As the board formulated it, the “patent relates to the field of sexual paraphernalia, in particular to a sexual stimulation device dimensioned to be worn by a female during intercourse”.
Brief outline of the case
During procedure before grant, a number of patent and non-patent documents were first cited anonymously by a third party.
In reply to a communication from the ED the proprietor cited a series of documents from US procedures, inter alia before the ITC.
A second set of anonymous objections were cited during examination
Two sets of non-anonymous objections were further cited during examination. One came from a future opponent. .
By making AR2 the MR, OP could be avoided and a patent was granted.
The feature leading later to an objection of added matter was never discussed during examination.
The OD rejected the oppositions. None of the objections raised under Art 100(c), (b), (a) were considered convincing.
Opponent 1 withdrew its opposition.
Opponent 3 did not make any submission in appeal.
Opponent 2 appealed this decision.
The board revoked the patent for added matter as claim 1 as granted was considered infringing Art 123(2), whereby further AR were not admitted under Art 13(2) RPBA20.
The corpus delicti
Claim 1 as originally filed comprised the feature “an inner arm dimensioned for insertion into a vagina, to contact the wall of the vagina at or near the G-spot”.
In claim 1 as granted, the wording “to contact the wall of the vagina at or near the G-spot” has been deleted from that feature.
It was disputed whether claim 1 as granted comprised added subject-matter due to that deletion.
The opponent’s position
Claim 1 as originally filed required that the inner arm was dimensioned to contact the wall of the vagina at or near the G-spot.
This feature had been removed, and instead claim 1 recited “resulting pressure from the inner arm (1) on the anterior surface of the vagina”.
However, the application as originally filed only disclosed contact and pressure at or near the G-spot, which was a specific area within the anterior surface of the vagina, as confirmed in the application as filed.
For the opponent, pressure on the anterior surface of the vagina did not necessarily imply contact at or near the G-spot, so the amendment resulted in added subject-matter.
The proprietor’s position
The person skilled in the art understood that the expression “at or near the G-spot” covered the complete anterior surface of the vagina, as indicated in Wikipedia’s German entry on the G-spot (“Gräfenberg-Zone”) and, inter alia, on the opponent’s website/online shop.
Applying pressure on the anterior surface was thus equivalent to applying pressure at or near the G-spot.
Moreover, for the pressure of the device’s inner arm on the anterior surface of the vagina to keep the device in place, the inner arm had to be inserted a few centimetres into the vagina.
The inner arm thus necessarily contacted the anterior wall of the vagina at or near the G-spot, so the functional feature was inherently present.
The board’s position
For the board, the term “G-spot” is thus to be regarded as referring to an area covering only a portion of the anterior surface of the vagina. The uncertainty about the exact size and location of this area was not decisive in this respect.
Claim 1 as granted does not specify where on the anterior surface pressure is exerted by the inner arm. Claim 1 thus leaves it open whether the pressure is exerted “at or near the G-spot” or on another location of the anterior surface.
The proprietor’s argument that due to the limited size of the anterior surface of the vagina, any point on it will be near the G-spot is not convincing. Due to the even smaller size occupied by the G-spot and the relative nature of the term “near” (i.e. the smaller the objects of reference are themselves, the shorter the distance between them that can still be understood as “near” is), not any point of the anterior surface is necessarily to be regarded as being near the G-spot.
The claim requirement that the pressure contributes to hold the device in place does not lead to a different conclusion since pressure to hold the device may be, for example, applied at a location which is further within the anterior surface than the G-spot and not necessarily near it.
Hence, the subject-matter of claim 1 is not limited to devices where the inner arm is dimensioned for insertion into a vagina “to contact the wall of the vagina at or near the G-spot”.
While the application as filed stresses the importance of the application of pressure “at or near the G-spot”, according to claim 1 of the patent as granted, the application of pressure at this location is merely optional.
This presents the person skilled in the art with different technical information. For this reason, the subject-matter of claim 1 of the patent as granted extends beyond the content of the application as filed, cf. Article 100(c).
It is not so often that we can have a smile when dealing with patents. If the present post offends any reader, please accept my apologies, but after all we are all adults.
The present case shows that even for devices which are not absolutely needed in everyday life, the battle can be rather fierce, and a lot of money be involved.
One lesson is however abundantly clear: the deletion of any feature in an independent claim as filed is always risky. Any feature in an independent claim is deemed to be essential and can only be deleted if the original disclosure allows it. In the present case, the deletion was not possible in view of the original disclosure.
Claim 1 as granted can be either considered representing an intermediate generalisation or a broadening of claim 1 as filed. The net result is the same.
When the proprietor asserted that “applying pressure on the anterior surface was thus equivalent to applying pressure at or near the G-spot” the fate of the patent was broadly settled. Equivalents belong to IS and not to N.
That equivalents cannot be used when it comes to N and hence added matter goes back to rather old decisions, e.g. T 167/84, see Reasons 6 [when dealing with PA under Art 54(3)] or T 265/88, see catchword and Reasons 3.2. [when dealing with added matter].
N and added matter are the two sides of the same coin.
In my experience, there are often minute details which lead later to revocation under Art 100(c). Correct proof-reading of the application before filing could later avoid many problems of added matter.
Here the proprietor might have realised much later that its original claim 1 was too limited, but after filing it is more than difficult to amend the original disclosure.