Tuesday, 28 June 2011

T 2003/07 – Two In One, Clarity Gone

When amending claims in order to overcome prior art objections raised in opposition proceedings, one has to be careful, in particular when the claim as amended is intended to cover several distinct embodiments. It may then be preferable to have several independent claims rather than trying to find an all-encompassing claim 1. Otherwise, one might end up with unclear claims, and it will not be sufficient to insist on a particular interpretation of the claim terms to overcome clarity objections.

The present appeal was filed by the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form.

Claim 1 before the Board read:
1. A door inner panel assembly (10) including a door inner panel (12) formed from a sheet material and a window regulator drive means, the window regulator drive means having a drive portion and an output shaft (32) projecting from the drive portion, the inner panel having an abutment portion (26) for cooperation with the drive portion and a shaft support portion for co-operation with a portion of the shaft remote from the drive portion to support the shaft, the abutment portion and shaft support portion being integrally formed from the same sheet material and further including a window regulator drum (44) secured on the shaft and positioned between the drive portion and the shaft support portion in which the door inner panel comprises a door inner skin connected to a door outer skin.
The opponent pointed out that the amendment (the addition of the underlined part) made the claims unclear.

The patent proprietor argued that there were two ways in which auxiliary components could be fixed to car doors. They could either be attached to a module plate (paragraph 5 of page 2) or placed in cavities of an integral pressing (“door inner skin”; paragraph 6 of page 2). The description from the final paragraph of page 2 onwards was applicable to both types of arrangement. Whilst the claims as granted covered both module plates and door inner skins, the amended claims were restricted to embodiments incorporating a door inner skin. It was clear that the term “comprise” had the narrow meaning of “consist in”, i.e. that the door inner panel was a door inner skin.

[2.1] In order to overcome an objection of lack of novelty of the subject-matter of claim 1 as granted the claims were amended in the course of the oral proceedings before the OD. The amendment consists in the introduction of the following feature taken from […] the originally filed application documents:
“in which the door inner panel comprises a door inner skin connected to a door outer skin” (hereinafter called feature i)).
[2.2] In their response to the statement of the [opponent] setting out the grounds of appeal, the [patent proprietor] contended that the word “comprises” in feature i) should be construed narrowly and simply meant that the door inner panel is the door inner skin itself […].

[2.3] Questioned by the Board the [patent proprietor] confirmed that the present wording of claim 1 was intended to relate to two arrangements.

In the first, the door inner skin is connected to the door outer skin and then the window regulator drive means and window regulator drum are mounted on the door inner skin using the integrally formed abutment portion and shaft support portion. They argued that after this had been done there resulted a “door inner panel assembly” within the terms of the claim.

In the second arrangement the door inner skin, window regulator drive means and window regulator drum were pre-assembled before the door inner skin was connected to the door outer skin.

On the other hand the amendment was intended to exclude an arrangement deemed by the OD to belong to the state of the art, in which the window regulator drive means and the window regulator drum were pre-assembled on an inner panel which was then mounted on a door inner skin to close a substantially sized opening in the latter.

[2.4] In the view of the Board these intentions cannot be effectively served by the amendment made to claim 1 in a manner which is consistent with the requirements of clarity (A 84).

The first problem resides in the reference to a “door inner skin connected to a door outer skin” (emphasis added).

With respect to the second alternative which the claim is intended to cover as described above it might, with some latitude, be possible to interpret this requirement in the sense that the door inner is to be connected to the door outer skin, in other words as a sort of confirmatory statement as to the nature and character of a “door inner skin”.

However, with respect to the first alternative described above this is not possible and the contentious term can only be understood a meaning that the door inner skin has actually been connected to the door outer skin, since it is only in this state, after the addition of the further components involved, that any form of “assembly” as required by the claim is created. But this has the consequence that the claim is not longer directed to a “door inner panel assembly” as stated but in effect to a door including such an assembly, and is thus inherently unclear.

The second problem stems from the use of the word “comprises” in feature i). Certainly, one possible interpretation of this is the one proposed by the [patent proprietor], namely that the door inner panel is constituted by the door inner skin alone. The claim itself does not however contain anything which would make this restricted reading of “comprises” obligatory. Indeed, constructions can be readily envisaged in which a door inner panel assembly comprises a pre-assembled door inner skin and mounting plate which supports further ancillary equipment. Thus this feature is also unclear, particularly as its intended function of distinguishing the claimed subject-matter from the most relevant state of the art is not achieved.

[2.5] Given that the amendment in question was freely chosen by the [patent proprietor] in the course of these opposition proceedings, the Board is of the opinion that is should be clear in its own right, without any undue recourse to the description to interpret it.

However, even if that view of the legal situation were incorrect, the Board notes that there is nothing in the description that could assist in overcoming the lacks of clarity identified above. The reason for this lies in the fact that the feature added to the amended claim is based solely on a substantially coterminous passage of the particular description, the rest of which is concerned with a specific embodiment no longer intended to be covered by the claims. […]

The patent is revoked.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Michael Thesen said...

I think the logic of this decision is very kinky. As to what concerns the first problem, it is entirely clear to me that an inner skin connected to the outer skin does not comprise the outer skin. I myself am currently sitting on a cosy patent attorney's exeutive chair wihout "comprising" this chair.

The second "problem" is even more strange: I think that the clarity of the claim language should be assesed on its own right and not by comparing it with any "intended purpose".

If it is true that "this feature is also unclear, particularly as its intended function of distinguishing the claimed subject-matter from the most relevant state of the art is not achieved", then the patent should be revoked on the ground of lacking novelty and not clarity.