T 0098/13 - Inescapable trap by disclaimer

EPO T98/13
For the decision, click here

Key points

• Claim 1 as granted contained an undisclosed disclaimer in view of D1. D1 is a US patent and not an accidental disclosure. The disclaimer contravenes Art. 123(2). Simply removing it contravenes Art. 123(3) EPC.
• Hence, the case presents a cautionary example of the inescapable trap. The patentee submitted 35 auxiliary requests. None got the patent out of the trap.

Summary of Facts and Submissions

I. The proprietor appealed against the decision of the opposition division, posted on 17 October 2012, to revoke the European patent No. 1 547 443 B1. The statement of grounds of appeal was received on 25 February 2013.

II. The opposition division came to the conclusion that both the European patent as granted and the claims of the first auxiliary request contained subject-matter which extended beyond the content of the application as filed, contrary to Article 123(2) EPC, and that the proposed second auxiliary request infringed Article 123(3) EPC, while the third auxiliary request prima facie did not comply with the requirements following from Articles 84 and 123(2),(3) EPC.

III. With the statement of grounds of appeal the appellant filed thirty-five auxiliary requests.

[...]

IX. Claim 1 of the granted patent reads as follows:

"A heatable article (10) comprising:

a substrate (12, 14) having a major surface, peripheral edges (25), a first side spaced from and opposite a second side, a third side spaced from and opposite a fourth side with the first and second sides extending in a first direction and the third and fourth sides extending in a second direction with the first direction transverse to the second direction;

an electric conductive member (16) on the major surface of the substrate, the electric conductive member (16) defined by a perimeter (27) with portions of the perimeter of the electric conductive member (16) spaced from the peripheral edges (25) of the first, second, third and fourth sides of the substrate (12, 14) to provide a non-conductive strip, and

a pair of bus bars (23, 24) in electrical contact with the electric conductive member with the bus bars spaced from one another, each of the bus bars comprising:

a predetermined length with the length of one of the bus bars (23) shorter than the predetermined length of the other bus bar (24);

characterized in that

the non-conductive strip is continously [sic] provided between the periphery of the electric conductive member (16) and adjacent periphery of its respective one of the sides of the substrate;

each of the bus bars (23,24) having a pair of opposite ends (28, 29, 30, 31) with one end (29, 31) of each bus bar (23, 24) in the non-conductive strip (26) between the periphery (27) of the conductive member (16) and the periphery (25) of the first side of the substrate (14) and the opposite end of each of the bus bars in the non-conductive strip (16) between the periphery (27) of the conductive member (16) and the periphery (25) of the second side, of the substrate; and

in that one of the bus bars is between the first and second sides of the substrate and adjacent the third side of the substrate; the other bus bar is between the first and second sides of the substrate and adjacent the fourth side of the substrate; the periphery of the conductive member (16) between the first and second sides of the substrate (14) does not extend beyond the ends of the longer one (24) of the bus bars (23, 24), and the ends of the pair of bus bars do not extend into portions of the non-conductive strip between the periphery of the electric conductive member and the periphery of the third and fourth sides (17) of the substrate (12, 14)."

X. Claims 2 to 16 are dependent on claim 1.

XI. Claim 17 reads as follows:

"A method of making a heatable article (10) comprising the steps of;

providing a substrate (12, 14) having a major surface, peripheral edges (25), a first side spaced from and opposite a second side, a third side spaced from and opposite a fourth side with the first and second sides extending in a first direction and the third and fourth sides extending in a second direction with the first direction transverse to the second direction;

applying an electric conductive member (16) on the substrate (12, 14), the electric conductive member (16) having a perimeter (27) with the perimeter of the electric conductive member (16) spaced from periphery of the first, second, third and fourth sides of the substrate to provide a non-conductive strip (26);

applying a pair of bus bars (23, 24) on the electric conductive member (16) with the bus bars spaced from one another and the bus bars comprising a predetermined length with the length of one of the bus bars (23) shorter than the predetermined length of the other bus bar (24), characterized in that one of the bus bars is between the first and second sides of the substrate and adjacent the third side of the substrate; the other bus bar is between the first and second sides of the substrate and adjacent the fourth side of the substrate; wherein the periphery of the conductive member (16) between the first and second sides of the substrate (14) does not extend beyond the ends of the lounger [sic] one (24) of the bus bars (23, 24), and wherein each of the ends of each of the bus bars (23, 24) extends beyond the perimeter (27) of the electric conductive member (16) into the non-conductive strip (26) and terminates short of the peripheral edge (25) of the substrate (12, 14), and the ends of the pair of bus bars do not extend into portions of the non-conductive strip between the periphery of the electric conductive member and the periphery of the third and fourth sides (17) of the substrate (12, 14)."

