Saturday, 16 July 2011

Oldies But Goldies – Deleting Claimed Features

This week we had a decision citing T 331/87, so I thought it would be appropriate to have a closer look at this important decision itself.

The decision dealt with an appeal of the patent proprietor against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Claim 1 as granted differs from Claim 1 as filed in the following way (deleted parts in red, additions in blue):

The Board agrees with the patent proprietor that the opposition should have been rejected.

[2] Claim 1 as granted differs mainly from Claim 1 as originally filed by omitting the feature “... laser cutting head carried by the main frame” and replacing it by the feature “... laser cutting head (17) carried in fixed horizontal relationship to the frame (12)”. It is the excision of the feature concerning the attachment of the cutting head to the frame, which was considered by the impugned decision to contravene A 123(2), because it allegedly extended the subject-matter of the application of the European patent beyond the content of this application as filed.

[3] For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art in what has been expressly mentioned (Guidelines, Part C, Chapter VI, No. 5.4). In other words, it is to examine whether the claim as amended is supported by the description as filed.

[4] In the decision T 260/85 [12 and headnote][…] the Board of Appeal 3.5.1 came to the conclusion that
“it is not permissible to delete from a claim a feature which the application as originally filed consistently presents as being an essential feature of the invention, since this would constitute a violation of A 123(2)”.
In that case the application as originally filed contained no express or implied disclosure that a certain feature (“air space”) could be omitted. On the contrary, the reasons for its presence were repeatedly emphasised in the specification. It would not have been possible to recognise the possibility of omitting the feature in question from the application (point [8]). It could be recognised from the facts that the necessity for the feature was associated with a web of statements and explanations in the specification, and that its removal would have required amendments to adjust the disclosure and some of the other features in the case.

[5] Nevertheless it is also apparent that in other, perhaps less complicated technical situations, the omission of a feature and thereby the broadening of the scope of the claim may be permissible provided the skilled person could recognise that the problem solving effect could still be obtained without it (e.g. T 151/84 - 3.4.1). As to the critical question of essentiality in this respect, this is a matter of given feasibility of removal or replacement, as well as the manner of disclosure by the applicant.

[6] It is the view of the Board that the replacement or removal of a feature from a claim may not violate A 123(2) provided the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change (following T 260/85). The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the invention. Any replacement by another feature must, of course, be examined for support in the usual manner (cf. Guidelines, Part C, Chapter VI, No. 5.4) with regard to added matter.

[7] It is therefore necessary to examine whether the person skilled in the art reading the application as filed would consider the feature “carried by the main frame” in respect of the cutting head as essential or not to the function of the machine as described in the application.

[7.1] From US-A-4 063 059 being the prior art coming closest to the subject-matter of Claim 1 it is known to equip an automatic machine tool punch press with a plasma-arc torch which is able to cut large and/or irregularly shaped holes in the workpiece to be treated. Such cutting torches have the disadvantage that they cause relatively large kirfs, ragged edges and large heat distort areas adjacent to the cut […].

[7.2] It is also generally known to utilise laser beam cutting machines for cutting large holes in workpieces without the aforementioned disadvantages. In addition laser beam cutting machines can be used as devices which permit surface marking of workpieces of a precisely predetermined position. However, as the laser beam generators are highly sensitive to shocks and vibrations such laser beam cutting machines are not yet combined in operation with a machine tool punch press which is subjected to pounding vibrations during punching operations […].

[7.3] According to the application as filed
“it would represent a major advance in the art of machine tools to provide a single machine tool capable of high speed, high accuracy workpiece punching, cutting and surface marking wherein all functions are controllable from a central automatic control and wherein workpiece movement is accomplished by a single mechanism so as to eliminate the necessity of workpiece handling between operations”.
During the oral proceedings the [patent proprietor] explained that the term “single” machine tool would stand for a unit consisting of individual devices being controlled from one central control. This interpretation corresponds to the object of the invention as specified in the application as filed […]:
“to provide a combined automatic turret punching machine tool and automatic laser cutting tool wherein both the punching tool and the cutting tool share a common control and a common workpiece movement system”.
[7.4] Having in mind this problem and knowing the advantages and disadvantages of a laser beam cutting machine […] it is clear to the person skilled in the art that for the solution of the problem it is necessary
  • to position the laser beam generator independently from the machine tool punch press,
  • to position the laser cutting head in a fixed horizontal relationship to the punch tools, and
  • to provide control means for alternatively controlling.
Only when these conditions are fulfilled, is the laser beam generator not affected by the jarring vibratory operation of the machine tool punch press and the laser cutting head can share the automatic control and the workpiece movement assembly of the machine tool punch press.

[7.5] From this it results, without being mentioned expressis verbis in the application as filed, that the embodiment of the invention as described in the original application, namely the cutting head being mounted to the mainframe or being carried by the main frame, only represents an advantageous embodiment of the invention.

The disclosure never emphasised the strict necessity of this particular solution. Specific embodiment is not indispensable to the function of the invention.

The removal of this from Claim 1 does not require any modification of the other features of the invention.

Only the requirement for horizontal fixing in relation to the frame enters in lieu of the excised feature itself. Therefore, the excision of the feature “carried by the main frame” by replacing it by a feature being essential to the solution of the above-mentioned problem does not contravene A 123(2).

[8] Since novelty and inventive step have never been disputed by the [opponent], there is no need to give in this decision reasons in detail.

[9] Consequently, the Grounds for Opposition mentioned in A 100 do not prejudice the maintenance of the patent unamended.

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


Michael Thesen said...

What bothers me about this decision, which I have also discussed last week in my blog, is the last sentence of item [3], where they pretend that A 123(2) EPC and support by the description (A 84) is the same thing.

I understand that deleting a feature may lead to a claim which is so broad that it is not supported by the describtion anymore in the sense that it extends beyond the scope in which the invention makes a contribution to the prior art. However, this violation of Art. 84 would not be a valid ground for opposition and I suspect that the board attempts to re-introduce it through the back-door using Art. 123(2).

After all, it is hard to imagine for somebody without professionally contorted perception how information which is not directly and unambiguously derivable from that previously presented by the application may be introduced by deleting information.