Wednesday, 14 April 2010

T 558/08 - Claims Are Generalizations

Claim 1 of the main request read:

A heating device (510) for use in an internal combustion engine having an intake (512) defining a passage, the intake including an opening in communication with the passage, the heating device comprising: a access panel (511) removably mounted to the intake and closing the opening; a frame (514, 516) coupled at one end to said access panel and extending into the passage, said frame including a first portion positioned substantially parallel to and spaced apart from a second portion; and a heating element (518) coupled to said frame and positioned between said first and second portions, said heating element being positioned in heat transfer relation with the passage to thereby heat combustion air flowing through the passage.

The crucial question for the assessment of novelty was the interpretation of the term “frame”. The patentee argued that this term had to be read in the light of the description, which only shows frames surrounding the heating element.

[2.1] The invention concerns a heating device for heating the intake air of an internal combustion engine. Its central idea is to mount the heating element on an access panel which is removably mounted on the intake to close an opening therein. The element is coupled between first and second portions of a “frame” coupled to the panel.

This type of heating device, referred to as “drop-in”, allows “an end user to install the heater after the intake has been assembled to a vehicle increasing serviceability and ease of installation” […]. These benefits contrast it with “sandwich” type heating devices, where the element is mounted on a flange that is inserted between intake and manifold, requiring a more cumbersome installation and servicing and a more complex construction […].

[2.2] The feature of a “frame” with spaced, parallel “portions” was added to claim 1 prior to grant. It replaces features of a “hanger” and “retainer mechanism” that appeared in corresponding independent claim 16 of the application as published, the first of the claims therein directed at the drop-in concept. 

[2.2.1] The term “frame”, the Board notes, does not appear in the claimed context in the application as filed. The only mention of “frame” is […] a passage used to describe the mounting of prior art heating elements as disadvantageously large and complex vis-à-vis a retainer mechanism 20, see the immediately preceding and following sentence of this paragraph. There its use does not imply any specific shape or mounting of the heating element, other than that it is large and complex.

[2.2.2] Nor does the term itself imply any particular shape in relation to the heating element it supports. In normal usage the term “frame” may mean nothing more than “a structure which serves as an underlying support or skeleton” (Oxford English Dictionary); “the underlying constructional system or structure that gives shape or strength (as to a building)” (Merriam-Webster Online Dictionary), or “the basic structural unit onto or into which other constituents of a whole are fitted, to which they attach, or with which they are integrated” (Webster’s 3rd New International Dictionary). Though it may in some instances also mean, more specifically, “an open case or structure made for admitting, enclosing, or supporting something” (Merriam Webster), it does not necessarily imply encasing of what is supported. The exact meaning will depend on context.

[2.2.3] In the present case the Board has no reason to believe it should mean anything more than in its broadest sense, an underlying support structure. That claim 1 also requires the frame to have spaced apart parallel portions may add some further detail of the shape, but not enough to conclude that it encases the heating element.

[2.2.4] The fact that all embodiments show structures that support and surround the heating element also does not mean that claim 1, read in the light of the description and figures, must relate to encasing structures. By virtue of the fact that claims are directed at the essence of an invention, they are generalizations. Reading “frame” in a broader sense as a generalization of the specific support structures shown in the description is then not inconsistent with or contradictory to the content of the original disclosure.

It rather brings to prominence the features of the “drop-in” design per se, which had hitherto (in the procedure up to grant) been presented as the inventive concept. This may also be the reason why the more specific features of the hanger support and of the retainer mechanism - the latter in particular presented consistently as essential in the application as filed - were dropped from corresponding independent claim 16 of the application as filed and replaced by those of the “frame” in granted claim 1.

[2.2.5] The Board concludes that the term “frame” is to be read in its broadest sense, meaning “an underlying support structure”. 

Unsurprisingly, this broad interpretation led to claim 1 being anticipated by the prior art.

To read the whole decision, click here.