EP 2 418 078 B1 relates to a a resin-coated metal sheet and to a seamless can made from the resin-coated metal sheet.
Brief outline of the case
The patent was revoked by the OD for added matter.
The proprietor appealed the revocation.
The board decided the absence of added matter and remitted for further prosecution.
The claim as filed
“1. A resin-coated metal sheet including a metal sheet and a layer of a polyester resin which….. comprises an ethylene terephthalate unit…….., wherein said polyester resin is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin.”
The claim as granted
“1. A resin-coated metal sheet including a metal sheet and a layer of a polyester resin which comprises an ethylene terephthalate unit ……. characterised in that said polyester resin is a blended polyester resin which is a blend of …… polyester resin at a weight ratio of 90:10 to 10:90;
wherein said highly crystalline polyester resin is a homopolyethylene terephthalate or a polyethylene terephthalate that contains the isophthalic acid in an amount of not larger than 3 mol% and
said lowly crystalline polyester resin is a polyethylene terephthalate that contains the isophthalic acid in an amount of 12 to 18 mol%.”
The OD’s decision
The wording “is” in the sentence “characterised in that said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin at a weight ratio of 90:10 to 10:90″ was to be read, in the context of claim 1, as “comprises”, which meant that any other component different from the ones specifically mentioned in said claim 1 could be present in the blended polyester resin.
The board’s decision
The meaning of the terms “said polyester resin is a blended polyester resin which is a blend of …” and “a layer of a polyester resin …” present in claim 1 has to be determined, as well as the meaning of their combination.
“Said polyester resin is a blended polyester resin”
Although it is correct that the normal rule of claim construction is that the terms used in a claim should be given their broadest technically sensible meaning, the literal reading of the passage of claim 1 “said polyester resin is a blended polyester resin which is a blend of a …….” defines that “said polyester resin” consists of the lowly crystalline and highly crystalline polyester resins further defined in claim 1 , in the given weight ratio.
In the board’s view, the wording imposes that “said polyester resin” is obtained by blending the two resins as otherwise defined in the claim, and only these resins. In particular, the term “said polyester resin” defines that the resin so defined must be a polyester, which excludes e.g. that other resins may be present as a main component in the blend.
In addition, the combination of the term “is a blended polyester resin” directly followed by the term “which is a blend of … and … ” constitutes a product-by-process formulation that defines that “said polyester resin” should be obtainable by a blending operation and as the result of blending of only these two resins.
The board noted that the above conclusion is reached on the basis of the wording of claim 1 only, but that conclusion is also congruent with the description of the patent in suit which does not disclose the presence of any other resin(s), in particular polyester resin(s), blended together with the lowly and highly crystalline resins.
Therefore, the reading of the passage of claim 1 “said polyester resin is a blended polyester resin which is a blend of a …..”in an open manner is not convincing.
“A layer of a polyester resin …”
The term “a layer of a polyester resin” defines, according to its literal reading, that the polyester therein mentioned, i.e. “which comprises an ethylene terephthalate unit”, is the main component of the layer. This wording neither imposes that the polyester resin is the sole component of the layer, nor that it is the sole resin possibly present in the layer.
The board considered that the reference to “unit” in that passage makes it clear that the term “which” makes reference to the polyester resin and not to the layer. This, in the board’s view, would also be the logical reading of the claim made by the skilled person, considering that the term “which” usually makes reference to the word directly preceding it. In that respect, it makes also no doubt that the skilled person would further read that it is indeed the layer which is “formed” on the surface of the metal sheet.
Combination of both terms in claim 1
The term “characterised in that said polyester resin is” means that the polyester resin specified in the term “a layer of a polyester resin” is identical to the “said polyester resin” further defined in claim 1, i.e. it consists of a blend of only two polyester resins.
In view of their definitions, both the resins of the blend are “a polyester resin that comprises an ethylene terephthalate unit“. This further means that also the blend of these two resins can only be “a polyester resin that comprises an ethylene terephthalate unit”.
