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Thursday, 11 May 2017

Claims, descriptions, and drinks dispensers at the EPO

When determining what is made available to the public as part of the 'state of the art' by a prior art patent document, how should one analyse a combination of features found in the claims rather than the description?  The recent decision of the Technical Board of Appeal in T 1658/12 - 3.4.03 (concerning beverage dispensing machines) provides guidance to the effect that it is not only what is said that is important, but also where it is stated in the patent document.  Katfriend Heiko Sendrowski explains more, and concludes that the analysis is problematic:

Choose me!

The applicant claimed protection for a drinks dispenser system comprising a dispenser and a processor so that once user-specific information is provided to the processor, the dispenser is actuated automatically. The Examining Division refused the application in view of a prior art WO publication (D2). The applicant had argued before the Examining Division that the invention described in D2 required a further technical feature (in essence, selection by the user), whereas the claims of the patent application stipulated that the dispenser is actuated "automatically" without any further user intervention. The Examining Division disagreed, and the applicant appealed.

The Board of Appeal emphasized that each document must be interpreted by respecting the context of each part thereof to determine its true meaning. The claims of the prior art document according to the Board chiefly serve to define the subject matter for which protection is sought. The skilled person thus understands that claims may artificially combine (and omit) features of an invention to maximize scope of protection such that claims may not "truly correspond to the technical teaching of the document" (see sec. 3.8). In the present case, all examples required a further technical feature ("user intervention"). The skilled person would thus understand that the claims of D2 do not unambiguously disclose an embodiment without the additional feature (see sec. 3.9). The appeal was therefore allowed given that the subject matter of claim 1 involved an inventive step.

The IPKat's (uninventive) drinking dispenser

The analysis is problematic on various levels: The Board rejects certain parts of the description of D2 because those parts "merely recite the features of the claims". The decision is also difficult to reconcile with the principle that the technical teaching of a document is not limited by the examples (T 12/81, sec. 7) and that every information in the claims enabling a person skilled in the art to carry out an invention must be considered disclosed. In a case where the claimed invention differs from the alleged prior art by an omission or exclusion of a feature it is not tenable to argue that the prior art inherently or implicitly comprises the very feature in question because the skilled person would have added that feature anyway, even though such addition is not necessary to define what is meant by an explicit term, or to correct a technical error or implausibility.

The Board implicitly extends the requirement of support - which burdens patent applicants - to any prior art patent literature, removing from the prior art all clear, workable technical teaching broader than some other technical teaching that happens to be comprised in the same document. Novelty is not a question of whether or not the author of a prior art document deserved being granted a claim for a particular subject matter, and disclosure does not require that information to conform to some other teaching explained in greater detail. In effect, the Board extends the concept of "accidental disclosure" from the realm of inventive step to that of novelty. It would be interesting to hear the Board's comments on the reciprocal case: Can an applicant defend his application against an objection of lack of unity by arguing that the pending claims implicitly comprise features described in conjunction with preferred examples?"


StrongAndStable said...

Disagree. Novelty in relation to the subject-matter of a claim is absolutely bound with a question of whether or not the author of a prior art document deserved being granted a claim for a particular subject matter. At least two aspects of allowability are clarity and enablement. These correspond to the Gold Standard relating to subject-matter which is clearly and unambigously disclosed to one skilled in the art. Non-enabling disclosure cannot take away novelty, nor can unclear or ambiguous disclosure. Examples can clarify or enable unclear general disclosure, as the Board seems to have acknowledged. Of course, even unclear or non-enabled disclosure can then represent a starting point for the skilled person faced with the technical problem to implement the disclosure, but then we are in the realm of inventive step.

Anonymous said...

I have some sympathy for the BoA. Claims are read as non-exclusive de minimus sets of features unless the drafting has gone badly wrong. A claim to a machine having features A to C is not thereby also a claim to the machine excluding feature D. C On the BoA's view, the invention is more or less that the user is given no choice, ie a claim to features A to C and not D, and the "not D" element is not taught by virtue of its absence from the claim of D2. Multiple negatives...

I also note that the appellants appear to have invented the Nutri-Matic Drinks Synthesizer.

David HB said...

Leaving aside the question of inventive step in this particular case, I don't see this being a dramatic change from the normal EPC practice regarding the interpretation of prior-art.

If the prior-art consistently states that the user-preferences and selections are used to determine what to dispense, and doesn't directly and unambiguously disclose the lack of that necessity but merely fails to mention it in one or several parts, then the lack of that necessity cannot be considered "directly and unambiguously disclosed".

Anonymous said...

