T 1691/11 - Be aware of each

Key points:

• The Board finds the invention to be insufficiently disclosed because of the use of the word "each". The patentee argued that the claim should be interpreted as "at least one". 
• The Board: " Additionally, a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and thus to interpret the claim differently (see also T 431/03, Reasons 2.2.2). Every applicant should be aware of the requirements of the EPC and, when presenting a certain text (description and claims) in proceedings before the European Patent Office, is responsible for drafting the claims clearly and concisely and thus setting the limits of the desired scope of protection." 

EPO T 1691/11 - link

Reasons for the Decision

1. Claim 1 of all requests

1.1 Claim 1 of all requests includes the features of

"at least two independent programmable motors" and

"at least one of the transferring devices being coupled to each of the programmable motors". These features are clear and unambiguous.

[ In the decision under appeal, the opposition division held that these features would need interpretation and should be understood as meaning that "every transferring device is coupled to at least one independent programmable motor".]

1.2 The clear linguistic structure of the claim does not allow any different interpretation. An interpretation of a claim is only possible for a claim whose wording lacks clarity. This is not the case here. No need for interpretation arises.

1.3 Additionally, a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and thus to interpret the claim differently (see also T 431/03, Reasons 2.2.2). Every applicant should be aware of the requirements of the EPC and, when presenting a certain text (description and claims) in proceedings before the European Patent Office, is responsible for drafting the claims clearly and concisely and thus setting the limits of the desired scope of protection. A perfectly clear wording of the claim, such as presented here as claim 1, is thus that which needs to be considered under Article 83 EPC, rather than another speculative interpretation of the claim.

1.4 Despite the wording of claim 1 being unambiguous, in the decision under appeal, the opposition division held that these features would need interpretation and should be understood as meaning that "every transferring device is coupled to at least one independent programmable motor".

1.5 Such an understanding required an exchange of the words "at least one" with "every" as well as "each" with "at least one". However, no disclosure of the invention describes the relationship between the transferring devices and programmable motors using these exchanged indefinite pronouns. Therefore, the meaning given to the feature by the opposition division is not based on the disclosure and cannot be justified (See also point 1.6.3 below).

1.6 Consistent with the view of the opposition division, the appellant/proprietor regarded the expression "at least one of the transferring devices being coupled to each of the programmable motors" as requiring interpretation.

1.6.1 In order to support its interpretation of in particular the word "each", the appellant/proprietor filed dictionary evidence. This dictionary evidence states that the word "each" is used as a determiner for every (one) of two or more considered individually. Examples in context are given as "each day" and "each person". As a language note it is added that "Each is a singular pronoun and should be used with a singular form of a verb".

1.6.2 Accordingly, this dictionary evidence confirms the usual understanding of the word "each" which is that it is not one, but two (or even more) of a kind - although these are still individual units. Hence, the dictionary evidence does not support the use of the word "each" in the sense of "only one" unit, even though it is used with a singular form of a verb. Therefore, the dictionary evidence is not suitable to confirm the interpretation which the appellant/proprietor wished to have applied.

1.6.3 Concerning the appellant/proprietor's suggestion that an inverse construction of the wording of the feature in dispute should be considered, there is no basis for this. When reading the feature in the swapped order ("each of the programmable motors being coupled to at least one of the transferring devices"), the meaning of the feature changes completely compared to that in the claim. A basis for exchanging the pronouns is nowhere to be found in the patent specification, hence such swapped wording is not disclosed and cannot be taken into account at all.

1.6.4 The further argument of the appellant/proprietor that the objected features would be compatible under the proviso that the at least two programmable motors remained independent of each other was also not applicable. The suggestion that the programmable motors remaining independent implied that the transferring devices were simply coupled to at least one motor is an interpretation which contradicts the unambiguous wording of the feature in the claim, whereby a transferring device is coupled to each of the motors.

1.6.5 The wording "for moving the transferring devices in an orbital path" which was considered relevant by the appellant/proprietor only refers to the aim of the coupled transferring devices/motors in moving the transferring devices along a particular path. This does not assist in disclosing how a transferring device can be coupled to each programmable motor and thus cannot add anything to alter the lack of sufficient disclosure concerning how to obtain the claimed relationship between transferring devices and motors.

1.6.6 The reference by the appellant/proprietor to the embodiment shown in Figures 16 to 18 does not alter the above considerations. Figures 16 to 18 refer to a particular embodiment having nine motors and three transferring devices. Each of the transferring devices is coupled to three motors. Hence, this embodiment discloses how to carry out embodiments in which multiple motors are coupled to one transferring device. Nevertheless, this embodiment is inconsistent with the claimed feature of at least one transferring device being coupled to each of the programmable motors which would require at least one of the transferring devices to be coupled to each (all, here all nine) of the programmable motors. Also none of the further embodiments shown in the Figures 1 to 15 and 19 to 22 illustrates that at least one of the transfer devices is indeed coupled to each of the programmable motors. Therefore, none of the disclosed embodiments discloses how to obtain the claimed subject-matter.

1.7 It has also to be taken into account that it is not specified in the claim or in the description in which way the motors are "independent", therefore the broadest interpretation applies which includes that the motors are independent in all possible aspects. Even this interpretation does not help the appellant/proprietor's argument since the requirement for a transferring device to be coupled to each (and every) programmable motor must still be respected and independent programmable motors change nothing in this regard.

1.8 In conclusion, the skilled person would not be capable of putting the invention into practice in view of the claimed relationship between transferring devices and motors.

1.9 Hence, concerning the main request, the ground for opposition under Article 100(b) EPC 1973 prejudices the maintenance of the patent as granted. Similarly, concerning all the auxiliary requests, the requirement of Article 83 EPC 1973 is not met.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.