Monday, 2 April 2012

T 2296/09 – Sketchy

The question of what information exactly drawings convey to the skilled person is not always an easy one and, as a rule, its answer depends on the circumstances of the case. The present decision shows a situation where the Board had to draw the line.

The appeal was filed against the decision of the Opposition Division to reject the opposition.

Claim 1 as granted read (division of features added):
(a) A low-pressure atomising spray gun including an air spray gun body (10),
(b) a paint nozzle (1) screwed to the spray gun body (10), and
(c) an air cap (2) installed with a cover (3) thereof in the spray gun body (10) so as to cover the paint nozzle (1);
(d) the paint nozzle (1) and air cap (2) between them defining an annular slit (4) formed between a top portion of the nozzle (1) and a wall of a central opening formed in the air cap (2) and working cooperatively with each other to mix, in the atmosphere, compressed air and a paint just delivered from the nozzle (1) to atomize the paint;
(e) the said spray gun further comprising
(f) a plurality of air grooves (1a) formed on the tip of the portion of the paint nozzle (1) convergently towards the centre of a delivery port (100) of the paint nozzle (1) so that the intersection of the bottom of the air grooves (1a) with the inside diameter of the paint nozzle (1) approximately coincides with the front end of the central opening in the air cap, and
(g) each of the air grooves (1a) starts at or upstream of the inlet end of the annular slit (4), and being characterized in that:
(h) the front end of the paint nozzle tip projects
(i) 03 (correctly: 0.3) to 0.8 mm from the front end of the central opening in the air cap.
One of the decisive issues was what was disclosed in Japanese patent application E1.

The OD held that E1 was completely silent concerning the range of values for the distance the respective front end of the paint nozzle tip projects from the wall of a central opening formed in the surrounding air cap (feature (i)). According to the OD, the drawings were conventional sketches and not necessarily true to scale. Consequently the spray gun according to claim 1 was distinguished from the known spray guns by the characterising features of claim 1 (features (h) and (i)) and thus novel.

Here is the conclusion of the Board:

[2.1] It is common ground that the relevant disclosure of E1 to be considered resides solely in its drawings and that these drawings, as can be derived from figure 2, disclose a spray gun of the kind defined by the preamble of claim 1.

Beyond that the parties are divided as to the extent of the disclosure derivable from these drawings.

[2.2] According to the impugned decision […] and the [patent proprietor …] these drawings can only be regarded as conventional sketches. While the decision under appeal remains silent concerning the reasoning underlying this assumption the [patent proprietor] referred to the intended use of these drawings. In its view these drawings are patent drawings which normally, and the present drawings making no exception, show in a general outline an embodiment according to the respective invention. Thus details not addressed as part of the invention in the description of E1 but only shown in the drawings, like it is the case for the projection of the front end of the paint nozzle tip as shown in figure 2, cannot be considered as being part of the disclosure.

Consequently this projection cannot be considered as corresponding to the one defined by feature (i) of claim 1 of the patent in suit but merely as a negligible pictorial detail for which no reason is given in E1, or even as a drawing inaccuracy or an unforeseen deviation in the pictorial presentation of the spray gun concerned. This aspect becomes even more evident considering the large number of prior art documents which disclose spray guns of the kind concerned for which the front end of the paint nozzle tip does not project.

[2.3] The Board in this respect finds, however, the arguments of the [opponent …] more convincing. Due to the accuracy and completeness of these drawings and due to the fact that apparently all elements constituting the spray gun as well as their relationships are shown in great detail, also the one clearly shown in figure 2, namely that, as defined by feature (h), the front end of the paint nozzle tip projects from the front end of the central opening of the air cap, is disclosed by E1.

From the drawings of E1 it cannot be concluded that only essential details relating to the invention referred to in the description are shown as asserted by the [patent proprietor]. Furthermore it needs to be taken into consideration that the projection concerned is shown in the same order of magnitude as other elements (in particular ones with associated reference numerals) like the air grooves 1a and the annular slit 4 formed, corresponding to feature (d), between an end portion of the nozzle and the central opening formed in the air cap.

Further, although it has been asserted that a large number of documents exists showing spray guns of the kind concerned without the front end of the paint nozzle projecting, with the result that the projection shown in figure 2 of E1 should be disregarded, no such documents have actually been cited or submitted and no convincing reason has been given as to why - and which - disclosure(s) of other documents not referred to in E1 should be taken into account in the assessment of the disclosure of this document.

At present it can be left open to what extent the above reasoning applies likewise to the argument of the [opponent] that in determining the disclosure of the drawings of E1 the rather similar drawings of the patent in suit and the corresponding description should be taken into account.

[2.4] As can be derived from the above considerations the disclosure of E1 involves a spray gun according to the preamble of claim 1 in which, corresponding to feature (h), the front end of the paint nozzle projects from the front end of the central opening of the air cap.

[2.5] Concerning the question of whether or not with the projection of the front end of the paint spray gun also a value for the length is disclosed which, as argued by the [opponent …], corresponds to a value of the value range defined by feature (i) the Board finds the arguments of the [patent proprietor …] more convincing, according to which the impugned decision is correct in not considering measurements taken from the drawings of E1 as a disclosure by these drawings.

The reason given in the impugned decision is that the drawings can only be regarded as a conventional sketch which is not necessarily true to scale […].

[2.6] According to the [opponent] it is evident in view of the impression given by these drawings, in particular their accuracy and completeness, that these drawings show the spray gun in reduced but true scale. Since the scale of the drawings and thus measurements taken therefrom can easily be transformed into values present in the actual size spray gun, like all dimensions shown in the drawings, the value for the length of the projection of the front end of the paint nozzle tip measured in figure 2 and transformed to its actual size needs to be considered as disclosed by E1. In this respect it should be taken into account that the transformation factor from the reduced scale of the drawings in E1 to the actual size of the spray gun can easily be determined taking the actual size of the spray gun into account, which can easily be determined considering its nature as a hand held tool.

Although at present it appears that by themselves the drawings of E1 can be considered as being true to scale the determination of the transformation factor referred to is subject to uncertainty, as the fact that the spray gun is a handheld tool does not lead to only one precisely determinable actual size. As a result, only a range of sizes for spray guns satisfying the constraints imposed on their size due to their nature as hand held tool is possibly derivable from the drawings.

[2.7] Since this leads to different values for the projection of the front end of the paint nozzle tip of figure 2, no specific value for the length of the projection (nor one specific range of values) can be considered directly and unambiguously derivable from E1.

To download the whole decision, click here.

The file wrapper can be found here.

You might have noticed that the same decision has been reported on Le blog du droit européen des brevets (here) almost simultaneously. This is not due to co-operation between the blogs, but an expression of the scarcity of decisions: we have not had a single new decision in more than two weeks.