The present decision gives a textbook example of how an amendment of the description can lead into the inescapable trap.
** Translation from the German **
[2.1] Claim 1 concerns a package “comprising a plurality of coiled rolls of plastic film wrapped insulation material panels made of mineral wool, in particular glass wool, that are designed to be laid as wedging felt (Klemmfilz)”. […]
[2.2] When assessing whether the subject-matter of claim 1 has been amended in a way that extends beyond the content of the application as originally filed and, therefore, violates the requirements of A 123(2), the meaning of the expression “wedging felt” plays a decisive role.
[2.3] The expression “wedging felt” was only mentioned in the second and third paragraphs of the application as filed. It was not mentioned in the claims as originally filed.
[2.4] The second paragraph of the originally filed description consisted in the following four sentences:
“1 Insulation material panels made of mineral wool are used in various ways for insulating heat. 2 One major domain of application is the insulation of roofs, in particular the insulation of steep roofs. 3 To this aim, the insulation material panels are fixed between the rafters (Dachsparren); for the insulation of new constructions and for the insulation of old buildings that are to be renovated one mostly uses so-called “wedging felts”. 4 Wedging felts are insulation material panels bearing marks provided transversely to the longitudinal direction of the panels such that, depending on the distance between the rafters between which the insulation material is to be inserted, a corresponding portion of an insulation material panel is cut to length, using the transverse marks as guiding line for cutting, and then wedged (mit Klemmsitz … eingebracht) between the rafters” (bold text and sentence numbering introduced by the Board).
Hereby the application as originally filed defines which insulation material panels according to the invention are to be subsumed under the expression “wedging felt”. A binding agent content of 6 to 7 wt. % is not disclosed anywhere in the initially filed application for the [wedging felts ?] mentioned above, nor for the wedging felts according to the invention, neither explicitly nor implicitly.
[2.5] After having received the communication pursuant R 51(4) EPC 1973 the applicant filed an amended second paragraph of the description […], together with an amended claim 1 comprising the additional sentence “designed to be laid as wedging felt”. The amended second paragraph of the description then constituted paragraph [0002] of the patent as granted. Paragraph [0002] of the new main request is identical with paragraph [0002] of the patent as granted, with the exception of the corrected number of the German patent mentioned therein:
“1 Insulation material panels made of mineral wool are used in various ways for insulating heat. 2 One major domain of application is the insulation of roofs, in particular the insulation of steep roofs. 3 To this aim, the insulation material panels are fixed between the rafters; for the insulation of new constructions and for the insulation of old buildings that are to be renovated one mostly uses so-called “wedging felts”. 4 Wedging felts are insulation material panels bearing marks provided transversely to the longitudinal direction of the panels such that, depending on the distance between the rafters between which the insulation material is to be inserted, a corresponding portion of an insulation material panel is cut to length, using the transverse marks as guiding line for cutting, and then wedged between the rafters. 5 Such wedging felts are known from DE 36 12 857 C 3. 6 Here the insulation material panel is coiled in a roll. 7 Cuts are made along the marks provided on the insulation material panel, whereby a portion is separated of the insulation material panel, the length of which portion corresponds to the distance between the rafters. 8 The separated portion is then rotated by 90° and laid between the rafters, where it is wedged (mit Klemmsitz gehalten). 9 Such wedging felts have an increased binding agent content of about 6 to 7 wt. % and are characterised by a greater stiffness” (bold text and sentence numbering introduced by the Board).
[2.6] The expression “such wedging felts” used for the first time in sentence 5 indicates that wedging felts according to the invention, i.e. wedging felts mentioned in the preceding sentence 4, are known from DE 36 12 857 C 3. This has not been contested by the [patent proprietor]. The following sentences 6 to 8 are not relevant for the present case. However, sentence 9, which among other things attributes a binding agent content of about 6 to 7 wt. % to the wedging felts, using again the expression “such wedging felts”, is relevant.
[2.7] Whereas the [patent proprietor] submitted that the repeated use of the expression “such wedging felts” exclusively referred to the wedging felts known from DE 36 12 857 C 3, and therefore, to wedging felts that do not correspond to the invention, the [opponents] argued that this reference, which repeats the first expression, clearly referred to the preceding sentences and, therefore, to wedging felts according to the invention. Thus the reference defined the latter to have a binding agent content of about 6 to 7 wt. %, without there being a disclosure for such contents in the application as originally filed.