Claim 18 is dependent on claim 17.

XII. In the auxiliary requests claim 1 is amended as indicated below.

a) Auxiliary request 1

Claim 1 corresponds to claim 1 of the main request wherein the feature "the ends of the pair of bus bars do not extend into portions of the non-conductive strip between the periphery of the electric conductive member and the periphery of the third and fourth sides (17) of the substrate (12, 14)" called feature J in the following, is replaced by the following feature:

"wherein the ends of the bus bars follow the shape of the bus bars which run either horizontally in a straight line or parallel to the bottom or top edge of the conductive member".

b) Auxiliary request 2

Claim 1 comprises all the features of claim 1 of the main request and replaces feature J by the following feature: "wherein the one bus bar follows the shape of the conductive member at the third side and the other bus bar follows the shape of the conductive member at the fourth side" and adds that the one of the bus bars, which is between the first and second sides of the substrate and adjacent the third side of the substrate is "extending along the third side of the conductive member", while the other bus bar is "extending along the fourth side of the conductive member".

c) Auxiliary request 3

Claim 1 comprises the features of both claims 1 of the auxiliary requests 1 and 2.

d) Auxiliary request 4

Claim 1 corresponds to claim 1 of the main request wherein feature J is replaced by the following feature:

"the heatable article has a vision area having a top edge and a bottom edge and wherein the conductive member has a top edge beyond or adjacent the top edge of the vision area and a bottom edge below or adjacent the bottom edge of the vision area and the top bus bar is adjacent the top edge of the conductive member and the bottom bus bar is adjacent the bottom edge of the conductive member with the bus bars outside the vision are [sic], and wherein the bottom edge of the conductive member is spaced a greater distance from the bottom edge of the vision area than the bottom bus bar and the top edge of the conductive member is spaced a greater distance from the top edge of the vision area than the top bus bar."

e) Auxiliary requests 5 and 6

Claim 1 of auxiliary request 5, respectively auxiliary request 6, corresponds to claim 1 of the auxiliary request 4 limited to "a vehicular transparency", respectively "a heatable windshield" rather than a "heatable article".

f) Auxiliary requests 7, 8 and 9

Claim 1 of auxiliary request 7, respectively auxiliary requests 8 and 9, corresponds to claim 1 of auxiliary request 4, respectively auxiliary requests 5 and 6, wherein the term "adjacent" characterising the position of the edges of the vision area with respect to the edges of the conductive member is deleted.

g) Auxiliary requests 10 to 15

Claim 1 of the auxiliary request 10, respectively auxiliary requests 11 to 15 comprises all the features of auxiliary request 4, respectively auxiliary requests 5 to 9, and adds that the top bus bar is "following the shape of the top edge of the conductive member", and the bottom bus bar is "following the shape of the bottom edge of the conductive member", while the feature replacing feature J specifies further "whereby the top bus bar is spaced from the top edge of the conductive member and the bottom bus bar is spaced from the bottom edge of the conductive member".

h) Auxiliary request 16

Claim 1 of the auxiliary request 16 comprises all the features of claim 1 of auxiliary request 13 and specifies further that the top bus bar is "extending along the third side of the conductive member", and the bottom bus bar is "extending along the fourth side of the conductive member".

i) Auxiliary request 17

The heatable automotive laminated transparency article claimed in claim 1 of auxiliary request 17 is characterised in that it is a heatable laminated windshield, which comprises the features of claim 1 of auxiliary request 4 wherein the terms "conductive member" are replaced by the term "conductive coating" and the term "beyond" in the feature replacing feature J is deleted, and the following feature is added in the pre-characterising part of the claim:

"wherein the bus bars (23, 24) have different lengths and the coating (16), especially being a continuous coating, has a top side, a bottom side, a right side and a left side with one (23) of the bus bar [sic] (23, 24) extending along the top side and the other one (24) of the bus bars (23, 24) extending along the bottom side and portions of the coating (16) between the bus bars (23, 24) do not extend beyond the ends (30, 31) of the longer bus bar (24)".

