1.3.9 Claim interpretation when assessing compliance with Article 123(2) EPC
T 367/20 × View decision
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).
T 1473/19 × View decision
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).
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).
In T 23/02 the board said that although the claims as originally filed contained no reference to a method of measurement for the average particle diameter, that did not mean that any method could be used to determine that parameter. If anything, the claims raised doubts as to how the average particle diameter had to be determined, in particular because the skilled person would be aware that the measuring method is decisive in particle size analysis. Therefore the skilled person would use the description and drawings when deciding how the average particle diameter was to be measured. They would then conclude that, when properly interpreted in light of the original description, the claims as originally filed contained restrictions as to the measuring method for the average particle diameter. For the case law on the need to include the measuring method of a parameter in the claim, see however chapter II.C.6.6.9 "Analytical measuring methods".
In T 1946/10 the board held that according to established jurisprudence the skilled person interprets a claim with a mind willing to understand, so as to arrive at an interpretation which is technically sensible and takes into account the whole disclosure of the patent. Though he strives in principle to understand a claim within the wording and terms of the claim itself, he may, where he encounters ambiguities, need to consult the description and drawings to gain a better understanding. Based on the understanding of the added feature gained by this claim interpretation, the board arrived at the conclusion that adding the feature to claim 1 as originally filed in isolation from its structural and functional context presented a new teaching not originally disclosed. In the same vein, see T 2350/15 with reference to T 1592/14.
In T 516/18, in order to be able to compare the claimed subject-matter with the disclosure provided by the application as filed, the board first determined the effective subject-matter resulting from the amendments in the original claims. The board recalled that, the claim must be read and construed by a person skilled in the art with a mind willing to understand, thereby giving the words the meaning and the scope that they have in the technical field relevant for the invention, including in view of the technical content of the claim. However, according to established case law of the boards of appeal, using the description and the drawings to interpret the claims was considered admissible and even necessary if the person skilled in the art, in an attempt to construe the claim with a mind willing to understand, was confronted with obscure and/or inconsistent features. In the view of the board, this was presently the case.
In T 1127/16, however, the board held that the fact that a claim of a patent was to be construed by a mind willing to understand (T 190/99) did not mean that the description and the drawings had automatically to be consulted when an "ambiguous" feature (i.e. a feature which at least theoretically allows more than one interpretation) occurred in the claim, or where the claim as a whole included one or more inconsistencies, in order to resolve that unambiguity or inconsistency. Rather, the claim should essentially be read and interpreted on its own merits (T 1018/02, T 1279/04, T 1404/05, T 197/10). The board underlined that otherwise an applicant (patent proprietor) could arguably dispense with providing a clear and unambiguous formulation of claim features, e.g. during the grant proceedings, in order to be able to fall back on a more description-based interpretation at will during subsequent opposition proceedings. Analysing claim 1 of the main request on a linguistic level, the board decided that the feature at issue would be read in a certain way. On a technical level, the skilled person would also conclude that this interpretation was entirely clear, coherent, and consistent with the other features of claim 1. This interpretation of the feature at issue lead, however, to the infringement of Art. 123(2) EPC, since no such feature was disclosed in the application as filed.
In T 195/20 the board held that the issue was not how a linguist would construe the meaning of the sentence in question but how the person skilled in the art would. While a linguistic analysis could be helpful in determining how a skilled person would understand a phrase in a claim, the skilled person would not stop at determining the semantic roles of words in a phrase but would interpret the phrase in the context of the claimed subject-matter and the application as a whole.
On a related issue, see also chapter II.E.1.4.7 "Elimination of inconsistencies and unclear features" below.