Friday, 3 May 2013

T 248/12 – In Gold We Trust

In this opposition appeal case the Board examined whether auxiliary request 2 complied with A 123(2).

Claim 11 of this request read:
A tyre removal machine comprising a base from which there upwardly project rotary means for supporting the wheel rim (6), and a column carrying at least one tool arranged to interact with the tyre bead, wherein said tool undergoes movements parallel to the axis of rotation of the wheel rim, characterised in that the rotary means supporting the wheel rim (6) undergo translating movements arranged to position the flange of the wheel rim (6) in a fixed zero position relative to the direction of movement of said tool, said rotary means for supporting the wheel rim (6) comprising a shaft (16), wherein the tyre removal machine comprises a programmed electronic processor configured for being fed with the wheel rim dimensions and for causing said shaft (16) to translate until it reaches said zero position in which bead release discs (286) and (306) lie just outside the flange on the wheel rim.
The opponent criticised the lack of convergence of this claim and pointed out that A 123(2) was violated because of several intermediate generalisations.

[3.1] The opponent argued that this request should not be admitted (citing T 1685/07), as the subject-matter of claim 11 of the respective auxiliary requests 2 and 3 was non-converging.

[3.1.1] The Board notes that the claims of the present auxiliary requests 2 and 3 filed with letter of 5 February 2013 are however identical to requests filed with the grounds of appeal. In contrast in the case T 1685/07 [6.7], the non-converging claims in different requests did not correspond to requests filed with the grounds of appeal, rather these were filed in response to the summons to oral proceedings so the reasons for the Board’s use of its discretion in that case do not apply here.

[3.1.2] Also, the subject-matter of claim 11 of these requests cannot immediately be regarded as being divergent between the second to the third auxiliary request merely because “rotary means” has been removed at one location in the claim in the third auxiliary request. In terms of any divergence compared to the first auxiliary request, at least in as far as claim 11 is concerned, this is rather academic since claim 11 was the same in the main request and auxiliary request 1. The matter of divergence is also not by itself decisive.

[3.1.3] Whilst the Board has discretion under Article 12(4) RPBA not to admit requests into proceedings which could have been presented in the first instance proceedings, this question can be left aside in the present case since, as can be understood from the conclusions infra, the requests are anyway not allowable.

[3.2] With respect to the basis in the originally filed application of the feature “rotary means for supporting the wheel rim comprises a shaft” (referred to hereafter as the first feature), the Board notes that such wording is not to be found in the application as filed. “Rotary support means” are mentioned in paragraphs [0012] and [0016] although without detailing their structure. The only part of the application detailing the composition of the rotary means is in claim 8 which, however, discloses the rotary means as comprising a combination of more features than simply a shaft: for example, an upper plate, a pawl means and a statement that the shaft is hollow. It thus follows that the rotary means is described, in its sole disclosure, as comprising significantly more than simply a shaft. The Board thus concludes that the extraction of this single feature from a sole disclosure in the patent application disclosing the shaft in combination with other features has no basis.

[3.2.1] Claim 8 is indeed dependent on claim 7 which itself is dependent on claim 1 (not claim 11). However, whilst dependent claims relate to preferred features with respect to an independent claim from which they depend, dependency alone does not necessarily provide an unrestricted resource to extract individual features from these claims (here dependent claims 7 or 8) for combination with those of another claim. The features in claim 8 are disclosed in combination and, due to dependency of claim 8 on claim 7, also in further combination with those in claim 7. This disclosure cannot therefore per se provide a basis for extracting individual features, such as the shaft, from claim 8 for combination with the subject-matter in claim 11. At least when having regard to the claims, no direct and unambiguous basis is given for the isolation of merely one or some of those features from the specific combination in which they are disclosed.