j) Auxiliary requests 18 to 21

Claim 1 of auxiliary request 18, respectively auxiliary requests 19, 20 and 21 comprises all the features of claim 1 of the main request whereby feature J is replaced by the following feature:

"wherein the ends of the bus bars terminate short of the peripheral edge of the substrate" (auxiliary request 18), respectively by this former feature together with the following feature:

"wherein the ends of the bus bars follow the shape of the bus bars which run either horizontally in a straight line or parallel to the bottom or top edge of the conductive member" (auxiliary request 19), respectively the former feature and the following further features:

the top bus bar is "extending along the third side of the conductive member" and the bottom bus bar is "extending along the fourth side of the conductive member" and "wherein the one bus bar follows the shape of the conductive member at the third side and the other bus bar follows the shape of the conductive member at the fourth side" (auxiliary request 20), respectively a combination of the features of auxiliary requests 19 and 20 (auxiliary request 21).

k) Auxiliary requests 22 to 33 and 35

Claim 1 of auxiliary request 22, respectively auxiliary requests 23 to 33 and 35 corresponds to claim 1 of auxiliary request 4, respectively auxiliary requests 5 to 15 and 17 with the following added feature:

"wherein the ends of the bus bars terminate short of the peripheral edge of the substrate".

i) Auxiliary request 34

Claim 1 of auxiliary request 34 adds to claim 1 of auxiliary request 33 that the the top bus bar is "extending along the third side of the conductive member" and the bottom bus bar is "extending along the fourth side of the conductive member".

j) Claim 1 of auxiliary request 36 comprises the features of claim 1 of the main request wherein feature J is replaced by the following feature: "wherein the bus bars and ends of the bus bars are configured as illustrated in figure 1 or figure 2 of the drawings".

h) Each of the auxiliary requests comprises an independent method claim amended accordingly.

[...]

Reasons for the Decision

1. The appeal is admissible.

2. The contested feature, called feature J, is present in independent claims 1 and 17 of the granted patent, and reads as follows:

"the ends of the pair of bus bars do not extend into portions of the non-conductive strip between the periphery of the electric conductive member and the periphery of the third and fourth sides (17) of the substrate (12, 14)".

3. Feature J does not fulfill the requirements for a disclaimer following from decisions G1/03, G2/03 and G2/10 (cf. Case Law of the Boards of Appeal of the European Patent Office, 7th edition 2013, II.E.1.4, pages 386 and 387) for the following reasons:

3.1 Feature J is not clear, because the portions of the non-conductive strip between the periphery of the electric conductive member and the periphery of the third and fourth sides of the substrate are not defined. It is e. g. not clear if the portion at the corner of the first and fourth sides should belong to a portion between the fourth side and the conductive member 16 or a portion between the first side and the conductive member.

3.2 The appellant in the last two sentences of page 15 of the grounds of appeal admits that feature J had been introduced in claim 1 during examination to distinguish claim 1 from the disclosure of D1 (US 5 128 513).

However D1 cannot be considered to be an accidental anticipation since it discloses a bus bar arrangement presenting recesses at the ends of the upper bars to prevent "hot spots" [...] i. e. D1 proposes a solution to the same problem, which is highly relevant for the assessment of novelty and inventive step of the present invention.

Therefore, feature J does not fulfill the requirements for a valid disclaimer.

4. Feature J is not redundant with feature F1. Following feature F1 one end of the bus bars is in the non-conductive strip between the periphery of the conductive member and the periphery of the first side of the substrate, while the other end is in the non-conductive strip between the periphery of the conductive member and the periphery of the second side of the substrate. The portions mentioned therein are not defined in the original application. The repetition of the same reference numbers on figure 2 does not help defining these portions. Hence these portions may be seen as having a part in common with the portions between the periphery of the conductive member and the periphery of the third side, respectively the fourth side of the substrate. These common parts are the corners of the non-conductive strip. Hence, feature F1 does not exclude that end portions of the bus bars be located in portions of the substrate defined by feature J. Thus feature J is not considered as redundant with feature F1.

5. In an attempt to demonstrate that feature J would be supported by the original description, the appellant referred to page 10, lines 11 to 17 and 25 to 29 which read as follows: [...]

Thus the Board shares the view of the opposition division that feature J of granted claims 1 and 17 is not directly and unambiguously derivable from the original application as filed and therefore extends the subject-matter of the patent beyond the content of the application as filed, contrary to Article 123(2) EPC. Thus, the ground of Article 100(c) EPC prejudices the maintenance of the patent unamended.

