Friday, 23 May 2014

T 1147/11 - Added subject matter after grant

Closing the hole
Photo by Asparukh Akanayev obtained via Flickr.


This is an Opposition appeal. The proprietor tried to overcome added subject matter objections by amending the description and figures. 


Claim 1 as granted, which is in the main request, concerned a multistage gas generator. The relevant parts are:  

A multistage gas generator (101) for an airbag (103),  (...)
g) wherein the inner shell (4) is of cylindrical shape and is provided with an opening portion (5) which is to be opened by combustion of the gas generating means (52,62) in one of the combustion chambers  (...)
i) said opening portion (5) is closed with a shielding plate (7) before actuation, wherein
j) the opening portion (5) can be opened by detaching the shielding plate (7) only by actuation of the combustion chamber (60) defined inside the inner shell (4) so that gas flows out from the combustion chamber (60) defined inside the inner shell (4), and
(...)

Feature g) comes from the claims a filed, but features i and j do not.

The opposition division found that the shielding plate caused the granted patent to extended beyond the content of the application as file. An inescapable trap looms...


The applicant found an original way to deal with this added subject matter objection: the Main Request comprises amended description and amended drawings. The amendments include, inter alia, deletion of all passages relating to the term "shielding plate" in the description and deletion of Figure 31, the only figure showing a "shielding plate" covering a through-hole which is already closed by a separate member.

The idea is that this would force the skilled person to conclude that the shielding plate corresponded to the stainless plate or breaking plate of the description, as these plates already provided a "shielding function". And thus, claim 1 of the Main Request would not contain subject-matter extending beyond the content of the application as filed.

We'll only discuss the main request.

Reasons for the Decision
(...)
3. Main Request - added subject-matter in the granted claims (Article 100(c) EPC 1973)

3.1 Claim 1 as granted is a combination of claims 1, 5 and 54 as originally filed (features a) to h)) and comprises the additional features i) to k), allegedly stemming from the description. Moreover, the description and drawings of the granted patent have been modified by deleting any reference to the term "shielding plate".

3.2 According to the jurisprudence of the Enlarged Board of Appeal (see G 2/10, OJ EPO 2012, 376, point 4.3 of the Reasons, referring to the standards already set in decisions G 3/89 and G 11/91 (OJ EPO 1993, 117 and 125)), it is required that "any amendment to the parts of a European patent application or a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed" (emphasis added by the board). This means that the test for an amendment must be "that after the amendment the skilled person may not be presented with new technical information" (see G 2/10, point 4.5.1 of the Reasons, emphasis added by the board). With regard to a positive feature introduced into a claim (see G 2/10, point 4.5.2 of the Reasons), "it can be examined whether the subject-matter of that feature was disclosed in the application as filed. With respect to the new combination of features which is claimed after the introduction of that feature, it can be examined whether that combination was disclosed in the application as filed" (emphasis added by the board). The standard of comparison when judging any amendment therefore has to be the application - i.e. claims, description and drawings - as originally filed.

Moreover, according to the established case law of the boards of appeal, a claim should be read giving the words the meaning and scope which they normally have in the relevant art. Nevertheless, a patent, being a legal document, may be its own dictionary and may define technical terms and determine how a skilled person has to interpret a specific term when used in the description or the claims. If it is intended to use a word which is known in the art to define specific subject-matter to define a different matter, the description may give this word a special, overriding meaning by explicit definition (see e.g. T 500/01, point 6 of the Reasons, and T 61/03, point 4.2 of the Reasons).

3.3 The mere deletion of passages in the description or deletion of Figure 31 in the documents according to the present Main Request has not been objected to by the respondent. Claim 1 according to the Main Request, which is identical to claim 1 as granted, was amended before the grant of the present patent. In this respect, the board notes that, for examining the ground for opposition under Article 100(c) EPC 1973, it has to be assessed whether claim 1 contains subject-matter which extends beyond the content of the divisional application as filed, in particular (see above) in comparison with the whole of the documents (i.e. claims, description, drawings) as filed. In this regard, the meaning of the term "shielding plate" incorporated in features i) and j) plays a crucial role.

3.4 The term "shielding plate" defines as structural feature a "plate" which is further characterised by its function of "shielding". Moreover, in the context of features i) and j), the term "shielding plate" is associated with further functions, i.e. the "opening portion is closed with a shielding plate" and "can be opened by detaching the shielding plate" when the combustion chamber is actuated. The fact that an opening portion which is closed and opened by detaching a closing element is originally disclosed has not been put into question by the parties. However, it has to be assessed whether it is originally disclosed that said closing element might provide a shielding function as well and might be realised as a plate.

