Wednesday, 13 January 2010

T 129/08 – What’s In The Reservoir ?

In our previous post we have seen a problem related to the lack of novelty of the main request in case T 129/08. The discussion of the auxiliary requests II and III also contains a paragraph explaining the principle of A 123(2). I like it because it introduces a helpful illustration.

[…] Claim 1 of auxiliary requests II and II contains the additional feature that the socket (14) is connected to the first groove (38) of the ring (12) via a third (28), a fourth (30), a fifth (32), a sixth (34) and a seventh hydraulic pressure duct (36). [3.1]

For the assessment of the question whether an amendment adds an object (Gegenstand) that extends beyond the content of the application as filed (A 123(2)) it is decisive whether the new object was disclosed in the originally filed documents, i.e. in the description, the claims and possibly the drawings. When carrying out this assessment, the original application must not be considered as a “reservoir of features” (Reservoir von Merkmalen) [or as] a construction game (Baukasten); it rather is a “reservoir of objects” (Reservoir von Gegenständen) which, if disclosed in their entirety, may be claimed in their entirety (see T 1535/07 [1.4]). [3.2]

The additional feature mentioned above is disclosed in the original documents within the framework of the single embodiment. As discussed by the Board during the oral proceedings, it follows from the application as filed that in this embodiment the third and seventh hydraulic pressure ducts are arranged in a particular way. The description also states that this particular arrangement of the hydraulic pressure ducts contributes to the solution of the problem of providing a system for feeding hydraulic medium that is easily manufactured.

This notwithstanding, claim 1 leaves open how the hydraulic pressure ducts are arranged. However, there is no disclosure that for an identical number of hydraulic pressure ducts the arrangement can be different from the one shown, nor is there a disclosure that the problem mentioned above can be solved with a different arrangement.

Therefore, the omission of the specific arrangement of the third to seventh hydraulic pressure ducts corresponds to an inadmissible extension within the meaning of A 123(2). For this reason alone, auxiliary requests II and III cannot be granted. [3.3] 

NB : ‘Reservoir’ is quite difficult to translate. I finally chose ‘reservoir’, but ‘reserve’, ‘stockpile’ or ‘pool’ would also be possible translations.

To read the whole decision (in German), click here.