T 0977/25 - Input for G1/26

Key points

• Some of the questions pending in case G 1/26 have been essentially answered already by G 1/25. However, Question 3 in that case touches on an ongoing debate in the case law.
• "the Board considers that the term "it" in claim 12 is indeed ambiguous. Grammatically, it may refer either to the heater assembly or to the heater element. Furthermore, both possibilities are compatible with the technical context provided by the description and convey a clear technical teaching to the skilled person."
• Thus, claim 12 covers two technically reasonable scenarios: Either the heater assembly (scenario A) or merely the heater element (scenario B) extends across the opening of the housing.
• 28. Article 123(2) EPC requires a comparison between the "subject-matter" of the amended patent and the "content" of the application as filed. Evidently, therefore, whether amended claim 12 contains added subject-matter can only be decided once claim 12 has been interpreted.
• This seems entirely correct.
• 29. The original application directly and unambiguously discloses scenario B (see page 20, lines 3 to 7). Regarding scenario A, the application discloses the option that the heater assembly is fixed to the housing (page 22, line 22), but neither explicitly nor implicitly that the heater assembly extends across the opening.
• 30. The Board is aware that there are conflicting approaches as to how claim interpretation and the assessment of Article 123(2) EPC interact in the case of ambiguous claims. The Board is also aware of decision T 873/24, which referred pertinent questions to the Enlarged Board of Appeal. Neither party has, however, requested that the present appeal proceedings be stayed pending the decision in case G 1/26.
• 31. One of the mentioned approaches requires that all technically reasonable "interpretations" must comply with Article 123(2) EPC (see e.g. T 1791/16, Catch­word). Another appears to require that an ambiguity first be resolved by interpretation before compliance with Article 123(2) EPC can be assessed (see T 367/20, Reasons 1.3.9; T 847/24, Reasons 3.5). This Board does not agree with the latter approach. Specifically, it disagrees with its apparent implication that, in case of ambiguities, a claim must be interpreted in such a way that no violation of Article 123(2) EPC arises.[*] In other words, compliance with Article 123(2) EPC cannot be a precondition for the correct claim interpretation, but must instead be assessed after that interpretation has been established (see also T 2488/22, Reasons 21 and 22). Otherwise, this would contradict the underlying rationale of Article 123(2) EPC and the "gold standard" (G 2/10, OJ 2012, 376).
• *:  The implication is not apparent to me. 
• 32. At the same time, the Board does not share the view that leaving an ambiguity in a claim unresolved is tantamount to leaving its interpretation open (as was apparently assumed in the case considered in T 367/20, Reasons 1.3.9). Rather, an unresolved ambiguity may simply result in a broader interpretation.
• 33. In the present case, the Board interprets claim 12 as encompassing a situation in which either the heater assembly or the heater element extends across the opening of the housing, i.e. as equivalent to a claim which expressly states, in the relevant part, "fixing a heater assembly (30) comprising at least one heater element (36) to the open end of the housing so that [the heater assembly or the heater element] extends across the opening of the housing (24)".
• 34. Since this interpretation covers a scenario [*] which is not directly and unambiguously derivable from the application as filed, the Board judges that claim 12 infringes Article 123(2) EPC.
• *: Every claim includes embodiments that are more specific than what is mentioned in the application as filed, so this is correct. Suppose a claim recites 'a metal coating'; the application as filed mentions 'a metal coating' in the description; it is inconclusive to observe that the claim covers embodiments wherein the coating is gold or platinum. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t250977eu1