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 opposition and the opponent appealed.
In view of the importance of the questions raised with respect to the interpretation of the independent 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.
An AR 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 lack of N over D1 of the claim as granted.
The opponent’s position
In its SGA, the opponent criticised the novelty assessment of the OD and argued that the broader and specific definition of the term “gathered sheet” provided in paragraph [0035] of the patent, namely, a sheet of tobacco material that was “convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod” could not be disregarded when construing claim 1 for the purpose of assessing patentability.
In its view, this definition belonging to the patent lexicon made technical sense, did not contradict any established meaning in the art and clearly encompassed any sheet that was deformed substantially perpendicularly to the axis normal to its surface and hence also the wound tobacco sheet of D1.
Accordingly, the proprietor concluded that D1 was prejudicial to N of claim 1 as granted.
The proprietor argued that the view of the proprietor that the description and the drawings only needed to be “considered” and could thus be ignored in view of the language of the claim was a clear misinterpretation of the order in G 1/24, which clearly indicated that the description and in particular paragraph [0035] could not be disregarded.
The proprietor’s position
The proprietor inferred from the conclusions of G 1/24 that the extent to which the description and the drawings were to be taken into account when interpreting the claims for the purpose of assessing patentability appeared to be left to the discretion of the deciding body.
It further expressed the view that the EBA substantially confirmed the principle of the “primacy of the claims” as the starting point for claim interpretation, thereby confirming that the wording of the claims was of greater importance than the other components of the disclosure.
According to the proprietor, the first and decisive step in the claim interpretation process thus remained the attempt to assess the meaning of the claim terms “per se”, i.e. without relying on information which could have been presented in the description.
It argued that in the case at hand, it was undisputed that the term “gathered sheet“, when read in isolation in view of common understanding of a person skilled in the art, denoted a sheet gathered to form a three-dimensional structure having a width smaller than that of the original sheet and comprising a plurality of folds. Such a sheet did not correspond to a spirally wound tobacco sheet as disclosed in D1.
The board’s decision in view of G 1/24
What does it mean to “consult”
In interpreting the language used in a claim, “consulting”, “referring to”, “using” and “taking into account” the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim.
The board did not agree with the proprietor’s assumption that the process of claim interpretation consists of two separate and temporally consecutive steps, namely first reading the claims in isolation and construing their terms in the light of common general knowledge, and then consulting the description and the drawings in order to assess whether this construction is correct or needs to be adapted.
The board took the view that claim interpretation is the result of both reading the claims and consulting the description and drawings as a unitary process. This holistic approach follows from the order of the EBA.
General rule of interpretation
In line with the holistic approach, a person skilled in the art 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 of the claims, description and figures, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects.
Application to the case at hand
The board saw no reason why the skilled person would be prompted to disregard the definitions for the terms “gathered” and “sheet” in the case at hand. The fact that the interpretation of the term “gathered sheet” when read in isolation would lead to a different result compared to when read in the patent specification, especially regarding the definitions in paragraphs [0030] and [0035], is not sufficient to allow for this conclusion.
The fact that the patent defines this term in the description is a clear indication that, at least for the patent proprietor when drafting the application, “gathered sheet” did not have a meaning that is so commonly accepted and well established that each further explanation would be superfluous.
The definition of “gathered” given in paragraph [0035] does not contradict but rather encompasses the commonly accepted meaning of the term “gathered sheet”, namely a sheet that is folded and convoluted to occupy a three-dimensional space. The definition is simply not restricted to folded sheets but includes other forms of transverse constrictions of the extension of a sheet.
Contrary to the allegation of the proprietor, no inconsistencies arise between the definition of “gathered” of paragraph [0035] and other passages of the description or of the content of the prior-art documents cited by the proprietor.
The method disclosed in paragraphs [0063] to [0065] does not rule out other possibilities and does not justify disregarding the broader definition of “gathered sheet” of paragraph [0035] of the contested patent.
For the board, it is uncontested that D1 discloses in Figure 1 an aerosol-generating article in the form of a roll (20) which comprises a tobacco sheet (21) which “may be wound as a single or multiple layers. In this case, only the tobacco sheet (21) may be spirally wound or a laminate of the tobacco sheet (21) and aluminium foil may be spirally wound”.
