Thursday, 29 November 2012

T 2311/10 – Shaking Pillars

The present decision contains some very interesting statements on the essentiality test formulated in T 331/87.

The appeal was filed after the Examining Division (ED) had refused the application under consideration.

Claim 1 of the main request before the Board read (in English translation)
Sanitary fitting comprising
(a)   an actuating device (28;228) for a control unit (22) for controlling the water temperature and/or the water flow rate in a water outlet (10);
(b)   a controllable mist generator (3) comprising
(ba) at least one mist outlet channel (12) that leads to a portion of the water outlet (10)
(bb) a water reservoir (13) that is connected to the water outlet (10);
characterised in that
(c)    the water reservoir (13) is connected to the water outlet (10) via a water fill channel (19) in which a water fill valve (20) allowing to control the water supply to the water reservoir (13) is provided;
(d)   the water reservoir is equipped with a water level sensor (17) that transmits a sensor signal to the control unit in order to close the water fill valve when the water level has reached the height of the water level sensor (17);

In what follows the Board discusses whether the amendment that led to this claim complies with the requirements of A 123(2):

*** Translation of the German original ***


[2.1] In the preamble of present claim 1 the at least one mist outlet channel of the mist generator mentioned in the original claim 1 was specified so that it leads to a portion of the water outlet rather than to the outside atmosphere. It goes without saying that the portion of the water outlet of the sanitary fitting is surrounded by the outside atmosphere, too. Moreover, the preamble of claim 1 now describes a water reservoir of the controllable mist generator that is connected to the water outlet. The above amendments are based on original claims 1, 2, and 4 and, therefore, are considered to be admissible.

Characterising part

[2.2] The newly added feature of claim 1 essentially describes a water fill channel with a water fill valve provided between the water outlet and the water reservoir, as well as a water level sensor in the water reservoir for closing the water fill valve. The ED had decided that the added features were only found in the detailed description of the single embodiment, but only in combination with a great number of other features and that, therefore, this addition led to an intermediate generalisation of the embodiment. This was not admissible under A 123(2) because at least conditions II and III of the essentiality test, i.e. that the missing further features were not, as such, indispensable for the function of the invention in the light of the technical problem they served to solve, and that the replacement and removal of these features did not require any real modification of other features [to compensate for the change], were not fulfilled.

Assessment of an intermediate generalisation

[2.3] The expression “intermediate generalisation” (“Zwischenverallge-meinerung“) expresses the fact that the subject-matter of the amendment, although added to the claim features in order to limit the scope [of the claim], corresponds to a generalisation of a specific embodiment that had been disclosed in the original [application].

[2.4] As any admissible amendment, the assessment of intermediate generalisations is governed by the principle that the skilled person must be able to directly and unambiguously derive their subject-matter from the content of the application as filed as a whole (claims, description, drawings), taking into account information that the skilled person would find to be comprised in the content at the date of filing of the application (implicit disclosure).

Therefore, it is normally not possible to extract one or several single features of a disclosed embodiment from their context in the disclosure and to transform them into a claim. However, such a claim is admissible when said features unquestionably constitute a distinct functional unit in the embodiment. The Board follows the constant case law of the Boards of appeal according to which it has to be apparent without doubt to the skilled person considering the disclosure of the original application that there is no close functional or structural relationship between the extracted features and the features which had originally been disclosed in combination for that embodiment (see Case Law, 6th edition, III.A.2)

The “essentiality test”

[2.5] When establishing the so-called “essentiality test”, T 331/87 [4-6] examined the omission of an “inessential” feature from an independent claim that had been filed with the original application, in particular considering (condition II – second point of the test) whether the problem solving effect of the claimed invention with respect to the prior art disclosed in the original application could still be obtained without that feature (see T 331/87 [7.1-4]).

As what matters in T 331/87 is the disclosure in the application, the problem mentioned in condition II can only refer to the problem disclosed in the application (corresponding to the function or effect of the feature as disclosed or apparent to the skilled person) but not a newly formulated problem in view of any prior art.

[2.6] As this is not always observed (also in the present case), there is a considerable risk of misapplying condition II of the test. The Board is of the opinion that this wrong application is also favoured by the fact that point 2 of the headnote of T 331/87, when isolated from the rest of the decision, apparently does not exclude using a problem that is new and formulated in view of prior art that has been cited at a later stage as a criterion for the way in which the invention is effective, and, therefore, for the “essentiality” of a feature that is to be deleted.

When the objective problem is modified after the filing of the application, and in particular when it is considerably reformulated in view of newly cited evidence, then the “essentiality” of a feature according to condition II – and thus the result of the essentiality test – varies considerably in the course of the proceedings. This it was caused the difficulties both the [applicant] […] and the ED […] faced when trying to reasonably apply condition II of the test, based on the headnote of T 331/87 only.

