Wednesday, 15 June 2011

T 238/08 – Defining Moments

Both the opponent and the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

In what follows the Board deals with the question of whether the subject-matter of the main request is novel. Claim 10 of this request read:
A process of making a microdevice for conducting unit operations on a fluid comprising:
- stacking a plurality of shims, each shim having an aperture such that a continuous flow path is formed through the shims;
- wherein the flow path extends in a direction substantially parallel to shim thickness;
- wherein the plurality of shims comprises at least three shims through which the flow path is formed and wherein a straight, unobstructed line is present through the flow path in said at least three shims;
- wherein the plurality of shims are configured such that a unit operation can be performed on a fluid in the flow path; and
- bonding the shims to form a device capable of performing a unit operation on a fluid;
the device as a laminated device comprising a first set of microchannels wherein each microchannel has an inlet and an outlet, a header connected to the inlets of the first set of microchannels;
a footer connected to the outlets of the first set of microchannels; and
comprising a header or footer structure, wherein
the header has a surface that curves toward at least a portion of the inlets of the first set of microchannels, or
the footer has a surface that curves toward at least a portion of the outlets of the first set of microchannels, or
the footer comprises a roof, located on a side of the footer opposite the side that is connected to the outlets of the first set of microchannels, and the roof is sloped relative to the outlets of the first set of microchannels.
[2.1] D17 (claims 1 and 2; Figures 1 to 3 - reproduced hereinafter) discloses a stacked assembly of plates, the stack having an inlet (12) and an outlet (14) for a first fluid and an inlet (24) and an outlet (34) for a second fluid, characterised in that a first portion of the length of the assembly is formed of first perforated plates (26), each first perforated plate being perforated to define a first series of slots (36) spaced across the plate and a second series of slots (46) spaced across the plate, each slot (36) of the first series being positioned between a pair of slots (46) of the second series, whereby the slots (36) define first passageways through the first portion of the length for a first fluid and the slots (46) define second passageways through the first portion of the length for a second fluid, the first series of passageways being connected to said inlet (12) and outlet (14) for the first fluid, a second portion of the length of the assembly being formed of one or more second perforated plates (20,22), each second perforated plate being perforated to define a first (36A) and a second (46A) series of slots corresponding to the slots of the first plates so as to provide continuing passageways in line with the first and second passageways of the first portion, each slot (46A) of the second series opening at one of its two ends into a feeder slot (50) extending across the second plate and connected to the inlet (24) for the second fluid.

[2.2] Figure 1 shows that the number of plates through which the gas flow path is formed is higher than three and Figure 3 shows that the feeder slot (50) has a “surface that curves toward at least a portion of the inlets” of the passageways (46A), as required by claim 10 at issue.

[2.3] [The patent proprietor] argued that the subject-matter of claim 10 was novel over document D17, because in the latter neither a microdevice nor microchannels having a diameter of 2 mm or less were disclosed.

D17 also did not disclose a header that “has a surface that curves toward at least a portion of the inlets” of microchannels, because in the header according to Figure 3 the flow path was horizontal, while in claim 10 at issue the flow path was vertical, both in the microchannels and in the header.

2.4 The board does not accept the above arguments for the following reasons:

First of all, it is to be noted that the terms “microdevice” and “microchannel” are very general and do not have a well-known recognised technical meaning in the field at issue, let alone as regards the dimensions that a microdevice or a microchannel should have.

On the one hand, it is true that the term “microchannel” is defined in the contested patent as having certain dimensions (“at least one dimension of 2 mm or less” (paragraph [0031]); “each tubular channel can have a cross-sectional diameter of preferably less than 5 mm and more preferably less than 2 mm” (paragraph [0038])).

On the other hand, according to established jurisprudence (T 1208/97 [4]; T 932/99 [4.3.3]), reading limitations derived from the description into claims in order to avoid objections based on novelty and inventive step is not acceptable. This would contravene the principle that the claims are crucial in fixing the boundaries of the protection, and for this reason, they must be clearly and unambiguously formulated in terms of the technical features of the invention (G 2/88) in order to ensure that there is a reasonable degree of legal security for third parties.

So, in the present situation, if a certain dimension of the microchannel or of the microdevice ought to be a novelty establishing feature, it should have been defined and included in the claim at issue. This not being the case, the board does not see any reason not to hold the device according to D17 as being a “microdevice” and the slots (36, 36A, 46, 46A) as being “microchannels” in the sense of claim 1 at issue.

As regards the flow path in the alleged invention, it can be seen in particular from Figure 6c (reproduced hereinafter)

- contrary to what has been alleged by [the patent proprietor] - that the flow path is not necessarily vertical in the device, in particular the header, according to the alleged invention.

In the device according to D17, the feeder slot (50) - i.e. a header - illustrated in Figure 3 (see point [2.1] above) has a surface that curves toward the inlets of microchannels and so the device disclosed in D17 is clearly and unambiguously disclosed according to the wording of claim 10 at issue.

[2.5] It follows from the above reasoning that the device according to D17 comprises all the features of claim 10 at issue. The subject-matter of claim 10 is not novel and hence does not meet the requirements of A 54(1) and (2).

Since the main request is not allowable, there is no need to deal with T 840/93 cited by appellant I in respect of claims 2 and 3 of this request.

I respectfully disagree, as our American colleagues like to say, with the above treatment of definitions in the specification. The application as filed contained a definition for the term “microchannel” and the fact that it was not reproduced in the claim as such is not sufficient not to take it into account. It is a long-standing practice that the applicant can act as his own lexicographer. T 480/08 [9] has stated this very clearly:
It is established practice, that, when drafting an application, an applicant has the right to choose the definitions of terms used therein and to have its own lexicography.
I think this practice should not be hampered, because it makes claim interpretation more straightforward and less arbitrary.

