A. Patentansprüche

Catchword:

An amendment to a figure of the patent as granted may extend the protection conferred by the patent even if the claims and the description remain unamended (see point 3 of the Reasons).

Zusammenfassung

In T 177/22 the board stated that in order to assess whether the claimed invention is sufficiently disclosed or is novel or inventive, the claimed invention must – to the extent to which this is decisive for the outcome of the case – first be determined by interpreting the claim from the perspective of the person skilled in the art (see T 367/20). When doing this, a board of appeal is not limited to the claim interpretations advanced by the parties but may also adopt a claim interpretation of its own (T 450/20, T 1537/21).

According to the board, the relevant feature of claim 1 as granted was to be interpreted not only in the context of the other features in that claim but also in the context of the description as granted (for recent case law on this matter see T 367/20, referring to the principles of claim interpretation as set out in Art. 69 EPC and Art. 1 of the Protocol on the Interpretation of Article 69 EPC; T 447/22, referring to the general principle under the EPC that claims can be interpreted only in context, which includes the description and the drawings; T 1473/19, referring to G 2/88, applying Art. 69 EPC and the Protocol for interpreting "the technical features of the claim" when assessing extension of the scope of protection under Art. 123(3) EPC; G 6/88 (taken on the same day as G 2/88), where the Enlarged Board (directly) applied Art. 69 EPC and the Protocol "to construe the claim in order to determine its technical features" when assessing novelty; compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to Art. 69 EPC and the Protocol as well as to G 2/88, and stating that the principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent; as to the harmonised approach on claim interpretation introduced by the EPC see further G 6/88, referring to Art. 69 EPC and the Protocol on its interpretation as "a mechanism for harmonisation" which provides a "method of interpretation of claims of European patents throughout their life"; T 1473/19, referring to the legitimate interests of the users of the European patent system in a common approach to claim interpretation; T 367/20 and T 438/22, referring to the overarching objective under the EPC that authorities, courts and the public interpreting the claims should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on its patentability; as to the primacy of the claims under Art. 69 EPC and the Protocol see T 1473/19; in regard to the latter compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to the patent claim as not only the starting point, but the decisive basis for determining its subject-matter and scope of protection).

The board noted that the fact that the patent specification disclosed embodiments which were not encompassed by claim 1 did not result in an insufficient disclosure but in a lack of support by the description under Art. 84 EPC. However, the requirements of Art. 84 EPC play no role in opposition proceedings where the proprietor seeks to have the patent as granted upheld (G 3/14, point 55 of the Reasons).

The respondent (opponent) submitted that a different, broader, claim interpretation had to be adopted for the assessment of novelty and inventive step than for the assessment of sufficiency of disclosure. The board disagreed and stated that the "invention" within the meaning of Art. 54(1) EPC, the "invention" within the meaning of Art. 56 EPC and the "invention" within the meaning of Art. 100(b) EPC (and Art. 83 EPC) all refer to the claimed subject-matter (see T 1473/19 and T 92/21), and a given patent claim's subject-matter must be interpreted and determined in a uniform and consistent manner (see T 1473/19). This excluded interpreting the same claim differently when assessing sufficiency of disclosure on the one hand, and when assessing novelty and inventive step on the other hand. It also presupposed that the same principles of claim interpretation must be applied when assessing compliance with any of these requirements under the EPC.

The board further held that a patent claim must be construed in an objective manner (see T 518/00, referring to the description and the drawings as an aid to interpretation). This prohibited adopting a certain claim interpretation – be it narrow or broad – only because it was, under a certain ground of opposition (or, for that matter, under a certain ground for revocation or in infringement proceedings), (more) detrimental or beneficial to one of the parties.

Zusammenfassung

In T 147/22 the respondent (opponent) raised several clarity objections, which were mainly directed to the expression "consisting essentially of" and to the fact that the ingredients cited in claim 1 were associated with a function.

On the first aspect, the board noted that the expression "consisting essentially of" limited the ingredients in the composition of claim 1 to those defined in components (a) to (d), although further non-active ingredients could be present provided they did not materially affect the chemical stability of TAS-102. The respondent had argued that the expression "consisting essentially of" rendered claim 1 unclear because the skilled person would not know which were the compounds that did not impair the stability of TAS-102 in the composition, and the patent did not contain any information in that respect. According to the board, however, the nature and amount of those additional ingredients was strongly limited by the condition that they must not impair TAS-102 stability. Furthermore, the skilled person confronted with a composition containing components (a) to (d) and additional ingredients could easily determine whether or not the additional ingredients impair TAS-102 stability. Testing the chemical stability of active compounds in a composition was standard practice in the field of pharmaceutical formulations. Such tests were illustrated in Test Examples 1 to 5 of the patent for the particular case of TAS-102. Therefore, the skilled person could easily determine by standard comparative tests whether or not a given composition consisted essentially of components (a) to (d).