Therefore, the term “which comprises an ethylene terephthalate unit” of claim 1 is in fact redundant, i.e. not further limiting.
The wording of claim 1 does not allow that the layer defined therein comprises a polyester resin that does not comprise an ethylene terephthalate unit in majority, contrary to the OD’s view.
The board considered that the wording of claim 1 does not encompass a layer of a polyester resin wherein the polyester resin is a blended polyester resin comprising the two polyester resins and in addition thereto any other compounds in any amount.
Considering that the above conclusions are reached on the basis of the wording of claim 1 alone, there is no need to turn to the description to interpret the meaning of that claim.
In particular, the board saw no reason to consider that the reading of claim 1 would not be a technically sensible reading that would not be considered by the skilled person.
Under these circumstances, there is no need to address the arguments of the parties relying on the examples of the application as filed to interpret the wording of claim 1.
Comments
The present case shows best, that a correct reading of the claim, that is in the eyes of a skilled person, does not necessarily need to refer the description. The conclusion has been reached from the literal meaning of the claim.
In the present case, the description merely confirmed the conclusions which could be reached from the wording of the claim. The present case also shows what the primacy of the claim can represent.
The present case, dealing with added matter, shows also that the referral G 1/24 should not have been limited to Art 52-57, but should have included Art 123(2).
Comments
16 replies on “T 2103/22 – Art 123(2) – Reading the claim in the eyes of a skilled person does not necessarily need to refer to the description”
Given that the words “consists of ” and “comprises” are staples of claim-drafting art, a Decision that takes the word “is” and decides whether it means comprising or consists of (open language or closed) is interesting to read.
It seems to me that the meaing of “is” is context-dependent. Here, it seems that the TBA found in the claim alone enough context to fix the meaning as “consists of”. This would be a rare case, right?
Suppose the claim is to “Orange paint, which is a blend of red paint and yellow paint”. How shall one know whether “is” means “comprises” or “consists of” except by turning to the description.
Does that mean that “is” in a claim should attract from an ED, every time, an objection under Art 84, EPC, with follow-up, first with objection under Art 123(2) when “is” is amended to “consists of”, then with refusal of the application and finally with a shoulder shrug and an admonition to the Applicant next time to be more careful, and draft the patent application more professionally?
Claims to an alloy composition are a challenge to draft. Write them in closed language and competitors will design round them. But write them in open language and they lack novelty. Hence the claiming device, formulated in England in the 1950’s (the Mond-Nickel Rules), with the word combination: consisting of……….apart from incidental elements and impurities, if any.
I await with interest to see how UPC jurisprudence develops, in this area. I hope with common sense and synthetical propensity. As here by the TBA.
Dear Max Drei,
Thanks for your comments.
It might be due to my Cartesian French education, but I do not think that “is” is (sorry for the pun) context dependent. Like orange paint “is” a blend of red paint and yellow paint, green paint “is” a blend of blue and yellow paint.
If a device is painted in blue, it is not merely comprising blue paint, but is exclusively covered with blue paint.
If you want to define a particular orange or green colour, then the proportions of red/orange or blue/yellow have to be defined more precisely, and then there is no way out of coming to “consists of”.
If in the originally filed claim and description, something “is”, e.g. a blend of different components, an ED has no reason to raise an objection under Art 84. Beware of amending the claim in order to improve clarity. It means going from the frying pan [Art 84] into the fire [Art 123(2)]. No need to explain why it could be lethal.
In view of the principle of party disposition it is not possible to force an applicant/proprietor not to use “is”. It might be preferable to say “consists of” or “comprises”, but there is no obligation to resort to this wording.
In other words “is”, in my opinion means “consists of” and not merely “comprises”, but I would never amend the expression unless there are good reasons to do.
There is another “faux-ami”. In colloquial language sometimes “and” and “or” can be confused. In the patent world “and” in a claim means “+” and “or” is to be considered as an Exclusive OR. Amending one for the other can thus be highly dangerous.
