6. Interpretation of claims
T 566/20 × View decision
Abstract
In T 566/20 the parties disagreed on the interpretation of the feature "the position information in association with the serial number information output from the position control device".
The appellant (opponent) submitted that the position control device could output the serial number information, possibly with the position information. In their opinion, this interpretation was grammatically correct, made technical sense and was not disclosed in the application as originally filed.
In the respondent's view, it was apparent from the claim that the output from the position control device concerned the position information in association with the serial number information. The respondent also noted that this interpretation was in accordance with the disclosure of the application as filed.
The board concurred with the appellant that outputting both the position information and the associated serial number information from the position control device was technically sensible. It further agreed with the appellant that the fact that the claim did not include a step of receiving serial number information did not necessarily mean that the position control device did not receive this information. Outputting both the position information and the serial number information allowed the vision measuring system to match position information with image information by unambiguously correlating serial number information associated with, or included in, each of them. This interpretation did not appear to give rise to incompatibilities with the remaining features of the claim.
Moreover, the board endorsed the view that a patent proprietor would be awarded an unwarranted advantage if it were allowed to restrict the claimed subject-matter by discarding at will technically reasonable interpretations in view of the description (see T 1127/16 and T 169/20). Therefore, the fact that the description and drawings support one interpretation of an ambiguous feature was not sufficient for other interpretations of the ambiguous feature that are technically reasonable in the context of the claim to be discarded.
T 1886/22 × View decision
Abstract
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).
6.1. General principles
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
According to the established case law, the skilled person should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding (see inter alia T 190/99, T 920/00, T 500/01, T 1023/02, T 749/03, T 405/06, T 2480/11, T 2456/12, T 383/14, T 1477/15, T 448/16, T 111/22).
A considerable number of decisions have held that the skilled person, when considering a claim, should rule out interpretations which are illogical or which do not make technical sense (see inter alia T 190/99, T 552/00, T 920/00, T 1023/02, T 749/03, T 859/03, T 1537/05, T 1204/06, T 383/14, T 681/15). Some decisions (T 1408/04, T 1582/08, T 493/09, T 5/14) have emphasised that this is understood to mean only that technically illogical interpretations should be excluded. A mind willing to understand does not require that a broad term need be interpreted more narrowly (even if, as in the case underlying T 1408/04, the narrower interpretation would refer to a structure which is very common, but not exclusive, in the technical field concerned). In T 1514/14 the board noted that when a claim requires interpretation, the skilled person will endeavour to interpret it in a technically sensible manner and in the overall context. However, this of course did not mean that only those interpretations which fulfil the requirements of the EPC can be considered technically sensible.
It is a well-established principle laid down in the boards' case law that a non-specific definition in a claim should be given its broadest technically sensible meaning in the context of that claim (see e.g. T 79/96, T 596/96, T 1266/19). T 1553/19 applied this rule of claim construction to a feature defined in a negative manner ("in absence of […] metal organic catalyst"). The board explained that the broadest scope of the claim corresponded to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded.
In T 1354/18 the board pointed out that patent claims conveyed a technical teaching and were directed at a reader with technical knowledge in the field of the application. The correct interpretation of claim features must therefore always be based on their technical literal meaning in the overall technical context of all features from the perspective of a person skilled in the art and not on a purely linguistic analysis of the wording of individual terms. The terms used in patent documents should therefore primarily be given the meaning they usually conveyed in the relevant state of the art. This could easily lead to a situation where the skilled person in the relevant technical field understood certain terms differently on the basis of her/his general technical knowledge than on the basis of a purely linguistic analysis. Moreover, the patent specification itself could attribute a specific meaning to individual features that deviated from a purely linguistic understanding; in this respect, a patent document could be its own dictionary. The interpretation must lead to a technically sensible result, whereby the claims should normally be attributed the broadest technically sensible meaning. The linguistic analysis of a feature could at best complement or confirm the analysis of the technical meaning, but could not replace it. See also T 2007/19, T 1382/20.
In T 42/22 the board considered whether an independent product claim 1 was to be interpreted in the context of method claim 6. In the board's view, the interpretation of product claim 1 could not be dependent on whether or not method claim 6 was present in the claim set. Instead, each claim should be interpreted independently. The board did not find in Art. 84 EPC support for the contention that all claims needed to be interpreted together. In addition, there was a technically sensible interpretation of claim 6 which was also compatible with the selected interpretation of claim 1. The board pointed out that in line with the case law, a technically sensible interpretation could not be disregarded even if additional interpretations were possible.
On the consultation of the description and drawings to interpret the claims, see in this chapter II.A.6.3. "Using description and drawings to interpret the claims".
In T 1513/12 the board noted that an interpretation of a claim agreed by the parties to the proceedings was not to be regarded as binding on the board: the "principle of party disposition" was not to be understood as meaning that the parties to the proceedings could choose an interpretation of the patent which, although it might be satisfactory for them, might have implications for others not party to the proceedings. Confirmed in T 2319/18 and T 1024/19.
In T 1473/19 the board pointed out that claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts which may be supported by evidence submitted by the parties. In T 450/20 and T 1494/21 the board concurred with this statement and it stressed that 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. Relying on documentary evidence is not a precondition for the adoption of a certain claim interpretation by a board of appeal. In this context evidence can only be relied upon to prove facts, such as how the person skilled in the art understood a certain technical term in a certain prior-art document at a certain point in time, but not to ultimately ascertain whether a certain claim interpretation is correct or not.
See also chapter I.C.8.1.3c) "Interpretation of process claims".
- T 566/20
- T 1886/22
- 2023 compilation “Abstracts of decisions”
- Annual report: case law 2022