T 985/07 – Claims Under Fire

*** Translated from the French ***

Claim 1 of the main request read:

Bullet-proof armoured laminated glazing comprising, on at least part of its periphery, one or more rigid protuberances, each of these belonging substantially to a plane parallel to the surface defined by the glazing or in line with this surface, and having a thickness enabling it to be at least partly introduced, temporarily or permanently, into the rebate in the window opening, characterised in that the said or at least one of the said protuberances consists of an insert (3), in particular metallic, positioned in each case partly inside the laminated structure constituting the glazing, in line with one or more adjacent sheets (2) constituting it made from glass or vitroceramic or plastics material.

The Board found it necessary to dwell on the interpretation of the wording of this claim:

[4.1] The subject-matter of claim 1 concerns the structure of a bullet-proof armoured laminated glazing. The Board notes that the feature “bullet-proof armoured” which supposedly makes the structure of the glazing more specific is not defined, neither in the claim, nor in the description of the impugned patent. The Board also notes that that the expression “armoured” (blindé) has been interpreted by the Opposition Division (OD) on the basis of document D9 [i.e. Ullmanns Enzyklopädie der technischen Chemie, 4th edition, volume 8, Verlag Chemie GmbH, 1974, p. 331]. This document had been introduced by the OD, which considered that it reflected the general knowledge of the skilled person in this technical field. Moreover, this interpretation has not been contested by the opponents. The Board has no reason not to accept this interpretation.

According to D9, laminated glazing is “armoured” if the glass structure comprises at least three sheets of glass the total thickness of which varies between 24 and 200 mm. Such a glazing necessarily offers a certain degree of antiballistic protection, which means that, in the absence of any definition of a bullet-proof armour in the patent the “armoured” laminated glazing of D9 implicitly comprises the “bullet-proof” feature.

Finally the Board found the claim to lack novelty over document D15.

It then considered the first auxiliary request where claim 1 had been amended so as to be directed to a use:

Use of a bullet-proof armoured laminated glazing as a bullet-proof armoured glazing comprising, on at least part of its periphery, one or more rigid protuberances, each of these belonging substantially to a plane parallel to the surface defined by the glazing or in line with this surface, and having a thickness enabling it to be at least partly introduced, temporarily or permanently, into the rebate in the window opening, characterised in that the said or at least one of the said protuberances consists of an insert (3), in particular metallic, positioned in each case partly inside the laminated structure constituting the glazing, in line with one or more adjacent sheets (2) constituting it made from glass or vitroceramic or plastics material.

The Board found this claim to lack clarity:

[5.1] Claim 1 of the first auxiliary request concerns the use (utilisation) of a bullet-proof armoured laminated glazing such as defined in claim 1 of the main request as a bullet-proof armoured glazing. Thus the subject-matter of this claim comprises the double use (double emploi) of the expression “bullet-proof armoured”: once for defining the glazing, because, as mentioned above (section [3.1] NB: should read [4.1]), this expression, in the absence of any definition in the patent, has to be interpreted as corresponding to the structural features of the glazing, and once for defining the purpose of the use of the glazing. However, the double use (double emploi) of this expression introduces a lack of clarity: either the repetition leads to something meaningless (non sens), if one is not aware of the fact that in its first use (emploi) the expression defines what is to be meant by armoured glazing, as opposed to the second use (emploi) intended to define the purpose of the use (utilisation), or it generates an antagonism between the structure and its use, both being described in the same way and, therefore, leads to an intrinsic ambiguity of the claimed subject-matter. Therefore, the Board has come to the conclusion that the subject-matter of claim 1 is not clear, and that the request is not patentable.

[5.2] The Board does not share the opinion of the [patent proprietor] according to which claim 1 of this request should automatically be considered to be clear because it corresponds to a transformation of a product claim into a use claim on the basis of G 2/88. The Board would like to distinguish between the principle of amending a claim directed to a product so that it becomes a claim directed to the use of that product, which in view of G 2/88 [headnote 2] is not to be objected under A 123(3), and the other conditions of patentability which are not automatically satisfied by such a transformation. In the present case, as explained above, the amendment does not fulfil the requirements of clarity.

The patent proprietor then tried to overcome this objection by filing the second auxiliary request, claim 1 of which read:

Use of a laminated glazing as a bullet-proof armoured glazing comprising, on at least part of its periphery, one or more rigid protuberances, each of these belonging substantially to a plane parallel to the surface defined by the glazing or in line with this surface, and having a thickness enabling it to be at least partly introduced, temporarily or permanently, into the rebate in the window opening, characterised in that the said or at least one of the said protuberances consists of an insert (3), in particular metallic, positioned in each case partly inside the laminated structure constituting the glazing, in line with one or more adjacent sheets (2) constituting it made from glass or vitroceramic or plastics material.

The Board is not satisfied, on another ground:

[6] Claim 1 of auxiliary request 2 […] concerns the use of a glazing which is merely defined by being “laminated”, as a bullet-proof armoured glazing. This claim follows from the transformation into a use claim of a product claim concerning a “laminated glazing”, and not a “bullet-proof armoured laminated glazing”, as claimed in the patent as granted. It should be noted that according to D9 (see point [4.1] above) the expression “bullet-proof armoured” implies specific structural features which a glazing that is defined as being “laminated” does not necessarily have. It follows that the amendment of the definition of the glazing as being “bullet-proof laminated” to “laminated” is a generalisation of the claimed subject-matter and inadmissible under A 123(3).

As the subject-matter of claim 1 does not comply with the requirements of A 123(3) subsidiary request 2 also has to be rejected.

There being no escape between the Scylla of clarity and the Charybdis of A 123(3), the patent proprietor finally came back to a product claim. Claim 1 of the third auxiliary request was very similar to Claim 1 of the main request, only the alternative “or plastics” having been deleted.

The Board found this request to be allowable.

Should you wish to read the whole decision (in French), you can download it here.