With common sense and synthetical propensity, the true meaning should not be difficult to determine.
My blend of red and yellow paint created an orange paint that was too strong. So I added some white paint to the blend. The result is still orange, my orange paint “is” still a blend of red and yellow.
Returning to the EPO file behind the present Decision, however, I see that the OD in its decision wrote “in the context of claim 1 alone, the term “is” has to be considered as equivalent to the terms “comprises” or “contains”. Is this reasonable? Or is it unreasonable?
There is no member of the ED who was also a member of the OD. Would the original ED have done a better job, at the opposition stage, I wonder, by confirming that their original decision to grant was correct.
Dear Max Drei,
If you add white paint then your orange is still a blend of read and yellow and white.
I do not agree with the OD. Even from the syntax or the construction of the sentence, there cannot be any doubt that the resulting polyester resin “is” a blend of high and low crystalline polyester resins. Coming up with “comprises” or “contains” is a conclusion which is not reasonable. If the OD was not sure about its interpretation, a quick look at the description should have removed any doubts.
According to the minutes, the discussion at the OP centred on §[016] and [018] of the patent as granted, but the board referred to From §[042], it is clear that the original blend of low and high crystalline resins can be “further” blended with other materials, but the blend of low and high crystalline resins “is” a closed composition. The claim is congruent with the description. The latter does not allow another interpretation.
As far as participation of a member of the ED in the OD, only one member of the ED can participate in the OD, but not as chair of the OD. It is thus not possible to say if a better result would have been achieved in opposition, as in recent times the ED member is the second member of the OD.
It looks that to me, that the argumentation of the opponent during the OP appeared more convincing to the OD than that of the proprietor. One should also not forget that with an objection of added matter, there is no discussion needed on N or IS.
As happens from time to time, Daniel, we have to agree to differ about what “is” means. Adding some white paint to my blend of red paint and yellow paint makes it a blend of red, yellow and white paint. On that, we agree.
But that does not mean that I am telling a lie when I state that my orange paint (not from a pot of orange paint bought at the houseware store but rather, made at home by blending red paint and yellow paint), even after I have diluted its colour intensity by adding some white paint to the blend, remains “a blend of red and yellow paint”. I say that it still “is” such a blend.
It is my point of view, as a native English-speaker, that the meaning of “is” is context-dependent, in a way that “consists of” and “comprises” is not. We agree that the TBA got it right but we do not agree on whether the OD position was reasonable.
How did the OD come to jump off the “wrong” side of the decision-making arrete? I am confident that you are right, in suggesting that Opponent’s representative was more plausible, did a better job of advocacy.
Circling back to our original debate, however, about when does the exercise of claim construction require a consciousness of the description supporting the claim and delivering the background context to the words of the claim, we are, I think, no further forward. I say that the answer is “always” whereas you say “only when the claim is not clear”.
For me, the problem with your approach is that the answer to the question “Is the claim clear” is never a clear binary Y/N, sheep or goat, answer. Rather, it depends, every time, on who you ask. Clarity is an analogue quantity, running seamlessly from close to zero to close to 100%. For that reason, it is a dodgy criterion on which to build a Rule whether or not to use the descripton to interpret the claim.
That said, the clearer the claim, the less likely it is that anything in the description can shade the clear meaning of the words of the claim, even when the description flatly contradicts the claim. Given the absence of Art 84 as a ground of revocation, the EPO is fully justified in requiring its ED’s to permit through to grant only claim wordings that are, in themselves, unambiguous and clear in meaning. We agree on that too, I think.
Dear Max Drei,
When it comes to English language rules, I will not dispute your point. If you say “is” is context dependent in English, I can agree with it. When I spoke about my Cartesian mind/education, I should better have said French. I do not see it context dependent in French.
When it comes to interpreting a claim, you say it should “always” be looked at the description. I understand your point, but I do not share it. I would not say recourse should only be had to the description when a claim is unclear. It should also not be necessary to resort to the description if upon reading the claim, the skilled person can make head and tail of its wording and come to a reasonable technical meaning of its features. Claim and description have to be congruent. It is EPO’s task to insure this congruence, so the description cannot be ignored, but it cannot play the first role.
