T 0384/91 (Conflict) 11-11-1992

1. Amendments

1.1 With the exception of the feature "substantially free of striae", Claim 1 according to the main and first auxiliary requests does not contain subject-matter extending beyond the application as filed.

The feature "taut", with or without the additional specification "on the surface", is considered to be originally disclosed on page 10, lines 8 to 11, since, if the membrane is taut after evaporation of the solvent and the evaporation took place while the membrane was on the support surface, the membrane must necessarily be taut on the surface. The scope of protection conferred by Claim 1 is also independent of the presence of the specification "on the surface", since Claim 1 must in any case be understood in this sense. 1.2 However, the words "substantially free of striae" cannot be found expressis verbis in the application as filed, this fact being accepted by the Appellant himself (see letter of 10 March 1989, point

4. of the observations). In order to determine whether information is identifiable in the original application, which would introduce the feature "substantially free of striae" by technical implication, the meaning of the said feature and, therefore, of the word "stria" must be established.

The Board agrees with the Appellant as to the fact that for investigating an alleged extension of the subject- matter of a patent application or patent beyond the content of the application as filed, the subject-matter of the application or patent as a whole should be compared with the original content of the application. Similarly, for investigating the question of extensions after grant of the protection conferred by a claim, the description and drawings shall be used to interpret the claims, in the sense of Article 69(1) EPC including the Protocol on the Interpretation of this Article. The Board is thus in full agreement with the decisions G 2/88 and T 371/88 cited by the Appellant.

However, this does not mean that a claimed feature, which has no correspondence in the description, would automatically assume a meaning and scope according to the disclosure of the description, however far this may be away from the claimed feature.

In the present case, since the word "stria" is nowhere defined in the granted patent itself, there is no other way but to start from the meaning commonly accepted in the field of optics, which is considered to be the relevant technical field, in order to investigate whether the subject-matter of the patent including the feature in suit goes beyond the content of the original application, or not.

1.3 According to D8, i.e. a handbook dealing with applied optics and optical engineering, manufacturing process features and variations may be the source of areas in optical glass that have a refractive index sharply deviating from the bulk average; these areas usually assume the shape of filaments termed "striae". Indeed, the author of the declaration filed with the letter of 5 May 1992 (see point 3., "..., my first thought was that ...") confirms that this is a very usual meaning, which a skilled person first considers. The chapter of D8 giving this definition specifically deals with optical glasses. The definition should, however, also apply to optical polymers since both types of material are equivalently used in optics. The author of the said declaration considers that such a meaning would be inconsistent with the fact that the patent deals with thin optical membranes. However, the Board does not see why filament shaped refractive index variations should not be conceivable in thin optical membranes as well. The further text of the patent also does not exclude such a possibility.

Therefore, it is one meaning of Claim 1 in suit, that the steps of the method of making the optical membrane result in a membrane which substantially does not exhibit any filament shaped area having a refractive index sharply deviating from the bulk average.

A further meaning of the word "stria" is, according to D6, "faint ridge or furrow, streak, linear mark", whereby this definition corresponds to the common meaning of the word, as known from the dictionary D3 that is meant for the general public. This meaning is also relevant in the present case, since D6 is a dictionary of science and technology. Therefore, Claim 1 in suit can also be interpreted in the sense that the steps of the method of making the optical membrane result in a membrane which substantially does not exhibit any faint ridge or furrow, streak, or linear mark. There is nothing in the remainder of the patent which would render such an interpretation unreasonable.

It therefore follows that the added feature of Claim 1 "substantially free of striae", although not being precise in its scope, nevertheless is not void of technical meaning. Although directed to the product, it forms a limiting feature of method Claim 1, since it determines that the method steps must be such that the substantial freedom from striae is achieved. That this result might already be automatically achieved by the method steps specifically mentioned in the claim, is neither plausible, nor has such an argument been submitted by the Appellant.

1.4 On the other hand, the originally filed application discloses, inter alia, methods for measuring accurately the index of refraction of a thin optical membrane (see page 4, line 10 to page 6, line 27) and for making such a membrane (see page 8, line 1 to page 10, line 12 and Figure 1). With regard to the features of the manufacturing method, it is stated on page 9, lines 1 to 5 that "membrane thickness and diameter depends primarily upon the viscosities of polymer and solvent, the rate of acceleration and speed of the rotatable support on which we form the membrane, and the final speed of rotation". Moreover, it is mentioned on page 9, lines 16 to 18 that "variations in membrane thickness can be controlled by adjusting the rate of evaporation and the kind and quantity of thermal treatment, if any, that the membrane undergoes after formation". The influence of the manufacturing method features on physical parameters of the membrane like thickness and diameter is, therefore, explicitly mentioned. Nowhere in the description is, however, disclosed, either explicitly or implicitly, that the said method features are chosen so that the membrane made according to the said process does not exhibit any filament shaped area having a refractive index sharply deviating from the bulk average.

