Claims, descriptions, and drinks dispensers at the EPO
When determining what is made available to the public as part of the 'state of the art' by a prior art patent document, how should one analyse a combination of features found in the claims rather than the description? The recent decision of the Technical Board of Appeal in T 1658/12 - 3.4.03 (concerning beverage dispensing machines) provides guidance to the effect that it is not only what is said that is important, but also where it is stated in the patent document. Katfriend Heiko Sendrowski explains more, and concludes that the analysis is problematic:
"Background
The applicant claimed protection for a drinks dispenser system comprising a dispenser and a processor so that once user-specific information is provided to the processor, the dispenser is actuated automatically. The Examining Division refused the application in view of a prior art WO publication (D2). The applicant had argued before the Examining Division that the invention described in D2 required a further technical feature (in essence, selection by the user), whereas the claims of the patent application stipulated that the dispenser is actuated "automatically" without any further user intervention. The Examining Division disagreed, and the applicant appealed.
Decision
The Board of Appeal emphasized that each document must be interpreted by respecting the context of each part thereof to determine its true meaning. The claims of the prior art document according to the Board chiefly serve to define the subject matter for which protection is sought. The skilled person thus understands that claims may artificially combine (and omit) features of an invention to maximize scope of protection such that claims may not "truly correspond to the technical teaching of the document" (see sec. 3.8). In the present case, all examples required a further technical feature ("user intervention"). The skilled person would thus understand that the claims of D2 do not unambiguously disclose an embodiment without the additional feature (see sec. 3.9). The appeal was therefore allowed given that the subject matter of claim 1 involved an inventive step.
Comment
The analysis is problematic on various levels: The Board rejects certain parts of the description of D2 because those parts "merely recite the features of the claims". The decision is also difficult to reconcile with the principle that the technical teaching of a document is not limited by the examples (T 12/81, sec. 7) and that every information in the claims enabling a person skilled in the art to carry out an invention must be considered disclosed. In a case where the claimed invention differs from the alleged prior art by an omission or exclusion of a feature it is not tenable to argue that the prior art inherently or implicitly comprises the very feature in question because the skilled person would have added that feature anyway, even though such addition is not necessary to define what is meant by an explicit term, or to correct a technical error or implausibility.
The Board implicitly extends the requirement of support - which burdens patent applicants - to any prior art patent literature, removing from the prior art all clear, workable technical teaching broader than some other technical teaching that happens to be comprised in the same document. Novelty is not a question of whether or not the author of a prior art document deserved being granted a claim for a particular subject matter, and disclosure does not require that information to conform to some other teaching explained in greater detail. In effect, the Board extends the concept of "accidental disclosure" from the realm of inventive step to that of novelty. It would be interesting to hear the Board's comments on the reciprocal case: Can an applicant defend his application against an objection of lack of unity by arguing that the pending claims implicitly comprise features described in conjunction with preferred examples?"
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| Choose me! |
The applicant claimed protection for a drinks dispenser system comprising a dispenser and a processor so that once user-specific information is provided to the processor, the dispenser is actuated automatically. The Examining Division refused the application in view of a prior art WO publication (D2). The applicant had argued before the Examining Division that the invention described in D2 required a further technical feature (in essence, selection by the user), whereas the claims of the patent application stipulated that the dispenser is actuated "automatically" without any further user intervention. The Examining Division disagreed, and the applicant appealed.
Decision
The Board of Appeal emphasized that each document must be interpreted by respecting the context of each part thereof to determine its true meaning. The claims of the prior art document according to the Board chiefly serve to define the subject matter for which protection is sought. The skilled person thus understands that claims may artificially combine (and omit) features of an invention to maximize scope of protection such that claims may not "truly correspond to the technical teaching of the document" (see sec. 3.8). In the present case, all examples required a further technical feature ("user intervention"). The skilled person would thus understand that the claims of D2 do not unambiguously disclose an embodiment without the additional feature (see sec. 3.9). The appeal was therefore allowed given that the subject matter of claim 1 involved an inventive step.
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| The IPKat's (uninventive) drinking dispenser |
The analysis is problematic on various levels: The Board rejects certain parts of the description of D2 because those parts "merely recite the features of the claims". The decision is also difficult to reconcile with the principle that the technical teaching of a document is not limited by the examples (T 12/81, sec. 7) and that every information in the claims enabling a person skilled in the art to carry out an invention must be considered disclosed. In a case where the claimed invention differs from the alleged prior art by an omission or exclusion of a feature it is not tenable to argue that the prior art inherently or implicitly comprises the very feature in question because the skilled person would have added that feature anyway, even though such addition is not necessary to define what is meant by an explicit term, or to correct a technical error or implausibility.
The Board implicitly extends the requirement of support - which burdens patent applicants - to any prior art patent literature, removing from the prior art all clear, workable technical teaching broader than some other technical teaching that happens to be comprised in the same document. Novelty is not a question of whether or not the author of a prior art document deserved being granted a claim for a particular subject matter, and disclosure does not require that information to conform to some other teaching explained in greater detail. In effect, the Board extends the concept of "accidental disclosure" from the realm of inventive step to that of novelty. It would be interesting to hear the Board's comments on the reciprocal case: Can an applicant defend his application against an objection of lack of unity by arguing that the pending claims implicitly comprise features described in conjunction with preferred examples?"
