T 0913/15 - Killed by a comma

Key points

• In this opposition appeal, claim 1 directed to a hair iron lacks basis because of the feature "an electrode therein" - raising the preliminary issue of claim interpretation to decide where the electrode must be placed. To anticipate the conclusion, I note that the application as filed teaches that the case 28 comprises an opening 28a and that this opening is near the electrode. 
• Claim 1 as granted however recites: "characterized in that the negative-ion generator (4) is built in the grip (1), and the grip further comprises an outlet (9) opening to the hair-care section (2) to emit the negative ions due to discharge around an electrode therein towards the hair-care section(2)."
• "The board agrees with the respondent that the skilled person would first read claim 1 as granted on the assumption that it is grammatically correct."
•  Due to the separation of the clauses [of the characterizing portions of claim 1] by a comma it can only be understood that there was a deliberate intention when drafting the claim to separate the specification of the second clause from the first clause."
• "Thus, the skilled person would interpret the specification of the second clause as defining the outlet (9) to be comprised in the grip and that an electrode for emitting negative ions is situated in the outlet."
• "the board agrees with the[opponent] that the structure of the second clause makes it clear, from both a linguistic and technical point of view, that the term "therein" must refer to "an outlet" which is part of the grip, i.e. the electrode is located within the outlet of the grip."
• Hence, the opening has a different position in claim 1 as granted than in claim 1 as filed and claim 1 lacks basis. The Auxiliary Request specifying the position differently (as being in the grip) violates Art 123(3) EPC. The appeal is dismissed and the patent remains revoked.

EPO T 0913/15 -  link

VI. Claim 1 as granted reads:

"A hair iron (100,120,130,140,150,160,170,180) comprising:
a grip (1),
a hair-care section (2) connected to the grip (1), having a heater (11) for generating heat to hair for hair dressing; and
a negative ion generator (4) which generates negative ions to emit them toward hair held by the hair-care section (2)
characterized in that
the negative-ion generator (4) is built in the grip (1), and the grip further comprises an outlet (9) opening to the hair-care section (2) to emit the negative ions due to discharge around an electrode therein towards the hair-care section(2)."

 Reasons for the Decision

1. Main request (claim 1 as granted),Extended subject-matter, Articles 100(c), 123(2) EPC

1.1 The opposition division considered that the requirements of Article 123(2) EPC were not met since it interpreted claim 1 as granted as specifying that the electrode for discharging the negative ions is in the outlet, as opposed to being near the outlet, which it considered to be the originally disclosed location.

1.2 The board agrees with the respondent that the skilled person would first read claim 1 as granted on the assumption that it is grammatically correct.

1.3 The pre-characterising part of the claim defines a negative ion generator, and also a direction in which the negative ions it generates are to be emitted. However, it does not provide any further specifications as regards the location, constitution or configuration of the negative-ion generator.

1.4 The characterizing portion of the claim 1, comprises two clauses which are separated by a comma followed by the conjunction "and".

The first clause concerns the negative ion generator and specifies that "the negative-ion generator (4) is built in the grip (1)". Due to the separation of the clauses by a comma it can only be understood that there was a deliberate intention when drafting the claim to separate the specification of the second clause from the first clause.

1.5 Although there is a tendency to read the term "therein" in the second clause as referring to the immediately preceding object i.e to the outlet, it could, as the appellant has submitted, in principle, refer to either "the grip" or to "an outlet". However, as the appellant also indicated, the skilled person would make a technically sensible interpretation of the syntax by taking the context of the claim into account. The board considers this to be as follows.

1.6 The second clause is clearly set out to define the outlet (9) which is essential for emitting the negative ions (as opposed to the grip, which although a necessary feature, is of less relevance to the invention). Thus, the skilled person would interpret the specification of the second clause as defining the outlet (9) to be comprised in the grip and that an electrode for emitting negative ions is situated in the outlet. The functional aspect of the characterising portion, specifying that the outlet opens to the hair-care section to emit the negative ions towards the hair-care section, only reinforces the interpretation that an electrode for emitting negative ions is in an outlet opening to the hair-care section. Therefore, there is nothing in the construction of the second clause of claim 1 which would dissuade the skilled person from concluding that the term "therein" applies to "an outlet".

1.7 Consequently, the board agrees with the respondent that the structure of the second clause makes it clear, from both a linguistic and technical point of view, that the term "therein" must refer to "an outlet" which is part of the grip, i.e. the electrode is located within the outlet of the grip.

