The patent relates to an improvement of conventional wort boiling techniques in beer brewing processes.
Brief outline of the case
The opponent appealed the rejection of its opposition.
The opponent requested that the appealed decision be set aside and that the patent be revoked.
The proprietor requested as MR that the patent be maintained as granted or maintained in amended form according to AR1.
Eventually, the patent was revoked by the board.
The decision is interesting in that it allows some clues about the relationship between an independent and a dependent claim.
A point of dispute between the parties concerned whether or not a step of boiling the wort could be covered by the wording of claim 1 as granted.
The opponent’s point of view
The opponent argued that, in view of the open language of claim 1: “said method comprising the steps of”, such a step of boiling the wort was not excluded from claim 1 and might take place either before or after any of the recited steps.
For the opponent claim 1 does not require the direct transfer of the wort to the trub separation step immediately after a treatment at a temperature Ta < Tb.
The proprietor’s point of view
The proprietor submitted that any step of boiling the wort was excluded from the scope of claim 1 as granted and was thus a further distinctive feature of claim 1 as granted over the CPA=D10.
According to the proprietor, this reading was already evident from the fact that claim 1 as granted did not recite such a boiling step. Moreover, step (d) of claim 1 began with the feature expressing the transfer of the treated wort to a trub separation step. The use of the term “treated wort” in step (d) was a clear reference to the treatment as defined in step (c), in which the terms “treatment temperature” and “ttreat” were used. The skilled person would thus have understood this to mean that the wort that resulted from step (c) was directly transferred to the trub separation step according to step (d). Therefore, there could be no intermediate boiling step between steps (c) and (d).
The proprietor further argued that, should the skilled person have had any doubts about the presence of a boiling step, claim 1 would have had to be interpreted in the light of the description according to Art 69(1).
Both paragraphs [0016] and [0017] of the patent made it clear that the wort was not boiled at any point during treatment and actually that step (c) of claim 1 was meant to replace the boiling step used in the prior art. The absence of any boiling step was further confirmed by the examples set out in the patent, in which wort was never boiled.
According to the proprietor, the statements in paragraphs [0011] and [0026] of the patent merely emphasised once more that boiling the wort should be avoided or at most limited to a minority of cases in which some specific requirements were needed. Therefore, these statements did not contradict the general teaching set out in paragraphs [0016] and [0017] of the patent.
The proprietor acknowledged that claim 2, which stated that the wort was not boiled while residing in the kettle, was a claim dependent on claim 1
However, it denied that the skilled person would have considered claim 2 to confer a repercussive effect on claim 1 in the sense that claim 1 would have been broader than claim 2 by possibly including a boiling step.
The proprietor submitted that the principle of repercussive effect was not a universal one that was to be applied blindly in all instances regardless of the context of the invention and the disclosure of the patent. In the current case, claim 2 would have been understood as simply having the effect of explicitly emphasising a feature that was already part of claim 1, i.e. that boiling was not part of the invention claimed. Therefore, at most the skilled person would have judged claim 2 to be redundant.
The proprietor further referred to decisions T 1603/13 and T 1023/02 and argued that the reading of claim 1 as granted was not to be stretched to cover interpretations contrary to the core of the invention, which, in the case at hand, was clearly the replacement of the conventional boiling process with a process in which wort was not boiled at any time.
The board’s decision
For the board, claim 1 as granted states that the process it defines “comprises” a certain number of steps. Due to the term “comprises”, additional treatments of the wort after step (c) are covered by the subject-matter of claim 1.
In particular, an additional step of boiling the wort within the kettle after said step (c) and before the transfer step (d) is not excluded from the subject-matter of claim 1 as granted.
This reading of claim 1 is confirmed by claim 2 as granted, which is dependent on claim 1 and restricts the subject-matter of claim 1 to a process in which the wort is not boiled during the whole duration of its residence in the kettle.
Therefore, contrary to the proprietor’s view, claims 1 and 2 as granted when read in combination make it clear to the skilled person that the absence of a step of boiling the wort after step (c) is merely an optional feature of the process as defined in claim 1, which, although preferred, is not mandatory.
The fact invoked by the proprietor that the examples set out in the patent concern methods in which the wort is not boiled at any time cannot change this conclusion since the claims have to be read as such, i.e. without resorting to the description for assessing their scope.
Moreover, this fact is in line with the above considerations by the board in the sense that the examples reflect the preferred embodiment of the invention as defined in dependent claim 2.
The board observed that in T 1603/13 the board rejected a restricted interpretation of the claimed subject-matter as proposed by the appellant by stating that the “claims cannot be interpreted in a manner that would contradict the idea of the invention as disclosed in the original application”.
In the case underlying decision T 1023/02, the board stated that “the skilled person, when considering a claim, should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent.
That board further observed that “a claim using “comprising” language should generally not be construed as covering subject-matter which includes further steps of a nature that would manifestly counteract the specified technical purpose of the step(s) recited in the claim”.
For the preent bord, its reading of claim 1 as granted is in line with these decisions; namely, this reading is technically sensible since boiling wort is well known in the art and takes into account the whole disclosure of the patent since the inclusion of a step of boiling the wort after step (c) as defined in claim 1 is clearly identified in the description of the patent as a possibility covered by the process of the invention. Moreover, such a boiling step does not counteract the technical purpose of the remaining steps recited in claim 1.
