T 0961/17 - (II) Claim interpretation

 Key points

• For novelty over a public prior use, the critical issue is what the term “push-pull-turn hose” in the claim means. The patentee argued that “The devices described in documents B1 to B4 comprise air push rods. Such rods do not qualify as hoses.” The opponent disagreed.
• The Board: “ The patent does not provide a definition for this expression.” The Board considers the OED dictionary and para. [0010] of the patent in suit. Further, “It is uncontested that the air push rod (document B2, page 6: Luftschiebestange) of the device sold by the respondent [opponent] is suitable for pulling, pushing and turning the packer in domestic pipes.”
• “The board is well aware that the concepts "hose" and "rods" are not interchangeable and that there are rods that cannot reasonably be called hoses and vice versa. However, the question to be answered by the board is not whether and to what extent the concepts of "hose" and "rod" are interchangeable. The question to be answered is whether the object referred to as an "air push rod" (Luftschiebestange) in document B2 qualifies as a PPTH within the meaning of claim 1 or, to put it another way, whether it falls within the scope of the expression PPTH. ”
• “what the general public would have understood by "hose" is irrelevant for the question at issue. ”
• “The arguments [of patentee] that even a child would be able to distinguish a hose from a rod and that Franklin D. Roosevelt expected to be understood when referring to a hose in one of his speeches are both based on the observation that there is some sort of intuitive understanding of what a hose is. However, this sort of intuitive concept or archetype is not decisive when dealing with patent claims because the purpose of such claims is to precisely define what is claimed in an objective way and not to provide some intuitive mental picture of what is referred to. To put it another way, the literary genre of patent claims is different to the literary genres of political speeches and children's books, and so are the conventions that need to be observed therein.”
• The Board, still: “The very core of the invention appears to lie in the discovery that the devices of the state of the art, which the inventor had purchased, could be improved by using elements of greater flexibility (such as the hoses mentioned in paragraphs [0055] and [0056] of the patent) than the known air push rods. In such a situation, it is necessary to carefully define the distinguishing feature(s). It is not sufficient to rely on using a concept ("hose") which may evoke certain associations in the general public (such as the typical flexibility of a garden hose) but which does not bear closer scrutiny because there are very different types of hoses, not all of which correspond to the stereotype.” (emphasis added)
• “The appellant also relied on the CPC classes, according to which hoses (class F16L11/00) are part of the general class of pipes (F16L) but form a considerable technical field in themselves. However, these observations are without relevance for the question to be decided by the board. The CPC classes are the result of a historical process. They provide a possible way of classifying technical objects, but they are in no way unique or normative. Therefore, as a rule, the fact that a given object is (or is not) part of a given class does not make it possible to conclude that it cannot be part of another, distinct class.”
• The Board, in conclusion: “None of the appellant's [patentees] arguments was found persuasive. Therefore, the board maintained its provisional opinion that the air push rod of the prior use qualifies as a PPTH within the meaning of claim 1.”
• As a comment, G 3/14, r. 55 can be cited: “For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to ... (ii) Article 100(a) EPC / novelty []”

https://www.epo.org/law-practice/case-law-appeals/recent/t170961eu1.html

4.3 Feature 1-6: "push-pull-turn hose" (PPTH)

The patent does not provide a definition for this

expression.

The OED defines the word "hose" as "a flexible tube or pipe for the conveyance of water or other liquid to a place where it is wanted". The term "hose" as such does not allow conclusions to be drawn on the level of flexibility of the object designated as such. Some hoses are extremely flexible (e.g. fabric fire hoses), whereas others may be quite rigid (e.g. steel-reinforced hydraulic hoses).

A relevant piece of information regarding the PPTH is found in paragraph [0010] of the patent:

"... The flexible but stable push-pull-turn hose provides for a tool to push and position the bladder arrangement effectively. The flexibility of the push-pull-turn hose allows the push-pull-turn hose to pass through narrow and bended [sic] pipe and its stability allows it to transmit sufficient push- and rotation force to the bladder arrangement."

Thus, a PPTH is a flexible tube or pipe sufficiently flexible to pass through pipe bends (i.e. completely inflexible hoses are excluded) and sufficiently rigid to transmit forces both along the longitudinal axis of the hose (push-pull) and in a direction of rotation around that axis (turn).

