T 2523/11 - Not even the end point

Key points

• Disclosed is a weft yarn in the range from 0.20 mm to 1.00 mm, the patent is granted with a weft yarn of 0.20 to 0.80 mm. The range of 0.20 mm to 0.80 was disclosed only for the diameter. Hence, the diameter and the yarn have been confused. 
• The board decides that this can not be corrected under Rule 139 EPC, "leaving aside the issue of whether an error in a granted patent may at all be corrected under Rule 139 EPC after the issue of G 1/10" 
• Claim 1 limited to the diameter of the weft yarn being 0.20 mm also lacks basis in the application as filed, because "there is no disclosure in the application as filed that the diameter of the weft yarns may be restricted to the value of exactly 0.20 mm while at the same time keeping all other values in the claim unchanged to arrive at the subject-matter defined in the claim."  

T 2523/11 - link

Reasons for the Decision

1. Main Request - Request for correction

1.1 Claim 1 includes the feature:

"said fabric with warp yarns having a range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm".

1.2 The appellant argued that the granted wording "said fabric with warp yarns and weft yarns having a diameter in the range of 0.20 mm to 0.80 mm" was an obvious error which was correctable, under Rule 139 EPC, to the form as stated in item 1.1. above.

1.3 Leaving aside the issue of whether an error in a granted patent may at all be corrected under Rule 139 EPC after the issue of G 1/10 (see reasons, 9 to 11), in order for a correction to be allowable under Rule 139 EPC and in accordance with G 3/89, the respective criteria for correction of an error have to be met.

1.4 Pursuant to G 3/89 (see reasons, 3 and 6) the parts of a European patent relating to the disclosure can be corrected only within the limits of what the skilled person would derive directly and unambiguously, using common knowledge and seen objectively and relative to the date of filing, from the whole of these documents as originally filed. No correction is possible, if there is any doubt as to whether a mistake existed, or whether nothing else could have been intended other than what was offered as the correction. If it is doubtful whether the feature was incorrectly defined, then a correction is ruled out.

1.5 Whilst the range in claim 1 may not necessarily have been what the appellant now wishes to pursue and even if this may indeed have been unintentional, the error itself is not obvious, since the wording of claim 1 is clear and understandable, no inconsistency with regard to the description exists, the range falls within the range as originally disclosed and it makes perfect technical sense. Hence, the skilled person would not have any reason to doubt that it was anything but the limited range which was intended to be pursued.

1.6 The Board had already given its provisional opinion in its communication to the parties prior to the oral proceedings, stating inter alia that the criteria set out in G 3/89 for making a correction did not appear to be met. The appellant filed no response to this communication and thus the Board sees no reason to alter its provisional opinion.

1.7 The appellant cited decisions T 200/89, T 946/91, T 962/92 and T 438/98 in support of its interpretation of Rule 139 EPC. However, these decisions do not alter the foregoing conclusions:

1.7.1 T 200/89 confirms (see headnote V and reasons, 3.4) that the obviousness of an error in a patent was an objective matter which had to be established by reference to the patent text in its entirety, but in isolation, and thus without reference to the file history. No such obviousness of an error can be established in the present case, as explained above.

1.7.2 In T 946/91, the requested corrections were partly considered allowable as being obvious with regard to examples and tables in the description of the patent. No such consistent description is present in the current case, there merely being one quotation of the diameter range of the weft yarns, within which the claimed range falls.

1.7.3 T 962/92 concerns an appeal against a refusal of the examining division. No considerations concerning a granted patent are made.

1.7.4 T 438/98 (reasons, 3.1) concerns an appeal against a decision of an opposition division. It underlines that a correction corresponds to an amendment which must both correspond to the correction of an obvious clerical error and satisfy the requirements of Article 123(2) EPC. This does not alter the foregoing conclusion.

1.8 Hence, since in the current case the skilled person would not recognise that an obvious error with regard to the range for the diameter of the weft yarns was present, the request for correction in accordance with the main request is not allowable.

2. First auxiliary request

2.1 This request concerns the claims as granted, claim 1 including the feature of "warps yarns and weft yarns having a diameter in the range of 0.20 and 0.80 mm".

2.2 The disclosure in the application as filed does not include an end point of 0.80 mm with regard to the range of the diameter of the weft yarns. The originally filed disclosure on page 5, line 1 is specific in defining the diameter of the weft yarns in the range from 0.20 mm to 1.00 mm, and originally filed claim 5 specifies the diameter of the weft yarns consistently in this range.