With regard to the meaning of "stria" as "faint ridge or furrow, streak, linear mark", no place can be found in the original application wherefrom it could be unambiguously derived that the features of the process are so chosen that the membrane made according to said process does not exhibit any faint ridge or furrow, streak, or linear mark. In particular, although the description draws the attention to the influence that the manufacturing method features have on physical parameters of the membrane, as mentioned above, and stresses the importance of a uniform thickness (see page 1, lines 6 to 14), it fails to disclose uniformity of the membrane in this respect. A uniform thickness, however, does not necessarily imply the absence of striae in the sense of visible, e.g. coloured streaks and linear marks without surface deformation, and the absence of striae in the sense of faint ridges or furrows does not necessarily imply uniform thickness.

1.5 Therefore, in view of the fact that the meaning of the feature "substantially free of striae" as mentioned above cannot be derived from the application as filed, the feature in suit, contained in Claim 1 according to the main and first auxiliary requests, represents subject- matter extending beyond the content of the application as filed in the sense of Article 123(2) EPC.

1.6 Claim 1 according to the second and fourth auxiliary requests does not contain subject-matter extending beyond the application as filed. As regards, in particular, the feature "of substantially uniform thickness" now replacing "substantially free of striae", this feature is disclosed on page 1, lines 6 and 7 of the original description. This amendment, therefore, does not contravene Article 123(2) EPC.

However, it affects the scope of protection conferred by Claim 1. Whereas according to the granted Claim 1 only such a method is protected, the parameters of which are chosen to lead to a membrane substantially free of striae, the amended Claim 1 also protects a method which although leading to substantially uniform thickness, nevertheless produces striae. This could easily be the case if, for instance, the striae consist of variations of refractive index or of otherwise visible streaks or linear marks without surface deformation. Moreover, even in the case of variations of thickness it is very doubtful whether for the more general condition "uniform thickness" the same considerations regarding the limits defined by the term "substantially" apply as for the more special condition "free of striae". Fine ripples unacceptable under the aspect of substantial freedom from striae might be accepted under the aspect of substantially uniform thickness which, for instance, requires, as shown in the present application, that the thickness of the membrane should not vary from edge to edge by more than 2%.

Therefore, the amendment of Claim 1 according to the second and fourth auxiliary requests extends the protection conferred in the sense of Article 123(3) EPC.

1.7 The wording of Claim 1 according to the third and fifth auxiliary requests is equal to that of Claim 1 according to the first auxiliary and main requests. It is very doubtful whether the sense of the claimed feature "substantially free of striae" could be shifted by the requested insertion to the description. But in any case the insertion itself of the proposed sentence at the end of the description goes beyond the content of the application as filed, in the sense of Article 123(2) EPC, because the expression "substantially free of striae" on the one hand and the alleged fact that it is equivalent to "of substantially uniform thickness" on the other hand are not supported by the original disclosure.

1.8 It appears that, under the circumstances of the present case, the requirements for fulfilling paragraph 2 and paragraph 3 of Article 123 EPC go in opposite directions, since any attempt to remove the feature "substantially free of striae", added incorrectly before grant, would result in extending the scope of protection conferred by the granted Claim 1.

2. Relationship between Article 123(2) and Article 123(3) EPC

2.1 No difficulty arises between paragraphs 2 and 3 of Article 123 EPC as long as the patent has been correctly granted. The special nature of the present case lies in the fact that the situation mentioned in paragraph 1.8 above was not predetermined on the filing date by the content of the application and/or the existing prior art, but was created during the examination procedure. Although the Applicant (Appellant) is fully responsible for the amendments to the application documents which he files or to which he agrees, some share of responsibility also falls upon the Examining Division who did not object to the above- mentioned amendment. The question of original disclosure of a feature is certainly a matter of judgement and an amendment may be made by an Applicant believing in good faith that it is allowable. It is not a satisfactory situation that an Applicant can never be quite sure whether amendments he proposes or accepts during the examining procedure lead him into an inescapable trap.