If the description says blatantly the contrary, or gives a claim a specific meaning to some features, which have an accepted meaning for the skilled person, it is the applicant’s/proprietor’s problem, and not that of the EPO. An applicant/proprietor cannot be allowed to give in the description a meaning to a claimed feature which is not that a skilled person would conclude from the claim wording. In such a situation, claims and description are not congruent.
You are right, the EPO should only permit through to grant, or maintenance in amended form, claim wordings that are, in themselves, unambiguous and clear in meaning. I would add, properly supported by the description.
I do agree with you that strictly speaking, no claim is 100% clear. A good approximation will do, and is acceptable, as long as third parties know when they directly trespass the boundaries of the claim as it results from its plain wording. Nothing in life is black or white, but it would be presumptuous to claim that up to x% of black it is indeed back, and the same apples for a claim. Technically sound meaning and common sense should help.
We do not agree totally, but I am convinced that we are not as far apart as looks at a glance.
Daniel, when I read the second and third sentences of your second paragraph, they leave me unsure how much we agree or disagree about when to construe a claim in the context of the description. Are you satisfied that these two sentences are as clear as you can possibly make them?
Meanwhile, the confusion in my head serves only to encourage me in my negative feeling about a rule such as you advocate, namely, a rule about how to construe a claim, the decision whether or not to take the description into account depending on what level of clarity the claim in view happens to have achieved.
I agree with you though, that overall we agree more than we disagree. Long may that continue.
Dear Max Drei,
I will try to clarify my thoughts. I do not advocate as systematic recourse to the description in order to interpret the claim. This is what In German practice is called “Auslegung”.
If the claim is, as such unclear, it is unavoidable to have to look at the description. A claim can then be amended in order to bring it in coherence with what is said in the description.
If when reading the claim, the skilled person can understand what it means, there is no reason a priori to look at the description to interpret the claim. This does not mean that the description is to be ignored. It has at least to be checked that the teaching derivable from the claim is properly supported by the description.
In other words, the description cannot give to a claim an interpretation which is not in coherence with the interpretation the skilled person infers from the claim.
When it comes to assessing Art 123(2), it is mandatory to look at the description as filed.
My conclusion is that, what matters first is the claim, but the claim has to find proper support in the description.
Our divergence stems most probably that you look at the disclosure in the eyes of a representative, and I am more focused on the role of the EPO in granting patents. In a granted or maintained patent, the claims are in coherence with what has been disclosed, so that the contribution to the art is easy to determine for third parties.
Absolute clarity might be difficult to achieve, but one thing appears important: an unclear feature cannot help to distinguish the subject matter of a claim from the prior art. A lack of clarity can thus bring about a lack of novelty, e.g. T 422/06 or T 872/09.
Daniel, I want to pick up on the first sentence in your third paragraph If the claim is clear, no need to look at the description to settle what the claim “means”). I’m still not sure about that.
Just as the problem-solution approach gives a clear methodology to debate the inventive step issue, I crave a clear methodology for debating what the claim shall be taken to “mean”.
Examiners bat first. They start from the broadest reasonable interpretation (BRI), search on that basis, then formulate their prior art objections on that basis. Nobody can reasonably argue with that approach.
Now, to my mind, either that BRI is indeed “reasonable”, or it is not. Yes or No. Binary.
Applicant’s representative must decide whether to accept that BRI meaning or dispute it. There is no other choice.
What the skilled person finds “reasonable” might not always be the BRI initially given to the claim by the Examiner. But, if the claim is clearly drafted and the Examiner is reasonable, there should be no difference between the BRI and what the skilled person understands as the meaning.
So, if Applicant chooses not to dispute the Examiner’s BRI, well then the “meaning” of the claim is set. There can follow the usual enquiry into support, under Art 84 EPC.
