Key points
- In this examination appeal, the Board raises a clarity objection: " it would not be clear for the skilled reader how the method of claim 1 takes the "reference temperature setting" according to feature (d) into account, other than by merely accepting it as an input to the optimisation calculation".
- The appellant "referred to several paragraphs of the description and highlighted that "the disclosure of the present application is consistent in itself". It emphasised that, by virtue of Rules 42(1) and 43 EPC, any claim construction must necessarily rely on the description. It concluded that claim 1 might be broad but did not lack clarity."
- "The board does not share the appellant's view. Rather, the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader. This is because Article 84 EPC stipulates that the matter for which protection is sought is defined by the claims. It does not require to rely on any other part of the application documents."
- "For the reasons set out in points 2.1.1 to 2.1.3 above, the board considers that claim 1 of the main request, taken by itself, would indeed not be clear for the skilled reader."
- As a comment, this decision illustrates quite settled case law. Indeed, the Board cites no particular decisions to support the statement "the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader" (for the examination of clarity).
2.1.3 Furthermore, it would not be clear for the skilled reader how the method of claim 1 takes the "reference temperature setting" according to feature (d) into account, other than by merely accepting it as an input to the optimisation calculation.
2.2 The appellant referred to several paragraphs of the description and highlighted that "the disclosure of the present application is consistent in itself". It emphasised that, by virtue of Rules 42(1) and 43 EPC, any claim construction must necessarily rely on the description. It concluded that claim 1 might be broad but did not lack clarity.
The board does not share the appellant's view. Rather, the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader. This is because Article 84 EPC stipulates that the matter for which protection is sought is defined by the claims. It does not require to rely on any other part of the application documents. For the reasons set out in points 2.1.1 to 2.1.3 above, the board considers that claim 1 of the main request, taken by itself, would indeed not be clear for the skilled reader.
2.3 Hence, the main request is not allowable under Article 84 EPC.
The Board's position that "the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader" parallels the USPTO's MPEP 2111 : "During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification."
ReplyDeleteThis is no surprise, the disclosure of a single species belonging to a genus defeats novelty of a claim to the genus.
Noting that the Applicant was Siemens I thought at first about the difficulty of writing text free of ambiguity in a language not your own. But then I noticed that this specification was written in the USA. So now I can guess why Francis Hagel refers to US law in his comment.
ReplyDeleteBoth jurisdictions tell us that the claim has to be construed in the context of the description. But they differ in how that requirement is imposed, in practice. One can imagine that this decision must have come as an unpleasant surprise for the drafter of this specification and claim, in the USA .
But no wonder the EPO is so strict on clarity, given that once the claim issues, nobody can argue that it lacks clarity. If the EPO wants to minimise criticism of the quality of the patents it grants, it will continue to impose on Applicants the highest attainable levels of clarity, throughout pre-issue examination.
It was probably first week January that I wrote this post and upon re-reading it, I don't know what the Board means with stating that the claims must be "*tested* against the broadest possible or objectively reasonable construction which would occur to the skilled reader", though I suppose it refers to the examination of patentability. At any rate, the Board seems to approve of using "the broadest possible construction which would occur to the skilled reader" for testing the claims, which indeed seems close to the practice at the USPTO.
ReplyDelete