T 1705/17 - No Art.69 for novelty

 Key points

• The Board has to decide on novelty of claim 1, which in turn hinges on the interpretation of a feature of claim 1. The patentee argues that the description of the opposed patent should be taken into account 7as foreseen in Article 69 EPC”
• The Board: “Article 69 EPC is concerned with the extent of protection conferred by a European patent, with which the Board is not concerned when analysing novelty of the claimed subject-matter. In relation to Article 54 EPC it is evidently not the aim of Article 69 EPC to provide, in the event of a discrepancy between the claim wording and the description and/or the figures, a legal basis for a re-interpretation of the clear technical meaning of a claim. In case of such a discrepancy between the claims and the description and/or the figures, the claim wording must be interpreted as it would be understood by a person skilled in the art, i.e. the description and/or figures cannot be used to interpret the claim wording in a different way. Thus, the Board does not accept the respondent's argument that Article 69 EPC should be used to interpret the features of the claim.” 
• “A claim should be interpreted in a technically sensible manner and be given the broadest, technically reasonable interpretation and should be construed by a mind willing to understand, not a mind desirous of misunderstanding. Thus, the skilled person should only rule out interpretations which are illogical or which do not make technical sense”
• This holding is a counterpart to the remark in the Guidelines, G-VI,2 that “when considering novelty, it is not correct to interpret the teaching of a [prior art] document as embracing well-known equivalents which are not disclosed in the documents; this is a matter of obviousness” (cf. T517/90)

T 1705/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t171705eu1.html

1. Main request - novelty

1.1 It is not disputed that D1 discloses all the features of claim 1 with the exception of the feature

- [there is provided on a single or separate adjacent press jaws] penetrating segments, PSSG, (11) configured to penetrate the absorbing material with a plurality of side grooves that are arranged in the longitudinal direction.

1.2 According to the respondent  [patentee] claim 1 defined that each of the press jaws comprised more than one penetrating segments creating side grooves, which plurality was arranged along the longitudinal direction. The skilled person reading the claim would understand this, not least since all the embodiments of the patent disclosed a press jaw with more than one side groove (see Figures 20A to 28C of the patent as well as paragraph [0028], which describe always more than one PSSG per press jaw). According to the respondent, the description and the drawings should be used in the interpretation of the claims as foreseen in Article 69 EPC.

The Board does not agree. A claim should be interpreted in a technically sensible manner and be given the broadest, technically reasonable interpretation and should be construed by a mind willing to understand, not a mind desirous of misunderstanding. Thus, the skilled person should only rule out interpretations which are illogical or which do not make technical sense (see also Case Law of the Boards of Appeal 9th edition, II.A.6, Interpretation of claims).

The wording of the claim defines penetrating segments PSSG provided on separate adjacent press jaws. It does not define how many penetrating segments there should be in each of the press jaws such that it is not specifically defined in claim 1 that each press jaw must have more than one penetrating segment PSSG, as argued by the respondent. The lack of an embodiment in the description covering this possibility is no reason to depart from the clear linguistic structure of the claim.

Furthermore, Article 69 EPC is concerned with the extent of protection conferred by a European patent, with which the Board is not concerned when analysing novelty of the claimed subject-matter. In relation to Article 54 EPC it is evidently not the aim of Article 69 EPC to provide, in the event of a discrepancy between the claim wording and the description and/or the figures, a legal basis for a re-interpretation of the clear technical meaning of a claim. In case of such a discrepancy between the claims and the description and/or the figures, the claim wording must be interpreted as it would be understood by a person skilled in the art, i.e. the description and/or figures cannot be used to interpret the claim wording in a different way. Thus, the Board does not accept the respondent's argument that Article 69 EPC should be used to interpret the features of the claim.