The EPO has the reputation of being extremely severe in the application of A 123. In the present case, the application was rejected by the Examining Division (ED) because the Division considered the amendment to be an unallowable “intermediate generalisation”. The decision is of some interest because the Board partially reverses that finding. Therefore, the case allows to see both amendments that are acceptable to the Board and amendments that are not. However, the example will be fully appreciated by mechanically skilled readers only.
The application concerned a robotized device for moving an object.
Claim 1 as filed read:
Robotized device to move an object (12), comprising manipulator means (14) having gripping elements (16) lying on a determinate plane of manipulation (P), first motor means (22) with which a first movement unit (25) is associated, in turn associated with said manipulator means (14), and second motor means (23) with which a second movement unit (26) is associated, in turn associated with said manipulator means (14), said first movement unit (25) and said second movement unit (26) defining with the respective first and second motor means (22, 23) and with said manipulator means (14) a pantograph mechanism, characterized in that at least one of said movement units (25, 26) comprises connection means (31, 34, 35, 37) able to keep said gripping elements (16) substantially parallel to said plane of manipulation (P) during the functioning of said pantograph mechanism.
During examination, the applicant introduced a great number of features concerning the first movement unit 25 from the single embodiment. The amended claim was rejected by the ED as being an intermediate generalisation because two features of the embodiment were missing.
[2.1] The ED objected in the decision under appeal that it had not been specified in claim 1 that the tubular element 32 was made of carbon and that the pair of tie-rods 34 was rigid, arguing that these features were inextricably linked to the other features disclosed in the specific embodiment that had been incorporated into claim 1. […]
[2.1.2] A patent application describes an invention in general terms together with one or more detailed embodiments. In order to overcome an objection of lack of novelty and/or inventive step the applicant often adds some but not all the features from the detailed embodiments to the general disclosure. This results in an object that lies between the original general disclosure and the detailed embodiments. This is called an “intermediate generalization” in the patent jargon, although a more proper naming would be “intermediate restriction” to make clear that it is in fact a restriction from the more general original disclosure (T 461/05 [2.3]).
[2.1.3] Such an intermediate restriction or generalization is permissible under A 123(2) only if the skilled person would recognize without any doubt from the application as filed that characteristics taken from a detailed embodiment were not closely related to the other characteristics of that embodiment and applied directly and unambiguously to the more general context (T 962/98 [2.5]).
Material of the tubular element
[2.1.4] The ED did not give reasons for the finding in the decision under appeal that the features that the tubular element was made of carbon and that the first movement unit comprised a pair of rigid tie-rods were inextricably linked to the other features of the embodiment of the invention.
[2.1.5] On the first point, the board agrees with the appellant applicant that a skilled person would understand that the feature “a tubular element 32 made of carbon” […] is not related to solving the problem addressed by the invention, namely to design a robotized manipulator whose surface stays parallel to the same plane when moved around. In fact, the skilled person would recognize immediately and without any doubt that the material of the tubular element is irrelevant for the present invention. As the test mentioned in point 2.1.3 above is fulfilled, not specifying the material of the tubular element 32 in claim 1 does not offend against A 123(2).
Rigidity of the tie-rods
[2.1.6] For the second point, namely the rigidity of the tie-rods, the working principle of the robotized device has to be understood. The gripping element 16 is kept substantially parallel to the same plane of manipulation through the combined use of
(a) a first parallelogram defined by the pivoting axis on armlet 35, the rotation centre Z1 of the first rotor 22b and pivoting axis A and B on toggle lever 31, and
(b) a second parallelogram defined by pivoting axis A and C on toggle lever 31 and the pivoting axis of the tubular element 32 and the first rod 37 on manipulator 14 (see figures 5 and 6 below).
[2.1.7] This combination assures that the angle between a line joining the pivoting axis on armlet 35 and the rotation centre Z1 of the first rotor 22b (imaginary line 1) and a line joining the two pivoting axis on manipulator 14 (imaginary line 2) is fixed, since line AB on toggle lever 31 is always parallel to line 1 and line AC is always parallel to line 2 due to the presence of the first and second parallelograms, while angle BAC defines the angle between the imaginary lines 1 and 2. As the manipulator 14 is still free to move in a circle around the toggle lever 31, the spatial position of the manipulator 14 is determined by the rotor of the second motor means 23 and the second movement unit 26.
[2.1.8] A tie-rod, however, is a slender structural unit used as a tie and (in most applications) capable of carrying tensile loads only; it can be articulated or flexible. Rigidity is therefore not an implicit feature of a tie-rod and has to be explicitly stated.
[2.1.9] The feature that “a variation of an angular position of said rotor 22b is transformed in a movement of said two first arms 30 parallel to said two tie-rods 34” does not implicitly disclose that the tie-rods are rigid nor is it sufficient to specify the existence of the first parallelogram, since a parallel movement between arms 30 and tie-rods 34 would not result in a parallelogram if the length of the tie-rods, i.e. the distance between the pivoting axis on armlet 35 and pivoting axis B on toggle lever 31, is not fixed (e.g. if a telescopic tie-rod is used).
[2.1.10] As the first parallelogram is only realized with “rigid” tie rods 34, the feature “rigid” cannot be dissociated from the other features relating to the construction of the first arms and has therefore to be specified in claim 1, as it is now the case.
[2.2] The ED further objected that the feature that “the mounting reciprocal configuration of arms, tie rods, first rod and tubular element were such that a variation of an angular position of the first rotor was transformed in a movement of the two first arms parallel to the two tie-rods, a movement of the tubular element parallel to the first rod, and a movement of said manipulator that always maintained the gripping means lying on a plane substantially parallel to the plane of manipulation” had no explicit basis in the originally filed application.
[2.2.1] Although it is usually sufficient for fulfilling A 123(2) that an amendment has an explicit basis in the application as filed, this is in no way necessary. The test for deciding whether an amendment contains subject-matter extending beyond the content of the application as filed is whether the skilled person would be presented with information which is not directly and unambiguously derivable from what was presented by the application as filed, even when account is taken of matter which is implicit to a person skilled in the art (Guidelines C VI-5.3.1, December 2007).
[2.2.2] The objected feature specifies that when the first rotor 22b moves
a) the two first arms 30 move parallel to the two tie-rods 34 and
b) the tubular element 32 moves parallel to the first rod 37 so that
c) the movement of the manipulator always maintains the gripping means lying on a plane substantially parallel to the plane of manipulation.
This is thus nothing more than saying that each of the two elements (30/34 on one hand and 32/37 on the other) are the opposed sides of a parallelogram, since their lengths are fixed. Stating that the manipulator always maintains the gripping means lying on a plane substantially parallel to the plane of manipulation is nothing more than the direct consequence of the combined action of both parallelograms, as explained in points 2.1.6 and 2.1.7.
[2.2.3] The objected feature is therefore directly and unambiguously derivable from the application as filed. […]
[2.4] The board finds, for these reasons, that the requirement of A 123(2) is fulfilled.
[2.4] The board finds, for these reasons, that the requirement of A 123(2) is fulfilled.
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