T 0941/11 - Apparatus features in method claim disregarded

EPO T 941/11

For the decision, click here.

Key point

• In this decision, apparatus features in a method claim are disregarded by the Board for inventive step.
• As a comment, it is rather surprising to me that a Board disregards features of a claim. Perhaps this is something not unusual in mechanical engineering, as the Board does not cite any case law in support of its approach, suggesting it is run-of-the-mill. 

Quote

"2.2.3 In the present case claim 1 (of all requests) is only cast as a method claim as such []. Any apparatus features appearing in such a method claim merely set out a given technical context in which the method steps are to be carried out without themselves contributing as such to the patentability of the claimed method steps. [] A method claim such as claim 1 (all requests) can only be evaluated for patenta­bi­lity on the basis of its technical method steps."

Summary of Facts and Submissions

I. Both parties lodged respective appeals against the decision of the opposition division proposing to maintain the European patent No. 0 940 258 in amended form. [...]

"A method for refilling a ink container (12) for a printing system (10), the ink container (12) having a housing (72), an ink reservoir (22) located within the housing (72) and having a fluid outlet (20) and a sealed fill port (122), a cap (116) mounted to the housing (72) which encloses the fill port (122), a memory device (26) for communicating information concerning characteristics of the ink in the ink container (12) to the printing system (10), and at least one adhesive film (118) providing structural support between the housing (72) and the cap (116), the method comprising:

(a) disabling the structural support provided by the adhesive film (118) and separating the cap (116) from the housing (72);

(b) creating an opening in the ink reservoir (22);

(c) refilling the ink reservoir (22) through the opening;

(d) resealing the opening in the ink reservoir (22); and

(e) reassembling the cap (116) to the housing (72); and

(f) refurbishing the memory device (26) for providing enabling information to the printing system (10) to enable the printing system (10) to operate."

[...]

Reasons for the Decision

[...]

2. Claim 1 - Inventive step

All requests

2.1 In its fax of 6 February 2015, appellant II provided comments in response to the boards provisional opinion to the effect that:

- the board has not specified which prior art is considered as the closest prior art;

- the board has not "duly considered" the structural features contained in claim 1, because although claim 1 is directed to a method, the device features referred to in the claim "must" be considered when assessing inventive step. Appellant II considers that there "is no legal basis to simply disregard features of a device used in a method when assessing inventive step. It is established practice at the EPO that if a product is new and inventive, then the use of the product - and refurbishing must be considered as a specific way of using an ink container - is automatically new and inventive as well, as it must be (see also Guidelines G-VII 13, which although not binding for the Board, still reflects the practice of the EPO and the Case Law of the Boards of Appeal)".

2.2 The above points are respectively addressed as follows:

2.2.1 In view of the generic nature of the claimed subject-matter, the closest prior art consists of the common general knowledge that the person skilled in the art of refurbishing ink cartridges is familiar with the refilling ink containers for a printing system. Although, this has not been challenged by the parties, evidence therefore is provided by the magazine extracts A. The associated objective problem is to specify the required method steps.

In addition, as pointed out in the board's provisional opinion annexed to the summons to oral proceedings, further general knowledge of this skilled person is illustrated in document D3, (see column 9, lines 16 to 20 for the need to remove and put back an enclosure for access and column 15, lines 45 to 55 for the need of an opening for inserting ink and sealing it up afterwards) and document D4 (see column 7, lines 19 to 30; column 8, lines 5 to 13 and 39 to 50 for ink containers with a memory device providing enabling information to the printing system).

2.2.2 The only legal basis appellant II has invoked for its position is the case of a claim for a method of using an apparatus being carried by the inventive step of the corresponding apparatus claim. Appellant II's position concerning the legal basis is flawed, because in the present case where method claim 1 does not refer to the use of an apparatus set out in a separate apparatus claim. Moreover, the board would be required to speculate as to the actual wording (Article 84 EPC 1973, first sentence) of a hypothetical apparatus claim consisting only of apparatus features mentioned in method claim 1 and then, of its own motion, proceed to evaluate the patentability of this speculative apparatus claim. Such scenario is contrary to the principle of party disposition, because the board would effectively be examining (a speculative wording for) an independent apparatus claim which has not as such actually been requested by appellant II. It is also contrary to the principle of impartiality, since the board effectively would have to (specula­tive­ly) take over appellant II's task of devising a wording for the missing apparatus claim, thereby taking over the role of appellant II to the detriment of appellant I. Furthermore, appel­lant II's proposed approach confuses method claims (to be characterised by technical method steps) and apparatus claims (to be characterised by technical apparatus features) into a claim of unclear category in which the method steps are supposedly rendered inventive by apparatus features. Such a claim of unclear category is contrary to the clarity requirement of Article 84 EPC 1973 and thus could not have been granted.

2.2.3 In the present case claim 1 (of all requests) is only cast as a method claim as such and is not cast a method of using an apparatus claimed in an separate apparatus claim. Any apparatus features appearing in such a method claim merely set out a given technical context in which the method steps are to be carried out without themselves contributing as such to the patentability of the claimed method steps. In consequence, appellant II's arguments concerning any potential contribution of any apparatus features mentioned in method claim 1 towards the inventiveness of the method steps of method claim 1 cannot be taken into consideration. A method claim such as claim 1 (all requests) can only be evaluated for patenta­bi­lity on the basis of its technical method steps.