6. Auxiliary requests 4 to 15, 17, 22 to 33 and 35

6.1 Feature J extends the subject-matter of claim 1 beyond the content of the application as filed and merely removing it would contravene Article 123(3) EPC. Hence a way-out of this so-called inescapable trap would be to replace feature J by features disclosed in the original application and providing at least the same limitation to the subject-matter of claim 1, i. e. replacing feature J by features defining the position of the ends of the pair of bus bars such that the ends do not extend into portions of the non-conductive strip between the periphery of the electric conductive member and the periphery of the third and fourth sides of the substrate.

6.2 The appellant filed therefore the auxiliary requests 4 to 15, 17, 22 to 33 and 35 with the statement of grounds of appeal. In each of these requests feature J is replaced by one of the following features or a combination of these features:

(a) "wherein the bus bars (23, 24) have different lengths and the coating (16), especially being a continuous coating, has a topside, a bottom side, a right side and a left side with one (23) of the bus bar [sic] (23, 24) extending along the top side and the other one (24) of the bus bars (23, 24) extending along the bottom side and portions of the coating (16) between the bus bars (23, 24) do not extend beyond the ends (30, 31) of the longer bus bar (24)" (auxiliary requests 17 and 35);

(b) the heatable article, vehicular transparency or windshield "has a vision area having a top edge and a bottom edge and wherein the conductive member has a top edge beyond or adjacent the top edge of the vision area and a bottom edge below or adjacent the bottom edge of the vision area and the top bus bar is adjacent the top edge of the conductive member and the bottom bus bar is adjacent the bottom edge of the conductive member with the bus bars outside the vision are [sic], and wherein the bottom edge of the conductive member is spaced a greater distance from the bottom edge of the vision area than the bottom bus bar and the top edge of the conductive member is spaced a greater distance from the top edge of the vision area than the top bus bar" (auxiliary requests 4 to 15, 17, 22 to 33 and 35);

(c) the top bus bar is "following the shape of the top edge of the conductive member", the bottom bus bar is "following the shape of the bottom edge of the conductive member" and "whereby the top bus bar is spaced from the top edge of the conductive member and the bottom bus bar is spaced from the bottom edge of the conductive member" (auxiliary requests 10 to 15); and

(d) "whereby the ends of the bus bars terminate short of the peripheral edge of the substrate" (auxiliary requests 22 to 33 and 35).

6.3 Feature (a) does not exclude that the ends of the bus bars extend into the portions of the substrate mentioned in feature J. It does not exclude either that the bus bars could be running along the topside and bottom side of the conductive member or coating but at least partly in the portions defined by feature J.

6.4 This last possibility is excluded by feature (b) (with or without the term adjacent) which defines the position of the bus bars as being inside the conductive member. Feature (b) does not however mention the ends of the bus bars and does not exclude that the ends of the bus bars extend into the portions of the non-conductive strip that are specified in feature J.

6.5 Feature (c) does not add anything to features (a) and/or (b). This feature defines that the bus bars follow the edges of the conductive member. It does not define the ends of the bus bars and does not therefore exclude that the ends of the bus bars extend into the portions of the non-conductive strip defined by feature J.

6.6 Feature (d) does not define which side of the periphery the bus bars terminate short of, and therefore does not exclude the third of fourth sides of the periphery.

6.7 Since none of these features define a straight extension of the bus bars up to their ends in the areas of the non-conductive strip between the conductive member and the first or second sides of the substrate, any combination of these features would also not be reflecting the meaning of feature J. Therefore, feature J having been removed from claim 1 of each of auxiliary requests 4 to 15, 17, 22 to 33 and 35, these requests do not meet the requirement of Article 123(3) EPC.