[3.2.2] The proprietor also argued that the shaft is disclosed elsewhere in the application as possessing supporting and rotating functions and thus clearly is what is intended within the expression “rotary means” in claim 11 and in claim 1. The Board concludes however that whilst the shaft is indeed indicated to carry out supporting […] and rotating […] functions, there is neither an explicit nor an implicit link between the rotary means and the shaft alone anywhere in the application as filed. Solely in claim 8 is any link between the rotary means and the shaft established, and there it is in combination with a plurality of other features.

[3.2.3] The reference to paragraph [0025] itself as providing a basis for extracting only the shaft 16 as the constitutive part of the rotary means is also not convincing since paragraph [0025] specifically refers to what is shown in the Figures, and indeed specifically describes a shell 3 surrounding the shaft 16. For a skilled person, it is also evident when reading paragraph [0025] in conjunction with the Figures that the shell 3 surrounding the shaft 16 has the function of supporting the shaft 16 as a journal. At least these structural elements are thus clearly functionally and structurally disclosed in combination in that part of the description. It is also clear from the Figures and the related description that the shaft is functionally and structurally arranged as a hollow shaft to co-act with still further features.

[3.2.4] The Board thus concludes that the text passages referred to by the opponent provide no basis in the application as originally filed for isolating this first feature from the context in which it is disclosed and then combining this with other features defined in claim 11. Nor can the Board immediately see any other disclosure which would provide basis for such introduction in the form chosen.

[3.2.5] The opponent’s further argument, concerning the idea that the skilled person is not presented with any additional technically relevant information and the ability of a skilled person to extract only the technically relevant information from the application as filed, is dealt with infra in relation to the further feature added to claim 11.

[3.3] Concerning the basis in the application as originally filed for the added feature “wherein the tyre removal machine comprises a programmed electronic processor....” (referred to hereafter as the second feature) the Board finds that the tyre removal machine is only disclosed as comprising a programmed electronic processor in combination with further features which have not been included in claim 11 of this request.

[3.3.1] Paragraph [0054] of the application introduces the programmed electronic processor as coordinating the movement of “certain aforedescribed devices”. It is thus already evident at the outset that any one of the paragraphs following paragraph [0054] cannot, unless derivable in another way, be viewed in isolation. In the subsequent paragraphs until paragraph [0062], the operation of the processor with certain of these devices is described. It is to be noted that these following paragraphs essentially concern the operation of the tyre bead removal machine, whereby the processor is disclosed only in relation to the method steps included in the machine operation. The programmed electronic processor is thus disclosed only in combination with the assorted devices mentioned in the operating method disclosed in paragraphs [0056] to [0062], and introduction of the processor into claim 11 isolated out of this particular context is thus an inadmissible intermediate generalisation of the disclosure in the application as originally filed.

[3.3.2] In this regard, the terminology “inadmissible intermediate generalisation” (see also T 1408/04) is to be understood to refer, as an abbreviated form used by practitioners, to an undisclosed combination of selected features lying between an original broad disclosure (in this case, claim 11 as filed) and a more limited specific disclosure (in this case, the specific details of a processor disclosed as being used as an integral part of a method in which several assorted devices are operated in a specific order).

[3.3.3] The proprietor argued that the function of the processor had first to be understood, whereupon a skilled reader would then extract those features of technical relevance for this function and introduce them into the claim. Only if the skilled person were then presented with additional technical relevant information would an objection then allegedly arise.

[3.3.4] The Board however finds this argument non-persuasive, as explained below.

[3.3.5] In the decision of the Enlarged Board of Appeal G 2/10 [4.3] the following was stated when referring to earlier decisions G 3/89 and G 11/91:
“it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in A 123(2) and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed”.
[3.3.6] The foregoing is referred to further on in G 2/10 [4.3] as “the gold standard”.

The Board can see no reason why the Board should depart from the “gold standard” in the present case.

