1.3.9 Claim interpretation when assessing compliance with Article 123(2) EPC

Catchword:

To assess whether an amended patent claim contains added subject-matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed (Reasons 1.3.8 to 1.3.10).

Catchword: 

1.) Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC (Reasons 3.1-3.15).  2.) Although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings (Reasons 3.16-3.16.2).  3.) 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 (Reasons 3.17).

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.

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).

Abstract

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.