6.1. Principes généraux

Résumé

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.

Résumé

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).