19 Jul 2018

T 1516/14 - Superfluous feature

Key point

  • Claim 1 as granted specifies a feature that can be read in two ways. The first way is not supported by the other claims. The second way is inherently true, namely that the scalding medium has a dew point not exceeding the wet bulb temperature. Does this lead to insufficient disclosure?
  • The Board finds it does not. " In the Board's view the skilled person approaches a claim from a purely technical viewpoint, not the patent technical or patent legal viewpoint of the patent professional. That a feature may not contribute to an invention because it merely expresses the technically obvious does not make it illogical or not credible in a purely technical sense. Naturally, from the point of view of an opponent or a diligent examiner patentability cannot credibly rely on such a feature, but that is not relevant to the question under consideration." 
  • "  As already explained, the dew point temperature of a fluid-vapour/gas medium never exceeds the wet bulb temperature. Therefore, far from the skilled person being unable to carry out the aspect of the invention defined by this particular feature, they can but achieve this feature when composing a partially or almost fully saturated scalding medium as the claim requires. Therefore, this aspect of the invention is sufficiently disclosed." 

EPO T 1516/14 - link

"1. Device  for scalding poultry , comprising:
- a conditioning space for composing a scalding medium,
- a processing space  provided with transport means  which define a transport path ...  and ... the device  is for scalding poultry  comprising a full plumage,
characterized in that
the conditioning space  is for composing a partially or almost fully saturated scalding medium with a dew point lying in the range of [49-61]°C and not exceeding the wet bulb temperature, and ...".

Reasons for the Decision
3.4 The Board does not share the respondent-opponent's view that the skilled person would reject the second reading of the relevant claim feature (dew point not exceeding wet bulb temperature) as being illogical or not credible, as it does not contribute anything to the invention.
In the Board's view the skilled person approaches a claim from a purely technical viewpoint, not the patent technical or patent legal viewpoint of the patent professional. That a feature may not contribute to an invention because it merely expresses the technically obvious does not make it illogical or not credible in a purely technical sense. Naturally, from the point of view of an opponent or a diligent examiner patentability cannot credibly rely on such a feature, but that is not relevant to the question under consideration.
In the Board's view the the skilled person, exactly because they are first and foremost interested in making technical sense of a claim, will on first reading always reject a technically non-sensible reading in favour of a sensible one if they have to choose between different possible readings. According to established jurisprudence (see Case Law of the Boards of Appeal, 8th edition, 2016 (CLBA), II.A.6.1, and the decisions cited therein), when considering a claim, the skilled person thus rules out interpretations which are illogical or which do not make technical sense. For them, a reading that results in a technical impossibility (scalding medium must be both saturated and non saturated) is technically non-sensible, i.e. technically illogical or not credible. It may be that when they read the claim in the light of the whole disclosure they may revise that first reading, because for example the description clearly supports the technically non-sensible reading. That is not the case here, where as stated there is no support anywhere else in the patent for the technically non-sensible reading that scalding temperature does not exceed wet bulb temperature.
In particular, from their technical knowledge of psychrometry, the skilled person is familiar with the well established and generally known meanings of the terms "dew point" and "wet bulb temperature" and they know from their general knowledge that the dew point temperature never exceeds the wet bulb temperature, because it is an inherent psychrometric condition of a fluid-vapour/gas medium. Therefore, in the Board's view, the second reading of the relevant claim feature makes perfect technical sense as always true and is both technically logical and credible, whereas the first reading clearly is not.
In the present case, as already explained, the above interpretation makes perfect technical sense and is logical, indeed it cannot be otherwise. Thus it will not be rejected by the skilled person as being an impossible interpretation of the relevant feature.
3.5 In conclusion the above feature is to be interpreted according to the second reading, namely as defining that the dew point of the partially or almost fully saturated scalding medium has a dew point lying in the range of [49-61]°C and that this dew point does not exceed the wet bulb temperature (of the scalding medium).
3.6 The Board must therefore examine, based on this interpretation, whether the invention is sufficiently disclosed. Article 83 EPC requires that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. In accordance with established jurisprudence, as summarised in G 2/93, point 4, "in order to meet the requirements of Article 83 EPC, a European patent application [European patent in Article 100(b)] must therefore contain sufficient information to allow a person skilled in the art, using his common general knowledge, to perceive the technical teaching inherent in the claimed invention and to put it into effect accordingly."
3.7 Thus, the consideration as to whether or not a particular feature distinguishes the claimed subject matter from the prior art, or indeed whether or not it is merely a statement of something that is inherently true, plays no role in assessing sufficiency of disclosure. Nor is it for the Board to speculate as to why a particular feature was added to the claim in examination proceedings. The subjective intentions of the patentee are relevant for the purposes of interpreting the claims only to the extent that these intentions are explicitly formulated in and therefore derivable from the patent specification itself. In short, the Board must assess whether the skilled person can carry out the invention from the information in the patent and the skilled person's general knowledge alone.
3.8 As already explained, the dew point temperature of a fluid-vapour/gas medium never exceeds the wet bulb temperature. Therefore, far from the skilled person being unable to carry out the aspect of the invention defined by this particular feature, they can but achieve this feature when composing a partially or almost fully saturated scalding medium as the claim requires. Therefore, this aspect of the invention is sufficiently disclosed.


