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Eventually the patent was revoked as claim 1 as maintained infringed Art 76(1).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.
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.