Both the patent proprietor and the opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent based on the fifth auxiliary request.
Claim 22 of the patent as granted read:
22. An apparatus for packaging a substrate, said apparatus comprising:a substrate having a first surface (110) and a second surface (120), said first surface comprising a probe array;a body having a mounting surface with a fluid cavity, said second surface attached to said cavity; anda cover attached to said mounting surface for sealing said cavity;wherein said cavity comprises an inlet port and an outlet port, said inlet and outlet ports permitting fluids to circulate into and through said cavity. (my emphasis)
In what follows the Board deals with the novelty of this claim.
[3] The OD found that the devices depicted in Figure 8a of document D1, Figure 11 of document D2 and Figure 3 of document D4 comprised all the individual elements of the apparatus defined in claim 22 as granted, and that, consequently, the subject-matter of this claim lacked novelty.
[4] The board does not share the view of the OD. While it is true that each of the structural elements of the apparatus specified in claim 22 (i.e. a substrate, a body and a cover) is present in the devices described in documents D1, D2 and D4, the board notes that, in its reasoning for the finding of lack of novelty in respect of the subject-matter of claim 22, the OD failed to take into account the feature “for packaging a substrate” characterising the claimed apparatus. In the board’s view, this feature introduces a limitation concerning the purpose of the claimed apparatus which distinguishes it from the devices known in the art at the relevant date.
[5] According to the jurisprudence of the Boards of Appeal (see T 523/89 as well as further decisions cited in “Case Law of the Boards of Appeal of the EPO”, chapter I.C.5.3.3), a statement of purpose made in a claim in respect of a product is to be interpreted as meaning that the claimed product is suitable for the stated purpose. Thus, a product known in the art at the relevant date having all the structural features specified in the claim at issue and being suitable for the same purpose as the claimed product, is considered to destroy novelty.
[6] Applying the principles established by the Boards of Appeal to the present case, the feature “for packaging a substrate” in respect of the apparatus of claim 22 must be construed as meaning “suitable for packaging a substrate”.
While neither appellant disagreed with this interpretation, two issues were subject of dispute between the parties:
(a) what the expression “for packaging” means, and
(b) whether or not the devices depicted in documents D1, D2 and D4 can be regarded as suitable for packaging a substrate.
Meaning of the expression “for packaging”
[7] Since the feature “for packaging a substrate” is not expressly defined in the patent specification - a circumstance that [the patent proprietor] did not deny -, it was argued by [the opponent] that, when assessing novelty of the claimed apparatus, the expression “for packaging” should be given its broadest meaning. This is, in fact, the approach consistently taken by the Boards of Appeal, though with the reservation that the chosen meaning not only must make sense from the technical point of view in the context of the claimed invention, but also must not be in contradiction with the description and the drawings.
[8] Generally, the verb “to package” has the following meanings:
(i) to make or put into a package;
(ii) to design and manufacture a package for a product or series of related products;
(iii) to group or combine (a series of related parts) into a single unit;
(iv) to combine the various elements of (a tour, entertainment, etc.) for sale as a unit.
[package. Dictionary.com. Dictionary.com Unabridged (v 1.1). Random House, Inc. http://dictionary.reference.com/browse/package (accessed: July 30, 2009)]
In the same reference dictionary, the noun “package” is similarly defined as “a finished product contained in a unit that is suitable for immediate installation and operation, as a power or heating unit”.
[9] Among the meanings of the verb “to package” quoted above, the board regards the meaning under (iii) (“to group or combine (a series of related parts) into a single unit”) as the broadest meaning which also makes technical sense in the context of the present invention.
Accordingly, the feature “for packaging a substrate” in claim 22 is interpreted as meaning that the claimed apparatus is suitable for combining a substrate with a body and a cover to form a unit, this unit being suitable for immediate installation and operation. This interpretation is in line with the statements in the description and the drawings of the patent in suit […].
[10] In spite of the fact that the wording of claim 22 appears, at first sight, unclear due to the use of the term “apparatus”, having regard to the patent specification as a whole the board is persuaded that, what is actually claimed in claim 22 is a self-contained unit, i.e. a “cartridge-like” unit containing the substrate, as maintained by [the patent proprietor].
[11] A further question to be decided with respect to the issue of novelty vis-à-vis documents D1, D2 and D4 is whether or not the devices depicted in these documents are apparatuses suitable for packaging a substrate within the meaning of claim 22, i.e. self-contained, “cartridge-like” units comprising a body and a substrate.
[12] The board is not persuaded that this is the case. There is no clear indication in any of the documents cited by [the opponent] that the body and the substrate may form a “cartridge-like” unit. Rather, the figures on which [the opponent] relies seem to show a flow cell to which a substrate has been attached temporarily.
[13] This is particularly apparent from the passage on page 50 of document D2 in which the apparatus depicted in Figure 11 of the same document is described. It is stated in this passage that
“[T]the present invention provides a new use for an apparatus comprising a reaction chamber and a scanning apparatus which can scan a substrate material exposed to the chamber.
Figure 11 illustrates a system and a schematized reaction chamber to which is attached a silicon or glass substrate” [104] ([…] emphasis added by the board). In the board's view, the substrate is not described in this passage as an integral part of the apparatus, but rather as a separate item which needs to be attached to the reaction chamber [106] for operation.
[14] Similarly, in the reactor system [100] illustrated in Figure 8A of document D1, which includes a body [102] with a cavity [104], in order for the desired polymers to be synthesized on a prepared substrate [112], the substrate has to be mounted above the cavity of the reactor system [100] […].
Similar statements are found [in] document D4.
 |
| Device disclosed in D4. 402 refers to a flow cell, 406 to a substrate. |
[15] In view of the above, the board concludes that none of documents D1, D2 and D4 describes an apparatus for packaging a substrate as defined in claim 22. Thus, novelty of the claimed apparatus vis-à-vis these documents is acknowledged.
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