This is one more case where the EPO found an amendment to be an inadmissible intermediate generalisation. The patentee had convinced the Opposition Division (OD) that the claim as amended corresponded to an implicit alternative. The Board won’t have it that way.
Claim 1 of the main request read:
Device (Vorrichtung) to convey work pieces, particularly suspended, plate-shaped work pieces like metal sheets or plates with at least a conveyor belt (1) revolving around a retaining device (Haltevorrichtung) (3) for conveyance of work pieces (W) adhering thereto, wherein for retaining the work pieces on the conveyor belt (1) a controllable or regulatable installation (Einrichtung) (6) for generation of negative pressure is provided, in which an opening plane (22) described by suction ports (7) is recessed from the retaining device (3) at a distance (A) vis-à-vis a conveyor plane (F) created by the exterior side of the conveyor belt (1) so that a gap (Z) is formed between a work piece (W) adhering to the conveyor belt (1) and the opening plane (22) and the work piece (W) is held on the conveyor belt (1) by a negative pressure which is created in the gap (Z), characterised In that an installation (Einrichtung) (8, 23, 25, 26, 29, 30, 32) for ventilating the gap (Z) is provided on the side of the device (vorrichtungsseitig) so that the work piece is maintained on the conveyor belt (1) by dynamic negative pressure which is created.
[…] Claim 1 of the main request differs from Claim 1 as granted in that the expression “on the side of the device” has been added. [1.1]
[…] The OD considered that the amendment of claim 1 was limitative and that it fulfilled the requirement of A 123(2).
It has acted on the assumption that the amendment was implicitly contained in the description of the opposed patent which states (column 3, lines 11 to 13): “In some cases the installation for ventilating the gap can also be provided on the side of the work piece (werkstückseitig). [3.1]
[…] According to a first line of argumentation, the assessment of the amendment in view of A 123(2) has to take into account that claim 1 as granted defines that a installation for ventilating the gap (hereafter : the ventilating installation) is provided. This definition does not contain any limitation whatsoever concerning the disposition of the ventilating installation.
Therefore, when interpreting claim 1 as granted it has to be assumed that the general feature according to which a ventilating installation is provided encompasses both possibilities mentioned in the opposed patent, i.e. that the ventilating installation is provided on the side of the device or on the side of the work piece.
Thus the amendment only leads to an admissible limitation of claim 1 as granted to one of the two implicit (mitzulesend) possibilities, which is not open to criticism in view of the requirement of A 123(2). [3.2.1]
According to a second line of argumentation, the addition of the expression “on the side of the device” limits the device according to claim 1 to one of the two possibilities disclosed in the description of the original application with respect to the ventilating installation. Both possibilities, i.e. a providing the ventilating installation on the side of the work piece and on the side of the device are clearly and unambiguously disclosed in the description of the application. Therefore, a limitation to one of them is admissible. [3.2]
According to the [opponent] the amendment of claim 1 corresponds to an inadmissible extension because the description of the original application only contains embodiments wherein the ventilating installation is provided on the side of the device. In contrast, the amendment, which only refers to providing the ventilating installation on the side of the device but not to forming and providing the ventilating installation according to the embodiments of the description, is an inadmissible intermediate generalisation that is not based on the description. As a matter of fact, the amendment leads to a situation where the teaching of claim 1 also comprises embodiments of ventilating installations which had not been disclosed in the original application. [3.3]
The Board agrees with the [patentee] in that, as correctly stated in the impugned decision, the amendment leads to a limitation of the claim as granted. Therefore, the requirement of A 123(3) is fulfilled. [3.4]
However, the Board does not consider the explanations of the [patentee] with regard to the requirement of A 123(2) to be correct. […]
As far as the amendment of claim 1 is concerned, it is undisputed that the expression “on the side of the device” […] is not explicitly disclosed in the application on which the opposed patent is based. [3.5]
In contrast to the first line of argumentation of the [patentee] the Board is of the opinion that it is not correct, in view of the interpretation of claim 1 as granted, that this claim 1 is to be interpreted such that it comprises two general possibilities concerning the provision of a ventilating installation, i.e. on the side of the device and on the side of the work piece.
It is true that claim 1 as granted does not define how the ventilating installation is to be provided.
If, arguendo, the argumentation of the [patentee] is followed and the description of the opposed patent is adduced for interpreting claim 1, then for evaluating the way in which the ventilating installation is provided the part of the description invoked by the patentee (page 4, lines 18 to 29 of the application […]) has to be taken into account, and not a different, more general version that is only based on this part. [3.5.1]
In this part of the description a skilled reader could recognize a separation between providing the ventilating installation on the side of the device and providing it on the side of the work piece. On the one hand the description states:
“Preferentially the ventilating installation has ventilation openings that are regularly arranged on the side of the holding device facing the work pieces, so that there is an essentially uniform dynamic negative pressure over the complete length of the gap. However, it is also possible to ventilate the gap e.g. by providing grooves perpendicular to the conveying direction in the conveyor belt.”
On the other hand:
“In some cases the ventilating installation can also be provided on the side of the work piece, for instance when the work piece has openings (Durchbrüche) of suitable size or a suitably rough surface.” [3.5.2]
Based on the first part of the description, one has to take into account, as far as the way of providing the ventilating installation is concerned, that if the ventilating installation is provided on the side of the device, the following arrangements are to be taken into account: either the ventilating installation has ventilation openings that are regularly arranged on the side of the holding device facing the work pieces, or the ventilating installation is very different and grooves have to be provided in the conveyor belt perpendicular to the conveying direction.
As these arrangements are merely two very different embodiments of ventilating installations provided on the side of the device, only these embodiments can be considered, to the extent of the factual disclosure, when claim 1 is interpreted. In view of providing the ventilating installation on the side of the device, only the above mentioned concretely disclosed possibilities (regularly arranged ventilation openings or grooves provided in the conveyor belt perpendicular to the conveying direction) can be taken into account.
In contrast, the opinion of the [patentee] appears to be based, incorrectly, not on the factual content of the disclosure of the part of the description under consideration but on a generalisation of the content of the disclosure of this part of the description that encompasses also other possibilities than the both concrete embodiments. [3.5.3]
Therefore, contrary to the opinion of the [patentee], claim 1 as granted cannot be interpreted in such a way that it comprises, as far as the way of providing the ventilating installation is concerned, both general possibilities “on the side of the device” and “on the side of the work piece”.
Consequently, the admissibility of the amendment of the claim cannot be derived from it being only the deletion of one of two possibilities contained in claim 1 as granted. [3.5.4]
[…] As the parts of the description and figures invoked by the [patentee] for justifying the admissibility of the amendment of the claim do not allow to generalise beyond the possibilities that have been concretely disclosed through embodiments, as there is no indication whatsoever [for such a generalisation], these parts of the description and figures cannot, as such, lead to the amended claim 1 of the main request being based on an admissible amendment, as suggested by the second line of argumentation of the [patentee]. [3.5.6]
[…] Thus claim 1 of the main request contravenes the requirements of A 123(2). [3.5.8]
To read the whole decision (in German), click here.
0 comments:
Post a Comment