With regard to the functional definition of the ingredients in claim 1, the board held that the criterion for assessing whether a compound had the function assigned to it was the function (or functions) that the skilled person would assign to that compound in the context of a given formulation. Contrary to the respondent's view, the formulator's intention was irrelevant in that respect. It was undisputed that the functional features "excipient", "disintegrating agent", "binder", "lubricant", "flavouring agent", "colourant" and "taste-masking agent" were standard in the technical field of pharmaceutical formulations. The skilled person would have no difficulty in determining whether a given formulation ingredient fulfils one or more of these functions on the basis of common general knowledge. These were functional features which were generally allowed if the invention could not be defined more precisely without unduly restricting the scope of the invention. Furthermore, in the present case, the main ingredients were not solely defined by functional features. They were further limited by structural features: for instance, the excipient according to component (b) was selected from lactose, sucrose, mannitol and erythritol. In view of common general knowledge and the structural limitations of the functional features, the board considered that the definition of the ingredients in claim 1 was not unclear.

The respondent's objection was based on the possibility that an ingredient fulfilled more than one function and, depending on its function, the amount of the compound in the composition could vary. For instance, polyvinyl alcohol was generally known to be a binder and a lubricant. If it was considered a binder, it could be present in an amount of 0.001 to 5% by mass while it could not be present if it was considered a lubricant.

The board disagreed. The fact that polyvinyl alcohol was known to be a binder and a lubricant did not render the claim unclear. If polyvinyl alcohol was present in the composition, it necessarily played the role of a binder, even if it also fulfilled the function of a lubricant. Therefore, it should be counted as a binder that may be present in an amount of 0.001 to 5% by mass in the composition. Considering arbitrarily that polyvinyl alcohol could function exclusively as a lubricant and that therefore its presence would render the composition different from the one in claim 1 would be unrealistic. Certainly this was not how the skilled person would read the claim.

Moreover, the board stated that the fact that "excipient" was a very broad term did not mean that it was unclear. "Excipient" was a standard term in pharmaceutical formulations.

Zusammenfassung

In T 1526/22 the application related to a method (and a corresponding apparatus) for estimating a "state" of an ego vehicle, for use in a motor vehicle driver assistance system for the ego vehicle. The examining division had objected that claims 1 and 12 failed to meet the requirements of Art. 84 EPC for two reasons:

(1) the wording "the first state and the second state each include at least one local object attribute describing a local object located in the vicinity of the ego vehicle, wherein the local object is a local vehicle" did not allow to unambiguously derive the meaning of an attribute describing a local object, for example whether it was limited or not to a colour of said local vehicle; and

(2) the wording "for a motor vehicle driver assistance for an ego vehicle" suggested that an effect supporting motor vehicle assistance was to be produced, which was however not apparent from the wording of the claim.

In both cases, it was said that claims 1 and 12 had to be limited in order for the claimed subject-matter to be in agreement with the effect and problem argued by the appellant. Reference was made in that respect to the Guidelines F-IV, 4.5.1.

As regards (1) the board considered the recited feature to be broad but not unclear: "at least one local object attribute" could be any attribute of the local vehicle that was suitable for use by a driver assistance system. It could be, for instance, the local vehicle's position or velocity or even its colour (e.g. as it could be relevant for a classification of that vehicle).

As regards (2) the board interpreted the wording of claim 1 "an apparatus for a motor vehicle driver assistance system for an ego vehicle" as meaning an apparatus suitable for a motor vehicle driver assistance system for an ego vehicle, as is usual for a purpose feature in an apparatus claim in the form "apparatus for ...". Claim 1 did not require the claimed apparatus to be configured to provide the output of the state estimator as input to a driver assistance system.

Claim 12 was directed to "a method for estimating a state of an ego vehicle, the method being implemented on a compute module, the state being for use in a motor vehicle driver assistance system for the ego vehicle". The board noted that last statement appeared to define an intended use of the calculated state obtained by the claimed method. This was not a purpose feature of the kind "method for...", which could in certain circumstances be considered to imply a corresponding method step, but rather of the kind "data for...". The claim did not specify any method step in which the calculated state would be actually used for that purpose, nor did the claim comprise any other feature that would establish that said use was part of the claimed method, be it explicitly or implicitly. The board understood this feature as merely requiring the calculated state to be suitable for use in a motor vehicle driver assistance system for the ego vehicle, in which case there would be no clarity problem. However, in view of the other objections, this issue was left open.

Moreover, the board observed that the examining division had not referred to any specific passage of the description in support of its objections. Hence, the passage of the Guidelines F-IV, 4.5.1 "Objections arising from missing essential features", cited by the examining division, did not support the raised objections.

