Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.
Claim 1 of the patent as maintained read (amendments with respect to claim 1 as granted are highlighted):
Scale (1) having a supporting plate (4) for receiving a mass to be weighed and having an electricalswitching device (16, 24) for choosing or selecting a function of the scale (1), characterized in that theswitching device (16, 24) has a capacitive proximity switch having an electrode (18,
28,38, 44) which is arranged on the supporting plate (4) for monitoring the ambient capacitance of the electrode (18, 28,38, 44), wherein the electrode (18, 38, 44) is located under the supporting plate and wherein the choice or selection of a function performed with the electrical switching device consists in switching on the scale.
The Board dismissed the main request of the patent proprietor for lack of inventive step and then examined the claims of the patent as maintained by the OD. The part on compliance with A 123(2) is not without interest.
*** Translation of the German original ***
[4.2.1] The opponents have criticised that the feature that has been added to claim 1, according to which “the electrode is located under the supporting plate”, represented an inadmissible intermediate generalization, because this feature meant that any unspecified electrode could be located under the supporting plate. There was no corresponding disclosure in the original patent application, where the only electrode said to be located under the supporting plate was an electrically conductive printed layer.
[4.2.2] The discussion between the parties concerning the opponent’s attack under A 123(2) mainly concentrated on the question whether the amendment of claim was an intermediate generalization within the meaning of e.g. T 1067/97, which had been cited by the opponent.
However, the Board is of the opinion that this question is irrelevant in the present context. Whether an amendment qualifies as “intermediate generalization” or rather as “omission of an originally disclosed feature” or “multiple selection from two groups of alternative features” does not allow to draw a conclusion on whether this amendment is admissible under A 123(2). The only relevant question is whether the skilled person who is confronted with the amended version of the application or the patent, as compared to the skilled person who was only aware of the originally disclosed version, would find additional, technically relevant pieces of information in the amended version. Only when it is possible to find such additional, technically relevant pieces of information can there be a violation of the requirements of A 123(2).
[4.2.3] The Board agrees with the opponents insofar as present claim 1 as amended, which now defines an electrode that is not specified any further to be located under the supporting plate, clearly teaches the skilled person to locate an electrode of any kind (Beschaffenheit) under the supporting plate.
[4.2.4] As to the nature and location of the electrode, the following hints are found in the original application (paragraphs refer to the application as published):
“In principle there are no limitations with respect to the design (Ausbildung) of the electrode. However, it is particularly advantageous for the electrode to have an electrically conductive printed layer on or under the supporting plate” (cf. paragraph )“According to another advantageous development (Weiterbildung) of the invention the electrode comprises a sputtered layer that is electrically conductive in at least part of its area, on or under the supporting plate” (cf. paragraph ).“… it is suitable if the electrode comprises an electrically conductive metal element mounted on the support plate.” (cf. paragraph ).
Moreover, the figures show two embodiments:
The first embodiment, shown in Figures 1 and 2, comprises an electrode 18 that consists in an electrically conductive printed layer 32 provided under the support plate (cf. paragraph ), as well as a second electrode 28 consisting in a sputtered layer (cf. paragraph ), which according o the figure is provided on the upper surface of the support plate.
The second embodiment, represented in Figure 3, has an electrode that consists in a metal element glued to the bottom of the support plate (cf. paragraph ).
Thus the original documents as filed disclose, in various places of the description and the drawings, electrodes that are arranged under the support plate and which consist in an electrically conductive printed layer, an electrically conductive sputtered layer, or a metal element that is glued [onto the support plate]. Considering this plurality of variants that are said to be advantageous embodiments, the skilled person would understand that in principle there is no limitation regarding the design of the electrode on the bottom surface of the support plate, and that the electrode can be of any kind, respectively. This fact is also expressly stated in paragraph  of the description.
The fact that claim 2 as originally filed referred to a design of the electrode that was apparently considered to be particularly advantageous – i.e. a printed layer – cannot be understood to delimit the whole disclosure, as the opponents believe.
[4.2.5] From the above comparison between the technical teaching which the skilled person receives from claim 1 as amended on the one hand and from the documents as originally filed on the other hand, and their agreement, [the Board] has to conclude that the technical teaching introduced by the amendment and which allegedly was an addition [to the original disclosure], was already present in the application [as filed], which means that there is no violation of the requirements of A 123(2).
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