Wednesday 6 November 2013

T 2319/11 – Spirit Of 69



This is an examination appeal.

Claim 1 of the main request on file read:
A spiral-link belt, comprising:
  • a belt body formed of a series of cross-machine direction (CD) spiral coils (201, 202, 204, 206) linked by pintles (203, 205, 207) in the CD to form an endless loop; and
  • a plurality of CD drive bars integrated into said belt body;
wherein each CD drive bar is formed of a first spiral coil (204) attached to a second spiral coil (202) in the belt body and of a third spiral coil (206) attached to a fourth spiral coil in the belt body; the first (204) and third (206) spiral coils being linked together out of the plane of the belt body. (my emphasis)
There was some discussion on the interpretation of the expression “linked together”. According to the applicant, the expression was ambiguous so that the description had to be used in order to interpret it in accordance with A 69(1). The criteria used by a judge in litigation cases should be applied and the Board was compelled to do the same by the provision of A 69 and its protocol in the EPC. Therefore, claim 1 was to be seen as being limited to the embodiments of the description (first and third coils attached using one pintle as in figure 2 or using only two additional spiral coils as in figure 3). Since these specific embodiments were not disclosed in D1, novelty had to be acknowledged.

This argument was doomed to fail:

[1.1] Document D1 discloses a spiral-link belt (“Förderband” (1)), comprising:
  • a belt body formed of a series of cross-machine direction (CD) (“quer zur Förderrichtung P”) spiral coils (“Drahtwendeln” (3)) linked by pintles (“Verbindungsstäbe”, “Verbindgungsstücke”, “Verbindungsdrähte” (4)) in the CD to form an endless loop; and
  • a plurality of CD drive bars (“Mitnahmerippen” (2)) integrated into said belt body;
wherein each CD drive bar is formed of a first spiral coil (“Drahtwendel” (5)) attached to a second spiral coil (“Drahtwendel” (3)) in the belt body and a third spiral coil (“Drahtwendel” (5)) attached to a fourth spiral coil (“Drahtwendel” (3)) in the belt body; the first and third spiral coils (“Drahtwendeln” (5)) being linked together out of the plane of the belt body (column 3, lines 14-31; claims 1, 3; figures 5-8).

Therefore, all features of claim 1 are disclosed for the belt of D1 and, hence, its subject-matter lacks novelty over D1 (A 54(1)).

[1.2] The Board is of the opinion that the expression “linked together” used in claim 1 leaves open how the first and third spiral coils are to be connected. As exemplified for instance by figure 3 of the application, the connection can be performed via other spiral coils, two in that case, so the connection does not need to be direct.

Contrary to the appellant’s opinion, claim 1 cannot be regarded as being limited to the embodiments of the description (first and third coils attached to each other using one pintle as in figure 2 or using only two additional spiral coils as in figure 3).

Indeed, as a general principle, when performing substantive examination, the terms used in the claims are considered with their broadest meaning in accordance with the understanding of the person skilled in the art; the specific embodiments discussed in the description not necessarily being foreseen to limit the claims. Therefore, the applicant’s arguments with respect to the scope of claim 1 being limited by the two embodiments of the description in application of A 69 and its protocol are not convincing.

Consequently, the embodiments of D1 in which the connection of the first and third spiral coils is performed via three (figures 5-6) or four (figures 7-8) additional spiral coils fall completely within the terminology of claim 1 of the main request.

[1.3] Contrary to the appellant’s statements, the Board has never expressed the opinion that the expression “linked together” is ambiguous or unclear. The Board merely considers the expression as being broad such that, as discussed under point 1.2 above, it encompasses other options, including the disclosure of D1.

Furthermore, in case of an ambiguity or a lack of clarity resulting from an expression in a claim, in examination proceedings this issue has to be raised and solved before grant entirely under the provision of A 84. The scope of protection conferred by a patent is indeed determined by the claims and, hence, the latter should be clear when the patent is proposed for grant. This is all the more true since lack of clarity is not a ground of opposition. Consequently, if the expression “linked together” would have been regarded by the Board as being ambiguous, as suggested by the appellant, claim 1 would in any case have had to be amended for clarification in order to fulfil the requirements of A 84.

