum source (114);
an inlet tubing (116) connecting an inlet side of the vacuum source to the vacuum port; and a collection canister (118), ….. is disposed between the vacuum source and the wound dressing;
wherein the vacuum port is adapted to be releasably connected to the pump system; and
wherein the pressure sensor is disposed within the interior of the wound dressing and is in electrical connection with the control means through an electrical wiring (128).”
The only difference between the claim as granted and the claim as maintained is the addition of “wherein the vacuum port is adapted to be releasably connected to the pump system; and”.
The opponent’s position
Claim 1 defines a wound dressing apparatus comprising as separate features a composite wound dressing, a pump system, a vacuum source, an inlet tubing and a collection canister.
For the opponent, the presence of semi-colons “;” in the claim as maintained, indicates that the various parts of the claimed device were to be regarded as separate entities.
For the opponent, the earlier application as filed only discloses however the pump system to include the vacuum source, the inlet tubing and the collection canister.
Lack of clarity
Moreover, claim 1 lacks clarity since the added feature “wherein the vacuum port is adapted to be releasably connected to the pump system” leaves it open in which way or for which functionality the releasable connection between the port and the pump system must be adapted.
The proprietor’s position
The punctuation used in claim 1 should not be used to determine its technical meaning. Writing conventions may be different in, for example, the US, Great Britain or Germany.
The skilled person thus would refer to the content of the application as a whole to determine the meaning of claim 1. Moreover, the presentation of the features being separated by semicolons did not preclude these features being related to each other and did not mean that the vacuum source, inlet tubing and collection canister could not be part of the pump system.
The added feature also did not introduce a lack of clarity. In view of the other features defined in claim 1 relating to the vacuum port and the inlet tubing, it was clear that the adaptation concerned the fluidic connection.
The board’s position
From a normal, straightforward reading of the wording of claim 1, taking into account inter alia the punctuation (commas, semicolons) and the conjunction “and” employed in it, the skilled person understands that the wound dressing apparatus of claim 1 comprises a composite wound dressing, a pump system, a vacuum source, an inlet tubing and a collection canister as separate features.
According to the wording of claim 1, the pump system comprises or includes some further (sub-) features. These (sub-) features are drafted in the form of a comma-separated list, in which the final (sub-) feature, the self-contained regulation or control means, is additionally preceded by the conjunction “and” and followed by a semicolon.
The skilled person would understand that the immediately following feature is not considered as a (sub-) feature comprised or included in the pump system, but rather constitutes some separate entity in addition to it, implying thereby that the pump system is operationally independent of the vacuum source.
For the opponent and the board, the claim is divided into three distinct “levels”, the top level being “A wound dressing apparatus comprising:” followed by a second level of the components comprised within the wound dressing (i.e. those features separated by semi-colons) and a third level which are the individual elements of the second level components (some of which included lists with commas separating the individual elements and ending with an “and” before the last element), such that the vacuum source is not necessarily included in the pump system.
From the description of the parent application it appears that the vacuum source is to be included in the pump system, rather than constituting a separate entity which could be in addition to the pump system. There is no further disclosure in the parent application from which it could be directly and unambiguously derived that the pump system and the vacuum source (as well as the inlet tubing and collection canister) could be embodied as such separate features as covered by claim 1.
No evidence was submitted by the proprietor supporting its contention that the writing conventions in regard to the use and purpose of punctuation, in particular concerning commas and semicolons, could be somewhat inconsistent throughout the different languages and nations, for example in the US, Great Britain or in Germany.
The Board considered therefore that there is no reason to construe the groups of features resulting from the use of commas, semicolons and the conjunction “and” in claim 1 so as to be at variance from the straightforward understanding.
The claim cannot be read by ignoring the specific choice of commas, semicolons and of the conjunction “and” so as to limit its meaning to subject-matter disclosed in the context of page 9, lines 5 to 12 of the parent application.
As also argued by the opponent and agreed to by the board, the language of the claim is clear in regard to the features which are comprised by the wound dressing apparatus. Therefore there would not even be a need to search for a different interpretation based on some disclosure in the originally filed earlier application.
The proprietor did not contest that the interpretation adopted by the Board, implying for example also the presence of multiple sources of reduced pressure, is technically meaningful and reasonable.
Instead, the proprietor argued that the resulting technical meaning (i.e. with two sources of reduced pressure) did not correspond to the teaching derivable from the whole content of the earlier application. This argument is however based on an interpretation of the claim in the light of the content of the earlier application and thus failed.
In the board’s view, the proprietor’s claim construction based on a “whole contents approach” of the disclosure of the parent application failed.
For the board, there is no basis in the EPC for a limited interpretation of the claim in the light of the content of the parent application as filed when it comes to the examination of the question as to whether some subject-matter extends beyond the content of the original (earlier) application.