5. Alleged public prior uses

In point 13 of the decision under appeal, the opposition examined the alleged public prior uses. In its annex to the summons to oral proceedings before the opposition division, the opposition division noted that several of the alleged prior uses were substantiated but not adequately proven and that it was necessary to hear the witness Mr Bichler in this respect. The witness was heard at the oral proceedings (see document WAB). Subsequent to this hearing, the opposition division concluded that the prior uses had been proven beyond any reasonable doubt (point 13.9, last paragraph, of the decision under appeal).

It is uncontested that the opponent had sold devices for installing a liner in a pipe to Svensk Röranalys before the priority date. However, there were two main points of contention, namely (1) whether it was proven beyond reasonable doubt that the devices sold had the features described in documents B1 to B4 and (2) whether these devices anticipated the subject-matter of claim 1.

5.1 Proof of what exactly was sold

The appellant argued that the chain of evidence

presented by the respondent was incomplete and could not establish what exactly had been sold beyond all reasonable doubt. The appellant's objections raised during the written procedure can be summarised as follows.

- The respondent had lumped together several different products (namely, pipe-liner versions DN100 and DN150) into one embodiment.

- There was no certainty as to which type of Hauspacker (namely, LCR-B or LCR-S) was delivered to Svensk Röranalys.

- The respondent did not show how the many elements contained in the shipping lists actually "appeared" when assembled and how they functioned.

- As the exact number of items sold was unknown, there is uncertainty about what was sold.

These objections are unpersuasive for the following reasons.

- The assertion that the respondent unduly lumped together different products such as the DN100 and DN150 versions is unfounded.

- As was explained by the respondent, the LCR-B and LCR-S products are designed for different uses. The "B" (or "building") variant is to be used in fall pipes (see e.g. document B1, page 2, first sentence), whereas the "S" (or "sewer") variant is for underground pipes. There is no doubt that the Hauspacker delivered to Svensk Röranalys was of the B type (see e.g. document A1.2: "LCR-Hauspacker für Fallleitungssanierung").

- The items contained in the shipping lists are clearly identified, and there is enough information to determine how these items functioned.

- The exact number of items sold is irrelevant in so far as it has been persuasively demonstrated that at least one item had been sold and delivered.

Regarding the witness testimony, the appellant pointed out that:

- the witness had and still has an economic interest in the outcome of the case

- as ten years had passed since the sale, it was unlikely that the witness could remember all the details given in the witness statement

- the witness failed to explain why it was certain that the devices sold were not of the LCR-S type

- at least one statement of the witness appears exaggerated. This casts doubt on the reliability of the other statements.

These objections raised against the witness testimony do not raise significant doubts about the reliability of the witness for the following reasons.

- The mere fact that a witness is employed by the respondent does not ipso facto disqualify their testimony, in particular when the testimony serves to corroborate and put in perspective elements established by means of other evidence.

- The appellant has not identified specific elements which the witness should not have been able to remember. It is true that the testimony was given about ten years after the facts under consideration, but these facts occurred shortly after the witness started to work for the opponent company (on 1 January 2007). It is therefore not implausible that the witness could remember certain elements because they were mentioned in his job interview (WAB, page 16, antepenultimate paragraph) or related to specific trade fairs he attended (WAB, page 27, last paragraph). There are also details the witness was not able to remember (WAB, page 38, penultimate paragraph).

- There was no reason for the witness to explain how he could be sure that the devices sold were not of the LCR-S type because the written evidence clearly demonstrates that they were of the LCR-B type.

- The statement concerning the push rod on page 39: "Es hat noch so viel Steifheit, es verbiegt sich ganz leicht, weil sonst wird es nicht flexibel genug sein, aber es fällt nicht komplett runter." is no exaggeration. On the contrary, it seems to correctly describe what the photo taken by the appellant shows (see page 8 of the statement of grounds of appeal). In the eyes of the board, the most natural interpretation of the witness statement "... es verbiegt sich ganz leicht ..." is that the rod bends slightly (which is apparent from the photograph) and not that the rod can be easily bent (which may be wrong), as the appellant appears to have understood.

The appellant also pointed out that both the declaration EV and the witness testimony contained the incorrect assertion that the brochures B1 to B3, issued in 2008, had been sent when the devices had been sold to Svensk Röranalys in 2007. The board does not share this point of view. First, the statement on page 18 of document WAB that the client had received the brochures is a general statement and does not specifically refer to the sale in 2007. The same holds true for the last sentence of point 3 of document EV. The first sentence of this paragraph does not refer to documents B1 to B3 as having been sent in 2007 but only states that all the devices sold had the configuration described in documents B1 to B4. This is something the witness repeatedly affirmed. Thus, there is no erroneous assertion in documents EV and WAB that would cast a doubt on Mr Bichler's trustworthiness as a witness.

