T 603/08 – Very Meaningful

I have the impression that there is some kind of consensus that A 69 is not to be invoked in novelty and inventive step assessments (see e.g. here and here). This does not mean, however, that the Boards will not invoke the description and the drawings in this context, as the present decision shows.

Here the applicant filed an appeal against the decision of the Examining Division to refuse the application under consideration.

Claim 1 of the main request before the Board read (in English translation):

A device for transmitting an excursion of an actuator (2;102), comprising at least one transmission element (4;104), a first, a second, and a third bearing area (6,8,10;106,104,106), wherein the first bearing area (6;106) is assigned to a counter bearing, the second bearing area (8;108) is assigned to the actuator (2;102) and the third bearing area (10;110) is assigned to a control member (20;120), wherein the at least one transmission element (4;104) is supported with the first bearing area (6;106) against the counter bearing when the actuator (2;102) is operated and moves the control member (20;120) with the third bearing area (10;110) by means of a rotational motion about a point of rotation, wherein the at least one transmission element (4,104) is configured substantially in the form of a plate (5;105), which is disposed substantially perpendicular to the control motion (L), and wherein the first, second and third bearing areas (6,8,10;106,104,106) are each configured as substantially flat surfaces on the plate (5;105), wherein there is a distance (C) between a central axis (M) of the actuator (2) and a central axis (M) of the control member (20).

Here is what the Board had to say on this request:

*** Translation of the German original ***

[3.1] Document D3 […] discloses an injection valve in which the excursion of an actuator 1 is transmitted to a control member 6 by means of a transmission element 14. The transmission element is supported with a first bearing area 15 on a bearing surface 8 of the valve body 3 and with a third bearing area 17 on the centre of the control member 6. The second bearing area touches an actuator piston 10. As shown by dash-dotted lines in figure 3, there is a distance b between a central axes of the actuator and the control member […]. The point of rotation of the transmission element is vertically above the first bearing area 15.

Moreover, document D3 shows a transmission element 14 in a perspective view (figure 4). It substantially has the shape of a cylinder wherein the limiting surfaces that are perpendicular to the lateral surface of the cylinder have triangular shape with rounded corners […].

[3.2] Thus, put in the language of claim 1, document D3 discloses a device for transmitting an excursion of an actuator 1, comprising a transmission element 14 having a first bearing area 15, a second bearing area 16, and a third bearing area 17, wherein the first bearing area 15 is assigned to a counter bearing, i.e. the valve body 3, the second bearing area 16 is assigned to the actuator 1 and the third bearing area 17 is assigned to a control member 6, wherein the transmission element 14 is supported with the first bearing area 15 against the counter bearing when the actuator 1 is operated and moves the control member 6 with the third bearing area 17 by means of a rotational motion about a point of rotation D, wherein there is a distance b between a central axis of the actuator 1 and a central axis of the control member 6.

[3.3] Besides the above mentioned features, which are disclosed in document D3, claim 1 also comprises the following features:

(i) … “wherein the at least one transmission element (4,104) is configured substantially in the form of a plate (5;105)”, and

(ii) … “wherein the first, second and third bearing areas (6,8,10;106,104,106) are each configured as substantially flat surfaces on the plate (5;105)”.

[3.4] The Board is of the opinion that in order to carry out a meaningful comparison of the subject-matter of claim 1 with the prior art, and in particular with document D3, it has to be established what is to be understood by “in the form of a plate” (feature (i)) and “substantially flat surfaces on the plate” (feature (ii)) according to the embodiments (Ausführungen) presented in the description, the drawing and the dependent claims of the application.

This [approach] complies with the principle established and applied by the Boards of appeal that the description and the drawings of are to be used for interpreting the claims when the subject-matter (Gegenstand) of a claim is to be determined, in particular in order to be able to assess its novelty and inventive step (see Case Law of the Boards of appeal of the EPO, 6th edition, 2010, II.B.5.3.1, second paragraph and decision T 1321/04 [2.3])

[3.5] As far as the main request is concerned, neither the description nor the drawings have been modified, so that the published version is decisive.

As can be seen from the description […] and as stated by the appellant during the oral proceedings, the transmission elements shown in the drawings and described in the description all correspond to embodiments of the invention. Therefore, they are to be used in the above mentioned interpretation of the claims.

[3.6] In the impugned decision features corresponding to features (i) and (ii) have been interpreted narrowly in the light of the description and considered to be features distinguishing [the invention] from D3.

The description and the drawings of the application describe embodiments (see […] figure 7) wherein a transmission element in the form of a plate has a recess 176 and, therefore, two ledges (Vorsprünge).

This [feature] is used to make a relative movement between the transmission element and the housing 130 possible. Moreover, the transmission element has a convex surface the upmost area of which forms the second bearing area.

Similar to this embodiment of the application, the transmission element 14 depicted in figure 4 of document D3 […] has a buckling (Wölbung) towards the inside on its lower part, in order to make a rotational movement of the transmission element 14 possible without striking against the valve body 3. Moreover, the upper part of the transmission element 14 is only slightly curved and forms a bearing area.

Therefore, the Board is of the opinion that in the light of the description, the drawings and the dependent claims, the term “plate” is to be interpreted such that it also encompasses surfaces having steps, recesses and convex surfaces. Therefore, the transmission element 14 disclosed in document D3 is to be considered to be a “plate” within the meaning of the application. Indeed, the term is actually used […] in document D3 for the transmission elements 30 depicted in figures 8 to 10. Therefore, document D3 also discloses feature (i).

[3.6.1] Besides the above mentioned embodiment of the application, with has been described with regard to figure 7, wherein a bearing area is formed by a convex surface, the application also discloses another embodiment (figure 8) comprising a bearing area formed by a rounded portion.

Claims 37 and 41 also claim a transmission element having a convex or rounded surface, respectively.

Therefore, the Board is of the opinion that the expression “substantially flat surfaces” is to be interpreted such that it also encompasses convex or rounded surface, respectively.

As document D3 discloses that the bearing areas are curved, wherein the curvature is to be as small as possible […], the Board is of the opinion that feature (ii) is also disclosed in document D3.

[3.7] For the above reasons all the features of claim 1 are disclosed in document D3. Therefore, the subject-matter of this claim is not novel over document D3 ( A 52(1) and A 54(1) EPC 1973).

As a consequence, the main request cannot be allowed.

The White Book II.B.5.3.1 tells us that “In a number of decisions, … the boards of appeal have laid down and applied the principle whereby the description and drawings are used to interpret the claims and identify their subject-matter, in particular in order to judge whether it is novel and not obvious.” I think this approach, which recalls A 69, makes sense because you cannot interpret words without knowing their context.

As already mentioned above (and also stated in II.B.5.3.2), several Boards have expressed concerns against using A 69 in novelty assessments. Now it is true that the present decision does not explicitly invoke A 69, but does this really make a difference?

I can see two differences.

First, A 69 refers to the description and the drawings, whereas the present approach adds the dependent claims.

Secondly, A 69 comes with its Protocol of interpretation. At first sight this looks desirable, even in novelty assessments, because article 1 of the Protocol excludes extreme options of interpretation. However, there is good reason to avoid A 69 because article 2 of the Protocol introduces the notion of equivalents, which is not something you would want to see in a novelty assessment.

At the end of the day, I would think that the Board has chosen the right approach by taking into account the description and the drawings when interpreting the claims, without referring to A 69. 

Any comments?

To read the whole decision (in German), click here.

The file wrapper can be found here.