Contrary to the findings of the OD in the decision under appeal, the subject-matter of claim 1 lacks novelty over D1.
Comments
Holistic approach
One could at a glance consider that the present board, by insisting on the “holistic” approach to be taken when interpreting a claim, could give the interpretation in the description more weight than the interpretation of the claim wording.This is however not the case as the principle of the primacy of the claim remains.
The present board insisted that there was no inconsistency between the claim wording and paragraph [0035]. The interpretation resulting from the claim wording is encompassed by the interpretation of the description as the latter is broader. This is right as the proprietor considered that more weight should be given to the claim than to the description.
Whilst the present board had to deal with a broadening interpretation found in the description, the conclusion that the skilled person will read terms in the claim in the sense of taking into account limiting aspects found in the description is however subject subject to caution.
In the case of a limitation found in the description, it cannot be said that the limiting interpretation in the description is encompassed by the wording of the claim. It the claim wording which encompasses the limited interpretation from the description.
Why should a limiting aspect found in the description allow the applicant/proprietor to insist that only the limited interpretation found in the description should prevail over the broad interpretation resulting from the claim wording? In view of the primacy of the claims confirmed in G 1/24, the broad interpretation from the claim should prevail.
The present decision is thus not necessarily in contradiction with other decisions applying G 1/24 which have held that if the applicant/proprietor wants the interpretation in the description to be taken into account, the claim has to be adapted accordingly. This applies in the same way whether the description allows a broader or a limiting interpretation.
In case of the broadening interpretation in the description, the prior art to be opposed under Art 52 to 57 is that corresponding to the broader interpretation found in the description.
In case of a posible broad interpretation of the claim wording, the prior art to be opposed under Art 52 to 57 is that corresponding to the broader interpretation of the claim and not that to the limiting interpretation from the description.
Further considerations
When it is said in the decision that the interpretation find in the description should be read into the claim, it is at odds with the previous decisions applying G 1/24.
The EBA did not say that the primacy of the claim should be ignored. If the description allows a different interpretation then one could conclude that the scope of protection is not clear. An objection under Art 84 is then necessary to clarify the situation.
Contrary to what the present board has said, allowing different interpretations of the scope of protection represents an inconsistency, which has to be removed before grant, or before mainteance in amended form when the claims have been limited by taking features from the description and/or drawings into a granted independent claim.
Irrespective of what Art 65, or the London Agreement, OJ EPO 2001, 549 might say, it should not be forgotten that according to the EPC only the claims need to be translated in the other two other official languages than the language of the proceedings, cf. Art 14(6)+R 50(1). This seems to have been forgotten by the present board.
For the certainty of third parties, it should not be allowed to the proprietor to hide in the description features which allow a different interpretation from that resulting from the plain claim wording.
In an autonomous system where granting authority and national judiciary are part of one and the same system, a national court can iron out inconsistencies left at grant by the national patent office. This is not possible at the EPO as its competence stops with grant or maintenance in amended form. The package delivered by the EPO has to be coherent. The role of the EPO is not to nurture Angora cats.
We will see if it is a one off, or if other bords follow it. There should not be different interpretations of G 1/24.
Should this happen, it might then need a further referral to the EBA, as such divided views could damage the reputation of the boads.
The present decision is thus not exempt from critics.
On the procedure
EP 3 076 804 B1 bears the classification symbols A24D 1/00, A24F 47/00. The IS established by the EPO mentioned 4 documents of category X, but not D1. The search was carried out in A24D and A24F
EP 2 368 449 bears the classification symbols A24D 1/20, A24F 47/00.
Two conclusions can be derived:
- As D1 and the patent at stake bear the same classification units and in view of the search field, it is surprising that D1 was not found in the ISR carried out by the EPO. As the SD found 4 X documents it most probably stopped the search.
- Neither the SD nor the ED read the description as they did not spot the broad interpretation possible found in the description. The OD was made aware of it, but prefered to ignore it.
