The patent relates to a process and an apparatus for the cryogenic separation of air in a distillation column system, in which the control of at least one process parameter is performed by a combination of an “ALC control” and an MPC controller.
Brief outline of the procedure
The application was refused as the ED considered that the subject-matter of claims 1 and 6 the subject-matter of claims 1 to 5 of the new MR did not satisfy the requirements of Art 84.
The refusal decision of the ED is in two parts. In the first part, the ED came to the conclusion that claim 1 of the MR lacked N over D1 and D2. In the following second part, after having decided on the lack of N, the ED then decided that the feature “ALC control” was “vague and unclear”
The applicant appealed the refusal.
The board confirmed the lack of clarity of claim 1 of the MR: AR 1 and 2 were not admitted under Art 13(2) RPBA20.
The application was then refused for good.
The whole discussion in examination and in appeal was about the possible meaning of the feature of an “ALC control“, which was considered unclear by the ED and the board, whereas the feature of an “MPC controller” was considered clear.
The ED’s position
In the contested decision, the ED concluded that claims 1 to 5 did not satisfy the requirements of Art 84 by using the “vague and unclear” feature “ALC control“.
The skilled person was uncertain as to its meaning, in particular because the term was used with different meanings in the prior art, for example in D2.
However, the feature had to be defined in the claim – as also required by the Guidelines for Examination, F-IV, 4.2 – in such a way that the meaning was clear from the wording of the claim alone.
The applicant’s position
The applicant argued that, although the term “ALC control” is used for all sorts of things that have nothing to do with the “ALC control” of the patent application”, the correct meaning of the feature “ALC control” used in the claim was sufficiently clear from the description.
This was sufficient with regard to the requirements of Art 84, since according to general principles of interpretation and by analogy with Art 69 the description had to be used for interpretation. This was also in line with the general principle that “the patent application constitutes its own dictionary“.
For the applicant, Art 69(1) and its Protocol on Interpretation should be applied by analogy in examination procedures, and concluded that the feature “ALC control” is sufficiently clear in combination with the description.
Thus, the skilled person would directly and immediately understand what was meant by the term “ALC control” and how it was integrated into the claimed control concept.
The claim wording also satisfied the requirements of conciseness set out in Art 84.
In a balanced overall view of the above-mentioned legal requirements of Art 84, the claim wording thus proved to be allowable.
Moreover, the introduction of amendments for clarification would entail the risk of newly arising further objections, for example with regard to an inadmissible extension of subject-matter.
The board’s position
According to the established case law of the Boards of Appeal, the patent claims should be clear in themselves in such a way that a person skilled in the art does not need to consult the contents of the description in order to understand their subject-matter, cf. Case Law of the Boards of Appeal, 10th edition 2022, II.A.3.1. The board further referred to G 1/04, Diagnostic methods, Grounds 6.2.
The board did not agree with the “general principle” according to which the patent application constitutes its own dictionary.
For the board, Art 69(1) relates to the determination of the scope of protection of the granted patent and thus applies in proceedings before the EPO essentially in connection with Art 123(3).
Nevertheless, the description is not generally disregarded when it comes to the interpretation of claim features .
The board referred to T 1646/12, grounds 2.1 in which the board stated that two extremes must be avoided:
- Firstly, it is not permissible to regard the claims and the description as communicating vessels, so to speak, for example, by reading into the claims limiting features which are disclosed in the description but not in the claims. Such a transfer of limiting features cannot be achieved by interpretation, but only by amending the claims.
- Secondly, the claim cannot be regarded as completely separate from the description. The skilled person interpreting a claim must at least ascertain whether the expressions of the claim are to be understood according to their ordinary literal meaning, or whether the description defines a special meaning for these expressions.”
For the board, this balancing exercise is to be applied in an analogous manner to the review of the criteria of Art 84 in the case of amendments to the claims. However, here, in contrast to the interpretation of granted claims, the principle must first be satisfied that the missing essential features must be included in the claim and that the meaning of the features for the person skilled in the art should be clear from the wording of the claim alone, see G 1/04, supra.
The applicant’s recourse to the description in the sense of a separate dictionary may be admissible for interpreting the claims of a patent in opposition proceedings when features are no longer amenable to objection under Art 84 but must nevertheless be interpreted.
The board added that there are limits to such recourse in claim interpretation, cf. “primacy of the claim”: T 1473/19, grounds 3.16.2, commented in this blog, or T 169/20, grounds 1.3.4, also commented in this blog, in particular in the way that features missing in the claim, and not implicitly defined from the technical understanding of the terms used in the claim, cannot be read into the claim.
Similarly, in the examination procedure, the absence of such essential features which are not already immediately and clearly implicitly recognisable as belonging to the claim on the basis of general technical knowledge concerning the terminology used in the claim must be objected to as a defect under Art 84.
According to page 2 of the description the term “ALC control” stands for “Automatic Load Change – Control“.
Whilst the term “MPC controller” has a definite meaning in the field of control engineering = “Model Predictive Controller”, this is not the case for the term “ALC controller“.
In D2, the term “ALC system” is indeed used in the sense of an “automatic load change“. However, according to the applicant, this system is precisely not to be regarded as an ALC control in the sense of the invention.
The term “ALC control” is thus unclear as such.
Missing essential features
In principle, the skilled person understands “Automatic Load Change Control to mean that when there is a change between different load cases of the cryogenic air separation plant, the system automatically switches to another load case with a different steady-state operating point in each case.
However, claim 1 additionally defines a set of measured values from test operation (feature [C]) that are included in the “ALC control”. Thus, the “ALC control” according to claim 1 no longer falls within the broad functional definition. This is not in dispute, as the applicant itself refers to further specific definitions on page 2, line 15 to page 3, line 5 of the application documents for the interpretation of the feature.
The requirement of conciseness in Art 84 is a condition in its own, according to which it is intended to prevent the clear intelligibility of the claim from being compromised, for example, by redundant features. However, it is not to be applied in such a way as to limit the requirements for clarity under Art 84.
Applicant’s argument that the necessary conciseness and intelligibility of the claim would no longer be maintained by a corresponding “comprehensive definition” is merely an assertion that is not substantiated in any detail and not readily comprehensible.
It is therefore not at all convincing that corresponding clarifications would “overload” the claim to the detriment of clarity.
The present decision belongs to what I have called in preceding blogs to the “second line of case law” with e.g. T 169/20, T 821/20 and T 1127/16.
For this line of case law, Art 69 is, in principle, only applicable before the EPO in opposition proceedings when it comes to the application of Art 123(3).
Art 69 is not to be applied in examination and is only applicable in opposition when features are no longer amenable to an objection under Art 84 but must nevertheless be interpreted.
In the present case, the board took the bother to check the claims of the MR against all criterion of Art 84, clarity as such and conciseness. It also added that essential features ought to be stated in the independent claim.
Even if one could consider that the leading line of case law is the “second line of case law” which limits the use of Art 69 in procedures before the EPO, the EBA should clarify the situation.
If claim 1 is manifestly unclear, as confirmed by the board, it is difficult to follow the ED that the subject-matter of claim 1 was at the same time lacking N. This would be possible, if the claim would be given a certain interpretation and with this interpretation, the subject-matter could lack N or IS.
In its decision, the ED dealt first with the lack of N to conclude in a second part that the claim was as well unclear. If a claim is unclear, how can it be compared with any prior art?