T 260/10 – In Particular

As is well known, the Guidelines, C-III 4.9 have the following statement on optional features

Expressions like “preferably”, “for example”, “such as” or “more particularly” (German version: “insbesondere”) should be looked at carefully to ensure that they do not introduce ambiguity. Expressions of this kind have no limiting effect on the scope of a claim; that is to say, the feature following any such expression is to be regarded as entirely optional.

The present decision – which deals with an appeal filed by a patent proprietor against the decision of the Opposition Division to maintain the patent in amended form – points out that this is not always true.

Claim 1 of the main request before the Board read (in English translation – the amendments with respect to claim 1 as granted are highlighted; features (d) and (f) essentially correspond to the features of dependent claims 2 and 3 as granted, respectively):

Click to enlarge

The Board found this claim to violate A 123(3):

*** Translation of the German original ***

[2.1] In claim 1 according to the main request […] the feature of claim 1 as granted “…having at least one optical display unit and in particular (insbesondere) at least one operating unit for displaying and/or controlling at least one operating state of the domestic appliance by means of at least one light beam …” has been replaced by the feature “a) having at least one optical display unit for displaying at least one operating state of the dishwasher by means of at least one light beam”, wherein “and in particular at least one operating unit” has been deleted.

[2.2] Contrary to the submission of the patent proprietor and the Guidelines for examination in the EPO C-III 4.9, it depends on the respective context whether a feature the feature following the expression “in particular” (insbesondere) is to be regarded as optional. In principle, optional features in the main claim are features which are not necessary for the claimed teaching but which explain other features in an exemplatory manner (beispielhaft) – see Schulte/Mufang, PatG, 8th edition, § 34, marginal number 135). The wording of claim 1 as granted “…having at least one optical display unit and in particular at least one operating unit …” means that the claimed domestic appliance not only has an optical display but also an operating unit, wherein the expression “in particular” here has the meaning of “above all” or “especially”, respectively (vor allem bzw.”speziell”). Here the operating unit is not mentioned as an example of a possible part of the domestic appliance but as a necessary part thereof. In the present case, the expression “in particular” is used to particularly emphasize that the operating unit is part of the domestic appliance. Similar considerations apply to redrafted sentences such as “household appliance “comprising” an optical display and in particular an operating unit”, wherein, e.g. “having”, “containing”, “comprising” are equivalent.

The scope of protection is limited by this non optional feature, which means that its deletion violates A 123(3).

Claim 1 as granted also claimed “Domestic appliance, in particular a dishwasher (1), having …”. In this context the feature introduced by “in particular” corresponds to a particular domestic appliance, i.e. a dishwasher. It explains, in an exemplatory manner, what is meant by the domestic appliance mentioned before and is not necessary for the claimed teaching. The scope of protection is not limited by this feature because it is defined by the general wording of claim 1, which encompasses this particular domestic appliance.

The fact that there may be support in the description that the presence of an operating unit is optional is irrelevant in this context because the feature introduced by “in particular” is not to be seen as optional in the context of claim 1, which means that there is no need for an interpretation in the light of the description.

It follows from the above that claim 1 as amended according to the main request […] violates A 123(3).

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

NB: A French summary can be found here.