Furthermore, there is nothing in claim 1 which contradicts the understanding that the vacuum source could be entirely separate from the wound dressing of such apparatus. Contrary to what the proprietor had alleged in its reply to the grounds of appeal, it is not illogical to have other components separate from such a (composite) wound dressing and to consider the entire arrangement as a wound dressing apparatus, which is the wording of the first feature of claim 1.
Additionally, the feature “wherein the vacuum port is adapted to be releasably connected to the pump system”, either on its own or in combination with the remaining features of claim 1, does not establish or imply an inclusion of the vacuum source as a feature of the pump system either.
That amended claim 1 does further not comply with the clarity requirement of Article 84 EPC in regard to the added feature “wherein the vacuum port is adapted to be releasably connected to the pump system” was actually irrelevant since maintenance of the patent with this claim is anyway excluded for added matter.
The board noted that contrary to the proprietor, the opponent’s attack is not a mere clarity objection. Despite being based on an interpretation of the claim wording, the substance of the objection is not directed to the determination of the limits of protection conferred by claim 1. On the contrary, it concerns the question of whether the subject-matter resulting from a technically reasonable interpretation of the claim language is disclosed in the parent application.
It is not the first time that punctuation plays a role in assessing added matter. See T 1127/16 and the comments on IPKat.
In T 1127/16, the absence of a comma between two features meant that the two features could be interpreted two ways. Either the following feature is a separate item or the absence of the comma links the two features. The latter was the position adopted by the OD and the board.
Lots of comments published on IPKat criticised T 1127/26.
The present decision confirms what IPKat said at the time: “It is not only the choice of words that matter in patent claim interpretation….. grammar can be similarly important”.
Following the logic of T 1127/16, it is only consequent that the present board considered the parts separated by semi-colons to refer to separate entities. The combination of commas and semi-colons made clear what belongs to each entity.
Furthermore, the claim and its structure were clear enough with the commas and semi-colons so that there was no need to refer to the description and certainly not to that of the parent application.
In reasons 2.6.1 of T 1127/26 the board reminded that:
“According to such a logic, an applicant (patent proprietor) could then arguably dispense with providing a clear and unambiguous formulation of claim features, e.g. during the grant proceedings, in order to be able to fall back on a more description-based interpretation at will during a subsequent opposition proceedings”.
Here the proprietor did not just refer to the description of the divisional, but to that of the parent application.
In reasons 2.6.2 of T 1127/26, the board added, quoting T 1018/02, the following:
“… the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader […] Otherwise third parties could not rely on what a claim actually states”.
Those reasons apply here as well and the more so since the reference was not to the description of the divisional but that of the parent application.
As claim 1 as granted was identical to the claim as maintained, the only difference being the releasable connection, the objection of added-matter applied already to the claim as granted. It is thus even possible to consider that the present patent should not even have been granted.
Claim 1 as granted in the parent application was also full of semi-colons…
If commas play a role in the interpretation of a claim when it comes to added matter, semi-colons are even more important!
Drafting claims is really an art and yes, grammar and punctuation also play a role!
The statement quoted from T 1018/02 shows also why T 19898/18 and T 1444/20 were not correct as they claim that the description does not have to be adapted. By not being adapted, the description can give to the claim a different meaning so that third parties could not rely on what a claim actually states.
This does not withhold a national judge to give a claim a different scope when taking into account his own doctrine of equivalents. However, equivalents and added matter are two distinct and incompatible aspects, at least in European practice.
To come back to the present case: that separately claimed features could be used together belongs to what the person skilled in the art could easily imagine, but is not what has been directly and unambiguously disclosed and vice versa.
After all, party disposition allows an applicant/proprietor to define any subject-matter he wishes in a claim, but once a given subject-matter has been defined, this definition should be in accordance with the description.
Legal certainty for third parties is a necessity in our day and age. This is also why the boards of appeal of the EPO are rightly so strict when it comes to added matter.
8 replies on “T 2040/18 – Punctuation in a claim and added matter – No interpretation of a claim in the light of the parent application under Art 76(1)”
Correct me if I am wrong, but is this case all about very basic principles of claim interpretation?
Consider this claim:
1. A substance comprising:
a stabiliser; and
If a prior art composition discloses a single molecule that performs stabilisation and emulsification, then this claim lacks novelty over that molecule.
It is also common to see sets of claims of the following form:
1. A system comprising:
means for processing first data; and
means for processing second data.
2. The system according to claim 1, comprising a first processor in a first location, wherein the first processor is the means for processing first data and the means for processing second data.
3. The system according to claim 1, comprising a first processor in a first location and a second processor in a second location, wherein the first processor is the means for processing first data and wherein the second processor is the means for processing second data.
Claim 1 leaves open the possibility of the system being a local system with one processor or a distributed system. Claim 1 clearly encompasses both possibilities based on its ordinary meaning. Claim 2 is the specific embodiment of a local system and claim 3 is the specific embodiment of a distributed system.
Was any of this ever in doubt?
What you explain about claim interpretation is certainly correct.
You have however not given the description which goes with the claim.
A claim without a corresponding description is only half the story.