7. In claim 1 of the auxiliary requests 1 to 3, 16, 18 to 21 and 34 filed with the letter dated 2 July 2015, feature J is replaced by one of the following features or a combination thereof:

(aa) "wherein the ends of the bus bars follow the shape of the bus bars which run either horizontally in a straight line or parallel to the bottom or top edge of the conductive member" (auxiliary requests 1, 3, 19 and 21);

(bb) "wherein the one bus bar follows the shape of the conductive member at the third side and the other bus bar follows the shape of the conductive member at the fourth side" (auxiliary requests 2, 3, 20 and 21) and the one bus bar is "extending along the third side of the conductive member" and the other bus bar is "extending along the fourth side of the conductive member" (auxiliary requests 2, 3, 16, 20 and 34);

(cc) "wherein the ends of the bus bars terminate short of the peripheral edge of the substrate" (auxiliary requests 18 to 21, 34 and 35);

(dd) the one bus bar is "following the shape of the conductive member at the third side" and the other bus bar is "following the shape of the conductive member at the fourth side" (auxiliary requests 20 and 21);

(ee) "the heatable windshield has a vision area having a top edge and a bottom edge and wherein the conductive member has a top edge beyond the top edge of the vision area and a bottom edge below the bottom edge of the vision area and the top bus bar is adjacent the top edge of the conductive member and following the shape of the top edge of the conductive member and the bottom bus bar is adjacent the bottom edge of the conductive member and following the shape of the bottom edge of the conductive member with the bus bars outside the vision are [sic], and wherein the bottom edge of the conductive member is spaced a greater distance from the bottom edge of the vision area than the bottom bus bar and the top edge of the conductive member is spaced a greater distance from the top edge of the vision area than the top bus bar, whereby the top bus bar is spaced from the top edge of the conductive member and the bottom bus bar is spaced from the bottom edge of the conductive member (auxiliary requests 16 and 34)."

7.1 Feature (aa) attempts to define the shape of the ends of the bus bars with respect to the shape of the bus bars. The term "shape" is vague and could encompass e. g. the width or section of the end portions of the bus bars which would follow the width or section of the bus bars. The term shape in this feature cannot immediately be understood as referring to the horizontal or straight form of the bus bars. This feature does not exclude the ends of the bus bars being not aligned with the other parts of the bus bars. Therefore this feature does not define the ends of the bus bars as not extending into the portions defined by feature J.

7.2 Feature (cc) does not exclude that the ends of the bus bars terminate short of the periphery of the substrate on the third or fourth sides which are portions excluded by feature J.

7.3 Features (bb), (dd) and (ee) do not mention the ends of the bus bars and therefore cannot help replacing feature J even in combination with one of the features (aa) and (cc).

8. The appellant filed a thirty-sixth auxiliary request wherein feature J is replaced by the following expression: "wherein the bus bars and ends of the bus bars are configured as illustrated in figure 1 or figure 2 of the drawings".

It is agreed with the appellant that this feature refers specifically to the bus bars and their ends and that the reference to the figures should be read in the light with the application. Following the reasoning of the appellant the features which should be taken from the figures should be features of the bus bars which help solving the problem of hot spots. With respect to the solution of this problem the original description at page 9, lines 27 to 30, recites that "in accordance to the teachings of the invention, having the non-conductive strip provides an area into which the end portions of the bus bar are extended". At page 11, lines 12 to 18, the description further states that the "length of the end portions 28, 29, 30 and 31 of the bus bars 23 and 24 extending into the non-conductive strip 26 is not limiting to the invention. As long as the ends of the bus bars extend beyond the perimeter of the coating, the temperature and area of the hot spots decrease as compared to hot spots at the end portions of the bus bars terminating short of the perimeter of the conductive member".

Thus, the original application teaches that it only matters that the ends of the bus bars are extended into the non-conductive strip, not into what particular portions of the non-conductive strip they are extended. Thus, taking account of the description a person skilled in the art would have read out of the figures that the bus bars should extend into the non-conductive strip as taught in the application, not unambiguously that they should terminate shortly beyond the perimeter of the conductive member as suggested by the appellant. A person skilled in the art would not have unambiguously derived from the figures that he should not extend the ends of the bus bars into the portions defined in feature J. Furthermore, with the added feature of claim 1 of auxiliary request 36, it is unclear if the scope is restricted to bus bars presenting the connections shown in figures 1 and 2 even if these connections are indicated only schematically. The scope of claim 1 of auxiliary request 36 is therefore unclear.

8.1 Auxiliary requests 1 to 3, 16, 18 to 21, 34 and 36 were filed with the letter of 2 July 2015. None of the claims 1 of these requests comprises features which would exclude that that the ends of the bus bars extend in the portions of the non-conductive strip defined by feature J. Hence these auxiliary requests, which are considered as late filed and infringing Article 123(3) EPC, were not admitted into the proceedings.

9. Since the main request contravenes Article 100(c) EPC and the auxiliary requests either contravene Article 123(3) EPC or have not been admitted into the proceedings, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.