[3.3.7] In as far as the proprietor makes reference to recent case law of the Boards of Appeal to support its case, the Board notes that case T 1906/11 [4.2] indeed mentions the terminology intermediate generalisation (“Zwischen-verallgemeinerung”) as being irrelevant and takes up the issue of whether the skilled person is presented with additional technical relevant information as being the decisive factor.

[3.3.8] The Board (in the present case) can agree with that decision in so far as it is irrelevant whether an amendment is specifically referred to as an “intermediate generalisation” or not, since it is the specific amendment which has been made which must be considered. In the present case however (see the definition in item [3.3.2] above) the Board refers to “inadmissible intermediate generalisation” as appropriate jargon when considering the particular nature of the amendment and its relationship to the content of the application as filed.

[3.3.9] In respect of the “technical relevance” of the added information, case T 1906/11 cannot be understood by this Board to define a new standard for judging amendments with respect to A 123(2) since this would be at odds with the “gold standard”.

In other words, the standard whereby an amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed, remains a pre-requisite for judging any amendment with respect to the requirement of A 123(2).

[3.3.10] Hence, the “relevance”, as such, of the technical information is not of importance for deciding upon the issue of A 123(2), rather simply whether this technical information received by the skilled person is new having regard to the content of the originally filed application. Indeed, in G 2/10 [4.4.2, 3rd paragraph] it is stated that “the Enlarged Board (in G 1/10) replied by stating that any amendment to a claim is presumed to have a technical meaning otherwise it would be useless to have it in the claim”.

[3.3.11] In the present case before the Board, the programmed electronic processor is indeed disclosed in combination with a plurality of further technical features […] such that extraction of the processor alone from these paragraphs and insertion into claim 11 presents the skilled person with new technical information in the form of a new combination of features which is not directly and unambiguously derivable from the application as originally filed.

[3.3.12] The proprietor further argued that paragraph [0054] mentions that only certain of the aforedescribed devices are coordinated by the programmed electronic processor and the skilled person would thus extract only necessary technical features for inclusion in the claim. The Board can concur with the proprietor insofar as the processor is described as coordinating the movement of certain devices. However, as regards the disclosure of the processor in paragraph [0054] onwards, this is disclosed in a structural and functional interrelation with the other features in these paragraphs such as, for example, the locking means 4 which secure the wheel rim 6 to the support plate 17 (see Fig. 3). Without the locking means securing the wheel rim, the tyre removal machine would not be successful in releasing the tyre bead and thus there is a functional interrelation between the locking means and the processor, the latter controlling the relative movement between the shaft supporting the wheel rim and the bead release discs. A disclosure of a tyre removal machine as in granted claim 11 in combination with – only – features of a programmed electronic processor is simply not part of the application as originally filed.

[3.3.13] It also cannot be accepted by the Board that when a skilled person applies common general knowledge, he would then arrive at the combination of features in claim 11 of this request. Nothing has been filed by the proprietor to support this argument, nor is any such information derivable from the application as filed. The proprietor’s argument that a skilled person would realise what elements were technically relevant to the invention when adding certain further structural features into the claim is entirely subjective when considering the content of the application as filed which does not disclose such elements (here namely the programmed electronic processor, and the rotary means comprising a shaft) in anything but a specific form in a specific context.

[3.4] It thus follows that the introduction into claim 11 of both the first and second features identified above results in the skilled person being presented with a new combination of features (i.e. new technical information) which he would not derive directly and unambiguously, using common general knowledge, from the application as filed. Claim 11 thus contravenes A 123(2) and auxiliary request 2 is therefore not allowable.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


MaxDrei said...

It is helpful that the Decision offers the view this Board has of T1906/11. See para 3.3.7.

I had thought T1906/11 a breath of fresh air, but this Board dismisses it as changing nothing.

Which leaves me feeling just as depressed as ever, about the chances I have (when acting for a patent owner) of getting home on any sort of novelty-restoring claim limitation with a scope somewhere between Claim 1 and the illustrated embodiment.

What do you think?