Consequently, the board endorses the opposition division's finding that the public prior uses had been proven beyond any reasonable doubt and that a device with the features described in documents B2 to B4 had been made available to the public.

5.2 Novelty of the subject-matter of claim 1 over the public prior use

As a device for installing a liner in a pipe with the

features described in documents B2 to B4 was made available to the public before the priority date of the patent by sale, the question arises whether this device constitutes subject-matter anticipating the subject-matter of claim 1.

The appellant argued that the packer in accordance with documents B2 to B4 did not comprise collar fittings (feature 1-2) and a PPTH (feature 1-6).

NB: In the written proceedings, the appellant had pointed out that feature 1-3 was not disclosed either, but this assertion was not maintained during the oral proceedings before the board.

5.2.1 Collar fittings (feature 1-2)

The argument that the object of the public prior use

did not comprise a collar fitting is based on a narrow interpretation of feature 1-2 that the board cannot endorse (see point 4.1 above). When the term is given its broadest technically meaningful interpretation, it encompasses the end elements 5 and 16 shown in document B3. Consequently, this feature cannot distinguish the object of claim 1 from the device sold.

5.2.2 PPTH (feature 1-6)

It is uncontested that the air push rod (document B2, page 6: Luftschiebestange) of the device sold by the respondent is suitable for pulling, pushing and turning the packer in domestic pipes. This is directly and unambiguously disclosed in document B2, pages 3 and 4.

In point 12.1.1 (b) of the communication pursuant to Article 15(1) RPBA 2020, the board expressed its provisional opinion that the air push rod of the prior use also qualified as a hose because:

- the terms "rod" and "hose" have a certain semantic breadth and there is a region of overlap

- the push-pull-turn rod of the prior use appeared to be a flexible tube or pipe sufficiently flexible to pass through pipe bends and sufficiently rigid to transmit forces both along the longitudinal axis of the hose (push-pull) and in a direction of rotation around that axis (turn)

The appellant contested this view. Its core argument is that the rod of the prior use is not a hose and, consequently, cannot constitute a PPTH. In this context, the appellant developed several lines of arguments.

(a) Semantic argument

First, the appellant argued that the rod of the prior use could not possibly be considered a "hose" because "hose" and "rod" are different concepts, as is well known to the skilled person and the public at large.

The board is well aware that the concepts "hose" and "rods" are not interchangeable and that there are rods that cannot reasonably be called hoses and vice versa. However, the question to be answered by the board is not whether and to what extent the concepts of "hose" and "rod" are interchangeable. The question to be answered is whether the object referred to as an "air push rod" (Luftschiebestange) in document B2 qualifies as a PPTH within the meaning of claim 1 or, to put it another way, whether it falls within the scope of the expression PPTH. What really matters in this context is not how the element is referred to in document B2 but what the skilled person would have understood the technical properties and functions of this element to be. Based on this understanding, it needs to be examined whether the element falls within the scope of the expression PPTH. This can only be ascertained based on the wording of the claim and its context. Consequently, what the general public would have understood by "hose" is irrelevant for the question at issue. Also, the mere fact that the element is called a "rod" in document B2 does not entail that it cannot be a hose within the meaning of the patent.

The argument that documents P4 and P5 consistently use the term "rod" is without avail because the question to be answered by the board is not whether the air push rods of documents P4 and P5 are indeed rods but whether they qualify as PPTH within the meaning of claim 1. The same holds true for documents D4 and D14, which both describe an inflatable packer and distinguish a "control rod" or "push-rod" for pushing the packer through the conduit, and a "hose" through which the bladder is inflated. This terminology does not entail that the air push rod of the prior use cannot constitute a PPTH within the meaning of claim 1.

(b) Common understanding

The arguments that even a child would be able to

distinguish a hose from a rod and that Franklin D. Roosevelt expected to be understood when referring to a hose in one of his speeches are both based on the observation that there is some sort of intuitive understanding of what a hose is. However, this sort of intuitive concept or archetype is not decisive when dealing with patent claims because the purpose of such claims is to precisely define what is claimed in an objective way and not to provide some intuitive mental picture of what is referred to. To put it another way, the literary genre of patent claims is different to the literary genres of political speeches and children's books, and so are the conventions that need to be observed therein.