[2.7] But even when condition II is correctly applied, the Board has considerable doubts, at least regarding this aspect of the essentiality test, whether, in view of the narrow interpretation of the [expression] “same invention” according to the more recent case law of the Enlarged Board of appeal concerning the reasonable exercise of the priority right, such an approach (Denkansatz) can still serve as test criterion for the required assessment of the original disclosure of an amendment required under A 123(2) – which obeys the same principles as the right to priority; see G 2/98 [headnote, summary of the proceedings, point [9] of the reasons] and G 1/03 and G 2/03 [4].

The Board is of the opinion that it follows from G 2/98 that what counts for the assessment of the question whether a technical feature of an independent claim can be omitted is whether the skilled person can directly and unambiguously derive the corresponding teaching from the context of the original disclosure, in contrast to the essentiality test under T 331/87 which assesses the omission of an “inessential” feature – contrary to the principle of legal security developed in G 2/98 – according to whether it is related to the function or effect of the invention with respect to the prior art or not.

[2.8] For the sake of completeness, the Board notes that for condition III of the essentiality test (cf. T 331/87 [3]) according to which the replacement or removal of a claim feature is admissible provided that it does not require any real modification of other features [to compensate for the change], there is also a risk that it is applied in a wrong way (as in the present case […]) because it is not clear what is meant by “no real modification”. If what is meant is (as understood by the ED in the present case) that there is no modification whatsoever of any other feature of the embodiment, than the condition is trivial and almost never fulfilled (for instance, when a different water level sensor is used […]).

[2.9] Therefore, contrary to the opinion of the ED (and of the [applicant]), the Board considers the “three point or essentiality test” (cf. the Guidelines H-V 3.1 and H-V 3.2.1 (June 2012 edition)) to be of little help or even misleading in the present case for assessing whether the intermediate generalisation taken from the description for limiting [the claim] in view of the prior art that has been cited at a later stage is admissible. By doing so, the Board follows […] the basic approach concerning the application of the essentiality test in view of G 2/98 exposed in T 910/03 [3.4-5;6].

Assessment of the features newly added to the characterising portion

[2.10] According to […] the impugned decision of the ED the reason for the refusal of the then auxiliary request was to be found in the fact that the following features that were “structurally related to the incorporated features” had not been incorporated:

(a) There is an ultrasonic mist generator allowing to generate mist from water in the water reservoir.
(b) The mist generator comprises a mist channelling funnel (Nebelkanaltrichter), and the water level sensor is provided at the height of the bottom edge of the mist channelling funnel
(c) The water reservoir comprises a water overflow pipe (Wasserüberlauf) at the height of the water level sensor.

As the present main request corresponds to the then auxiliary request, it has to be decided whether the application as filed offers a basis for incorporating the characterising features without the above mentioned features (a) to (c).  

[2.11] As explained by the [applicant], in present claim 1 the water reservoir is not filled directly via the water supply but via the water outlet of the sanitary fitting.

The Board is of the opinion that the skilled person would unambiguously derive from the originally disclosed embodiment according to claim 4 […] that the water from the “water reservoir of the mist generator” is used for generating the mist, independently of which mist generator is used. It is only in a preferential embodiment that the mist is generated from water by means of an ultrasonic mist generator […]. Thus, in contrast to the opinion of the ED, in the exemplary embodiment of Figures 1 to 3 the mist can by generated in ways that differ from the “ultrasonic mist generator 14” […].

The Board is not aware of any functional or structural, let alone inseparable, relationship between the use of an ultrasonic mist generator in the water reservoir of the mist generator and the control of the water supply to the water reservoir via a water fill channel by means of a water fill valve […]. Also, providing a “mist channelling funnel 15” above the “ultrasonic mist generator 15” is, as argued by the [applicant], a merely optional measure and is not related in any way that is originally disclosed to the control of the water supply from the water outlet to the water reservoir of the mist generator […].

[2.12] Moreover, following the argumentation of the [applicant], the Board is of the opinion that the indication in claim 1, according to which the water level sensor in the water reservoir closes the controlled water fill valve “when the water level has reached the height of the water level sensor”, unambiguously describes the direct determination of the water level with respect to the sensor level and cannot, as argued by the ED […] encompass an indirect measurement of the water level via the water pressure above a pressure sensor provided at the bottom of the reservoir […]. The Board is not aware of any relationship between the control of the water supply to the water reservoir and the […] position of the water level sensor at the height of the bottom edge of the mist channelling funnel (which is not required), in view of the sensor function […].

