T 1049/08 – No Liquids

To my best knowledge, this decision – which in itself is not very exciting – is the first Board decision to apply the teaching of G 2/10 concerning the possibility of disclaiming disclosed embodiments.

The opponent filed an appeal after the Opposition Division had rejected the opposition.

The main request before the Board was identical to the set of claims as granted.

Claim 1 of this request read:

A food intake restriction device for forming a stoma opening in the stomach or esophagus of a patient, the device comprising:

A) an elongated restriction member (2, 48, 60, 62, 88, 110, 122, 126, 128, 130),

B) forming means (10, 94, 106, 108, 118, 132) for forming the elongated restriction member into at least a substantially closed loop around the stomach or esophagus, said loop defining a restriction opening (3);

C) an adjustment means (12, 52, 66, 90, 92, 104, 110) for adjusting the restriction member in said loop to change the size of said restriction opening,

C1) wherein the adjustment means is designed to mechanically adjust the restriction member

C2) in a non-invasive manner to allow post operation non-invasive adjustment of the restriction member;

D) an implantable signal receiving means (334, 338) comprising a control unit for controlling the adjustment means in response to signals from a wireless remote transmitting means; and

E) an implantable energizer unit for providing energy to energy consuming components of the device,

characterised in that:

E1) the energizer unit is capable of being provided with energy via wireless energy transfer from the signal transmitting means.

Claim 1 according to the First Auxiliary Request differs therefrom by the following additional after feature B:

F) there is no liquid directly involved in the elongated restriction member itself for providing inflation thereof.

NB: The designation of features A to F has been introduced by the Board.

The Board found the priority claim to be invalid for the main request and concluded that, as a consequence, claim 1 lacked novelty over document E22.

In what follows, the Board discusses the validity of the priority claim and the novelty of claim 1 of the auxiliary request:

Validity of the priority

[4.2] Feature F is derived literally from page 3, lines 13 to 16 of the previous application.

Extract of the U.S. provisional application the priority of which is claimed.

The paragraph comprising this feature describes further features of the gastric band, such as adjustment means being designed to mechanically adjust the restriction member and non-invasive post-operative adjustment thereof. Claim 1 according to the auxiliary request comprises all these features even though not in immediate succession. Therefore, it claims the same device described on page 3 of the previous application. It is irrelevant whether or not any cause-effect link between the different features is specified, since the introduction of such a combination would not change the subject matter of the claim.

It is correct that in principle the wording of claim 1 would encompass the use of a gas for inflating the restriction means while the priority document related exclusively to non-inflatable restriction means. However, due to the application of the restriction means within a gastric band the use of a gas for inflation is excluded as a matter of fact. Therefore, in the present context, feature F according to which no liquid is involved in the restriction member for providing inflation thereof corresponds to the feature according to which the restriction member is non-inflatable.

Hence, the invention defined in claim 1 of the auxiliary request is the same as that of the priority document and the priority is validly claimed.

Clarity

[4.3] The feature introduced into claim 1 according to which “there is no liquid directly involved in the elongated restriction member itself for providing inflation thereof” is clear.

In the context of the present claim, the wording “directly involved” can only be interpreted as meaning that no liquid is used in the restriction member for changing its dimension by inflation. It is correct that the feature introduced into the claim allows a liquid to be used for conveying forces to the restriction means, i.e. the liquid can be involved indirectly, e.g. in the form of a hydraulic actuator, however this does not render the wording unclear.

The term “itself” as used in feature F only stresses the fact that no liquid is involved in the elongated restriction member. The fact that the boundaries of the restriction member are not specified in the claim is not linked to the term “itself” and does not render it unclear. If at all the absence of a definition of the boundaries might become relevant for ascertaining the novelty and inventive step of the subject matter of the claim. Moreover, since the sentence would have exactly the same meaning if the term “itself” was left out, this term cannot introduce any unclarity or vagueness into the feature.

In contradiction to the appellant’s opinion, the term “liquid” has a clear and well known physical meaning. As for example described in Collins English Dictionary, Fourth Edition, 1998, a liquid is “a substance in a physical state in which it does not resist change of shape but does resist change of size”. Therefore, this term per se is clear. It is correct that the state of a substance changes depending on its temperature and pressure and that a liquid may become a solid or a gas. However, in the present case, claim 1 refers exclusively to a liquid and not to a solid or a gas.

Therefore, feature F complies with the requirements of A 84 as well.

Allowability of the amendments

[4.4] By stating that no liquid is involved in the elongated restriction member for providing inflation thereof, feature F comprises a negative formulation and disclaims the use of liquids for inflation of the restriction member.

However, it is permissible to restrict the subject-matter using a negative limitation i.e. a disclaimer if – as in the present case – adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable or would unduly limit the scope of the claim.

The decision G 1/03 cited by the appellant refers to so-called “undisclosed disclaimers”, i.e. to disclaimers which do not have any basis in the application as filed. It is correct that such disclaimers are only allowable if they meet the conditions set out in G 1/03. However, since the limitation introduced by feature F is derived literally from page 3, lines 26 to 29 of the original application it has a basis in the original application and does not represent an undisclosed disclaimer but a disclaimer for a disclosed subject matter. Hence G 1/03 is not relevant in the present case.

G 2/10 which deals with the allowability of disclosed disclaimers exclusively states that an amendment to a claim by the introduction of such a disclaimer infringes A 123(2) if the subject-matter remaining after the introduction of the disclaimer is not disclosed in the application as filed (see headnote 1a). Moreover, G 2/10 points out that G 1/03 refers exclusively to undisclosed disclaimers (see G 2/10 [3.9]). Consequently, G 2/10 has to be considered in the present case. Since the subject matter remaining after the introduction of feature F is clearly disclosed in the originally filed application (see arguments brought forward under [4.2] above in the context of validity of the priority which apply to the allowability of the amendments as well), a fact which has not been challenged by the appellant, the amendments introduced into claim 1 are allowable under A 123(2).

G 1/03 and G 2/10 have defined a “disclaimer” to be “an amendment to a claim resulting in the incorporation therein of a “negative” technical feature, typically excluding from a general feature specific embodiments or areas”. More commonly, it is the negative feature itself that is referred to as disclaimer. Feature (F) is such a negative feature.

G 2/10 has stated that “[a]n amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.”

The present case is particular in that the disclaimer as such was already disclosed, whereas G 2/10 – as I understand it – considered the more general case of a disclaimer disclaiming disclosed subject-matter. To bring it to the point, the present decision deals with a disclosed disclaimer whereas G 2/10 deals with disclaiming disclosed subject-matter.

My feeling is that when the disclaimer as such is disclosed – in combination with the claimed features – the amendment should be allowable anyway, and the reference to G 2/10 is not even necessary.

Any thoughts?

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The file wrapper can be found here.