This alleged objection of ambiguity has not been raised, neither in the impugned decision, nor by the Board, which has instead chosen to interpret the expression in its broadest normal meaning, as would the skilled person do.

[1.4] All the decisions cited by the appellant with respect to the application of A 69(1) relate to opposition proceedings dealing with lack of clarity objections and/or different interpretations of feature(s) by the parties (T 488/97 [2.2.1]; T 23/86 [2]; T 16/87 [6]; T 476/89 [2]). In such cases, the Board agrees that it may indeed be necessary to use the description and/or drawings for determining what is the subject-matter claimed, so that substantive comparison with the prior art can follow. This, however, does not apply to the present examination case.

As a consequence, contrary to the appellant’s opinion, the criteria established by A 69 and its protocol and applied by a national court in litigation cases do not apply to substantive examination before grant.

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

The file wrapper can be found here.

14 comments:

Karl said...

Interesting that article 69 does not apply during examination. So does that mean the there could be a difference in scope for judging validity (at least during examination) versus scope for infringement purposes?

Anonymous said...

No. EPO administrative procedures are the opportunity for the Applicant, clearly to state his intended monopoly for the benefit of the world. If he needs to clarify, he should do so at that time, within the limits of what the skilled reader would directly and unambiguously understand from the application as filed.

One granted, the Court will (should) apply the same (national) principles of construction for validity as for infringement, and should arrive at one scope of claim for both enquiries.

Anonymous said...

Art 69 EPC was meant for infringement proceedings before national courts to give the patent proprietor a bit more protection than the literal wording of the claim. A broader interpretation. See the travaux preparatoires. Art 69 EPC is only applicable in EPO proceedings for art 123(3) EPC. It is certainly not applicable in examination where the applicant has the possibility to change and clarify his claims. It is also not applicable to give a narrower interpretation to claims in order to render them novel, an attempt I have often seen in opposition, where there is also the possibility to amend the claims. Giving a narrower interpretation to claims than they actually say goes right against the spirit of art.69 EPC. If in opposition claims are unclear (unfortunately Art 84 EPC seems to be an unknown article in examination, though it might be so useful to "raise the bar"), then the claims are interpreted on the basis of the information present in the patent specification. That may lead to either a broad or a narrow interpretation, but often it will be rather broader. Turning to the description for understanding unclear claims is not based on Art 69 EPC, but simply on common sense, because that is what a description is for ( art 84 says the description supports the claims). So in essence, with the one exception of art 123(3)EPC, art 69 EPC is not applicable to EPO proceedings at all.

Anonymous said...

Of course the protocol to art 69 EPC also explains the idea of a broader interpretation than the literal wording of the claims. Certainly not a narrower one, an attempt that I have seen go wrong quite some times in decisions by the boards. T1404/05, catchword for instance. And others.

MaxDrei said...

Is there anything wrong with construing the claims the way the UK Supreme Court does it under the EPC. The court (just like DG3)recognises that patents are to be taken as written by a person skilled in the art for a readership of other people who are also skilled in the same art. Consistent with that, the UK Supreme Court asks itself: What was the writer of the claim using the words of the claim to mean?

This is only another way of expressing DG3's "Principle of Synthetical Propensity".

I shudder to think of Europe going down the path chosen by the USA, where the claim is construed in one way by PTO Examiners, another way by the USPTO's Board of Appeals and in a third way during infringement proceedings. Can we instead always do it always the SAME common sense way?

If not, why not?

Anonymous said...

Max: Becuase there is no binding precedent from the BoA or nationally across EPC states?

MaxDrei said...

Las time I looked, anon, binding precedent does not forbid choosing to converge. None of the close to thirts Technical Boards of Appeal is bound to follow any of the others. but do they not converge? No national Supreme Court is bound to follow any other, but do they not converge anyway. They have done on novelty, priority, added matter so why not also on claim construction?

