Wednesday, 13 January 2010

T 2049/07 – Novelty and The Erotic Article


From time to time applicants argue that their invention is novel when taking into account A 69 EPC and its Protocol of interpretation. This attempt invariably fails because this is not what A 69 was made for.

[…] The patentee has argued that the additional feature of claim 1 (i.e. that the axis is disposed close to the axis of gravity of a pallet mount (2) filled with a complete pallet stack (18)) has to be interpreted with reference to the description, paragraph 12, and the drawings within the meaning of A 69 EPC. Therefore the tilting axis has to be so “close” to the axis of gravity that an operator can tilt the pallet mount filled with a complete pallet stack with “very little effort”. This would unambiguously determine the limits of the domain within which the tilting axis is situated and would not allow an interpretation wherein the tilting axis was positioned at the edge of the pallet mount, such as in the device of D5. [6]

The Board cannot follow this argumentation, for the following reasons: [6.1]

The Board follows the opinion expressed in several decisions of the Boards of appeal of the EPO according to which only features that are mentioned in the claims or that can be derived from the latter can be invoked (geltend gemacht) to distinguish the invention with respect to the prior art in an assessment of novelty or inventive step. It is not possible to construe the claim to comprise an (implicit) limiting feature, which is only found in the description or in the drawings, by referring to A 69 and its protocol. See, for example, T 1208/97 [4], T 932/99 [4.3.3], T 681/01 [2.1.1].

Therefore, the domain “close to the axis of gravity” that is given in the additional feature of claim 1 cannot be interpreted in the limiting manner proposed by the patentee, i.e. that this would define a certain more narrow domain wherein an operator can tilt the pallet mount filled with a complete pallet stack with “very little effort”. First, the fact that the device can be easily tilted by “an operator” is not found in any of the features of claim 1. Moreover, this expression itself is undetermined as the opposed patent does not give any indication of such efforts. By the way, the operator is only shown in the drawings. It is not found in the description because paragraph 12 leaves open whether the effort is made by an operator or by an operating machine. Moreover, the it is not always true that only “very little effort” is needed because this only holds true when the height of a complete pallet stack corresponds to the width or the length of a pallet (depending on whether the pallets are set up along their long side or broad side). [6.1.2]

Therefore the description and the drawings could not have a limiting effect on the subject-matter of claim 1, even if they were used in favour of the patentee. [6.1.3] 

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

2 comments:

Karen G. Hazzah said...

>It is not possible to construe the claim to comprise an (implicit) limiting feature, which is only found in the description or in the drawings, by referring to A 69 and its protocol

I call this "arguing outside the claims", and the US Board of Appeals will ignore this too.

One picky question: the decision says this sort of argument is not allowed "by referring to A 69". Does this suggest there is another rule/doctrine which does allow some degree of argument outside of the claims?

Armand Grinstajn said...

Well, that is a good question. I have to think it over. The only possibility I am aware of right now are limiting definitions which are given in the description, when the applicant acts as a lexicographer. But I think when such a feature becomes critical, the applicant will be asked to introduce the definition into the claim.