3.5 A plate as such closing a through-hole is disclosed in paragraph [0099] of the A-publication ("the through-hole 1110 is closed by the stainless plate 1111"; "instead of closing the through-hole 1110 by the stainless plate 1111, a breaking plate which is broken, peeled, burnt or detached by pressure or the like due to the combustion of the second gas generating agent may be welded, adhered or heat-sealed to close the through-hole 1110"). As regards the claimed shielding function, when reading claim 1 on its own, the skilled person would understand that a shielding function normally describes a protective function with respect to a further part which has to be protected or shielded from external influences.
If the skilled person were in doubt as to whether - in addition to the closing/opening function as described in features i) and j) - the term "shielding" has any further meaning or limiting effect at all, he would consult the description to interpret the specific term "shielding" used in claim 1 because the patent may be its own dictionary as mentioned above. In different passages of the application as filed, the "shielding plate" is consistently described as an additional part providing the function of shielding, i.e. protecting a member which closes the opening portion, whereby said closing member already forms part of the opening portion. In particular:

- Claim 8 as filed specifies that "a shielding plate is disposed outside of the opening portion", i.e. the plate providing the shielding function is clearly situated "outside" and therefore separated from the part or portion providing the opening function.

- According to pages 7 and 8 as originally filed (corresponding to paragraph [0017] of the A-publication), the "opening portion may be formed by forming a plurality of holes in the peripheral wall of the inner shell, and by closing the holes using breaking members. ... A shielding plate can be disposed outside of the opening portion". The opening portion as defined in this passage comprises holes closed by a breaking member (note: the term "opening portion" would not make sense when describing a part which is always open). The shielding function is further described as to "prevent flame generated in the combustion chamber provided outside the inner shell from coming into direct contact with the opening portion". In the board's view, the skilled person, when reading this passage, would derive only that the shielding plate is an additional part "outside of the opening portion" which protects the breaking member which closes the holes of the opening portion and which is opened (see paragraph [0017]) e.g. by "detaching the breaking member".

- Page 34 of the application as originally filed (paragraph [0053] of the A-publication) describes that "the opening portions 5 comprise a plurality of holes 6 formed in the peripheral wall of the inner shell 4 and a breaking member 7 for closing these holes. As for the breaking member 7, a stainless seal tape is used." The breaking member is formed such that it is not broken by combustion of the first gas generating agent. As a further alternative, it is mentioned that "alternatively, as another way to prevent the opening portions ... it is also possible to cover the opening portions 5 of the inner shell 4 with a shielding plate". Again, the skilled person, reading this passage, will recognise that the opening portion comprises holes and a breaking member, and the shielding plate is an additional part ("to cover the opening portions") which might be provided in addition if the breaking member cannot resist the combustion of the first gas generating agent.

- The embodiment described on page 60 as originally filed (corresponding to paragraph [0099] of the A-publication) shows "a substantially ring-like shielding plate 1186" as shown in Figure 31 and "disposed such as to cover the through-hole 1110 formed in the inner cylindrical member 1104". As depicted in Figure 31 and explicitly mentioned, a "seal tape which closes the through-hole 1110 is protected by the shielding plate 1186". Again, the shielding plate represents an additional part for protecting another part (a "seal tape") which closes the through-hole.

- Page 104 as originally filed (corresponding to paragraph [187] of the A-publication) mentions "a peripheral wall thereof provided with an opening portion 660", and the "opening portion is closed by a seal tape 622", which according to the appellant should suggest that the opening portion is represented only by a communication hole. However, elsewhere in the said passage, it is said that the "opening portion 660 is formed so that it does not open by combustion of the gas generating agent 609a in the first combustion chamber 605a". Since the function of "opening" is again attributed to the opening portion in this embodiment, the opening portion cannot be represented by a hole alone but must include a closing member, i.e. the seal tape 622 forms part of the opening portion.

3.6 The board therefore concludes that the "shielding" function, according to the application as originally filed, designates a specific function in addition to the closing function that is realised by a closing member (e.g. breaking member or seal tape), i.e. always relating to a separate part (i.e. the "shielding plate") which does not close the holes provided in the inner shell but which is provided "outside of the opening portion" or which "covers the opening portion" in order to protect the opening portion. In particular, there is no disclosure in the application as filed which would suggest that the shielding plate covers the opening portion entirely in a sense that the opening portion would be "closed" by the shielding plate. Therefore, the "shielding plate" feature as claimed is to be construed as meaning a part which is provided in addition to another part which closes the holes.

3.7 To summarise, the application as filed discloses an inner shell of the multistage gas generator that comprises - as part of the opening portion - a breaking member (e.g. a stainless plate, breaking plate or seal tape) which closes the holes of the inner shell. The breaking member is either, due to its design or characteristics, resistant to the flames of the combustion of the first gas generating agent (without the need to provide a further protective part), or is protected by an additional shielding plate outside to cover the opening portion, corresponding to alternatives a and b as identified by the appellant.

As basically admitted by the appellant with regard to the description of the granted patent, it is not originally disclosed that the shielding plate, optionally used as an additional protective part, might be used to close the holes. Such shielding plate, as now claimed by the combination of features i) and j) in claim 1 according to the Main Request, would contain the new technical information that, in addition to the seal tape or breaking member or breaking plate or stainless plate closing the holes in the inner shell originally described as closing members, the shielding member would be a further closing member, i.e. the holes would be closed by two parts. However, the term "shielding plate" already - due to the functional feature "shielding" - has a specific meaning in the context of the application as originally filed and cannot be used for defining a part which closes an opening portion and detaches as specified in features i) and j).