However, the board raised further objections and concluded that claims 1 and 12 lacked clarity under Art. 84 EPC. In particular, the board noted that according to the third and fourth embodiments, reflected in dependent claim 5, the prediction model and the update model were "combined into a combined ANN". In these embodiments, the combined ANN carried out an estimation of the second state taking as input the first state and the measurements of the second state but without necessarily performing separate prediction and update calculations, as suggested by claim 1. This cast doubt as to how the features of claim 1 related to the prediction and update elements were to be interpreted, rendering claim 1 unclear. Similar considerations applied to claim 12.

Zusammenfassung

In T 439/22 the interpretation of the term "gathered sheet" in claim 1 was decisive to assess novelty. In particular, the prior-art document D1 disclosed – in addition to all other features of the claim – a tobacco sheet spirally wound. The board stated that a skilled person in the current technical field would understand the term "gathered sheet", when read in isolation, as defining a sheet folded along lines to occupy a tridimensional space. Accordingly, when assigning this usual meaning to the term, the subject-matter of claim 1 would have to be regarded as novel. However, if the same term was read in a broader but still technically meaningful manner in view of the definition in paragraph [0035] of the description, the subject-matter of claim 1 would lack novelty. Said paragraph [0035] establishes that "the term "gathered" denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod."

The board examined the case law of the boards and concluded that it was divergent on the following questions, which were all decisive for the case in hand:

- legal basis for construing patent claims

- whether it is a prerequisite for taking the figures and description into account when construing a patent claim, that the claim wording, when read in isolation, be found to be unclear or ambiguous

- extent to which a patent can serve as its own dictionary

According to the board, a decision of the Enlarged Board of Appeal was also required because a point of law of fundamental importance had arisen, since claim construction by the EPO had to be seen within the greater context of the patent protection system as a whole. To provide an overview on claim interpretation in validity and enforcement proceedings, the board took into account decisions of national courts in France, Germany and United Kingdom as well as two recent decisions of the Court of Appeal of the Unified Patent Court (Nanostring v 10x Genomics, UPC CoA 335/2023, App 576355/2023 of 26 February 2024; VusionGroup v Hanshow (APL 8/2024, ORD 17447/2024) of 13 May 2024).

The board concluded that, in order to come to a decision in the case at hand, three questions first had to be answered, both to ensure the uniform application of the law and because a point of law of fundamental importance had arisen. The board thus referred the following questions to the Enlarged Board (referral pending under G 1/24 – Heated aerosol):

1. Is Art. 69(1), second sentence EPC and Art. 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Art. 52 to 57 EPC? [see points 3.2, 4.2 and 6.1 of the Reasons]

2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation? [see points 3.3, 4.3 and 6.2 of the Reasons]

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions? [see points 3.4, 4.4 and 6.3 of the Reasons]

Zusammenfassung

In T 2030/20 befasste sich die Kammer mit der Auslegung der Begriffe "Tauchrohr" und "eines Durchmessers" in Anspruch 1 im Rahmen der Neuheitsprüfung.

Die Patentinhaberin wollte den Begriff "Tauchrohr" in Anspruch 1 des erteilten Patents im Sinne des unmittelbaren Wortsinns verstanden wissen, wonach das Rohr dazu geeignet sein solle, in ein Kulturmedium einzutauchen. Ein Tauchrohr müsse demnach insbesondere lang genug ausgebildet sein, um das Kulturmedium, beispielsweise eine Flüssigkeit wie die Kulturbrühe oder ein Gel, eines angeschlossenen Einweg-Bioreaktors erreichen zu können.

Die Kammer merkte an, dass nach ständiger Rechtsprechung den in einem Patent verwendeten Begriffen die im einschlägigen Stand der Technik übliche Bedeutung zu geben sei, sofern ihnen nicht in der Beschreibung des Patents ein besonderer Sinn zugewiesen wurde (siehe Rechtsprechung der Beschwerdekammern, 10. Auflage 2022, Kapitel II.A.6.3.3; vgl. auch T 1473/19). Sei Letzteres der Fall, könne dies auch dazu führen, dass einem Anspruchsmerkmal gegenüber der im einschlägigen Stand der Technik üblichen Bedeutung im Lichte der Beschreibung eine breitere Bedeutung zukomme. Dies sei im vorliegenden Fall so.

Zwar sei es gemäß den in den Figuren dargestellten Ausführungsformen des Patents, wie von der Patentinhaberin dargelegt, bevorzugt, dass ein Tauchrohr des Patents dazu vorgesehen sei, in eine im Bioreaktor bestimmungsgemäß vorhandene Kulturbrühe einzutauchen. Allerdings weise das Patent dem Begriff "Tauchrohr" in der Beschreibung eine über den eigentlichen Wortsinn hinausgehende, breitere Bedeutung zu, wonach ein Tauchrohr lediglich in den Reaktionsraum ragen könne, also irgendwo innerhalb des Reaktionsraums oberhalb des Flüssigkeitsspiegels enden könne.