Finally, the skilled person, using his technical knowledge, undoubtedly learns from the original documents that the disclosed “water overflow pipe 18” constitutes only an additional, and therefore advantageous, security measure in case the control of the filling of the water reservoir allowing to close the water fill valve in order to avoid an overflow of the reservoir fails; it is only when the water level sensor fails that the overflow occurs via an opening towards the outlet of the sanitary fitting […]. Therefore, the additional “water overflow pipe 18” is only a specific embodiment for the functioning of the water level sensor (and, as a consequence, for the control of the water supply to the reservoir) and thus can, in the opinion of the Board, be omitted.


[2.13] As a consequence, the Board reaches the conclusion that the skilled person directly and unambiguously derives the features in the characterising part of present claim 1 […] that have been taken from the description from the original disclosure of the application as a whole.

Thus the subject-matter or claim 1 fulfils the requirements of A 123(2).

Very interesting – I only regret that the Board did not discuss T 404/03, where Board 3.5.01 expressed doubts concerning the argumentation of T 910/03 (issued by Board 3.2.5).

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

The file wrapper can be found here.


MaxDrei said...

Excellent choice of title and picture Oliver. Vry well done, and thanks for the alert to this one.

Rightly or wrongly, my feeling is that for any beating back of the EPO's severity on Art 123(2) we have to put our faith in the rhetorical skills of attorneys arguing in German or French. By contrast, the silver-tongued pleadings of the English-speaking attorney community fall on deaf ears. Why is that, I wonder.

Myshkin said...

MaxDrei really thinks native speakers of English are being targeted by the EPO?

Did you ever come up with a factual example?

MaxDrei said...

Factual example Myshkin? Not that I can remember. It just seems to me that, whenever I see a Decision that is permissive (relatively) on 123(2) it is written in French or German.

I did not mean to suggest that the EPO is targeting anybody. But the English have rooted in their legal system for 700 years the notion of "equity" that is "fairness". Now think of a whining child constantly lamenting "It isn't fair". parents usually answer "You have to realise, son, life isn't fair". Could it be the same for the mothers and fathers on the Boards of Appeal (even though they are willing themselves to be scrupulously fair and neutral)?

Myshkin said...

I think notions of fairness do not apply to substantive patent law, but only to procedural aspects.

Myshkin said...

Maybe I should say "to the application of substantive patent law". The legislators have of course attempted to find a fair balance between the interests of the applicant and the interests of the public.

The EPO has no discretion when applying substantive patent law (another thing is that the examiner will sometimes be pragmatic and not insist on correcting a minor unclarity in dependent claim 48). The EPO has discretion in certain aspects of procedural law, e.g. when admitting amendments.

MaxDrei said...

Myshkin you aver that the EPO "has no discretion" when ruling on substantive law but it doesn't feel like that, at least when it comes to Art 84 and 123(2) in mechanical engineering cases. The excellent EPO search often produces prior art not known to the drafter of the pat appln, which renders the independent claim old or obvious but leaves the illustrated embodiments just as clearly patentable as they were before. So now we need for claim 1 a fair and proportionate intermediate generalisation. Under a strict and inflexible ED, navigating to issue between the rocks of 84 and 123(2) is often well nigh impossible.

Question is, what are the factors that might help the ED to see its way towards loosening its stance, just enough to let a deserving inventor carry something meritorious and proportionate through to issue.

Myshkin said...

Application of Art. 123(2) has nothing to do with being fair or flexible. The balance has already been struck in the abstract by the legislator. The Divisions and Boards of the EPO just have to apply it.

Sometimes the Divisions and especially the Boards will have to give an interpretation to Art. 123(2) before they can apply it to the facts of a case. Fairness can play a role here, but still only in the abstract. Whether the concrete outcome in a particular case is "fair" or "proportionate" is immaterial. A claim can be incredibly inventive, but that cannot lower the requirements of Art. 123(2).

It does not make much sense to complain about a "strict and inflexible" ED. What you can complain about, depending on the circumstances, is:
- the legislator has not struck the correct balance; or
- the Board or ED or OD has given an incorrect interpretation to Art. 123(2), or
- the Board or ED or OD has incorrectly applied its interpretation of Art. 123(2) to the facts of the case.

In the second and third case an appeal is possible (unless it was the Board that decided). In the first case you can only lobby for a change of the law.

MaxDrei said...

Ah, Myshkin, the "facts of the case". as you say. That indeed is what I'm on about. And who is it that decides and then announces what those "facts" are? A team of three, during a break in oral proceedings? sometimes it takes 10 minutes, sometimes an hour. when it takes an hour I'm thinking that it could have gone either way.

One "fact" of special importance is what would the skilled addressee have "derived" directly and unambiguously from the document in view.

As to Article 84, is ever a written document ever 100% clear? perfection is never attainable. Any lawyer worth his salt can find a degree of ambiguity in any text. Clear enough for purpose ought to be enough. But what purpose would that be?