Therefore, the board judges that the amended subject-matter according to claim 1 of the Main Request is not directly and unambiguously derivable by the skilled person from the application as filed.

3.8 The appellant cited paragraphs [0076] and [0077] of the A-publication to show that parts were interchangeable and different parts could be used in combination. However, said passages explicitly relate to "the AIM, the communication hole, the connector, the self-contracting type filter or a combination thereof", not addressing modifications with regard to the member closing the hole. The general remark in paragraph [0076] that "the gas generator can also be realized by combining other parts described in the present specification" is not suitable for deriving directly and unambiguously that a breaking member or plate, which closes the holes of the inner shell, might be replaced by a shielding plate as described in the application as filed, in particular because the shielding plate is originally described only to be an additional protective part protecting the member which closes the hole and not described to be a part which is designed to close the holes.

3.9 The appellant also argued, referring to the deletion of the term "shielding plate" from the description and the deletion of Figure 31 in the documents forming the basis for its Main Request, that the description of the Main Request was clarified so that it no longer referred to any feature in addition to the feature for closing the opening portion. The skilled person was therefore forced to interpret the term "shielding plate" in the light of the remainder of the description, concluding that the shielding plate as claimed corresponded to the breaking plate and the stainless plate listed as members for closing the through-hole.

Without further reference to an additional or optional shielding plate in the description or figures, it has to be assessed whether the term "shielding plate" according to claim 1 describes nothing more than a plate preventing "a flame caused by combustion of the first gas generating agent 1109a from flowing into the second combustion chamber 1105b through the through-hole 1110 to burn the second gas generating agent 1109b", as described on page 60 of the description according to the Main Request for the "stainless plate" or the "breaking plate". However, as regards the requirements of Article 100(c) EPC 1973, it has to be examined whether the claimed subject-matter of the European patent in the light of the amended description was disclosed in the application as filed, i.e. by taking into account the disclosure of the claims, description and drawings of the divisional application as filed.

Page 50 of the amended description, starting with the description of the corresponding example ("Example of AIM 1") of page 60 of the amended description, explicitly refers to "another example of the gas generator for an air bag, which does not form part of the invention but which is useful for a better comprehension thereof". This suggests to the reader of the amended description that the "stainless plate" or "breaking plate" as mentioned on page 60, referring to this example, also does not form part of the claimed invention. Therefore, the board is not convinced by the appellant's argument that the "shielding plate" of claim 1 means nothing more than one of the two plates mentioned on page 60 of the amended description. On the contrary, since the breaking plate is also described on page 60 to be "broken, peeled, burnt or detached ...", or "the inner cylindrical member 1104 may be provided with a notch", the shielding plate as defined in claim 1 according to the Main Request - in the context of the amended specification - cannot be unambiguously equated to a plate described with respect to an example not forming part of the invention. In the board's view, even in the light of the amended description, the feature "shielding plate" as claimed does still relate to an additional part (in addition to the stainless plate or breaking plate, or even the notch provided in the inner cylindrical member) for closing the through-hole. 

In particular, the functional feature "shielding" attributed to the "shielding plate" is considered to have a technical meaning within the meaning of a protective part, e.g. preventing the breaking plate which might be burnt from coming into contact with a flame caused by combustion of the first gas generating agent.
Moreover, the example described with reference to Figure 1 (see page 26 ff. of the amended description), under the headline "Mode for Carrying Out the Invention", in which the opening portions comprise a plurality of holes and a breaking member which is specified to be a "stainless seal tape" (see page 34 of the amended description), is also defined as not forming part of the invention, i.e. again a shielding plate as claimed relates to a part which is provided in addition. As to the amended "Brief Description of the Drawings" (see pages 22 to 24 of the amended description), it is explicitly stated (in particular with reference to Figs. 1, 8, 18, 19, 22 to 25, 28 and 32 where a single closing member is shown) that the example shown does not form part of the invention.

Therefore, also in view of the amended description, it must be assumed that a shielding plate as defined in claim 1 according to the Main Request is provided in addition to the breaking members described with regard to the examples not forming part of the invention. However, as already stated above (see point 3.7), it is not directly and unambiguously derivable from the application as filed that a shielding plate is provided as further closing and detaching member in addition to one of the breaking members according to the examples described in the amended description.

3.10 In view of the above, claim 1 of the Main Request contains subject-matter which extends beyond the content of the divisional application as filed. Therefore the ground for opposition under Article 100(c) EPC 1973 prejudices the maintenance of the present patent according to the Main Request. Consequently, the Main Request is not allowable.





This decision has European Case Law Identifier:  ECLI:EP:BA:2013:T114711.20131129. The whole decision can be found here. The file wrapper can be found here.


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