Saturday, 20 October 2012

Interpretational Spotlight: Completely Encasing

When dealing with this appeal (against the revocation of the opposed patent), the Board had to examine whether claim 1 of the main request
A pipeline pig for scraping a build-up from the interior surface of a pipeline, the pipeline pig comprising a bi-directional body (20) having blunt, hemispherical front and rear noses (41, 42) and a cylindrical middle portion (43) extending between said front and rear noses (41, 42) providing surface area for sealing against the interior surface of a pipeline, and a plurality of studs (80) on said surface, thereby forming an abrasive surface for scraping the build-up from the interior surface of a pipe, characterised in that the bidirectional body (20) comprises (a) an elongatable and compressible core (60), formed from a material which tends to elongate and narrow as the pig moves through bends, curves, corners and areas of heavy buildup, said material being a mixture of resin and isocyanate; and (b) an external cover (40) made of heat-treated urethane completely encasing the compressible and elongatable core, said studs (80) being carried by the external cover (40). (my emphasis)
and in particular the feature “completely encasing” was directly and unambiguously disclosed in the application as filed.

[2] Claim 1 of the main request contains the feature “completely encasing” […] which is considered not to be derivable in a clear and unambiguous manner from the description, the claims and the drawings of the application as originally filed (corresponding to D1).

[2.1] The feature “an external cover (40), encasing the elongatable core (60)” originally comprised in claim 2 of D1 had been amended during the examination of the application for the patent in suit to the present term “an external cover (40) … completely encasing the compressible and elongatable core” of claim 1 of the present main request, which in this respect corresponds to claim 1 of the patent as granted.

[2.1.1] At the oral proceedings (OPs) before the Opposition Division (OD) the representative of the patent proprietor stated that the term “completely” had been added during the examination proceedings in order to distinguish the claimed subject-matter over the prior art D2. He further admitted that there might probably be a difference in the meaning of the terms “completely encasing” and “encasing” but argued that there would be a basis for both terms […].

At the OPs before the Board the [patent proprietor] for the first time in the proceedings argued that the two terms – due to the interpretation now based on three web-based dictionaries (namely Cambridge on-line, the Macmillan dictionary and the Collins dictionary), so that the term “encase” means “to cover or surround something or someone completely”, “to completely cover or enclose something” and “to place or enclose in or as if in a case”, respectively – actually have the same meaning, so that the added term “completely” would not add matter.

The Board cannot accept these arguments for the following reasons:

[2.1.2] First of all, where the claims are concerned the wording is used in particular to define the subject-matter for which protection is sought. Generally each single word of a claim has a specific meaning and is carefully and purposively selected to define the subject-matter defined therein.

Therefore it cannot be accepted that the addition of the term “completely” to the originally disclosed term “encasing” during the examination proceedings has in fact no meaning or does not alter the meaning of “encasing”. The IPER on this application contained an inventive step argument against claim 1 using D2 for the feature of “encasing the core”. On entry into the regional phase before the EPO claim 1 was amended as now discussed. The Board can see this amendment only as having been made with the intention to further delimit the claimed subject-matter over the prior art D2, as was also admitted in the opposition proceedings.

In this context the Board remarks that the quoted prior art D2 discloses a pipeline pig having a core with a plurality of studs being anchored in said core and further having a cover coated over said core through which said studs are protruding (see e.g. figures 1-4). Hence the core according to D2 is encased by a cover 20 but – due to the openings left in the cover (figure 1), which show the underlying core, and the mention in the description […] that the cover is not totally inclusive of the core – is not completely encased by the cover.

[2.1.3] Secondly, considering all four dictionaries and their definitions of the term “encase”, in particular that of D9 […], it is clear that the term “encase” does not necessarily mean to totally envelop something since any case, cover or mantle can contain holes serving a specific purpose e.g. for mounting switches or simply to allow cooling by an improved air exchange (for example a PC is encased by a cover having cooling holes and several switches and plug-in connectors).

[2.1.4] Therefore the addition of the term “completely” to the term “encasing” cannot be simply disregarded as the [patent proprietor] wishes the Board to do; it provides a difference over the originally disclosed term […], as admitted by the [patent proprietor] at the OPs during the opposition procedure.

[2.2] However, as conceded by the [patent proprietor] in its grounds of appeal, this feature is nowhere explicitly disclosed in D1, neither in the description nor the claims or drawings.

[2.2.1] The drawings of D1, in particular figures 1 and 2, do not provide a clear and unambiguous basis for this amendment since they – although the claimed pipeline pig represents a simple structure comprising three components: the core, the cover and the studs – are schematic, contrary to the [patent proprietor’s] arguments.

According to D1 “Fig. 1 is a side orthographic view of a pipe pig constructed in accordance with the principles of the invention, having the core shown in dotted outline” while “Fig. 2 is a cross-sectional view of the pipe pig of Fig.1, taken about the 2-2 lines” […] and “Figure 2 illustrates in cross-section the relationship of the cover 40 to the studs and the core 60” […]. These “principles of invention” as derivable from the description of D1 […] must not necessarily show all details of the desired pipeline pig in accordance with D1. For example, according to the described method of manufacturing the cover is of uniform thickness […], which is clearly not the case for the pig depicted in figure 1. It is further remarked that the wording “comprising” of claims 1 and 5 as originally filed does not exclude any holes or wire rods (= pins) being present in the cover and although certain preferred versions of the pig are described in D1 “other versions are possible” […].

Furthermore, at the OPs the [patent proprietor] admitted that the cross-section of figure 2 of D1 need not necessarily show any pins or holes. These can be present in other cross-sections of the pig.

[2.2.2] As correctly argued by the OD in the impugned decision, the fact that these figures do not show any openings or holes (i.e. in addition to the holes drilled for the studs) in the external cover 40 does not necessarily mean that there are no such openings.