With regards to novelty this decision is not problematic or troubling at all. All the Board of Appeal have done is work out what is clearly and directly disclosed in the prior art.

Put simply, the broadest possible interpretation of claims and sections of the summary of invention of a piece of prior art implicitly discloses all of the features of the invention. However, that broad interpretation is not supported by a full reading of the prior art document and is not reasonable. A full reading of the prior art document strongly directs a reader to a much narrower interpretation of the relevant claims and section of the summary of invention. That narrower interpretation does not have all of the features of the new invention. Hence there is no clear and direct disclosure in the prior art of the new invention and the invention is novel.

Kant said...

A skilled person in the form of a patent attorney would know that the claims must contain the essential features of the invention and accordingly, not including certain features is an indication that the person drafting the application does not consider them to be essential. The reader of the document would know this consideration and use their knowledge of the requirements of the EPC to interpret the disclosure (or am I dreaming?).

Attentive observer said...

I think the decision is correct and I disagree with the writer.

What is described here is actually a situation which is not infrequent. When looking at an application as filed, which is the case for D2, the claims are often not in a form which would allow a patent to be granted. It follows that relying exclusively on the claims before any examination does not necessarily correspond to the true teaching of the application. This conclusion seems logical to me, and the Board was right in its appreciation.

The Boards explicitly refers to unexamined applications (last sentence in §3.8), not to patents.

Another situation can be imagined: when a claim in an application is not enabling (in its breadth), one cannot take its teaching as being novelty destroying. It might well be that an embodiment in the application is enabling, and then the claim ought to be limited to said enabling embodiment. What can be wrong with this? This situation is equivalent to the present one.

When one tries to understand the decision, it appears that an essential feature was missing in the claim as filed in D2, namely the selection by a user. Ignoring this fact is ignoring the teaching given in the application as a whole.

I find it therefore correct not to limit the teaching of D2 to the claims, but to the whole disclosure of the application.

The teaching in T 12/81 is much more specific than what has been summarised in the blog.

I refer to the Headnote in T 12/81: "In the case of one of a number of chemical substances described by its structural formula in a prior publication, that substance's particular stereospecific configuration (threo form) - though not explicitly mentioned - is anticipated if it proves to be the inevitable but undetected result of one of a number of processes adequately described in the prior publication by indication of the starting compound and the process. In such cases, novelty by selection cannot be claimed, since none of the possible combinations of all the listed starting compounds and process variants introduce a new element - indispensable for substance selection - that would result in a true and not just "identical" modification of the starting substances."

What happened in the blog is actually an undue generalisation of the teaching of decision T 12/81.

I think as far as novelty is concerned, that the claim of D2 represents a kind of accidental anticipation which does not resist a careful look at the whole content. Also for appreciating novelty under Art 54(3), it is the whole content which has to be taken into account, not just the claims.

MaxDrei said...

Some quick thoughts. I hope they prompt answers.

1. I think it unfortunate that the Board did not see more legal angles, and discuss them in its written decision. Specifically, on the issue of the difference between what a claim covers and what it discloses. You can see this most clearly in the field of selection inventions. I suspect that the Board was conscious of this caselaw, and thought it was somehow applicable to the present case. But it isn't, is it?

2. Folks at the EPO are always castigating patent attorneys for the inadequacy of their drafting. Sometimes I think it would do them good to walk in the shoes of a patent attorney for a few years. They might then grasp that what one does in preparation for writing a set of claims is to sift through the technical features and find those that are essential. They go in the independent claim. The ones that are optional come afterwards. Reading this Decision, one wonders whether it crossed the mind of any members of the Board that when one reads a patent application, one derives from it that the claims are not just an opening bid in a negotiation with the EPO but a seriously considered statement about which features are essential to the invention and which are optional. There is more disclosure in a set of claims than what the Board is seeing here.

3. We have seen in recent years, in DG1, an increase in blinkered "bean counting" and of proceeding strictly "by the book" without the confidence to lift the eyes and apply the law to the facts in a commonsense and real life way. Too many newbies perhaps. Too much fear of the EPO's Quality Police perhaps. It is a sad day when the Board starts doing the same. The idea that the subject matter claimed here was not, by the priority date, already obvious to those in the drink dispenser designing art, is laughable. On Art 56, the ED got to the tight conclusion, didn't it?

4. Can we compare the claimed subject matter here to the controversial Amazon "one click" patent?

5. Personally, I'm not convinced that the claim's novel feature: "configured...once...executes" really does rigorously exclude any selection event at all (for example an "Are You Sure you want This?" button push) between the processor's recognition of the customer and its dispensing a drink to that customer. As I see it, however, patentability hangs solely on that single word "once". A decidedly dodgy basis for a patent, I think.