3.4 The Board does not share the respondent-opponent's view that the skilled person would reject the second reading of the relevant claim feature (dew point not exceeding wet bulb temperature) as being illogical or not credible, as it does not contribute anything to the invention.
In the Board's view the skilled person approaches a claim from a purely technical viewpoint, not the patent technical or patent legal viewpoint of the patent professional. That a feature may not contribute to an invention because it merely expresses the technically obvious does not make it illogical or not credible in a purely technical sense. Naturally, from the point of view of an opponent or a diligent examiner patentability cannot credibly rely on such a feature, but that is not relevant to the question under consideration.
In the Board's view the the skilled person, exactly because they are first and foremost interested in making technical sense of a claim, will on first reading always reject a technically non-sensible reading in favour of a sensible one if they have to choose between different possible readings. According to established jurisprudence (see Case Law of the Boards of Appeal, 8th edition, 2016 (CLBA), II.A.6.1, and the decisions cited therein), when considering a claim, the skilled person thus rules out interpretations which are illogical or which do not make technical sense. For them, a reading that results in a technical impossibility (scalding medium must be both saturated and non saturated) is technically non-sensible, i.e. technically illogical or not credible. It may be that when they read the claim in the light of the whole disclosure they may revise that first reading, because for example the description clearly supports the technically non-sensible reading. That is not the case here, where as stated there is no support anywhere else in the patent for the technically non-sensible reading that scalding temperature does not exceed wet bulb temperature.
In particular, from their technical knowledge of psychrometry, the skilled person is familiar with the well established and generally known meanings of the terms "dew point" and "wet bulb temperature" and they know from their general knowledge that the dew point temperature never exceeds the wet bulb temperature, because it is an inherent psychrometric condition of a fluid-vapour/gas medium. Therefore, in the Board's view, the second reading of the relevant claim feature makes perfect technical sense as always true and is both technically logical and credible, whereas the first reading clearly is not.
In the present case, as already explained, the above interpretation makes perfect technical sense and is logical, indeed it cannot be otherwise. Thus it will not be rejected by the skilled person as being an impossible interpretation of the relevant feature.
3.5 In conclusion the above feature is to be interpreted according to the second reading, namely as defining that the dew point of the partially or almost fully saturated scalding medium has a dew point lying in the range of [49-61]°C and that this dew point does not exceed the wet bulb temperature (of the scalding medium).
3.6 The Board must therefore examine, based on this interpretation, whether the invention is sufficiently disclosed. Article 83 EPC requires that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. In accordance with established jurisprudence, as summarised in G 2/93, point 4, "in order to meet the requirements of Article 83 EPC, a European patent application [European patent in Article 100(b)] must therefore contain sufficient information to allow a person skilled in the art, using his common general knowledge, to perceive the technical teaching inherent in the claimed invention and to put it into effect accordingly."
3.7 Thus, the consideration as to whether or not a particular feature distinguishes the claimed subject matter from the prior art, or indeed whether or not it is merely a statement of something that is inherently true, plays no role in assessing sufficiency of disclosure. Nor is it for the Board to speculate as to why a particular feature was added to the claim in examination proceedings. The subjective intentions of the patentee are relevant for the purposes of interpreting the claims only to the extent that these intentions are explicitly formulated in and therefore derivable from the patent specification itself. In short, the Board must assess whether the skilled person can carry out the invention from the information in the patent and the skilled person's general knowledge alone.
