EP 3 017 520 B1 n relates to solar cell assemblies and to solar cell modules including such solar cell assemblies.
Brief outline of the procedure
The OD revoked the patent as all requests on file were infringing Art 123(2).
The board confirmed that claim 1 as granted was infringing Art 123(2). One AR was admitted but infringed Art 123(3).
The revocation was thus confirmed.
The feature at stake
Claim 1 as granted can be summarised as follows:
A solar cell assembly comprising two or more solar cell units coupled in series, ……a by-pass diode coupled to each solar cell unit, …..a plurality of junction boxes, each junction box comprising exactly one of the by-pass diodes, …….
wherein the solar cell series are coupled with the by-pass diodes via cross-connectors, the cross-connectors of all the solar cell units being combined as a “single row” central cross-connector assembly that is placed substantially in a centre line of the solar cell assembly,
and wherein the junction boxes are placed substantially in a centre line of the solar cell assembly.
The underlined part will be called feature (h).
The proprietor’s point of view on added matter
The proprietor argued that, contrary to the OD’s approach, the file history should not be taken into account when assessing the original disclosure of a patent application.
In particular, it argued that the fact that the then applicant had intended to limit claim 1 over prior art document D9 during examination by the inclusion of the disputed term “single row” had no bearing on the assessment of the admissibility of the amendments during opposition or opposition appeal proceedings.
The proprietor also argued that the term “single row” can encompass a single connector line as well as multiple connector lines.
The proprietor assumed that, once an interpretation of a feature, such as feature (h), was determined, it could only be assessed whether this interpretation contravened Art 100(c). Other interpretations were, according to the proprietor, no longer relevant for the assessment of the admissibility of amendments.
In the context of claim interpretation the proprietor further argued that a non-specific definition in a claim should be given its broadest technically sensible meaning and referred inter alia to the CLBA in sections II.A.6.1 and I.C.4.1. According to the proprietor, the broadest technically sensible meaning of “single row cross-connector assembly” coincided with “one central cross-connector assembly” such that there was no unallowable amendment.
The proprietor objected to the OD’s conclusion that a single conductor line was not originally disclosed. With respect to the original disclosure for feature (h) the proprietor presented two lines of argument.
According to the first line of argument, the proprietor essentially brought forward that original figures 2a, 3a and 3b and page 10 of the original description provided an original disclosure for feature (h). Therefore, the disputed feature (h) was implicitly disclosed in the application as originally filed and claim 1 did not contravene Art 100(c).
The second line of argument was directed to the overall disclosure of the application as filed. The proprietor essentially argued that throughout the original application the placement of the cross-connectors was only presented as dependent on the placement of the bypass diodes. The placement of the cross-connectors did not depend on the type of bypass diodes, be they placed in a junction box or fabricated in the laminate of the module. This already became clear from the structure of the originally filed claims.
Thereby three junction boxes could be placed as shown in figure 3a which would result in a single row arrangement of the cross-connectors as defined in feature (h) in claim 1.
Moreover, the original description contained on page 4 a statement that “it is to be understood that the features of the various embodiments described herein are not mutually exclusive and can exist in various combinations and permutations.” and on page 14 the statement that “elements described in association with different embodiments may be combined“.
The opponents’ point of view on added matter
The opponents argued that, the fact that the proprietor had argued during the prosecution of the corresponding application that the limitation “single row” added to claim 1 was made in order to limit the subject-matter of claim 1 against D9 which disclosed “multiple rows“, can be taken as an indication that a narrow interpretation of the term “single row” is at least not technically unreasonable.
The board’s decision on added matter
The board agrees that in general there exists no file wrapper estoppel in proceedings under the EPC. A file wrapper estoppel is a concept in US patent law. This concept does not exist in the EPC.
In view of the proprietor’s submission in examination, it is however appropriate, at a later stage of the proceedings, to follow such a narrow interpretation which had been adopted by the proprietor.
Such an interpretation does not correspond to a “file wrapper estoppel” because it does not limit the interpretation of a certain feature to what was argued by the then applicant for all future proceedings.
Rather, the consideration of such events in the file history is used to determine whether an interpretation is technically reasonable or not, without excluding other interpretations.
The board thus agreed with the opponents and with the contested decision that a narrow interpretation of the disputed term “single row” is technically reasonable, without limiting the term to only this interpretation.
The OD, on the one hand, found that the assembly according to feature (h) could comprise multiple connectors arranged in a plurality of different lines – e.g. in three separate lines – such that the entire assembly takes a single row or area within the structure of the solar cell module.
On the other hand, the OD also found that another reasonable technical interpretation of the expression “single row” was a single connector line or a busbar.
The Board thus considers the interpretation of the term “single row” in the contested decision plausible.
According to settled case law of the BA, all technically reasonable interpretations of an ambiguous claim have to be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it has to be concluded that there is added subject-matter, cf. CLBA, 10th Edition 2022, II.E.1.3.9e.