According to the established jurisprudence a figure which served only to give a schematic explanation of the principle of the subject-matter of the patent (the same holds true with respect to figures 1 and 2 of D1, compare point [2.2.1] above), but not to represent it in every detail, does not allow the definite conclusion to be drawn that what is disclosed purposively excludes any feature not represented (see Case Law, 6th edition 2010, section III.A.5; see T 170/87 [6]).

[2.2.3] From the description of D1 it is also neither apparent nor plausible that the cover should not contain any holes, e.g. resulting from the manufacturing process of the pig, which were alleged by the [patent proprietor] to deteriorate the cleaning properties of the claimed pipeline pig, since it is essentially the cylindrical portion of the pig cover and the plurality of studs mounted therein which are responsible for cleaning the internal surface of pipes […]. These arguments cannot be accepted since the [patent proprietor], although this deficiency was remarked in the Board’s communication annexed to the summons to OPs […], did not file any evidence supporting this allegation.

[2.2.4] In this context also the manufacturing method for producing a preferred version of the pipeline pig with an external cover made with urethane (more specifically Vibrathane 8083), which is described in D1 in the context of figure 2, has to be considered. According to this process there are wire rods supporting the core in the mould when the urethane is poured into it, to achieve a uniform thickness of the external cover. Thereafter the urethane is heated to a temperature of 250º, the pig is demoulded and then placed in a curing oven for approximately 2 hours […]. Thereafter a plurality of holes is drilled in the cover and the pig is heated again to 250º and studs are inserted in these holes with an air gun […].

The use of these wire rods is considered to be essential for centering the core within the mould and therefore in the (cured) urethane cover of the pig.

According to Mr Boase the specified temperature of “250º” has to be interpreted as “250 ºF” […] and thus corresponds to “121.1ºC”. This value perfectly fits with the curing temperature of 100ºC (212ºF) for the urethane VibrathaneR 8083 mentioned in the description and in the respective technical information sheet D11 […], sent to the parties by the Board with its communication annexed to the summons.

It was uncontested by both parties that there is a gradual curing of the pig cover. The curing starts immediately when mixing the urethane with the curing agent (D1 is silent with respect to the addition of a curing agent). According to D11 the typical pot life after starting this mixing is 5-6 minutes […], i.e. the time within which the urethane/curing agent mixture has to be poured into the mould. The progress of the curing reaction is then greatly influenced by the applied curing temperature and the elapsed time.

D1 is silent with respect to the time necessary for reaching said temperature of 250ºF of the mould and also with respect to the question whether the mould is horizontally or vertically arranged. It is uncontested that the resulting pig cover in any case must have a sufficient green strength of the applied urethane coating, to be demoulded and to be self-supporting. This fact excludes, in the Board’s view, that the urethane can be still fluid since in that case the demoulded pig with its partly cured urethane cover would lose its shape when placed in the curing oven without its supporting mould for the mentioned “about 2 hours”, so would not obtain a cover having a uniform thickness of the cured urethane.

The same conclusion is, however, considered to be fully valid for any holes produced by the supporting wire rods (also designated as “pins” by the parties) in the cover during the moulding step – if these wire rods are at all removed at this stage (D1 is silent about any removal). Since wire rods are made of metal (which by definition is an excellent thermal conductor) they will provide a good heat transfer along their surface to the interior of the urethane cover so that it is not credible that the urethane surrounding the hole can still be sufficiently fluid after removing the rods in said demoulding step, so as to fill it. The [patent proprietor’s] arguments to the contrary thus cannot be accepted. Consequently, any hole produced by the wire rods in the cover would extend through the thickness of the external cover.

If on the other hand said supporting wires would not be removed with or after said demoulding step, but would remain in said pig during said final “curing” step in the curing oven then there will in any case be holes in said external cover when the pins are removed only afterwards, or they will remain in the cover.

Therefore it is clear from the production method as described in D1 that the external cover cannot “completely” encase the core as required by claim 1 of the main request.

[2.2.5] The [patent proprietor’s] further arguments cannot hold for the following reasons.

Firstly, the description of D1 clearly mentions wire rods (or pins) in the process for making a pig with a cover having a uniform thickness so that the person skilled in the art need ask himself only how he should proceed with these wire rods since D1 is totally silent in this respect. Should they be removed or not from the produced pig and at which stage during the manufacturing process of the pig should they be removed from the pig and/or mould. Furthermore, as already remarked, the drawings are schematic only and do not necessarily show details, such as the wire rods, which as such are not considered to be important for the simple pig structure comprising the core, the cover and the studs being mounted in the drilled holes.

Furthermore, as remarked by the Board at the OPs, it would also be possible to use wire rods located at diametrically opposed locations in the length direction of the core, e.g. being separated from one another by about 90º, which have a length to just abut the inside of the mould and which therefore do not need to extend through the wall of the mould and consequently do not need to be removed during the demoulding step.

Secondly, all arguments based on the witness statement of Mr Boase or on the video or exhibits A1 to A3 are considered not to be relevant since the process discussed and shown therein is not identical with that described in D1 (see point [2.2.4] above) as it differs considerably from it since four diametrically opposed wire rods extending through the wall of a vertically arranged mould are used for centering the core in the mould. Further, no demoulding step takes place when the wire rods are removed after a first heating step, i.e. the complete curing of the urethane takes place in said mould for an unspecified curing time and at an unspecified curing temperature. Furthermore, the studs are already placed in said mould and enclosed in the urethane.

[2.2.6] Consequently, claim 1 of the main request extends beyond the content of the application as originally filed and thereby contravenes A 123(2). The main request is therefore not allowable.

Should you wish to download the whole decision (T 380/09), just click here.

The file wrapper can be found here.