EP 3 076 804 B1 relates to a heated aerosol generating article with thermal spreading wrap.
Brief outline of the case
The OD rejected the description and the opponent appealed.
In view of the importance of the questions raised with respect to the interpretation of the claim, the board decided to refer questions to the EBA. This led to decision G 1/24.
Following G 1/24, the board decided that claim 1 as granted lacked N over D1=EP 2 368 449.
AR1 in which § [0035] was deleted was admitted by the board, but was considered infringing Art 123(3).
The patent was thus revoked.
In the present post we will concentrate on the reasons why AR1 infringed Art 123(3).
The opponent’s point of view
Admissibility of AR1
The opponent essentially argued that the submission of AR1 resulted in an amendment to the proprietor’s appeal case at a very late stage of the appeal proceedings without any justifying circumstances.
The proprietor could and should have thus anticipated an adverse outcome in view of the diverging case law. The opponent put forward that the referral to the EBA could not justify the failure to present a complete case at an earlier stage.
Moreover, the opponent submitted that the requirements of Art 13(1) RPBA were not met because AR1 did not prima facie overcome the objections raised and instead gave rise to new issues, thus being prejudicial to procedural economy.
Allowability of AR1 under Art 123(3)
The opponent submitted that the deletion of paragraph [0035] from the description of the contested patent altered the interpretation of the term “gathered sheet” in claim 1 and, consequently, the scope of the protection conferred.
It argued that, in the absence of the broader definition provided in paragraph [0035], the term “gathered sheet” no longer encompassed a gathered tobacco sheet.
As a result, the scope of protection conferred by claim 1 was extended compared with that of claim 1 as granted.
The proprietor’s point of view
Admissibility of AR1
The proprietor expressed the view that the submission of AR1 in which the only amendment was the foreseeable deletion of a paragraph of the description did not represent an amendment to its appeal case.
Accordingly, no discretion was required from the board to admit this request into the appeal proceedings. In any event, it argued that AR1 should be admitted under Art 13(2) RPBA because the referral to, and the subsequent conclusions of, the EBA regarding claim interpretation constituted an exceptional procedural situation.
Allowability of AR1 under Art 123(3)
The proprietor argued that it was implicit from the wording of claim 1, when read by a skilled person, in the light of common general knowledge, that the claimed aerosol-forming article was rod-shaped, with it being implicit that the gathered sheet was compressed or constricted substantially transversely to the cylindrical axis of the rod. In the respondent’s view, this geometry was inherent in the common understanding of the term “aerosol-forming article”, even in the absence of paragraph [0035].
The board’s decision
Admissibility
The bord admitted AR1 and the late filed objection under Art 123(3) into the procedure.
The board considered that the referral to, and the subsequent decision of, the EBA in case G 1/24 constituted exceptional circumstances within the meaning of Art13(2) RPBA.
The same exceptional circumstances pleading in favour of the admissibility of AR1, applied to the late submission of the objection under Art 123(3).
Allowability of AR1 under Art 123(3)
Claim 1 contains neither explicit nor implicit features that necessarily limited the claimed aerosol-forming article to a rod-shaped configuration or, as a consequence, required the tobacco sheet to be gathered by being compressed or constricted substantially transversely to the cylindrical axis of a rod.
In the absence of the definition formerly provided in paragraph [0035], claim 1 also encompasses aerosol-forming articles that are not rod-shaped, i.e. not substantially elongated in one direction and, if they are, sheets that are folded and gathered not substantially transversely to but along the cylindrical axis of the rod, like a bellows, thus extending the scope of protection compared with claim 1 as granted.
In line with the Enlarged Board of Appeal’s holistic approach to claim interpretation in decision G 1/24, Reasons 12 and 17, a skilled person reading the claim in the context of the description and figures will try to take a definition found in the description at face value.
As long as the definition is technically reasonable and complies with the overall teaching expressed in the claims, description and figures, the skilled person will read the terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects found in that definition. It is therefore not permissible to consider only the broadening aspects contained in a definition and disregard any limiting aspects.
As set out by the Enlarged Board in G 1/24, Reasons 20, Art 84 may require that limiting or broadening aspects are expressed in the claim to avoid any unclarity, but a granted claim has to be read in light of all aspects of a definition found in the description.
For those reasons, AR1 does not comply with the requirement of Art 123(3), and is therefore not allowable.
Comments
It is debatable whether the late objection of the opponent under Art 123(3) should have been admitted or not. As the board admitted AR1, it apparently did not want to ignore the objections raised by the opponent under Art 123(3).
I cannot agree with the opponent that the proprietor could and should have anticipated an adverse outcome in view of the diverging case law. The same applies to the proprietor’s contradictory statement. Procedures before the EPO do not require parties to the procedure to have crystal ball, even if this was required by the CFI-CD Milan.
It remains indisputable that without paragraph [0035], other embodiments never envisaged by the proprietor could fall under the claim wording. Whether this boils down to a broader scope of protection is not the only possibility.
I would however think, that by deleting paragraph [0035], claim 1 in AR1 represented an intermediate generalisation. The board even admits that claim 1 of AR1 contains neither explicit nor implicit features that necessarily limited the claimed aerosol-forming article to a rod-shaped configuration.
In my humble opinion, the real objection was thus not Art 123(3), but Art 123(2). Under Art 114(1) it would have been perfectly possible for the board to raise an objection under Art 123(2). By admitting AR1, all objections against it could be raised, as the EPO and its boards of appeal are not restricted to the facts, evidence and arguments provided by the parties and the relief sought.
Some boards have considered that G 1/24 is also applicable in case of added matter, cf. T 873/23, commented in the present blog, or T 405/24, also commented in the present blog. Those decisions do not tie up with the holistic approach adopted by the present board. the alledgedly holistic approach would allow the applicant/proprietor to chose the interpretation which he considers in accordance with Art 123(2). Any objection under Art 123(2) would become moot.
Art 84 is not a ground of opposition, but when the patent is amended G 3/14 allows clarity objections to be raised, independently whether or not G 1/24 could require a holistic view on the patent, which is not as certain as alleged by the board.
Holistic interpretation or not, the scope of protection as granted was suffering an inconsistency as it could allow the proprietor to change the interpretation of the claim as he thought fit.
The present considerations reinforce my criticisms of the decision.
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