The board held that, while it is true that according to the two citations of the CLBA a non-specific definition in a claim should be given its broadest technically sensible meaning, none of these citations refer to the interpretation of claims in the context of assessing the admissibility of amendments under Art 100(c) or Article 123(2).
The board concluded that all technically reasonable interpretations of feature (h) have to be taken into account for the assessment under Art 100(c). For the board it had to be assessed whether the possible interpretation of feature (h), according to which “single row” means a single connector line, was already encompassed by the content of the application as filed in accordance with Art 100(c).
Even if it were to be assumed that a “single row central cross-connector assembly” as defined in claim 1 was disclosed by figure 2a and the first and second paragraph of page 10 of the original description in the sense of the above-mentioned narrow interpretation, the board agreed with the opponents that the disputed feature still represents an inadmissible intermediate generalisation.
Firstly, the junction boxes are not only “substantially placed in the centre line” but also “substantially equidistant from each other or edges” and secondly they are “placed substantially in the centre line of the rear side of the module”.
At least with respect to the placement of the junction boxes on the rear side of the module, feature (h) represents an intermediate generalisation. The second paragraph on page 10 mentions the “rear side” four times in its first eight lines of text. Therefore, it cannot be assumed that the “rear side” is not interlinked with the disputed feature of a “single row”.
Therefore at least the omission of “rear side” in claim 1 constitutes an unalloawable intermediate generalisation.
For the board, the general citations (“in various combinations and permutations”) quoted by the proprietor did not constitute an unambiguous disclosure. They merely set out hypothetical possibilities without defining any respective technical content.
The further argument of the proprietor that “single row” meant “one” wherein “row” was redundant to “centre line” did not convince the board either. The term “a single row” defines a number in combination with a geometric appearance whereas “one” is just an undefined number.
The proprietor’s additional arguments against the pertinence of “rear side” for feature (h) did not convince the board either. It is correct that the disputed feature (h) does not explicitly deal with the placement of junction boxes but that is neither the case for the second paragraph on page 10 of the application as filed, on which the proprietor bases its arguments in favour of feature (h). The content of this paragraph explicitly focuses on the placement of the junction boxes and does not explicitly mention the arrangement of the cross-connectors.
The placement of the cross-connectors is dependent on the placement of the junction boxes because the cross-connectors need to connect to the bypass diodes in the junction boxes.
In view of the emphasis given to the “rear side” in the second paragraph of page 10 the board held that the “rear side” to be intrinsically linked to the placement of the junction boxes and therefore also intrinsically linked to the placement of the cross-connectors.
Therefore, the board concluded that the ground for opposition pursuant to Art 100(c) prejudices the maintenance of the patent as granted.
Comments
The decision is interesting as it shows that submissions, of the then applicant, during examination, could lead to a narrow interpretation of the claim in opposition.
In view of these submissions, arguing later with the “broadest technical interpretation”, seem somehow contradictory.
On the other hand, all technically reasonable interpretations of feature can be taken into account when assessing added matter.
In T 1791/16, Reasons11, the board held that in the interest of legal certainty, a board must consider all technically reasonable claim interpretations. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that a breach of Art 100(c) has occurred.
In the present case, irrespective of the “single row” feature, further unallowable generalisations occurred: the junction boxes are not only “substantially placed in the centre line” but also “substantially equidistant from each other or edges” and secondly they are “placed substantially in the centre line of the rear side of the module“.
In T 2241/15, Reasons 4.8, it was held that a statement to the effect that all aspects of the disclosure were combinable, cannot be considered as a direct and unambiguous disclosure of each of the specific combinations it tries to cover.
Comments
2 replies on “T 325/23 – Art 123(2) – Balancing between a narrow interpretation and the broadest technical interpretation”
Consultation of the history file to interpret the claims was introduced in the case law of the BoA a long time ago by T149/82 ! As far as I know, the decision was never contradicted.
Dear Thierry,
Thanks for your pertinent comment and drawing the attention to T 149/82.
T 149/82 seem to have been a one-off decision. It has never been cited in later decisions of the boards.
There might be an explanation for it. In Reasons 1.12, 2d §, the board noted the following:
In the present case, the ED took as its basis a definition of the subject-matter of the invention based on an interpretation of the literal content of claim 1, an interpretation which cannot be dismissed a priori even on the basis of the description, but which does not correspond to the applicant’s statement of intention in her reply to the request for a preliminary ruling. The subject-matter of the rejected invention is not identical to that which the applicant intended to patent. There was therefore an infringement of Article 96(2) EPC.
I would therefore not go as far as to say that the board approved as such that the file history is to be used in order to interpret the claim. I just said that the ED ignored what the applicant intended to patent.
In any case, T 149/82 might become obsolete once we know what the EBA will say in G 1/24.