Die vorgenommenen Änderungen im Hilfsantrag 1 betrafen die Beschreibung der Tauchrohre in Absätze 46 und 60. Die Kammer war jedoch der Ansicht, dass die unverändert belassenen Absätze der Patentschrift weiterhin definierten, dass die Tauchrohre im Sinne des Patents lediglich lang genug ausgebildet sein müssten, um in den Reaktionsraum zu ragen.

Im Hilfsantrag 4 wurde folgendes Merkmal ergänzt: "und wobei die Tauchrohre eine Länge von über 50 Prozent eines Durchmessers der Kopfplatte aufweisen". Von den Beteiligten wurde diskutiert, was unter "eines Durchmessers" zu verstehen sei.

Nach Ansicht der Kammer müsse die Wortfolge "eines Durchmessers" im Gesamtzusammenhang des Anspruchs und der Patentschrift (T 367/20) als Maß für die Ausdehnung der Kopfplatte, also als Maß für ihren Gesamtdurchmesser, verstanden werden. Bei nur isolierter Betrachtung des Wortlautes von Anspruch 1 bestehe eine technisch sinnvolle Auslegung der Wortfolge "eines Durchmessers" darin, dass der Fachmann sich bei der Definition der Länge der Tauchrohre im Bezug auf die Kopfplatte an der für die Kopfplatte charakterisierenden Größe des Gesamtdurchmessers orientiere – und nicht an dem Durchmesser lediglich eines Teiles der Kopfplatte, welcher für die Größe der gesamten Kopfplatte nicht repräsentativ sei. Sollte ein Fachmann nichtsdestotrotz Zweifel daran haben, welche Bedeutung dem Begriff "eines Durchmessers" in Anspruch 1 zukomme, würde er die Beschreibung des Patents konsultieren. Die Patentschrift stütze das o.g. Verständnis der Wortfolge "eines Durchmessers".

Zusammenfassung

In T 1726/22 the claimed subject-matter was defined by parameters; however, even though the claims related to an acetylated wood as such, the parameters, i.e. the shrinkage ratios, were defined in relation to the wood before acetylation. The application did not mention anything regarding how the shrinkage ratios, relative to the shrinkage before acetylation, could be determined on the basis of the acetylated wood.

According to the appellant, the shrinkage ratios could be easily determined during the manufacture of the acetylated wood, during which the wood before acetylation was necessarily available and its shrinkage could thus be measured easily. The board found that this argument was not convincing. It noted that it was not enough for the requirement of clarity to be fulfilled that the parameter could be measured when manufacturing the wood, as the manufacturing method was not specified in the claim. The skilled person needs to be able to determine whether a given acetylated wood falls within the scope of the claim, the claim being directed to an acetylated wood as such. As outlined in T 849/11, an applicant who chooses to define the scope of the claim by parameters should ensure, inter alia, that a skilled person can easily and unambiguously verify whether they are working inside or outside the scope of the claim; however, in the present case, it was impossible for the skilled person faced with the acetylated wood to revert to the manufacturing process during which the shrinkage before acetylation could have been measured, or to the unacetylated wood.

The appellant also argued that the skilled person could alternatively measure the shrinkage ratio by using "a reference non-acetylated wood sample of the same wood species having similar properties". In the appellant's view this meant the same wood species of the same geographic origin, and the same part of the tree, i.e. heartwood or sapwood. The appellant submitted that the skilled person could identify the wood species by isotope analysis.

The board pointed out that using a reference wood was not suggested anywhere, let alone specified in the claim. Even if it was nevertheless assumed that the skilled person had the idea to turn to using a reference wood, they would not find any instructions on how to select a suitable reference wood. It thus could not be concluded that the skilled person would necessarily select a wood using the same criteria as identified by the appellant. Considering that the choice of the reference wood, and indeed the choice of the measuring method in general, was in no way limited, it could not be concluded that repeatable and reliable results for the shrinkage ratios would be obtained on this basis, irrespective of the question of whether such a reference wood could be reliably identified, and whether such a reference wood was at all representative of the (acetylated) wood under consideration.

The board recalled that there are cases in which it is not necessary to specify the measuring method for a parameter in the claim, namely when it is ("convincingly") shown that the method to be employed belongs to the skilled person's common general knowledge, or all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy (T 849/11); however, it was a mere assertion by the appellant that the skilled person could and would use a reference wood, and that this would lead to reliable results. This assertion was not even supported by the application, nor was any other supporting information available. By contrast with the appellant's view, it thus could not be concluded that the present case would be such an exceptional case in which it would be unnecessary to specify the measuring method. The requirements of Art. 84 EPC were therefore not met.