BUT, if Applicant disputes the BRI, then the meaning of the claim has NOT yet been fixed. Instead, there must follow a debate between Examiner and Applicant about whether the meaning given by the Examiner is or is not “reasonable”. Given the useful EPO principle of the free evaluation of evidence, the floor is open to the Applicant to use whatever tools of advocacy are available.
The point is, it is Applicant who decides whether or not to argue about what the claim means. And if they do argue, it rests with them to find the argument that convinces. For an Examiner wo write an unreasonable BRI is self-defeating, because it will bring a lot of work down on their head. I imagine than that Examiners try hard to avoid writing an unreasonable BRI.
Does this approach render otiose your rule (which I find troubling because it seems to me arbitrary) about when to consult the description and when not?
Dear Max Drei,
I understand your hesitations with my position. I was always of the opinion that long discussions on clarity should be avoided, as it open a can of worms. I agree fully with you, that an Examiner wo writes an unreasonable BRI is self-defeating.
I would like first to refer to the last § of my last comment.
Furthermore, in order to avoid a long, and actually never ending satisfactorily for the applicant/proprietor or the examiner, it is always better to raise an objection of lack of N or IS rather than to stay just with clarity. This feature being unclear, the claim is interpreted so and so, even with recourse to the description, and then the conclusions as far as N or IS are concerned are as follows….
This is what I have practised all along my time of examiner and later the advice I gave to my examiners. What I never understood, is when a clarity objection is raised after the examiner decided upon N or IS. If N and IS can be decided upon, then the claim was clear.
My experience is that with this, I would call reasonable, approach, long discussions on clarity can easily be avoided.
There are however cases where the claim remains unclear, even taken into account of the description. Then a refusal or a revocation are the only solution.
So, Daniel, to summarise my view: There is a range of degrees of clarity. The bottom end is “No meaningful search can be carried out”. The top end is “When the skilled person reads this claim, there is one, and only one, way to understand its meaning”. The degree of clarity of nearly all claims filed at the EPO lies somewhere between these two extremes.
I recall all those EPO-generated WO-ISA’s on claim written in the USA, which found a lack of novelty based on a broad reading of the claim. Outrage that a Patent Office Examiner could construe the claim without taking into account the content of the description. But that EPO approach to the claims of a PCT filed at the USPTO was very effective as the first step in a journey towards issue of an EP-B poublication.
Dear Max Drei,
The cases in which no meaningful search can be carried out are rather remote. I had once such a case in all the years I used to search, and it was due to a bad translation from JP to GB. I would classify those cases more under lack of sufficiency than lack of clarity. The number of objections under R 63, which end up in a refusal, due to the absence of a meaningful search is rather low.
I never claimed that “When the skilled person reads this claim, there is one, and only one, way to understand its meaning”. If there are doubts about the meaning of a feature, the examiner will impart a given meaning to the feature, possibly, but not necessarily from the description, and objections will be raised on the basis of this interpretation.
If an applicant choses to file a broad claim, he might indeed be gratified with an objection of lack of N. Why should the examiner look at the description if the claim makes technical sense but is rather broad? I come back to my ventilator example. If the applicant claims a ventilator, but the description says that under ventilator the applicant understands a ventilator blowing hot air, he will get an objection of lack of N for a ventilator.
I refer to the GL B-II, 2:
“ The search is aimed at identifying the state of the art relevant for determining whether, and if so to what extent, the CLAIMED invention is new and involves an inventive step.”
“The search must therefore be as complete and effective as possible, within the limitations necessarily imposed by unity of invention and other factors”.
It does not mean that the search is carried out on what is found in the description, but primarily on what is claimed.
In the early days of the EPO, the GL added that the search could/should also take into account the way claims might be amended after the search. I cannot find this statement in the later versions of the GL. I am not surprised that this has been removed. The answer is primacy of the claims.
In this respect, it is irrelevant if it is a US applicant for which an IS is carried out at the EPO or a SESR is carried out after entering the regional phase.
The applicant gets what he is claiming for. Without a hard N objection, applicants, especially from the US (or JP), are not prepared to move. This is my experience.
