EP 1 825 720 B1 relates to a distributed intelligence multi-ballast lighting system.
Brief outline of the case
The patent was maintained according to AR2.
Proprietor and opponent appealed this decision.
Although the patent had lapsed in all designated states. the opponent requested continuation of the opposition proceedings.
During the OP the proprietor withdrew its appeal.
The patent was revoked for lack of clarity as well as for added subject-matter. In its communication under Art 15(1) RPBA, the board had objected clarity and added matter of the MR filed in reply to the opposition.
At stake are the formulations “ the ballast coupled directly to a photosensor (22)” in method claim 1, and “the ballast coupled directly to a photosensor (22) for receiving electronic photosensor information” in apparatus claim 8.
The OD’s position
The OD acknowledged that there was no verbatim disclosure in the application as filed for the feature of the ballast being “coupled directly” to a photosensor as recited in claims 1 and 8.
The OD stressed that the phrase “directly coupled to” implied a communication without intermediate devices. Such a coupling was disclosed, for example, in paragraphs [0054], [0057], [0059], and [0129] of the application as filed.
Particular reference was made to paragraph [0129] which stated that the “ballast obtains a raw photosensor reading“. In the OD’s view, this implied that no further intermediate devices were present.
The board’s communication under Art 15(1) RPBA
For the bord, it was unclear whether the term “coupled directly” simply implied the absence of intermediate devices, as put forward.
The terms are inherently ambiguous and may also have a spatial meaning, simply requiring that the ballast be in physical contact with the photosensor.
However, while certain ballasts of the invention disclose them as receiving photosensor readings from remote photosensors on other ballasts, the description also discloses combinations of photosensor and ballasts that can operate independently (Figure 1), thus adding to the confusion.
AR 2 differs from the MR in that claim 8 contains the further indication that the broadcasting is “via the communication port“. Independent claims 1 and 8 of AR 2 in common that they include the terms “coupled directly to” and refer to the notion of “out of box mode representing a default condition“.
The board further noted that the various interpretations relied upon by the parties illustrate the broad spectrum of meanings associable with “coupled directly“.
For the board, the phrase “coupled directly to” must be construed in view of the function to be achieved by this feature under the circumstances. Taking account of the various configurations for coupling ballasts to photocell sensors in the original disclosure, it appears that a distinction is made between ballasts obtaining their information from remote sensors and those which are autonomous in that they rely on their own photocell sensors.
From a functional point of view, the feature regarding the location of the photosensor in contact with the ballast does not appear to be essential in this context and does not permit a limitation of to this particular aspect.
This latter finding confirmed the view that no clear meaning can be associated to the terms “coupled directly“.
As far as AR2 is concerned, the board considered that the references to an out-of-box mode and to a default configuration do not contradict one another.
The reference in the claims to these two concepts does not permit identification, in any particular ballast, of whether the operating method corresponds to the recited features which appear thus to be deprived of any clear meaning in the context of the invention. Although technically understandable, the terms used appear to be without effect on the claim’s understanding contrary to Art 84.
The board’s decision
As the proprietor withdrew its appeal, the objections against the then pending MR about the terms “coupled directly” in claims 1 and 8 of AR 2 were unclear in the context of the patent specification. Other features define added subject-matter, contrary to Art 123(2).
Comments
The present decision reminds us that an an expression like “coupled directly” can nevertheless be unclear.
Directly coupled
Only In Fig 1 as filed there is a direct connection to be seen between the ballast and the sensor, but this does by no mean imply that it is actually a direct connection. The only direct connection is a connection to a processor which itself acts on the ballast.
Since ballasts can receive inputs from remote sensors it is difficult to consider that the sensors are “directly coupled to the ballast”.
On the procedure
The application was filed on 07.12.2005.
The request for entry into the European phase was filed on 14.06.2007.
A first communication from the Examining Division was issued on 07.10.2008 merely referring to an objection of lack of unity raised in the IPER established by the USPTO.
In reply to this communication, the applicant filed new claims. The amendment “coupled directly to” was indicated in a marked up copy of the claim. This was apparently overseen by the ED.
The communication under R 71(3) was issued on 22.02.2017. The mention of grant is dated 14.02.2018.
No wonder that after the application being idle for such a long time, the patent had lapsed in all designated states during appeal.
A nice case of a submarine application.
Not only examination went wrong, but opposition was not better.
Comments
1 reply on “T 219/21 – “Coupled directly” can be unclear and lead to an objection under Art 84”
In the UK, one learns in the first weeks as a patent attorney trainee that adjectives are inherently unclear and so should be avoided when drafting a patent claim. The same applies to adverbs….obviously.
On the specific word here “directly” the Gold Standard formulation comes to mind. Is that unclear too? Or is its “directly” a convenient way to inject into the Gold Standard enough “wiggle room” to allow tribunals always to get to an outcome that serves the interests of justice between the parties?