Zusammenfassung

In T 56/21 the board addressed the question whether Art. 84 EPC provides a legal basis for (i) objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and (ii) requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description").

As the appeal concerned ex parte proceedings, the board dealt with the interpretation of Art. 84 EPC for the purpose of its application in examination proceedings. The board analysed the function and relationship of the claims and the description, the relationship between the assessment of patentability and the determination of the extent of protection as well as the requirements of support by the description and clarity in Art. 84 EPC.

On adaptation of the description, the board came to the following conclusions:

(a) Art. 84 and R. 43 EPC set forth requirements for the claims, not for the description.

(b) It is the purpose of the assessment of Art. 84 EPC as part of the examination of patentability to arrive at a definition of the patentable subject-matter in terms of distinctive technical features distinguishing it from the prior art.

(c) Art. 69(1) EPC and the Protocol on the Interpretation of Art. 69 EPC are not concerned with the definition of the subject-matter according to Art. 84, first sentence, EPC, or the assessment of patentability in examination before the EPO but with the extent of protection in the context of infringement proceedings in the contracting states. Art. 69 EPC and its Protocol are hence not applicable in grant proceedings before the EPO.

(d) The requirements of Art. 84 EPC and R. 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.

(e) In examination, future legal certainty is best served by a strict definitional approach which ensures that allowable claims per se provide an unambiguous definition of the subject-matter meeting the requirements for patentability.

(f) Adapting the description to match the more limited subject-matter claimed does not improve legal certainty but reduces the reservoir of technical information in the granted patent. This may have unwarranted consequences in post-grant proceedings and may encroach on the competence of national courts and legislators.

(g) R. 48 EPC is not concerned with the adaptation of the description, but with the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements in the publication of an application.

The board held that in examination of a patent application, neither Art. 84 nor R. 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter. Within the limits of Art. 123 EPC, an applicant may, however, amend the description of its own volition.

In the case at hand the description included a passage entitled "SPECIFIC EMBODIMENTS", which contained claim-like clauses. Those clauses included subject-matter which was not claimed. The board set aside the (refusal) decision under appeal and the case was remitted to the examining division with the order to grant a patent based on the main request on file.

Zusammenfassung

In T 1152/21 the board concluded that claim 1 of auxiliary requests 9b and 10a did not meet the requirements of Art. 84 EPC.

Claim 1 of auxiliary request 9b included the term "cooling to an appropriate temperature". The board found that the skilled person could not assess whether a particular temperature was an "appropriate temperature", since the wording of the claim did not allow them to determine the conditions under which a temperature was an "appropriate temperature". Therefore, the claim was not clear.

The patent proprietor (appellant) had submitted that the skilled person was very familiar with heating and cooling steps, which were inherent to any (re)crystallisation process. It was a routine task for the skilled person to determine said appropriate temperature by reasonable trial-and-error experiments. Hence, the feature "appropriate temperature" was a functional feature related to a process step which could easily be performed in order to obtain the desired result. The board did not agree. It held that the patent proprietor's submission was relevant for sufficiency of disclosure rather than for the clarity of the claim. The relevant issue was what was covered by claim 1 of auxiliary request 9b, not whether the skilled person could reproduce the claimed method.

Auxiliary request 10a included in claim 1 the following terms: "heating to about 70°C", "heating at about 70°C", "heating the organic layer to about 120°C", "cooling to about 80°C", "maintaining the mixture at about 80°C for about 3 hours" and "gradually cooling to about 10°C".

The board noted that the term "about" in the context of said claim was associated with a specific temperature or a specific time. It could be that the term "about" was intended to cover measurement errors. However, measurement errors were covered for any value of any technical parameter to be measured and given in any claim (without the need for the term "about") since patents were in the field of technology, not mathematics, and a value could only be as precise as it could be measured according to the general technological convention. Thus, following this interpretation, the term "about" was superfluous and claim 1 was not concise, contrary to what was required by Art. 84 EPC. Alternatively, the term "about" could be intended to denote a range broader than the measurement error range. Following this second interpretation, it could not be determined how broad the range could be in claim 1 and what the exact limits of this range were. In this case, the term "about" in said claim was not clear, again contrary to what was required by Art. 84 EPC.