2.3 The appellant argued that the limitation of the range was merely a restriction of the scope of protection and that it did not contribute any further technical information or a supplementary technical effect and thus would not provide any other technical contribution when compared with the originally claimed range.

However, the Board finds that the limitation of the range indeed changes the technical information and provides another technical contribution when compared with the originally claimed range by creating a particular selection of a range. In particular, when related to the claimed range for the permeability, the combination of the diameter of the weft and warp yarns is clearly a matter of consideration to a skilled person. When changing the diameter range for the weft yarns, it is not unambiguously disclosed whether the diameter range for the warp yarns and the range for permeability can remain unamended. More particularly, there is no basis in the application as filed for allowing the selection of a different range for the weft yarns to be combined with the entire range disclosed for the diameter of the warp yarns together with the entire range disclosed for the permeability of the fabric. Hence, the requirement of Article 123(2) EPC is not met and for this reason the request is not allowable. Again, the appellant filed no response to the Board's provisional opinion, such that the Board also here sees no reason to alter that provisional opinion.

3. Second auxiliary request

3.1 Claim 1 includes the feature in dispute by means of the wording:

"said fabric with warp yarns having a range of 0.20 mm to 0.80 mm and weft yarns having a diameter of 0.20 mm, 0.30 mm, 0.40 mm, 0.50 mm, 0.60 mm, 0.70 mm or 0.80 mm".

3.2 The appellant submitted that the claimed point values would be "implicitly, directly and unambiguously disclosed in the application as filed", since they were contained within the range.

3.3 However, there is no disclosure of the entire set of individual values in the application documents - neither when considering the specific values themselves nor when considering the subject-matter arising from the combination of these individual values with the whole range of the diameter of the warp yarns and the whole range for the permeability (see also point 2.4 above). Whilst a value may be contained within a range, it is established case law of the boards of appeal that a selection of a value from within a range is not disclosed merely by the disclosure of the range per se. As with the previous requests, in response to the Board's provisional opinion, the appellant filed no comments, such that the Board also here sees no reason to alter that provisional opinion.

Hence, the requirement of Article 123(2) EPC is not met and the request is not allowable.

4. Third auxiliary request

4.1 The disputed feature in claim 1 is limited to the diameter of the weft yarn being 0.20 mm.

4.2 It is evident, since the value of 0.2 mm is an end point of the range originally disclosed for the weft yarn diameters, that the selection of the end point of the weft yarn diameters per se is disclosed. This is also established case law of the boards of appeal. However, there is no disclosure in the application as filed that the diameter of the weft yarns may be restricted to the value of exactly 0.20 mm while at the same time keeping all other values in the claim unchanged to arrive at the subject-matter defined in the claim. No disclosure is present for example where the diameter of the warp yarns varies over the whole range of from 0.20 mm to 0.80 mm and the diameter of the weft yarns is 0.20 mm for the entire diameter range of warp yarns, even less so in combination with the claimed range for the permeability of the fabric (see also points 2.4 and 3.3 above). The appellant was informed of the Board's provisional opinion that no disclosure of the combination of features in claim 1 could be identified and filed no response thereto.

4.3 Hence, the Board confirms its provisional opinion herewith for the reasons given above that there is no disclosure of the specific combination of features as defined in claim 1. Accordingly, the requirement of Article 123(2) EPC is not met, whereby also auxiliary request 3 is not allowable.

5. Request for correction of the minutes

The appellant's request for correction of the minutes has been noted. In its letter following the notice of appeal, the appellant argued that the following arguments presented by the appellant's representative during the oral proceedings before the opposition division had been omitted from the minutes:

- not denying the fact that the end point of 0.8 mm was not explicitly stated in the application with regard to the weft yarns;

- maintaining the argument that the subject-matter contained inside the narrower range (0.20 mm; 0.80 mm) was directly and unambiguously disclosed in the application as filed in the sense of G 2/10.

As the appellant was already informed with the Board's provisional opinion on the case, it is the department before which oral proceedings had been held (in the case at issue the opposition division) which is competent and responsible to correct its minutes. There is no provision which would enable the Board to compel the opposition division to discharge its obligation concerning such a request (see also T 508/08, reasons, point 2).

It is nevertheless noted that in the current case the requested amendment would not alter the outcome of the appeal proceedings in the present case, since the statements have no impact on the Board's decision.

Order

For these reasons it is decided that:

The appeal is dismissed.