T 0075/14 - Disclaimer under G1/03

Key points

• The Board applies the test of G 1/03 for undisclosed disclaimers, in this decision of 30.03.2017. The disclaimer is not allowed because it removes more than necessary for restoring novelty The Board acknowledges pending referral G 1/16, but finds that it does not needs to stay the appeal, because the disclaimer is in any case not allowable under G 1/03.

EPO T 0075/14 -  link

Reasons for the Decision

1. Allowability of disclaimers

According to G1/03, a disclaimer which does not have a basis in the application as filed may be allowable in order to restore novelty by delimiting a claim against state of the art under Article 54(3) EPC, such as D3 in the present case, (see Headnote, point 2.1). However, G1/03 also stipulates amongst other criteria (see Headnote, points 2.2 and 2.4) that:

(i) a disclaimer should not remove more than is necessary to restore novelty;

(ii) a claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

2. Main request

2.1 The main request comprises the following disclaimer:

"the thumbwheel means (16) does not have an association in which the thumbwheel means (16) is movable with respect to the sparkwheel means (15)."

This characteristic is not disclosed in the application as filed, thus the requirements of G1/03 apply.

2.2 D3 discloses several variants of a lighter with various designs for resisting undesired operation by unintended users. The embodiments illustrated in figures 1 to 4 and figure 6 of D3 disclose in the terms of claim 1 as granted:

a child resistant roll-and-press gas lighter including a lighter body (22), a lever (28,36) for controlling the flow of gas from the lighter, a wheel assembly (23) rotatably mounted on the body, and a flint (24) cooperating with the wheel assembly for igniting the gas, the wheel assembly comprising a sparkwheel means (96) together with thumbwheel means (98), said thumbwheel means including a digit engaging surface,

the lighter further comprising an impeding element ("guard" 119) mounted adjacent the thumbwheel means such that as the user contacts the wheel assembly, an engaging surface of the impeding element is engaged by the user's digit, wherein the engaging surface of the impeding element (119; 219) is substantially flush (see page 8, lines 16 to 17; page 9, lines 18 to 19) with the digit engaging surface of the thumbwheel means which in use is engaged by the user's digit.

2.3 Therefore, the disclaimer has only been used to establish novelty in accordance with G1/03. It remains to be seen therefore whether it has been correctly formulated not to remove more than is necessary to restore novelty and is clear and concise.

2.4 All embodiments of D3 comprise a manipulable member with at least two associations with the sparker; a first disengaged association in which the manipulable member is movable with respect to the sparker, and preferably freely rotatable with respect to the sparker, and an operable association in which the manipulable member moves, and preferably rotates, the sparker (see page 2, lines 3 to 9 and claim 1 of D3).

2.5 However, the disclaimer of granted claim 1 is not restricted to excluding lighters where there are at least two associations between the thumbwheel ("manipulable member") and the sparkwheel, as is disclosed in D3, but rather is formulated to remove just one of those associations, namely where the manipulable member is movable independently of the sparker. As a result, any lighter in which the thumbwheel is "movable" with respect to the sparkwheel means is excluded, regardless of whether it is part of a mechanism with just two associations or not. Consequently, devices which comprise one or even possibly three associations and which are not disclosed or even hinted at in D3, are excluded.

2.6 In particular, the lighter of US 5 096 414 (N7) comprises "plates" 7,8 which are freely rotatable with respect to the spark-wheel means 6 (see Abstract). Since the plates 7,8 are turned by the user's thumb and act to resist undesired operation by children who do not have the necessary thumb flesh thickness to reach sparker wheel 6, the board considers these to be thumbwheels even though they do not perform the function of rotating the spark-wheel. Thus, N7 discloses a particular kind of child safety mechanism, relying on freely rotatable thumbwheel means, which is completely remote from D3, but which would nevertheless be excluded by the present disclaimer. Other possible types of lighter which are unnecessarily disclaimed include arrangements with one association using a ratchet and/or gearing allowing movement in one direction.

2.7 Since the disclaimer removes all possible embodiments in which the thumbwheel is movable with respect to the sparkwheel, including arrangements not disclosed in D3, it removes more subject-matter than is necessary to restore novelty. Therefore, it does not meet the criteria for assessing the allowability of a disclaimer which is not disclosed in the application as filed, as set out in decision G1/03 (see Headnote, point 2.2).

2.8 Considering that it has already been concluded on the above basis that the disclaimer removes more subject-matter than is necessary to restore novelty, the board sees no need to also examine whether the disclaimer should have been restricted further by features common to each novelty destroying embodiment as held by the opposition division.

2.9 The case pending before the Enlarged Board under referral number G1/16 asks the following question:

"Is the standard referred to in G2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?"

2.10 However, considering that the disclaimer in this case does not meet the fundamental requirements of G1/03, because it removes more than is necessary to restore novelty, there is no need to stay proceedings and await the decision in G1/16.

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5. Auxiliary request filed during the oral proceedings.

This request was filed at the last moment during the oral proceedings. The characterising portion of claim 1 was amended to read:

"characterized in that the thumbwheel means (16) is immovable with respect to the sparkwheel means (15)."

The board accepts the argument of the respondent that the admittance of such a late-filed request would place the respondent under undue stress to analyse the full implications of the amendment, particularly with respect to Articles 84 and 123(3) EPC, in a short space of time.

Therefore the request is not admitted into the proceedings (Article 13(3) RPBA).

Order

For these reasons it is decided that:

The appeal is dismissed.