2.2 Such situations have occurred in the past.

In the case T 231/89 (Headnote in EPO OJ 1992, No. 6) an additional limiting feature was added to the claim during examination proceedings with the EPO's approval. The Opposition Division regarded the feature as not originally disclosed and its deletion in the granted claim as contravening Article 123(3) EPC, thus not allowable, and consequently revoked the patent. The Board 3.2.2 in its decision (see paragraph 3.1) took the view that "it would be unjust do declare a patent invalid on ground of Article 100(c) EPC for the reason alone that an amendment introducing a limiting feature during prosecution with the approval or recommendation of the Office extended the subject-matter of the patent beyond the content of the application whilst the removal of the same feature is, on the other hand, to be prevented under Article 123(3) EPC. In such cases a reasonable and justified interpretation of the two sub-articles (2) and (3) of Article 123 EPC is necessary. The conjunctive application of both paragraphs taken absolutely and independently one of the other would, however, lead to a paradox result ending in the revocation of the granted patent in such cases, a measure which the Board considers not appropriate and not intended by the Convention. The contradictory situation is then only avoidable if the two paragraphs are interpreted in their mutual relationship, i.e. one being applied as primary, i.e. independent, and the other as subsidiary i.e. dependent. Two alternative possibilities then arise:

a) sub-article (2) is taken as independent, therefore the added feature is to be deleted in the granted claim notwithstanding sub-article (3) or

b) sub-article (3) is taken as independent, therefore the added feature can remain in the granted claim notwithstanding sub-article (2).

The Board is of the opinion that when such scope limiting feature in a claim is irrelevant in respect of novelty and inventive step of the claimed subject-matter, the application of alternative b) appears appropriate and reasonable. ...... On the other hand, if a factually added feature in a claim is void of technical meaning within the given context, the above mentioned alternative a), i.e. deletion of such feature, would appear justified ... ."

In the present case, the feature "substantially free of striae" is not void of technical meaning so that alternative a) given in decision T 231/89 would not apply.

In order to verify whether alternative b) applies, the Board would have to check whether the above-mentioned feature is irrelevant in respect of novelty and inventive step. However, probably as in many similar cases, novelty and inventive step have not yet been finally decided upon by the Opposition Division, and the Board would to some extent have to bind the first instance with its judgment on novelty and inventive step. Moreover, the Board is quite generally of the opinion that relevancy of a feature with respect to novelty and inventive step could not now be determined once and for all, since this situation might change in future proceedings concerned with the patent (continuation of the opposition procedure, nullity procedure). But mainly, the Board doubts that it is possible to deny the application of an unconditional Article of the EPC, even if it may appear to be less relevant in a given case.

2.3 In case T 938/90 (unpublished) the Examining Division had incorporated a feature into the main claim and granted a patent. The Opposition Division revoked the patent on the grounds that the subject-matter of the main claim extended beyond the content of the application as filed. The Board 3.3.3 took the view that the situation in this case was entirely different from that of case T 231/89, because the added feature was not technically meaningless at all and could not be disregarded when assessing novelty and inventive step. For this reason, the Board did not follow former decision T 231/89 and confirmed the revocation of the patent.

In general, such a decision may seem hard (and sometimes unjust) in view of the facts mentioned in point 2.1 above.

2.4 Also of interest might be a consideration of how German jurisprudence has dealt with problems relevant to the present case (see, in particular, the article of H. Schwanhäusser in GRUR 1991, No. 3, pages 165 to 169 and GRUR 1992, pages 295, 296 as well as the decision "Flanschverbindung" of the Bundespatentgericht, dated 28 June 1988, (GRUR 1990, No. 2, pages 114 to 116) and the book by R. Schulte, Patentgesetz, 4th edition, 1987, Carl Heymanns Verlag KG, page 234, paragraphs 4.22 and 4.23). It is interesting to note that revocation or nullity of the whole patent are not seen as an unavoidable consequence in cases of added subject-matter which cannot be deleted without extending the scope of the protection conferred by the granted claim. Indeed, it is either allowed that the added feature remains in the claim or that it is taken out, and it is tried to avoid the corresponding violation of the patent law by inserting into the description a declaration concerning the nature and legal consequences of the said feature. In the present case, the third and fifth auxiliary requests would correspond to this line of thought, although, in the view of the Board, the wording of the added sentence in the description is not what would be required.

2.5 In view of the foregoing and taking into account that

- the interpretation of the relationship between paragraph 2 and paragraph 3 of Article 123 EPC is an important point of law, which needs to be clarified,

- the revocation of the patent is considered as unsatisfactory and unjust and does not appear to be necessary to duly protect the rights of third parties, and that, in the present case,

- the added feature has a technical meaning (otherwise it could not limit the scope of protection conferred by the claim) and it cannot yet be decided whether the said feature will be irrelevant in respect of novelty and inventive step, and

- no features can be identified in the application as filed which could replace the added feature without extending the scope of protection of the claim,

the Board comes to the conclusion that a decision of the Enlarged Board of Appeal is required in order to clarify this point of law and to ensure uniform application of the law (Article 112(1)(a) EPC).