[2.8] For the sake of argumentation, the Board assumes, following the submissions of the [patent proprietor], that the expression “wedging felt” is a “terminus technicus” which in its broadest interpretation by the skilled person defines insulation material panels falling under the definition of wedging felts provided in sentence 4 of paragraph [0002].
In the present case the Board can also follow the argument of the [patent proprietor] that the patent comprises (or corresponds to) its own lexicon that determines how the different expressions used in the description and the claims are to be understood by the skilled person.
[2.9] However, in such a case the whole context of such definitions has to be considered when – as here – further sentences ascribe further or different qualifications to an expression that defines a specific object in the prior art. Then this expression receives a special meaning that overrides (überlagernd) the usual content of the expression (see also T 500/01 [6]).
[2.10] In the present case the Board finds that an interpretation of sentences 5 to 9 of paragraph [0002] which is correct both on a grammatical and a semantic level, unambiguously leads to the conclusion that the expression “such wedging belts” used for the second time therein, very much like the first use of the expression in sentence 5, refers to the wedging belts mentioned in sentences 1 to 4 and, therefore, also to the wedging belts according to the invention. Via this expression the wedging belts according to the invention are explicitly stated to have a binding agent content of about 6 to 7 wt. %.
[2.11] The Board moreover notices that there is no basis for the requirement of a binding agent content of about 6 to 7 wt. % for the wedging belts according to the invention in the application as originally filed. This fact was not contested by the [patent proprietor].
[2.12] Therefore, the application does not comply with the requirements of A 123(2) […].
[2.13] The Board cannot endorse the argument of the [patent proprietor] according to which the sentences 5 to 9 of paragraph [0002] clearly and exclusively refer to the content of the German patent mentioned therein, for the following reasons:
The beginning of the sentence “Such wedging felts …”, both in sentence 5 and sentence 9, establishes a clear reference to the preceding sentences 1 to 4, i.e. to the wedging felts according to the invention. Secondly, the argument is in conflict with the contrary submissions of the [patent proprietor] during the opposition and appeal proceedings. […]
Article 123(3)
[3.1] In the description of the patent according to auxiliary request 1a the four last sentences (6 to 9) of paragraph [0002] were deleted, so that the existence of a binding agent content of about 6 to 7 wt. % in the wedging felts is not mentioned any more. In the description according to amended auxiliary request 1b and to auxiliary requests 1 to 3 the last sentence 9 of paragraph [0002] was amended such that this binding agent content is presented as an optional feature.
[3.2] According to points [2.9] and [2.10] above the Board considers that the existence of a binding agent content of about 6 to 7 wt. % in the wedging felts according to the invention, as mentioned in sentence 9 of paragraph [0002] of the patent as granted, is an additional (übergeordnet) requirement of the claimed invention. Pursuant A 123(3) the patent may not be amended in such a way as to extend the protection it confers. Pursuant A 69 and its Protocol the extent of protection is determined by the claims, but the description and the drawings are to be used to interpret the claims. Considering the explanations provided in points [2.9] to [2.13] above, this has the effect that the binding agent content of about 6 to 7 wt. % in wedging felts according to claim 1 has to be understood as a requirement limiting the extent of protection conferred by this claim.
[3.3] The deletion or amendment of the last sentence 9 of paragraph [0002] in auxiliary request 1a and in amended auxiliary request 1b as well as in the auxiliary requests 1 to 3, respectively, corresponds to abandoning this requirement or to presenting it as optional.
[3.4] Therefore, the deletion or the amendment of the last sentence of paragraph [0002] results in that the expression “wedging felt” in claim 1 of these requests comprises insulation material panels not having a binding agent content of about 6 to 7 wt. %. As this extends the protection conferred by claim 1, claim 1 of each of these requests does not comply with the requirements of A 123(3).
So when the Office obliges you to acknowledge prior art in the description, be very careful in how you present it.
To read the whole decision (in German), click here.
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