Interpretative Spotlight: “a”

[1] Claim 1 as granted was directed to

“a method to detect the presence of a bacterial species” (in bold by the board),

whereas claim 1 of the main request relates to

“a method to simultaneously detect the presence of bacterial species” […].

In the board’s judgment, it is clear from this initial wording that both methods are concerned with different subject-matter. Indeed, when reading the description of the patent-in-suit, these two methods correspond to two different preferred embodiments, namely a first embodiment directed to detection of a single bacterial species and a second embodiment directed to the simultaneous detection of several bacterial species […]. The subject-matter of claim 1 as granted has thus now been changed to a different embodiment and thereby, the scope of protection of the claim has been extended.

[2] Contrary to [the patent proprietor’s] argumentation […], the board does not see any indication in granted claim 1 or in any of its dependent claims that could cast serious doubts on the meaning indicated above of granted claim 1.

The board fails to see any ambiguity in the initial wording of granted claim 1 nor is this ambiguity introduced by any of the other granted claims. As stated in the description of the patent-in-suit […], the use of several primers specific for a single bacterial species in a multiplex amplification or multiplex PCR may well be performed to increase the ubiquity of the assay […], as rightly pointed out by [the opponent]. Granted claim 8 may also be understood as referring to a sample consisting of one or more bacterial colonies (isolates or strains) of a single bacterial species (target species or species of interest) which might be used to check both the ubiquity and the specificity of the primer or probe used, as also explained in the patent-in-suit […].

[3] [The patent proprietor] referred to three decisions of the Boards of Appeal, namely decisions T 190/99, T 579/01 and T 371/88 […], which, in its opinion, support its case […].

The board cannot however follow [the patent proprietor’s] arguments for the following reasons:

[3.1] As stated [above], the initial wording of granted claim 1 has a clear and unambiguous technical meaning and no ambiguity is introduced by any of the dependent claims or by claim 1 itself.

For a mind willing to understand, as defined in decision T 190/99, the meaning of, or the interpretation given to, granted claim 1 is clear and technically meaningful. Indeed, it corresponds to one of the preferred embodiments explicitly disclosed as such in the patent-in-suit. Thus, there is no need to seek for alternative or different interpretations of granted claim 1.

[3.2] Indeed, as indicated in decision T 579/01, the “scope of protection” refers to the total protection conferred by the granted claims and not by the individual granted claims. However, the subject-matter of claim 1 of the main request cannot be seen as being comprised within the “total scope of protection” conferred by, or associated with, the claims as granted because none of the granted claims, explicitly or implicitly, covers a method to simultaneously detect the presence of several bacterial species, i.e. the subject-matter of claim 1 of the main request.

[3.3] According to decision T 371/88, the first condition for deleting or replacing a restrictive feature from a granted claim by a less restrictive feature is that the restrictive feature is so unclear in its technical meaning in the context of the claim that the extent of protection can only be determined by interpreting the claim by reference to the description of the patent (cf. T 371/88 [part (a) of the headnote]). In the present case, this first condition is certainly not given, since, as discussed [above], the technical meaning of the feature “a bacterial species” in granted claim 1 is completely clear, unambiguous and not open to interpretation. Thus, the first criterion set out in decision T 371/88 does not apply to the present case.

[4] Therefore, the main request is considered to contravene the requirements of A 123(3).

Should you wish to download the whole decision (T 837/07), just click here.

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