(c) Impossibility of a precise definition

The appellant also relied on decision T 68/85. The deciding board examined whether it was permissible to use functional features ("... in an amount producing a synergistic herbicidal effect") in the field of chemistry. It found this to be legitimate if the claimed subject-matter could not be defined more precisely without limiting the scope of the invention, provided that the functional features are sufficiently clear for the expert to reduce them to practice without undue burden, if necessary with reasonable experiments (see point 8.4 of the Reasons).

This decision has no direct bearing on this case because feature 1-6 is not a purely functional feature. However, the appellant used this decision by analogy, arguing that it was legitimate to define the invention in this way because a precise definition of the distinguishing feature was impossible or would unduly limit the scope of the invention. The argument appears to be similar to the additional argument based on decisions cited in chapter II.A.3.6 of "Case Law of the Boards of Appeal of the EPO", 9th edition, 2019, on whether and to what extent "unspecified" features may be permitted.

However, the ratio decidendi of these decisions is not applicable to this case. The very core of the invention appears to lie in the discovery that the devices of the state of the art, which the inventor had purchased, could be improved by using elements of greater flexibility (such as the hoses mentioned in paragraphs [0055] and [0056] of the patent) than the known air push rods. In such a situation, it is necessary to carefully define the distinguishing feature(s). It is not sufficient to rely on using a concept ("hose") which may evoke certain associations in the general public (such as the typical flexibility of a garden hose) but which does not bear closer scrutiny because there are very different types of hoses, not all of which correspond to the stereotype.

(d) Hidden features

The appellant argued that the skilled person would have understood from the reference to "domestic pipes", which often comprise 90° bends, that the PPTH of claim 1 has to be such that it can pass through 90° bends in pipes with the smallest diameter used in domestic pipes. The board cannot endorse this argument because it adds to the claim. The drafter of the patent could have limited the claim accordingly, or at least provided fall-back positions, but they chose not to do so. Claim 1 as it stands does not impose any such limitation on the PPTH. Not all domestic pipes have 90° bends or diameters that cannot be handled by the air push rods of the prior use. Thus, it is not possible to consider this limitation to be implicit in claim 1.

(e) Test reports

The parties heavily relied on test reports P1 and F1

and drew conflicting conclusions from these reports.

Report P1 compares air push rods similar to the ones comprised in the device of the public prior use to Hydroscand Deltaflex hoses. Both were inserted (without a packer) into plastic pipe systems comprising a 90° bend with internal diameters of 296 and 102 mm, and the normal contact forces were measured. It turned out that the air push rod could not be guided through the smaller pipe. In both cases, the contact forces were found to be considerably larger for the air push rods.

Report F1 makes the same comparison using different pipes of diameters 110 and 315 mm. It confirmed that the air push rod alone could not be guided through the smaller-sized pipe but that the complete system (rod + packer) could be guided through. Again, the contact forces were found to be considerably larger for the air push rod.

Both test reports consistently establish that one specific type of hoses, namely the Hydroscand Deltaflex 4 CT 3/8" hoses, performs better than the air push rods under the chosen test conditions. However, this finding has no bearing whatsoever on the question the board has to answer, i.e. whether the air push rods are PPTHs within the meaning of claim 1. To qualify as a PPTH, an element does not necessarily have to perform as well as a Hydroscand Deltaflex hose since claim 1 requires nothing of this nature.

(f) Guidance through examples

The appellant also pointed out that the patent

comprises examples that make it possible to verify whether an element is a PPTH within the meaning of claim 1 by following the instructions without the need for heavy experimentation. This argument is unpersuasive because, as a matter of principle, specific examples cannot replace a definition. Such examples arguably fall within the scope of claim 1, but they cannot delimit its contours.

(g) CPC classes

The appellant also relied on the CPC classes, according to which hoses (class F16L11/00) are part of the general class of pipes (F16L) but form a considerable technical field in themselves. However, these observations are without relevance for the question to be decided by the board. The CPC classes are the result of a historical process. They provide a possible way of classifying technical objects, but they are in no way unique or normative. Therefore, as a rule, the fact that a given object is (or is not) part of a given class does not make it possible to conclude that it cannot be part of another, distinct class.

(h) Conclusion on feature 1-6

None of the appellant's arguments was found persuasive. Therefore, the board maintained its provisional opinion that the air push rod of the prior use qualifies as a PPTH within the meaning of claim 1.

5.3 Conclusion

The subject-matter of claim 1 is anticipated by the

object of the public prior use. Consequently, the subject-matter of claim 1 is not new within the meaning of Article 54(1) and (2) EPC, and the main request cannot be allowed.