The present decision deals with an amended set of claims: the patent proprietor had added a feature taken from the drawings. The Board examines whether the amendment complies with the requirements of A 123(2).
[19.1] Among the features which are intended to define the invention more clearly is the requirement that the spacer 22 is provided between the elastic plate and the nozzle plate. According to the [patent proprietor], this feature is based on the drawing of Figure 5.
[19.2] It is established case law of the boards of appeal that there is no objection in principle against further defining by reference to the drawings any features which were already claimed. This extends to features shown only in the drawings being introduced into the claim for greater precision. (T 169/83 [2.5]).
[19.3] The incorporation into the claim of features taken from the drawings is, nevertheless, subject to the same restrictions that apply to any amendment, which is to say that the feature concerned - unless found expressis verbis in the application as filed - must be clearly and unambiguously derivable by the skilled person from the content of the application as a whole. If it is not, the amendment does not comply with A 123(2).
[19.4] It is also established case law that while it is permissible to use the drawings as a basis for providing greater precision in respect of features already claimed, it is not permissible to introduce new features which are selected arbitrarily from among the features of the drawings in the sense that it is not directly derivable from the application as originally filed that the feature can be isolated from other features of the drawings (T 191/93 [2.1]).
[19.5] In the present case, the feature introduced into the claim from the drawings, in particular from Fig 5 of the drawings, is that a “spacer (22) is provided between the elastic plate (1) and said nozzle plate (35)” (emphasis added by the board).
The [patent proprietor] submitted that the term “between” is clear in that its meaning can be ascertained from the description (published application, column 7 line 41 onwards) which indicates the order in which the layers are stacked. Thus, the term “between” itself served to set up the defining geometry of plate, spacer nozzle plate.
[19.6] However, as convincingly argued by the [opponent], the alleged structure of the spacer being located “between” the plate and the nozzle plate is itself not uniquely defined by the drawings, since Figure 5, which the [patent proprietor] stated as basis for the claim amendment (as well as other Figures of the drawings (Fig. 6, Fig. 7)), show the presence of several other layers separating the plate 1 from the nozzle plate 35. The requirement of being in between the plate and the nozzle plate would be satisfied by any position of the spacer among the other layers, which clearly also satisfy the condition of being located between the plate and the nozzle plate.
A clear and precise meaning for the term “between” is thus not directly and unambiguously derivable from the application as originally filed in the sense that this particular feature can be isolated from other features of the drawings.
The board therefore concludes that the amendment introduced into claim 1 of the sixth auxiliary request does not comply with the requirements of A 123(2).
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3 comments:
I would say the term "between" has a clear meaning, but a meaning that is broader / more general than the specific example shown in Figure 5.
I fully agree that "between" has a clear and precise meaning, since otherwise the board's chair could not decide whether he is sitting between the other members at the oral procedings ;-))
The features that were disclosed in this drawing are inter alia that the spacer is between the elastic plate and the nozzle plate, but also that it is located adjacent to the elastic plate. Isolating one of these features fromt the other(s) is an intermediate generalisation and it has to be ascertained whether all these features were inextricable linked as forming a whole. For this the function of the spacer must be determined. Without this information it is hard to decide whether the spacer being between the other plates is directlyand unambiguously derivable from the original documents or not.
According to the objected claim the unit comprised:
"a spacer (22) forming pressure generating chambers (23),
wherein said elastic plate (1) covers and seals one of the sides of said spacer (22) and
a nozzle plate (35),
wherein said spacer (22) is provided between the elastic plate (1) and said nozzle plate (35)".
Thus the spacer was not only "between" the two plates, but adjacent to the elastic plate, since this plate covered and sealed one of the sides of the spacer. The spacer could therefore not be located somewhere between the other layers. This is shown in Fig. 5.
My feeling is that the objected feature did not infringe A123(2).
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