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 ; T 16/87 ; T 476/89 ). 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.
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