1.8 The skilled person would also not see any technical difficulty with such an arrangement since, by placing an electrode in the outlet, the negative ions are produced in the nearest location available for emission towards the hair-care section. The board also agrees with the respondent that the safety issues raised by the appellant would not be a bar to placing the electrode in the outlet since the outlet could be appropriately designed to take account of such issues. In any case, although high voltages are under consideration these would be produced so as not to generate dangerous currents which would not be tolerated in hand-held care devices.

1.9 Therefore, the board agrees with the opposition division's conclusion that the subject-matter of claim 1 as granted is clearly defined.

1.10 The appellant also argued that, in any case, the original application discloses the contested feature since figure 1 shows that the negative-ion generator, which comprises the electrode, is located in the outlet.

However, the board does not accept the appellant's submission that the outlet is that part of the device shown in figure 1 of the application which is inclined by 10 to 30 degrees relative to the axial line "A" of the hair-care section and the grip, since the outlet is explicitly defined at paragraph [0039] of the application as published where it is stated that: "The opening 28a of the case 28 plays the role of the outlet 9." as illustrated in figures 6 and 7A.

1.11 As the opposition division indicated in its decision, the position of the electrodes with respect to the outlet is explicitly disclosed at paragraph [0042] of the application as published, where it is stated that "Because the outlet 9 for emitting negative ions are (sic) provided near the electrode of the negative ion generator 4, the efficiency...". This configuration is clearly shown in figures 6 and 7A where the outlet 28a,9 is shown as being located away from the needle or line electrodes 3,25 which generate the negative ions.

1.12 It is also not accepted that if the term "near" is taken to mean "close", or "to or at or within a short distance in space or time", that the above sentence of paragraph [0042] means that the electrode 3, 25 is either located inside or outside the neighbourhood of the outlet 9, and therefore that the application discloses that an electrode is in the outlet as being one of the two alternatives.

However, as observed by the respondents, it is not sufficient to show that the contested feature might be hypothetically possible according to the disclosure of paragraph [0042] of the application, but rather, it must be demonstrated that the contested feature is directly and unambiguously disclosed. Since the person skilled in the art would differentiate between the electrode being provided "close to or at or within a short distance" to the outlet on the one hand, and the electrode being provided "in the outlet" on the other hand, this is not the case.

1.13 Consequently, the subject-matter of claim 1 as granted does not meet the requirements of Article 123(2) EPC.

2. Auxiliary requests

2.1 Auxiliary request 13

During the oral proceedings before the board, the appellant confirmed its request that auxiliary request 13 be discussed first (see minutes of the oral proceedings and letter of 4 April 2016, page 1).

The characterizing portion of claim 1 of auxiliary request 13 reads:

"the negative-ion generator (4) is built in the grip (1), and the grip further comprises an outlet (9) opening to the hair-care section (2) to emit the negative ions of the negative ion generator (4) due to discharge around an electrode therein towards the hair care section (2)."

2.1.1 The board agrees with conclusion of the opposition division that claim 1 of auxiliary request 13 is clear in the sense that the term "therein" in the context of the claim again refers to the outlet, since the characterising portion still consists of two clauses separated by a comma, with the second clause essentially appertaining to characteristics of the outlet. Therefore, the same reasoning concerning Art 123(2) EPC made for the main request applies to auxiliary request 13.

2.1.2 In the hypothetical case that the term "therein" were to be considered to refer to the negative-ion generator, rather than the outlet (since the negative ion generator now immediately precedes the term "therein"), then the subject matter of claim 1 would infringe the requirements of Art 123(3) EPC, since by changing the position of the electrode from being in the outlet to being in the negative-ion generator, the scope of protection is extended.

2.1.3 Also, the conditions specified in G 1/93, Headnote, point 2, do not apply, since the feature of the electrode being in the outlet clearly provides a technical contribution to the subject-matter of the claimed invention since it gives a precise indication of how to construct the device which may be advantageous. Therefore, any amendment which changes the position of the electrode from "in the outlet" to "in the negative-ion generator" would infringe the requirements of Art 123(3) EPC.

2.1.4 Thus, irrespective of whether the term "therein" is taken to refer to the outlet or to the negative-ion generator, the subject-matter of claim is unallowable. In the first case, the objections made under Art 123(2) EPC made for the main request still apply. In the second case, claim 1 infringes the requirements of Art 123(3) EPC since the scope of protection has been extended.