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The patent was revoked by the OD for added matter.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
5 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.