The patent proprietor had submitted that the term "about" was clear in light of the description of the patent since paragraph [0020] gave a clear definition of the term. According to the board, the claims have to be clear as such, i.e. without taking the description into account to interpret any unclear term. Even if it were accepted that the description could be consulted in the context of Art. 84 EPC, paragraph [0020] of the patent read as follows: "[...], the term "about" means within a statistically meaningful range of a value, such as a stated concentration range, time frame, molecular weight, particle size, temperature or pH. Such a range can be within an order of magnitude, typically within 20%, more typically within 10%, and even more typically within 5% of the indicated value or range". In the board's view, the term "statistically meaningful range" did not clearly define a range and for that reason was unclear. Even if it were accepted that, as submitted by the patent proprietor, the term "statistically meaningful range" was specified by relative variations in percent, said term would still be unclear since the following sentence contained various different percentages ("typically within 20%, more typically within 10%, and even more typically within 5% of the indicated value or range"). Contrary to the patent proprietor's submission that the skilled person would choose the broadest range, there was no teaching in this following sentence to choose the percentage within 20% of the indicated value, in view of the lower preference of the term "typically" compared with the two other terms "more typically" and "even more typically".

The patent proprietor further submitted that the term "about" was to be considered clear in light of the Guidelines F-IV, 4.7.1 – March 2021 version. The board pointed out that this chapter related to the interpretation of terms such as "about", not to the assessment of the clarity of such terms. Thus, the board found that the patent proprietor's submission was not convincing.

Zusammenfassung

In T 939/22 claim 1 of the main request was directed to "(a( vaccine comprising a recombinant nonpathogenic Marek's Disease Virus (rMDVnp) comprising a first nucleic acid (…) and wherein the rMDVnp is a recombinant herpesvirus of turkeys (rHVT)." The construction of rMDVnp was relevant for assessing novelty over D8.

The definition of rMDVnp in the description (page 7, lines 19 to 20 of the patent in suit) stated that the term rMDVnp referred to a rMDVnp that included heterologous nucleotide sequences (i.e. sequences from pathogens other than MDV). In other words, the definition in the description equated the term rMDVnp to a specific recombinant vector with inserts of nucleotide sequences encoding proteins from other pathogens. According to the board, this definition could not change the common understanding of the terms of art rMDVnp and rHVT as used in claim 1 nor was this definition consistent with how a skilled person would understand the claim. Indeed, the skilled person would understand the terms rMDVnp and rHVT as used in claim 1 to refer to the genome of a viral vector stemming from a non-pathogenic strain of an MDV serotype. No further limitations were implied by the terms rMDVnp and rHVT. The skilled person would not understand the term rHVT to exclude viral vectors in which a specific region of the genome of HVT (which is MDV serotype 3, i.e. MDV3) has been replaced by the corresponding region of a different MDV serotype, as is the case for novel avian herpesvirus (NAHV). Of course, claim 1 further required that nucleotide sequences of at least two specified pathogens other than MDV, i.e. Newcastle disease virus (NDV) and infectious laryngotracheitis virus (ILTV), be inserted into the rMDVnp/rHVT vector. Hence, the claim was directed to a construct formed by the rMDVnp/rHVT vector and inserts of nucleotide sequences from other pathogens.

The board held that the exclusion of viral constructs comprising nucleotide sequences from different MDV serotypes from the term MDVnp (page 7, lines 14 to 17 of the patent in suit) was in line with how the skilled person would understand the term MDVnp, as it did not include recombinant viral constructs but referred only to the naturally occurring viruses. Claim 1, however, was specifically directed to a vaccine comprising a recombinant non-pathogenic MDV (rMDVnp), specifically rHVT. Even if the definition of MDVnp in the description were intended to include rMDVnp in a way that excluded chimeric viruses, this could not change the skilled person's understanding of the terms rMDVnp and rHVT.

In the board's view, excluding chimeric viruses from the claimed subject-matter appeared contradictory for the following reasons. The term chimeric virus, as understood by the skilled person, related to a specific type of recombinant virus that contains genetic material from different viruses within a single viral genome construct. This typically implied that the resulting viral construct exhibits characteristics derived from each of the parental viruses. Accordingly, inserting nucleotide sequences of NDV and ILTV into the rHVT vector as claimed resulted in a chimeric virus. Therefore, chimeric viruses could not be excluded from the subject-matter of claim 1, let alone a (recombinant) NAHV that included nucleotide sequences from NDV and ILTV.

The board also noted that, due to the comprising language, claim 1 did not exclude that the rMDVnp could be engineered to comprise additional nucleic acid inserts encoding antigens of pathogens other than NDV and ILTV.

It was clear from the wording and structure of claims 3, 4, 9 and 11 that the inventors of D8 had envisaged both (i) a multivalent vaccine that was a mixture of different NAHV constructs, each encoding a separate foreign gene (claim 19), and (ii) a multivalent vaccine based on a single NAHV construct encoding a plurality of foreign genes (claim 11, to which vaccine claim 18 refers). A multivalent vaccine encoding more than one heterologous antigen was furthermore addressed in several passages of the description. D8 provided detailed instructions on how to prepare the recombinant chimeric virus and clear protocols on how to test them for their suitability as vaccines. Thus, sufficient information was provided to enable the skilled person to produce and test a composition suitable as a multivalent vaccine as defined in claim 18 of D8.

