EP 3 055 570 B1 relates to an electronic control device for a component in compressed air generation, compressed air processing, compressed air storage and/or compressed air distribution.
Brief outline of the case
The OD held that claim 1 as granted as well as that of AR1, lacked N over a E1=US 2012/0215509, not mentioned in the ISR established by the EPO. The OD decided maintenance according to AR2.
The board confirmed the lack of N of claim 1 as granted and of AR1 over D1. Contrary to the OD, the board held claim 1 as maintained also lacking N over D1.
As all other AR were not discussed, the board remitted to the OD for further prosecution.
The case is interesting in view of the application of G 1/24 by the board.
Preliminary remark on the interpretation of the claims
The board noted the following:
The claims, in particular independent claims 1 and 26, of the contested patent each comprise a large number of alternatives, for example with regard to what is being compared and what the comparison ultimately serves.
In addition, the individual features of the claims or the alternatives mentioned therein are also predominantly not directly related to each other. This means that the claims are very general in nature.
The proprietor’s point of view on the interpretation of the claims
The proprietor argued that, according to G 1/24, the description must always be taken into account when interpreting the claims.
The opponent’s point of view on the interpretation of the claims
Referring to decisions T 1924/20 and T 169/20, the opponent argued that claims should be examined for N and IS in their broadest technically meaningful interpretation and that the description and drawings should not be used to read additional limitations into the wording of the claims.
The board’s decision
Irrespective of decisions T 1924/20 and T 169/20 cited by the opponent, the boards have stated in several cases following G 1/24 that recourse to the description does not mean that limiting features which result solely from certain embodiments in the description can restrict the subject-matter claimed in more general terms in the claim, see, for example, T 1232/23, reasons 2.10.3; T 1465/23, reasons 2.4; T 1846/23, reasons 1.5.4; T 1069/23, reasons 2.3.1; T 1351/23, reasons 3.2.2; T 412/24, Reasons 3.1.1; T 2034/23, Reasons 3.6.2; T 1402/24, Reasons 2.5.2.
In line with those decisions, the board considered that G 1/24 does not require a claim to be interpreted more narrowly in the light of the description than the skilled person would understand its wording.
In this regard, the board concurred in particular with the relevant statements in decision T 2027/23, guiding principle and reasons 3.5.2 to 3.5.6.
In accordance with the opponent’s submissions, the claims of the contested patent are therefore interpreted as broadly as possible in a technically meaningful manner for the purpose of analysing N in this decision, cf. CLBA, 11th edition 2025, section II.A.6.1.
Furthermore, and independently of this, the board noted that the invention is described very broadly, at least in the first part of the description, up to and including paragraph [0059], and lists a large number of possible embodiments for essentially each of the features defined in the claims.
Examples include paragraphs [0014] to [0017], alternative embodiments of the control device, and [0018], various definitions of a ‘component’.
Irrespective of the extent to which the description of a contested patent must be taken into account in interpreting its claims according to G 1/24, its breadth in the present case does not provide any basis for interpreting the claims in a significantly narrower sense than the skilled person would understand from their literal wording.
Comments
As a general rule, claims have to be interpreted as broadly as possible in a technically meaningful manner for the purpose of analysing patentability.
Following previous decisions of the boards, the present one makes clear that when it comes to the comparison of the subject-matter of a claim with the prior art, a very broad claim cannot be artificially restricted on the basis of specific considerations contained in the description.
What goes for a broad claim with limiting statements in the description, applies mutatis mutandis when the claim is more limited and the description contains considerations allowing a much broader interpretation of the claimed features.
As summarised in T 2027/23, commented in the present blog, neither the boards, nor first instance divisions, nor third parties should be obliged to carry out interpretative somersaults.
It is to be noted that in the case leading to G 1/24, in a submission of 04.07.2025, the proprietor filed an AR1 in which § [0035] as originally filed was deleted. § [0035] allows a much broader interpretation of the term “gathered” mentioned in the claim at stake. The filing of AR1 is certainly not due to a mere coincidence. As no AR had been filed up to now in the procedure, it will have to be seen whether AR1 is at all admissible.
Comments
1 reply on “T 356/23-On the application of G 1/24”
EBA: The Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the Enlarged Board agrees with the harmonisation philosophy behind the EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC.
TBA: The claims of the patent in suit are therefore interpreted as broadly as possible in this decision in a technically reasonable manner for the purpose of the novelty analysis.
No comment is needed.