EP 3 219 374 B1 relates to a vacuum cleaner filter bag made from recycled plastics.
Brief outline of the case
The OD decided that all requests on file infringed either Art 123(2) or 123(3) and revoked the patent.
In a communication under Art 15(1) RPBA, the board was of the opinion that claim 1 as granted as well that of AR 1-1A were all infringing Art 123(2). It was also of the opinion that AR1B was neither infringing Art 123(2) nor Art 123(3).
The proprietor made AR1B his MR in appeal and the board decided remittal for further prosecution.
The opponent’s point of view
The opponent argued that the deletion of the feature ‘in accordance with the standard DIN EN 15347:2007’ (D8) in claims 1 and 12 of AR1B extended the scope of protection as it had technical relevance.
The D8 standard distinguishes between standardised and non-standardised plastics and therefore restricts the range of available plastics.
The opponent also argued that R 80 was infringed, since the deleted feature was an optional feature.
The board’s decision
According to G 1/93, it is permissible to delete an undisclosed feature without any technical significance from a claim without infringing Article 123(3) EPC.
For the board, the D8 standard merely provides a “scheme for the characterisation of plastic waste”, i.e. a kind of labelling of the starting material for the production of fibres.
In contrast, the standard does not explicitly set any requirements for the plastic recyclates themselves.
Thus, the “required data” or “voluntary data” for plastic waste specified by D8 are not technical characteristics of the recycled plastic or recycled plastics per se.
According to this standard, plastic waste can also be labelled “Not classified” or “No information”. Nowhere in D8 is it therefore stipulated that certain plastic waste must not be used.
Even the possible impairment due to contamination does not lead to the exclusion of plastic waste.
The feature contained in claim 1 as granted implies at most that the starting material for the recycled plastic is waste plastic(s). However, this is also the case after deletion of the feature, since claim 1 still refers to recycled plastic(s). If a plastic is to be recycled, it is necessarily a plastic waste, because only waste can be recycled.
In this respect, the inserted feature does not constitute a further limitation of the range of usable plastic waste and can be deleted without infringing Art 123(3).
As far as the requirements of Art 123(3) are concerned, it should be noted that there is no standard DIN EN 15353:2007, but only a “DIN Technical Report CEN/TR 15353” (D18). The opponent itself expressly admitted this.
The reference to a non-existent standard cannot entail a technical restriction.
Thus, this deletion under G 1/93 is also in line with the requirements of Art 123(3).
The board also noted that the in its argumentation, the opponent contradicted itself. On the one hand, R 80 was infringed, since the deleted feature was an optional feature, and on the other hand, it was an unauthorised extension of the scope of protection.
Comments
G 1/93 is now as the “inescapable trap” decision. Deleting, in a granted claim, a feature, offending Art 123(2), end up ends in offending Art 123(3).
Art 123(3) is, in principle, also infringed if a feature is deleted from a granted claim.
If a feature in a granted claim makes no technical contribution, its deletion does not imply an extension of protection. This must be relatively rare and the present case is one example.
If a feature is technically redundant, it does also not appear to have any technical contribution, and can also be deleted without increasing the scope of protection. .
There are very few decisions in which the proprietor did not end up in the inescapable trap.
In T 310/13, AR2 allowed remittal for further prosecution. In view of an amended additional feature, the protection conferred was narrowed, without infringing Art 123(2).
In T 1779/09, the term “only” was introduced during examination. The exclusive limitation of the search terms to a name and/or address did not influence the solution of the technical problem as understood from the application as originally filed, and hence provided no technical contribution to the claimed invention.
In T 1746/10, claim 1 as granted and according to the main request covered at least two alternatives. The amended claim of AR5 is a restriction to one of these and is thus a limitation rather than an extension of scope.
A classical example allowing not to fall in the inescapable trap is when claim 1 as granted represents an intermediate generalisation, but the amended claim overcomes the intermediate generalisation.
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