In addition, it was credible that a recombinant MDV comprising more than one insert from two different heterologous viruses in the non-essential US2 site, encoding thus one additional foreign antigen to those tested in Examples 1 to 3 of D8, could be prepared and would provide protection by preventing or reducing the severity of a disease caused by at least one of the viruses whose antigens were encoded by the recombinant MDV construct.

Zusammenfassung

In T 1886/22 the interpretation of feature F in claim 1 of auxiliary request 5, in particular the term "extends through", was relevant to assess compliance with Art. 123(2) EPC.

The board did not agree with the approach taken in T 1791/16 that all technically reasonable interpretations of an ambiguous claim must be considered in assessing whether the claim contains added subject-matter, and that it is sufficient that one of these interpretations leads to added subject-matter in order to conclude that the claim is not allowable. Rather, the board was of the view that it must first be determined how the person skilled in the art would interpret the relevant feature before it can be assessed whether this feature is disclosed in the application as filed and, accordingly, whether it adds subject-matter (see T 367/20).

The board stated that the terms in a given patent claim must be interpreted in a uniform, consistent and objective manner (see T 177/22), including for the purposes of assessing e.g. added subject-matter and novelty. In the case at issue only the narrower of the two possible – and both technically reasonable – claim interpretations could lead to added subject-matter. Hence, the approach suggested in T 1791/16 would also require a deviation from the established practice to interpret a claim in doubt rather more broadly than more narrowly.

The respondent (opponent) had argued that the word "through" in its ordinary and broadest interpretation meant "from one end to the other", so that feature F must be interpreted as requiring the proximal portion of each of the arms to extend through the entire bushing (interpretation (a)). However, as submitted by the appellant (patent proprietor), the word "through" can also mean "along within", as supported, inter alia, by the dictionary definition A.2 given in D15 (interpretation (b)). Interpreted with this different meaning, feature F required the proximal portion of each of the arms to extend "along within" the bushing, i.e. along a certain distance within the bushing. The board agreed with the appellant that both interpretations (a) and (b) were linguistically and technically sensible and that interpretation (b) was broader than and encompassed interpretation (a).

The board held that on the basis of the wording of feature F alone, and in the absence of any context, it could not be concluded which one of the two aforementioned interpretations took precedence over the other. One could only arrive at such a conclusion when interpreting feature F in the technical context of claim 1. The person skilled in the art reading claim 1 as a whole would understand that for the catheter tip portion to be coupled to the distal end of the catheter shaft it was sufficient that the proximal portion of each of the arms extended partially through the proximal bushing, in other words, that it extended into the bushing. It was irrelevant whether the proximal portion extended further into the bushing, in particular whether it extended through the entire bushing and thus terminated proximal thereto, or whether instead the proximal portion terminated somewhere within the bushing. The skilled person would therefore interpret feature F broadly according to interpretation (b), which left open where the proximal portion of the arms terminates, and would not interpret feature F narrowly according to interpretation (a). In fact, to do so would be tantamount to reading an unjustified limitation into the claim.

In the boards' view, interpreting feature F according to interpretation (b) was not inconsistent with the patent specification, which did not support one interpretation over the other.

The board referred to paragraph [0097] of the application as filed which disclosed explicitly that the longitudinally-extending arms "exit from the distal end of the proximal bushing". According to the board and contrary to the respondent's view, this implied necessarily that the arms extend at least partially through the bushing, i.e. along within it, otherwise they could not "exit" from the bushing. This view was also consistent with the figures of the application as filed which showed an embodiment of a catheter as claimed, such as Figure 33, where the arms were shown as being gripped within a notch formed within the bushing at its distal end. The board therefore concluded that feature F (according to interpretation (b)) did not constitute subject-matter extending beyond the content of the application as filed.

See also T 1345/23, which relates to a patent originating from a divisional application and addresses the same issues in the context of compliance with Art. 76(1) EPC. It was issued by the same board on the same date as T 1886/22 (joint hearing).

Zusammenfassung

In T 2103/22 the board, in order to assess compliance with the requirements of Art. 123(2) EPC, had to first determine the subject-matter effectively defined by claim 1 of the main request. In particular, the board interpreted the meaning of the following terms as well as the meaning of their combination:

a) "said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin at a weight ratio of 90:10 to 10:90 (…)"

b) "a layer of a polyester resin which comprises an ethylene terephthalate unit formed on at least one surface of the metal sheet".