And indeed the case law cited in support of the present Board’s approach does not really support it.

T 1208/97 dealt with a case where the patent proprietor tried to use A 69 to read limitations into the claim. The Board refused this approach, and rightfully so. But as far as I can see, there were no explicit definitions provided in the specification.

T 932/99 is even less appropriate, because it states, in point [4.3.3] of the reasons:
“However, a distinction should be drawn between, on the one hand, the fact that it might be necessary to take into account any explicit definition as given in the description for interpreting a claim’s term and, on the other hand, the tentative to use A 69 as a basis for reading limitations derived from the description into claims in order to avoid objections based on lack of novelty or inventive step. The latter approach to claim interpretation by the [patent proprietor], whereby features mentioned only in the description are read into Claim 1 as necessary limitations is incompatible with the EPC (T 1208/97 [4]).” (my emphasis)
In other words, T 932/99 rather provides support for the position that explicit definitions should be taken into account.

This being said, I would agree to say that the “definition” provided in the patent is not much of a definition. But that is another matter.

To download the whole decision, click here. The file wrapper can be found here.

More on the subject of definitions can be found here and here.


Myshkin said...

I prefer the approach taken in this decision. If the description provides a good definition, it should not be a problem to include it in the claims.

Note that T 480/08 is about Art. 123(2) EPC. It seems clear to me that for the purpose of Art. 123(2), explicit definitions of claim terms in the description should be taken into account. So in the present case, an amendment of "microchannel" to "channel" would infringe Art. 123(2), even though for the purpose of Art. 54(2) the term "microchannel" is interpreted as "channel".

You have a point regarding T 932/99, although personally I'm not so convinced of the existence of the "distinction". Deriving features from an explicit definition given only in the description in my view is just a special case of reading limitations derived from the description into the claims... (However I do agree that there is quite a lot of case law that recognises this distinction.)

Manolis said...

I would agree with your disagreement Oliver. Even in the Guidelines it says that claims should be interpreted in the light of the description. Personally, I don't see the need to put the definition from the description in the claims. It is standard procedure that when a term is not readily defined in the claims, its explanation is to be sought in the description.
The only limitation, as far as I am aware, is with trade names (I think TEFLON is given as an example in the Guidelines) where the proper definition should be given in the claims, because the composition may change with time...

oliver said...

I feel I should have been a little bit less concise.

In my opinion it is useful to spend some thought on this problem because it makes you think about what claims really are meant to be, and what their relationship to the description is.

Practical case #1: I recently was “forced” by an Examiner to insert my extensive definition (more than half a page) of “elastic modulus” including temperatures, hygrometry, sample sizes etc. etc. into my main claim although this had nothing to do with the core of the invention. The information was needed so that the skilled person would know whether he/she infringed my patent, but it was not needed to have an idea what the heart of the invention was. I feel this insertion to be regrettable because it makes the claim clumsy and difficult to read and does not really help anybody. Of course, the competitor trying to have a precise idea of what the “forbidden zone” was would have a look at the description, and there all the information was indeed available.

Practical case #2: I often use extensive definitions in order to cover special cases where the feature as such might become ambiguous or badly defined. To give you an example, I recently had a claim where two portions were separated by an interface (surface). Now in some very particular cases, there might be a gap instead of an interface, in which case the interface was not well defined any more. So I used a definition of “interface” which covered both the intuitive feature as well as the special case. I do not see why this definition should be inserted into the claim, because it will only make it more difficult to understand. Instead of improving clarity, the insertion would make the claim less clear.

Now there is one case where I think the EPO should oblige the applicant/patentee to insert its definition into a claim: when the precise definition becomes crucial for patentability. Perhaps this is what the Board wanted to say in the present case, and if so, I withdraw my criticism. Apart from that situation, I think the practice of having concise claims and detailed definitions in the description is a very recommendable practice.

Myshkin said...

I suppose you are thinking of part C of the Guidelines, but I don't find strong support there.

C-III, 1 repeats that the extent of protection is determined by the claims interpreted with the help of the description and the drawings, but this does not imply that claims should be read in the light of the description also for the purpose of clarity and novelty.

Maybe you mean the first sentence of C-III, 4.2:
"Each claim should be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise."

Note that this passage then states that if such a special meaning applies, the examiner should, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. Furthermore, C-III, 4.2 ends with the statement that Art. 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims.

I would say that for the purpose of clarity and novelty, the Guidelines may allow the description to be taken into account for interpreting the claim, but for showing that the claims cover more than what a literal reading might suggest, not for excluding what is literally covered. (Of course in infringement proceedings it might work the other way around.)

Of course exceptions are possible, just as in exceptional cases a claim may rely on references to the description or drawings (R. 43(6)). In T 56/04, old R. 29(6) is actually used to examine a claim that relied on an explicit definition in the description:
"2.9 Weiterhin stellt die Kammer fest, dass die restriktive Praxis des EPA hinsichtlich der Behandlung von vagen oder relativen Begriffe in den Ansprüchen im Einklang mit Regel 29 (6) EPÜ steht, da Regel 29 (6) EPÜ eine Bezugnahme in einem Anspruch auf die sonstigen Anmeldungsunterlagen grundsätzlich verbietet, falls dies nicht "unbedingt erforderlich" ist. Ein im Anspruch verwendeter vager oder unklarer Begriff, dessen genaue Definition nur in der Beschreibung zu finden ist, ist wie eine implizite Bezugnahme im Anspruch auf die Beschreibung und/oder die Zeichnungen zu betrachten. Um daher Regel 29 (6) EPÜ nicht zu unterlaufen, kann dies höchstens in Ausnahmefällen erlaubt werden, mit anderen Worten, nur wenn diese Formulierung der Ansprüche "unbedingt erforderlich" ist."