What do other EPA's think, I wonder.

Anonymous + said...

I do agree with Max Drei that the justification for IS is a bit thin. It is not as bad as the famous hairdresser shop on wheels with a window in it, but not far from it.

In that respect the ED showed the right reaction, and Max Drei's is right here as well.

As the Boards have repeatedly stated that automatising a function cannot be considered inventive, one wonders why they came to acknowledge IS.

I also agree with Max Drei that in their wast majority folks at the EPO have little idea of what the job of a representative entails. Training does not, if at all, explain much about it. Those who have an idea are examiner having been successful at the EQE. Paper A is quite difficult for them.

Where I disagree with Max Drei is that the claims, at least at filing, represent a true account of what is disclosed in the description. It is the job of the representative to attempt a certain degree in generalisation, even by leaving some essential features out of the independent claims.

The situation is different after examination, and here I could agree that the claims are a better representation of the content of the description. I have however have to add the proviso that examination has have been been correctly carried out, and is not the result of a hastily performed exercise in order to get enough points as is nowadays current at the EPO, but still with an excellent quality!!

james said...

"The Boards explicitly refers to unexamined applications (last sentence in §3.8), not to patents."

So upon grant the disclosure content of the application documents changes by the mere fact of "having been examined"?

Suppose this application D2 is granted without amendment. Can the resulting patent be successfully opposed on the ground of added subject-matter? (The reasoning being that those claims are now "examined" claims, so disclose something that was not disclosed by the identical unexamined claims in the application as filed.)

I guess everybody will agree that the quality of being "unexamined" cannot impinge on what a (patent) document discloses to the skilled person.

MaxDrei said...

I posted my comment above without sight of the earlier 6 comments. Interesting, the range of opinions.

There is a typo in mine. The OD got to the "right" conclusion (rather than a "tight" one). Sorry about that.

Anonymous + said...

To James,

I fail to understand what added subject-matter has to do here.

We have on the one hand an original description which discloses one or more enabling variants. Then we have an independent claim, again originally filed, which does not take over all the necessary features. Everything, claims and description, being in the originally filed document, nobody would ever dream of coming up with added subject-matter. It is either a matter of enablement or a matter of clarity. This has nothing to do with added subject-matter, unless I do not understand what added subject-matter is about.

The disclosure content cannot and will not change whether there is examination or not. What might change is the wording of the claims, in that, for instance, the necessary features have been added following examination. This is quite different, and does not change my point of view.

In this case the Board rightly said that one should not just look at the claims as filed, but at the general teaching conveyed by the application, not just what is in the claim.

I have to agree with the "Attentive observer", that what matters is the whole content and not the whole claims.

MaxDrei said...

readers, a further thought on obviousness.

Each morning I grab a beaker of coffee from the coffee shop on the corner. I have an account there. The Barrista knows how I like my coffee. I'm very specific and individual in my likes. Yet, the moment he sees me enter his shop, he makes the coffee just how I like it. Every time. The process runs like clockwork.

By the time I get to the end of the counter the beaker is there ready for me to take away.

The only word I need to say is "Thank You".

Any parallels with the subject matter claimed here?

Anonymous said...

I think its painfully obvious (excuse the pun) that the patent doesn't have an inventive step.

The closest prior art discloses a vending machine that selects one or more suitable products on the basis of user identifying information. The user then has to press a button in order for the machine to dispense the product. So in one embodiment the machine will select a single product as being suitable and the user will then have to press a button to dispense that particular product.

In the invention a vending machine selects a suitable product on the basis of user identifying information and then automatically dispenses that product. So the only difference from the prior art is that a user no longer has to press a button after presenting user identifying information.

Despite this the Board has decided that "there is no realistic pathway by which the skilled person would be led to the claimed subject-matter in an obvious manner from this document". Ridiculous. Happily, this reasoning is all public so if the Patentee ever tries to assert their patent in a national court they can be laughed straight back out of court.

MaxDrei said...

Anybody wondering how the Board could conclude that the claimed subject matter exhibits an inventive step should bear in mind that this was a decision on appeal from the Examining Division. The Applicant enjoyed its "right to be heard" but the Division has no such right. It wasn't there at the Hearing. The Board heard only one side of the argument.

Presumably the Decision made the EPO managers happy though. Customer satisfaction trumps everything else these days, right?

So might the Board's Chair and Rapporteur now be rewarded with an uptick from the quality managers, for putting DG1 straight?

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