At least G 1/24 and all decisions applying it, as well as the present one, requires the description to be consulted=read. It is to be hoped that in the future all divisions of first instance will consult=read the description in order to find out whether the description contains an interpretation of the claim which is inconsistent with that derivable from the plain claim wording.
There seems to have been a problem, probably with the IT services.
Comments
8 replies on “T 439/22-A long awaited decision on “gathered” in the claim vs. the broadening definition in § [0035] of the description”
And it’s gone. Link doesn’t work
Thnks for drawing my attention to an apparent mishap.
When clicking on the original link the message shown in the post used to appear. It leads to T 439/22-1, i.e. the referring decisions
The original link related to the T 439/22-2as published in HTML in the early morning.
Up to yesterday, the last entry in the register dated 12.12.2025.
This morning, I found in the register the decision in PDF Format.
When looking at the post, you will now find a link to the PDF version.
To me, the problem lies apparently with the IT servvices. They did not spot the difference between T 439/22-1, th referring decision and T 439/22-2 the follow up decision.
The HTML version of T 439/22 has been restored on the Recent Decision page of the EPO
The decision is as expected. There is little to be gained from repeating the same arguments that have been made here and elsewhere.
What I would like to focus on is admissibility of the opponent’s attacks under Article 123(3) EPC in reasons 5.1-5.3 of the decision. I have carefully considered my view on this, and I do not say this lightly, but the reasoning is shocking. That Article 123(3) would be at stake was clear as soon as the new request was filed. Article 123(3) was the very first thing that came to my mind when I saw the new request with the amended description. I know I am not alone and many other observers could immediately see that Article 123(3) was an issue. In its letter of July 11th 2025, the opponent considered the new request, commented on its interpretation, alleged it was an intermediate generalization, but said nothing on Article 123(3). The board admitted a new line of attack which was raised for the first time during the oral proceedings, after the opponent had 5 months in which to raise that attack. Such an attack should never have been admitted if the board followed its usual approach to admissibility. The board decided what it wanted to do and stretched the RPBA to justify its conclusion.
@ Anonymous,
In the analysis of the “gathered sheet” decision and the objection under Art 123(3), I think that, since the board admitted AR1, it apparently did not want to ignore the objections raised by the opponent under Art 123(3). Both the filing of AR1 and the objection under Art 123(3) were late. It was thus better to discuss both.
In the comments, I consider that an objection under Art 123(2) would have been more appropriate than an objection under Art 123(3).
I further added, that the alleged holistic approach under G 1/24, would actually allow the applicant/proprietor to adopt the interpretation derivable from the description which would not infringe Art 123(2).
I invite you you to look at this new posting.
Mr Thomas,
Thank you for posting developed comments so quickly, this decision was reported yesterday.
@Anonymous
I am not that shocked by the Board’s assertion of Art 123(3). Boards have a duty to review compliance of the patent with the EPC. This may justify that they raise an issue ex officio.
Apart from the issues covered by Mr Thomas in relation to G 1/24, my own takeaway relates to G 1/25. The Board’s decision provides a striking illustration that if a deletion in the description alters the interpretation of the claims, it may violate Art123(3).
Mr Hagel,
Thanks for your comment. I spotted the decision yesterday morning, but it had disappeared during the day. This made it difficult to comment on AR1 and the objection under Art 123(3).
I have now published a blog post on AR1 and the objection under Art 123(3).
I would however not be as quick as you are, and say that deletion of § [0035], can in the light of G 1/25, imply an extension of the scope of protection.
I am of the opinion that deletion of § [0035] does actually boil down to an intermediate generalisation, and hence would be objectionable under Art 123(2).
In accordance with previous decisions applying G 1/24, the remedy is not deletion of § [0035], but to bring the broad interpretation from the description into the claim.
Then, there is no need to delete anything, but the claim and the description would be on a par, without infringing Art 123(2) or 123(3).
I invite you to look at this new posting.
Mr Thomas,
I agree with you that the simple remedy in the case of the patent in suit was to enter the definitions of [0035] into the claim.
I also agree that the deletion of [0035] could have raised an Art 123(2) issue as well. This was the position of the opponent in their response to the submission of the AR by the patentee. Perhaps the Board found it more expedient to revoke on the basis of Art 123(3).