This does not mean that the examiner will not look at the description. Once the claims are amended, he will have to look at the description, be it for assessing added matter.
If the claim is restricted, a further search might be necessary when features come from the description. In any case, the SR is primarily based on the originally filed claims and not on what is shown in the description. How can an examiner know what the applicant will consider important in all what is to be found in the description?
Daniel, many thanks for the GL research. It brought a smile to my face, because I was in the habit of relying on those earlier editions of the GL in writing to the Examiner in my cover letter that my amendment to claim 1 was well foreseeable from the search opinion and thus that the Examiner will already have searched to subject matter of the amended claim (or, if not, should have searched it).
I presume every other representative made the same point, reminding Examiners of their responsibilities to the EPO user community and customer base. No wonder then, that the sentence no longer appears in the GL.
BTW, I see you have a new blog item today, on when to refer to the description. Will now read with interest. Happy Christmas, meanwhile. Take a well-earned break, Daniel
Dear Max Drei,
For you and all your loved ones I wish a Happy Christmas, and a good and prosperous New Year
@MaxDrei
I wish to add a couple of comments.
You have been quite right to refer to the BRI in connection with the search (the BRI is explicitly mentioned in GL B-III 3.2.5) and to depict it as the rule to be applied for the assessment of patentability. As a matter of fact, it is applied in a large number of recent BOA decisions.
Regarding the questions as formulated in the referral decision T 439/22, they call for Y or N answers. I think the binary mode is inadequate, the description and the drawings are clearly necessary for understanding the terms of claims and imparting them meaning. This can be viewed as the initial step of interpretation.
I note that in recent decisions, the Board applies the BRI but also checks that the interpretation is not contradicted by statements in the description.
Another problem I see in the questions of T 439/22 is that they make no distinction between ex parte and inter partes contexts, although the role of the EPO and the resources and constraints are different depending on the context.
It is interesting to note that the USPTO has departed from the BRI after the enactment of the AIA for inter partes proceedings before the PTAB, explaining that claim interpretation in inter partes proceedings should follow the same rules as court proceedings, while keeping the BRI as the rule for ex parte proceedings.
Best wishes to you and Mr Thomas for the holiday season !
Dear Mr Hagel,
The way the questions were referred to the EBA in T 439/22 does not necessarily require a binary reply. The vast majority of Y reply gave different reasons as to their Y reply. The same applied to N replies. When simply summarising the replies of the amicus curiae, there was not the place to add long explanations as given by the writers. I just intended to tot up the replies and see the balance between Y and N.
I agree with you that in T 439/22 no distinction is made between ex parte and inter partes procedures. I agree with you that the role of the EPO and the resources and constraints are different depending on the context.
The USPTO is part of an integrated system in which grant and post-grant procedures are carried out by the same authorities. When it comes to the use of the BRI, the distinction between inter-partes and ex-parte proceedings by the USPTO is thus understandable.
For historical reasons, the EPO stops its work with grant, and only regains competence if an opposition is filed. It is thus manifest that the EPO has no competence whatsoever in infringement and cannot necessarily adopt the views of a court acting in infringement or validity.
I agree with you that in recent decisions, the board apply the BRI, and sometimes checks that the interpretation is not contradicted by statements in the description. This is the case in my blog of today relating to T 179/23.
I would nevertheless allow myself to add that Art 69(1) relates to the scope of protection. That when determining the scope of protection, it says that “the description and drawings shall be used to interpret the claims”, this has to be seen in the framework of determining the scope of protection. The second sentence of Art 69 has to be read in combination with the first sentence and not on its own.
Art 69(1) does not say that when determining the validity of a patent, the description and drawings shall be used to interpret the claims. Simply focusing on the second sentence of Art 69(1) is actually ignoring the reasons which led to the set up of the EPO.
One thing is sure, the EBA has a daunting task before it.
Pour vous et tous ceux qui vous sont chers, bonnes fêtes de fin d’année !