The respondent (opponent) adhered to the conclusion of the opposition division which had been reached considering that "is" in term a) was to be read as "comprises", which meant that any other component different from the ones specifically mentioned in said claim 1 could be present in the blended polyester resin. The board disagreed and stated that, although it was correct that the normal rule of claim construction was that the terms used in a claim should be given their broadest technically sensible meaning, the literal reading of this passage defined that "said polyester resin" consisted of the lowly crystalline and highly crystalline polyester resins further defined in claim 1 of the main request, in the given weight ratio. In that regard, the board noted that, according to established case law (Case Law of the Boards of Appeal, 10th ed. 2022, II.A.6.2), the term "consists of" meant that the definition of "said polyester resin" was given in a "closed" manner, i.e. it excluded the presence of any other components other than the ones specifically defined (in the case at issue the lowly and highly crystalline polyester resins).

On b), the board found that the term "a layer of a polyester resin" defined, according to its literal reading, that the polyester therein mentioned, i.e. "which comprises an ethylene terephthalate unit", was the main component of the layer. However, this wording neither imposed that the polyester resin was the sole component of the layer, nor that it was the sole resin possibly present in the layer. The board further held that the reference to "unit" in that passage made it clear that the term "which" made reference to the polyester resin and not to the layer. This, in the board's view, would also be the logical reading of the claim made by the skilled person, considering that the term "which" usually makes reference to the word directly preceding it.

As the subject-matter of claim 1 of the main request was defined by the combination of terms a) and b), the board also determined the meaning of the combination of these two terms. It held that the polyester resin specified in the term "a layer of a polyester resin" was identical to the "said polyester resin" further defined in claim 1, i.e. it consisted of a blend of only the lowly and highly crystalline polyester resins.

Taking into account the further definitions of the lowly and highly crystalline polyester resins in claim 1, the board concluded that both of them were "a polyester resin that comprises an ethylene terephthalate unit". Therefore, the term "which comprises an ethylene terephthalate unit" of claim 1 of the main request was in fact redundant (i.e. not further limiting). Contrary to the view of the opposition division, the definitions of the highly and the lowly crystalline polyester resins further imposed that said terephthalate unit had to be present in majority since, otherwise, the resin would not be a "polyethylene terephthalate" anymore.

To determine whether the requirements of Art. 123(2) EPC were met, the board assessed if the deletion of the term "chiefly" from claim 1 of the application as filed resulted in added-matter. It saw no reason to deviate from the literal sense of the term "chiefly", which was that the polyester resin of the layer so defined should principally comprise an ethylene terephthalate unit not as the sole component but as the most important component of the polyester.

According to the board, adopting for the relevant passages of the application as filed the same reading as the one outlined for the corresponding passages of claim 1 of the main request, the term "which chiefly comprises an ethylene terephthalate unit" could only be held to be redundant (i.e. not further limiting) in view of the other features defining the valid support in the application as filed for the claimed subject-matter. Therefore, the presence or not in claim 1 of the main request of the terms "which chiefly comprises an ethylene terephthalate unit" or "chiefly" contained therein, did not lead to added-matter pursuant to Art. 123(2) EPC.

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A. Patentansprüche

T 953/22 × View decision

T 447/22 × View decision

T 438/22 × View decision

T 1628/21 × View decision

T 1099/21 × View decision

T 1924/20 × View decision

T 1382/20 × View decision

T 450/20 × View decision

T 367/20 × View decision

T 169/20 × View decision

T 3097/19 × View decision

T 2194/19 × View decision

T 1761/19 × View decision

T 1553/19 × View decision

T 1473/19 × View decision

T 2391/18 × View decision

T 177/22 × View decision

T 147/22 × View decision

T 1526/22 × View decision

T 1208/21 × View decision

T 439/22 × View decision

T 2030/20 × View decision

T 566/20 × View decision

T 1726/22 × View decision

T 56/21 × View decision

T 1152/21 × View decision

T 939/22 × View decision

T 1886/22 × View decision

T 2103/22 × View decision

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A. Patentansprüche

T 953/22 View decision

T 447/22 View decision

T 438/22 View decision

T 1628/21 View decision

T 1099/21 View decision

T 1924/20 View decision

T 1382/20 View decision

T 450/20 View decision

T 367/20 View decision

T 169/20 View decision

T 3097/19 View decision

T 2194/19 View decision

T 1761/19 View decision

T 1553/19 View decision

T 1473/19 View decision

T 2391/18 View decision

T 177/22 View decision

T 147/22 View decision

T 1526/22 View decision

T 1208/21 View decision

T 439/22 View decision

T 2030/20 View decision

T 566/20 View decision

T 1726/22 View decision

T 56/21 View decision

T 1152/21 View decision

T 939/22 View decision

T 1886/22 View decision

T 2103/22 View decision

Anzeigen Sammlung 2023 “Abstracts of decisions”

Anzeigen Jahresbericht: Rechtsprechung 2022