Comments
The present decision reminds us that when an independent claim statescontains the wording “comprises” it is an “open claim” and all dependent claims can be considered as preferred embodiments of the teaching in the independent claim.
The only proviso is that the claims should be read with a mind willing to understand and that the dependent claims do not contradict the teaching of the independent claim.
Once the proprietor conceded that in a minority of cases, in which some specific requirements were needed, the wort could be boiled, its whole argumentation was shattered.
No recourse to the description
The present decision is to be counted among those which take the claim as it stands, without recourse of the description, i.e. without applying Art 69(1) and the Protocol. The description should indeed not be used to bring in a claim limitations which might be found in the description but not in the claim as read by a skilled person.
It is a further example that shows that Art 69(1) and the protocol should only come into play when assessing the scope of protection in opposition, i.e. when applying Art 123(3).
On the procedure
For rejecting the opposition, the OD chose D4=US 2007/0154616, not mentioned in the ISR established by the EPO and not D10 as decided by the board.
Furthermore, from a rejection of the opposition, the procedure ended with revocation of the patent.
https://www.epo.org/en/boards-of-appeal/decisions/t200253eu1
ADDENDUM
There is a further decision in which the “repercussive effect” of a dependent claim upon the construction of the independent claim from which it depends has been applied. It is T 621/20, commented in this blog. The patent relates to heart valve prostheses, namely implantable replacement heart valves.
Dependent claim 10, was limited to an ex-vivo use of the method of independent claim 6. The board concluded that claim 6 encompassed an in-vivo as well as an ex-vivo use of the subject-matter of claim 6. This was also confirmed by § [0031] of the description, which discloses the possible need of the heart valve to be repositioned during endovascular surgery.
Comments
5 replies on “T 253/20 – Relation between independent and dependent claim when “comprises” figures in the independent claim”
For me, this case is interesting for its discussion of the “repercussive effect” of a dependent claim upon the construction of the independent claim from which it depends. Claim 2 is either redundant (deleting it makes no difference) or it is there for a purpose (to define a sub-set of the claim1 subject matter).
Now, what is the normal rule when construing a legal document? That every word is there for a reason. So, how much proof do I need, to get home with the argument that claim 2 should be ignored, treated as if it were not there, is “redundant”?
Quite a lot, I should have thought.
Max,
Regarding the repercussive effect, I am pleased to see this concept recognised by name by the EPO. To the best of my knowledge this marks only the second time that it has been applied explicitly by a Board giving it that name. Other decisions can be found in which parties sought to rely on it according to the summary of facts, but without the Board expressly using it as part of its formal reasoning.
The first case that I am aware of at the EPO to expressly acknowledge this concept is T 1279/04. This decision is notable in that it acknowledges that the use of the “repercussive broadening effect” of a dependent claim is “a standard canon of construction”. In other words it is a basic and fundamental principle that everyone ought to know, even if it is not often found written out in full.
(What other such fundamental principles or “standard canons” of claim construction might there be? This would be an interesting topic for discussion. Off the top of my head I can think of “comprising” being open-ended, and “for” meaning “suitable for” – everyone is assumed to know this so that it does not need spelling out.)
The Board in T 1279/04 also noted that “amendment rather than protracted argument should be the answer to genuine difficulties of interpretation”.
Other decisions which appear to have applied the repercussive effect, although without acknowledging it by that name, include at least T 32/97, T 1018/02 and T 614/13.
Another relevant principle to consider here is that if there is an alleged ambiguity in the claims leading to e.g. a dispute about how broadly they should be interpreted, that ambiguity may “be construed against the interest of the person responsible for drafting it … and in favour of the person on whom it is legally imposed” (T 1519/08,reasons 5.1.2).
Arguably the repercussive effect emerges from Rule 43 itself. This is abundantly clear that an (independent) claim states “the essential features of an invention” while dependent claims concern “particular embodiments of that invention” defined by “additional features”. In my opinion, the repercussive effect is nothing other than a proper recognition of the relationship between the claims as defined in, and necessarily implied by, this Rule.
Good stuff, Anonymous. Thanks for that.
Canons? How about one from the Interpretation Act of (?) 1881, that the singular includes the plural, and the plural the singular, unless the context demands otherwise? So when your claimed apparatus shall include “an intermediate layer” for example it contains within its ambit a device with two or more stacked intermediate layers. In other words, it shouldn’t be necessary to preface every feature in the claim with “one or more of”.
And then there’s “substantially”. Must I preface every feature in the claim with that tedious word? Or is it anyway to be read into the claim every time (unless the context, of course, requires otherwise).
Dear Max Drei,
I would like to state that the Interpretation Act of (?) 1881 is not of application at the EPO.
In European practice I would simply claim that the claimed apparatus comprises “an intermediate layer”. This allows the presence of two or more layers. If the claimed apparatus consists, inter alia, of “an intermediate layer”, then only one layer is present in spite of the “an”.
To me, “substantially” before each claim feature is as useful as “about” or “may” before each claim feature. When too much is optional or substantial or about, nothing is optional, substantial or about. There is case law on this. At least picking out some features of such a claim might end up with massive problems under Art 123(2).
See the addendum in the post.