EP 3 571 944 B1 relates to an intelligent controller for an electronic cigarette. EP 3 571 944 B1 is a second generation divisional of the grandparent application EP2 921 064.
Brief outline of the case
The patent was maintained according to AR2 and both opponents appealed.
The board held that claim 1 as maintained infringed Art 76(1).
All other requests were either infringing Art 76(1) or were not admitted.
The patent was thus revoked.
The case is interesting in that in claim 1 as maintained
- a battery found in the grandparent application has been omitted and
- the attempt to resolve the omission of the battery by declaring amended requests filed during OP as being the result of a correction under R 139.
The OD’s decision
The OD held that there were several passages in the grandparent application as filed, which clearly and unambiguously tought the skilled person that the battery and the battery’s connections with the other elements of the intelligent controller were not essential elements of the invention originally disclosed in the grandparent application. It referred to paragraph [0005] of the grandparent application.
For the OD, the nature of the power supply was not relevant for the objective in the grandparent to be achieved, so that the presence of a battery was not recognised as an essential feature by the skilled person, nor is it presented as such in the original grandparent application; the presence of a battery is mentioned in the original application only because electronic cigarettes normally use it as power source.
In the OD’s opinion, removing this feature from the claim did not require modification of any of the remaining features, so that the requirements of the “three-point test” of the Guidelines H-V, 3.1 were met.
The OD added that, also when applying the “gold standard” of G 2/10, it is evident to the skilled person that the language of original independent claim 1 of the grandparent application that relates to the battery and the battery’s connections with the other elements of the intelligent controller is not functionally or linguistically associated with the remaining features of independent claim 1 as originally filed and can therefore be omitted without violating the requirement of Art 100(c).
The proprietor agreed with this point of view.
The proprietor’s request for a correction under R 139
At the OP, the proprietor filed new “corrected” AR 4-7. The new AR 4 to 7 set the maintained battery feature in a new context that defines, for the first time, the battery as comprised in the intelligent controller.
Hence, the proprietor wanted that AR 4-7 to be considered as a mere correction under R 139.
The board’s decision
Omission of the battery
In its communication under Art 15(1) RPBA, the board explained why it considered that not claiming that the intelligent controller comprised a battery and the battery’s connections and function in relation to certain other parts of the intelligent controller, constituted an extension of subject matter beyond the application as filed. the board referred to the “gold standard” as defined in G 2/10.
The board acknowledged that the OD had also referred to the “gold standard” in its decision.
The board added that, whatever significance the OD may have attached to its observations regarding linguistic association of the battery with the remaining claim features, the battery was certainly defined in the last part of claim 1 of the grandparent as being comprised in the claimed intelligent controller.
Therefore, it is without a doubt originally defined to be a part of the electronic controller, and not more generally as the battery of the electronic cigarette as the proprietor seemed to suggest.
For the board, it is hard to see how the OD came to the conclusion that the battery was not defined in the claim as being functionally connected the claimed intelligent controller.
Put a different way, from claim 1 of the grandparent, the intelligent controller is originally disclosed as comprising a battery connected in a certain way and having a certain function with regard to other components of the intelligent controller. Therefore, there would appear to be no direct and unambiguous disclosure of an intelligent controller without such a battery from the claim considered in isolation.
Correction under R 139
The battery feature as it appeared in AR4-7 on file at the start of the appeal proceedings left open whether or not the author of the claim wished to merely refer to a battery or define it to be part of the claimed electronic cigarette, let alone that it should be more specifically defined as comprised in the intelligent controller, as AR4-7 filed at the OP before the board do.
The board held that, the amendment went well beyond defining the only possible thing that could have been objectively intended from the claim wording of AR4-7 as filed with the proprietor’s reply to the appeals.
Since the amendments to AR4-7 are a substantive response to an added subject matter objection, they can but change the substance of what is claimed. Thus, they are by definition not corrections resulting in no overall change in substance from what the skilled person would have objectively derived from their original versions.
Consequently, the board considered that the amendments to AR4-7 do not meet the requirements of R 139, second sentence.
Comments
Omission of the battery
Although the boards are at loggerheads with it for quite a while, the “three-point test” is still mentioned in the Guidelines H-V, 3.1 so that first instance divisions are still allowed to use it. Applied properly, it leads to the same result as the “golden standard” defined in G 2/10.