3.8 As already explained, the dew point temperature of a fluid-vapour/gas medium never exceeds the wet bulb temperature. Therefore, far from the skilled person being unable to carry out the aspect of the invention defined by this particular feature, they can but achieve this feature when composing a partially or almost fully saturated scalding medium as the claim requires. Therefore, this aspect of the invention is sufficiently disclosed.
[...]
5. Request of the respondent-opponent for referral of a question to the Enlarged Board of Appeal
5.1 Article 112 EPC provides for the possibility of referring questions of law to the Enlarged Board "in order to ensure uniform application of the law or if a point of law of fundamental importance arises" (paragraph (1)).
In the present case the respondent-opponent has asked for referral of a question concerning the assessment of sufficiency of disclosure under Article 83 EPC. The question can be summarised as: whether the assessment for the clear and complete disclosure of an invention, so that it can be carried out, under Article 100 (b) EPC (Article 83 EPC), may be reduced to the assessment of merely an internal logic and/or the correct syntax of a claim, so that the overall teaching of the patent as a whole, in particular the problem to be solved, can be disregarded?
5.2 As already explained, the jurisprudence concerning how sufficiency of disclosure is to be assessed (see point 3.6 above) is well established and is uniformly applied. Nor does the Board depart from this in the present case. In particular, the Board does not rely solely on internal logic or syntax of the claim to arrive at its conclusion.
5.3 In the present case, the Board has established that the invention as claimed in the independent claim 1 can be carried out by analysing the features of claim 1 in the context of the whole patent. In so doing the Board has moreover approached the claim as does the skilled person to make technical sense of it, using the general knowledge of the skilled person. Therefore, the question proposed for referral is not relevant to the case in hand.
5.4 In the light of the above, the Board concludes that there is no justification for referring the question posed to the Enlarged Board of Appeal.
6. Remittal
6.1 In accordance with Article 111(1) EPC, second sentence, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.
Since the main purpose of the appeal proceedings is to give the losing party a possibility to challenge the decision of the opposition division on its merits (see G 10/91, point 18), remittal in accordance with Article 111(1) EPC is normally considered by the Boards in cases where the opposition division issues a decision solely upon a particular issue and leaves other substantive issues undecided.
6.2 As explained above, the only reason for rejecting the main request was the consideration of the opposition ground of insufficient disclosure. The decision did not consider the opposition grounds of novelty and inventive step raised under Article 100(a) EPC having regard to various documents and an alleged public prior use (see notice of opposition, pages 5 to 8), all these objections being maintained in appeal proceedings.
6.3 Although both parties have requested that the Board deal with all outstanding issues, in both cases this was conditional on the Board finding in favour of the respective party and without consideration of the arguments and evidence adduced against inventive step. The Board can of course not honour both requests. Both parties do in fact request remittal if the arguments and evidence against inventive step are to be examined. At the oral proceedings before the Board the respondent opponent expressly stated that he would not withdraw them. Consequently, the parties' relevant request is for remittal.
6.4 Furthermore, examination of novelty and inventive step involves consideration of various prior art documents and an alleged public prior use, potentially with the hearing of a witness. This would go far beyond the primary purpose of these appeal proceedings, essentially, that of reviewing the impugned decision's finding that the invention according to claims 1 and 13 as granted was insufficiently disclosed. The Board therefore sees no reason to depart from the parties' relevant request for remittal.
6.5 For these reasons, the Board decided not to deal with the issues of novelty and inventive step of the patent as granted, but to remit the case to the opposition division for further prosecution.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.

No comments:

Post a Comment

Do not use hyperlinks in comment text or user name. Comments are welcome, even though they are strictly moderated (no politics). Moderation can take some time (I don't get emails about comments to be approved).