If the description supports the interpretation given, I do not see any problem.
If the description discloses only a local system or only a distributed system, then you are claiming more than has been disclosed or in other words you are claiming something which has not been disclosed. In the end, the result is the same.
In the first case, you cannot claim the distributed system and in the second case you cannot claim the local system.
As claim 1 leaves open the possibility of the system being a local system with one processor or a distributed system, the net result is that in both cases claim 1 has no support in the description.
Lacking support in the description, claim 1 infringes Art 123(2).
Depending on what has been disclosed, claim 2 or claim 3 would also infringe Art 123(2).
The conclusion is as clear as your interpretation.
I hope you will not confuse support in the description with the requirements of Art 84! We are here speaking of added matter.
Even though this case concerns a semi-colon, what comes to my mind is the grammatical curiosity of the “Oxford comma”.
Consider, for example, the following sentences A and B. B is the one that contains an Oxford Comma. Does that comma make any difference to the meaning? Who are Brian’s mother and father? Should both sentences be rejected as failing to comply with Art 84, EPC? How shall we know which sentence conveys the correct meaning?
A. Amongst those persons who eat porridge for breakfast every day are both of Brian’s parents, Sean Connery and leading BREXIT-er Gisela Stuart.
B. Amongst those persons who eat porridge for breakfast every day are both of Brian’s parents, Sean Connery, and leading BREXIT-er Gisela Stuart.
What do you think? Does either sentence make it “clear” that i) Sean is Brian’s father or ii) Sean is NOT Brian’s father? Can we agree that B makes it clear that Sean is not whereas with Sentence A Sean might or might not be Brian’s father because the sentence is not “clear”? Would insertion of the Oxford comma during prosecution therefore be an infringement of Art 123(2) EPC (because adding the Oxford comma cures the ambiguity and so gives the skilled reader a teaching not unambiguously derivable from the as-filed application)?
Dear Max Drei,
Thanks for drawing my attention to the “Oxford Comma”. I confess that I discovered it.
I remember my French grammar lessons and if there one thing I have learned a long time ago, the conjunction “and” should never be separated from the previous part of the sentence by a comma!
That is why the potential problem brought about by the Oxford comma never occurred to me.
To me, in my French mind, Sean and Gisela are not Brian’s parents whether in sentence A nor in sentence B.
When it comes to Art 123(2) any teaching not unambiguously derivable from the as-filed application leads to an objection of added matter. This is the golden standard according to G 2/10.
On the other hand it all depends what is in the description.
By reading the sentence with a mind willing to understand it, it is clear to me that Sean and Gisela are not Brian’s parents, whatever follows.
Without a comma Sean and Gisela are one entity, cf. T 1127/26.
With an Oxford comma, Sean and Gisela are two distinct entities.
If the description does not give this information then we have a problem under Art 123(2).
In general, it is always dangerous to amend a claim in order to improve its clarity.
A potential problem of added matter is often not very far.
This is a reason why an applicant should never accept without checking amendments of a claim for the sake of clarity introduced by an examiner in a communication under R 71(3).
Yes, the mind willing to understand. But let’s not forget the mind of the lawyer who wants not to understand. In patent litigation there are plenty of those. Ideally, everything we draft should be free from any ambiguity at all. But as we are only human, there are always going to be ambiguities in what we write. I’m all in favour of mandatory application of the Principle of Synthetical Prpoensity, especially when deciding whether any given prosecution amendment offends the provisions of Art 123(2) EPC.
My further Googling reveals ambiguous wording on a coin created by the Royal Mint to celebrate BREXIT. Here it is:
“Peace, prosperity and friendship with all nations.” Is an Oxford comma necessary here? Does the UK really want other nations to enjoy “prosperity”? That’s not what the Royal Mint intended, is it?
Dear Max Drei,
That in patent litigation there are plenty of lawyers who do not want to understand a claim is nothing surprising.
After all, they are paid to help their clients. If this means being on purpose as thick as two planks, why not?
That nobody or nothing is perfect is also an acquired fact. In a situation leading to ambiguities, I would suggest to let common sense play a role. It has never hurt to apply common sense, even if we could argue that what one person considers common sense might be miles away from what another person understands under the same wording. As a well know former patent examiner (for a short time) said: it’s all relative…. :-))
When looking at the coin, I would thus say that common sense leads to the conclusion that the Royal Mint certainly wanted primarily prosperity for the UK, especially after Brexit, with or without an Oxford comma. But this might be due to my French way of thinking…. :-))
Daniel, that last comment of yours, about the expectation of prosperity in the UK, post-BREXIT, prompted me to laugh out loud. Thanks for that.
Yes, that thing we call “common sense”. We find in our jobs that it is not as common as we like to imagine. These days, who wants to be a judge, ready to accept the heavy responsibility to apply common sense to any given body of law and evidence?
Don’t forget the court case which turned on the absence of an Oxford comma: https://www.nytimes.com/2018/02/09/us/oxford-comma-maine.html