The conclusion of the OD is somehow flabbergasting. How can an electronic circuit be powered without a power source? Leaving the battery out was simply ludicrous. Even a general reference to a power source would not have been allowable here, as only a battery has ever been disclosed. Can you imagine an electronic cigarette been powered by the means? Whatever the OD might have thought, the third criterion of the three-point test was not fulfilled whatsoever. See e.g. T 775/07.
Correction under R 139
It was an interesting move from the proprietor to attempt disguising the amended AR4-7 filed during OP as a correction under R 139. The board had a reply as clever as the proprietor thought he was. Having been filed during the OP, amended AR4-7 could have been dismissed at once under Art 13(2) RPBA
Comments
4 replies on “T 422/23 – The “three-point test” was not correctly applied”
Hindsight is 20/20, but this results from poor drafting and it is hard to feel sympathy for the applicant. The first thing that should be done when drafting a claim is to ask whether each feature is essential and strip back the claim to its essentials. When this process of stripping the claims back is completed, the final feature of the claim will often be the heart of the invention. If it is not, it suggests that something is wrong with the claim. Here, the obvious question the drafter should have asked themselves is if there is anything inventive about “a battery electrically connected to the switch module, the voltage acquisition module, the control module, and the display module, respectively, configured to supply working voltage power to the switch module, the voltage acquisition module, the control module, and the display module, respectively.” That the applicant later wanted to delete this feature is hardly a surprise. It would have taken a couple of minutes to remove this feature and to explain in the description that the battery could be replaceable. The tactics used to attempt to make this amendment/correction were dubious at best.
When preparing candidates to the future ex-Paper B of the EPO, this is what I always explain: in a first move put in the claims all what you think is necessary, but then think whether all the features are essential and the claim is clear as such.
What is not essential should then be removed up to the moment that an objection of lack of clarity or of added matter could come into play, and then check whether novelty and inventive step are still given over the available prior art.
One should never forget that any feature mentioned in an independent claim, as filed or not, is considered essential at the EPO. Any attempt to later remove an essential feature might then be faced with an objection of added matter.
There are also situations in which the description implies that a feature is essential without even saying so. If in all embodiments a specific feature, X, is present, then this feature X is actually essential.
That in a hand help device a power supply is essential, cannot be really negated. Rather than a battery, it could have been better to speak about power means and the connection with the control circuit, by e.g. a battery. Then the battery is not essential and can be deleted, but certainly not the power means as such and its connections with the device.
Means + function claims are admitted at the EPO, see Guidelines F-IV, 6.5.
I query the statement that if in all embodiments a specific feature, X, is present, then this feature X is actually essential. This statement seems not in line with the guidelines. They state that essential features of a claim are those necessary for achieving a technical effect underlying the solution of the technical problem with which the application is concerned (the problem usually being derived from the description). Also that any features which, even if consistently mentioned in the context of the invention throughout the application, do not actually contribute to the solution of the problem are not essential features.
Say my invention is a car having a special coating which prevents water ingress around the edges of the doors. All embodiments in my application happen to have a car which has four wheels and two windscreen wipers on the front window. Does this mean a claim to a car having the coating necessarily needs to include four wheels and two windscreen wipers? I believe not.
@ Anonymous,
I maintain my point of view. If for instance, in all examples in the description a reaction is carried out at the same temperature range or with the same parameter, the temperature range or the parameter are de facto an essential feature as they appear prima facie necessary for achieving the technical effect underlying the solution of the technical problem with which the application is concerned.
Contrary to what you allege, my position is thus not at odds with the Guidelines. As any general statement, it may suffer some exception like in your example.
If the invention indeed relates to a special coating which prevents water ingress around the edges of the doors, the number of doors, of wheels or of seats in the car is manifestly irrelevant, and it would not cross my mind, or that of any well trained examiner, to raise an objection about the number of doors etc.
However, not introducing the essential feature, temperature range or parameter, in the independent claim, would give raise to an objection under Art 84 and/or Art 123(2).
For the surplus, have a look at T 1841/21 cited in T 1099/21. Even an unclear essential feature cannot de deleted or changed without infringing Art 123(2).