Anonymous said...

As long as there is a possibility to file new claims that are clear and need no interpretation, I do not see why the EPO should accept unclear claims with all the consequent problems when amendments need to be made, eg in opposition. I have seen many hours spent on 123(2)(3) issues because the original wording was not clear and it could not be established if the new wording meant the same thing. Interpretation should be left to the last, when no amendments are possible anymore. That is the case in infringement procedures. In order to know if you fall under a claim, you need to know what the claim means.

raetselratte said...

And I have heard a judge of the Bundepatentgericht say in a lecture that in case of unclear claims they will use the unclear bit against the proprietor, i.e. giving it a broad meaning in invalidity proceedings while reducing it to the disclosed embodiments in infringement proceedings.

MaxDrei said...

Above, anonymous writes:

"As long as there is a possibility to file new claims that are clear and need no interpretation, I do not see why the EPO should accept unclear claims"

I do though.

What anon writes is OK, as far as it goes, but it does not deal with the everyday Catch 22Situation one routinely encounters in prosecution at the EPO, namely:

The ED declares the Claim to be unclear. All efforts to render the claim clear enough under Art 84 EPC to satisfy the ED results in an objection under Art 123(2) EPC.

When one remonstrates, that the claim defines a very deserving and unobvious contribution to the art, the 3 ED jobsworths shrug their shoulders and tell you that Applicant has only itself to blame, by using an incompetent patent draftsman to write the original application.

The punishment (refusal) is out of all proportion to the crime committed against the EPO.

Do the jobsworths not realise, that no claim was ever 100% "clear". Mere words can never define an inventive concept with perfect clarity. The isue then is, what degree of clarity meets the requirements of Art 84, EPC.

Anonymous said...

The EPO has to watch the clarity of the claims in the interest of third parties who need to know where the forbidden area begins. Not a crime committed against EPO but aggpainst legal security of the public.

MaxDrei said...

Anon: "where the forbidden area begins"?

So, anon, thanks for that, and as I understand you, you think that the reason for Art 84 EPC is legal certainty, and the duty of DG1 is to take away from national courts in Member States any freedom to draw the line, on scope of protection, where they think it should be? (For, if there is any such freedom, people will still be unclear whether or not they infringe).

Laudable though that is, anon, I find that reason not strong enough to justify refusal of an application. It fails to consider the damage courts can do to legal certainty with their Doctrine of Equivalents.

An Applicant facing relevant prior art has to narrow his claim, to that part of his original clear and unambiguous disclosure which is manifestly patentable, without adding matter. I still think that, when the ED's only remaining objection is under Art 84, but then refuses the application, the punishment is not proportionate to the Applicant's offence. Courts and third parties are not without the experience and education to construe the claim intelligently and accurately.

According to a judge of the BPatG this week, the owner of an unclear claim suffers the risk that the claim is construed widely by the tribunal looking at its validity, but narrowly by the tribunal looking whether it is infringed. Isn't that punishment enough, for the owner of a claim that is less than 100% clear?

Anonymous said...

?
"broadest meaning in accordance with the understanding of the person skilled in the art" ?

what happened to the Guidelines CLR I C 3.1:
"In T 1321/04 the board found that the terms used in patent documents should be given their normal meaning in the relevant art, unless the description gave the terms a special meaning."

It is "normal meaning" vs "broadest meaning".

I always liked to think that in Europe we have the sensible approach of giving words their normal meaning, whereas in the US they have this silly notion of stretching the meaning so far that words lease most of their meaning, known as BRI approach. Has our Board just crossed the Atlantic?

Anonymous said...

My quote in the previous post was wrong. I meant to quote:

GL F IV 4.2 Interpretation
Each claim should be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise.

The Board is not bound by the Guidelines, but the ED is. Does this now mean that the ED uses the normal meaning and that the Board uses the broadest meaning?