Friday, 25 December 2015

T 1112/12: is the amendment one of the types of amendments of G3/14?




In G3/14 the Enlarged Board of Appeal explained that during opposition no clarity objection can be raised for a number of specific types of amendments - in particular, if the amendments only relate to combining granted claims (or combining a granted claim with a portion of granted claim) or deleting alternatives from the granted claims, no clarity objections can be raised for clarity problems that were already in the granted claims because clarity is not a ground of opposition. In this case there was an amendment made by the patent proprietor and according to the opponent the amended claim lacked clarity. The clarity issue raised by the opponent was similar to a clarity issue raised by the Opposition Division. The Board concluded that this clarity problem was already in the granted claims. According to the Board of Appeal the amendment could be interpreted as deleting an alternative from the granted claim and, as such, the clarity objection is not allowed into this appeal procedure.
The interesting thing in this case is that the two alternatives are not defined as alternatives in the claims. According to the Board, the wording of a specific feature of the granted claims is such that only two alternatives fall within the scope of protection of that specific feature. One of the alternatives is excluded from the scope of protection in the amended claims. Subsequently this Board concludes that this is "deleting an alternative from the granted claims as meant by the Enlarged Board of Appeal in G3/14". Now I wonder whether I may conclude that: "By adding a disclaimer to a claim that excludes one of the alternatives that falls within the scope of protection of the granted claims, one prevents that the Opponent may raise clarity objections to your amended claim."?
Of course the reality of this case is a little bit more complex: during the opposition proceedings a not-supported-by-the-original-disclosure-objection was also raised against the now excluded / disclaimed alternative. 





Summary of Facts and Submissions


(...)


V. Claim 1 according to the main (and sole) request reads:
"A fuel system for a vehicle (52), comprising an inert gas generating system and a fuel tank (28; 66) having a fuel tank vent (68) for venting and supplying gas to the fuel tank (28; 66) and a fuel tank valve (122) for supplying gas to the fuel tank (28; 66), said system comprising:
an inlet (22; 70) for receiving a flow of gas having a nitrogen component and an oxygen component from a gas source;
a heat exchanger (24; 72; 82) downstream from the inlet (22; 70) and in fluid communication with the inlet (22; 70) for cooling gas received from the inlet (22; 70);
a gas separation module (26; 74; 106) downstream from the heat exchanger (24; 72; 82) and in fluid communication with the heat exchanger (24; 72; 82) for separating gas received from the heat exchanger (24; 72; 82) into a nitrogen-enriched gas flow and an oxygen-enriched gas flow;
characterized in that
said gas separation module (26; 74; 106) is adapted to deliver nitrogen-enriched gas from the nitrogen-enriched gas flow to the fuel tank (28; 66) through the fuel tank vent (68), and through the fuel tank valve (122) to the fuel tank without delivering the nitrogen-enriched gas through the fuel tank vent."


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Reasons for the Decision


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2. Allowability of amendments


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2.2 The respondent also argues that the parallel delivery arrangement as specified by claim 1 could only be achieved by providing valves, and these essential features were missing. This appears to be a clarity objection similar to the issue raised by the opposition division (paragraph 6.4 in the contested decision) that "an unspecified selective gas delivery function to the fuel tank and to the fuel tank vent is allocated to the gas separation module (cf. adapted to)", whereas as conveyed by the overall disclosure of the patent "said delivery function is allocated to the valves 120 and 122 which are arranged in parallel downstream from the flow valve 118 downstream from the gas separation module".


Independent claims 1 and 18 are amended in comparison to their granted version. As regards the provisions of Article 101(3) EPC that require assessing whether the patent as amended meets the requirements of the EPC, the Enlarged Board of Appeal has ruled in decision G 3/14 of 24 March 2015 (OJ EPO 2015, A102) that "the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC" (see Catchword). Decision G 3/14 distinguishes between different types of amendment. Cases where one of alternative embodiments of a dependent claim is implemented in the independent claim are referred to (see paragraphs 3 and 82) as Type A(i) cases, for which the same ruling applies as in Type B cases where a complete dependent claim was literally inserted (see paragraphs 2 and 81), since a dependent claim specifying alternative embodiments can be written out as two or more dependent claims. For Type B amendments, a negative answer is given in G 3/14 to the question whether clarity has to be examined (paragraph 81). In this context, G 3/14 also concludes (paragraph 83) that the same result follows in the case of amendments consisting of the deletion of wording (to narrow the scope) or of optional features from a granted claim, "leaving intact a pre-existing lack of compliance with Article 84 EPC". Although not explicitly stated, a common theme underlying this ruling appears to be that modifying a claim by merely deleting or excluding embodiments from the claimed subject-matter does not result in an amendment which is open to an objection under Article 84 EPC.


In the board's judgment, the present case falls under the type of amendments which may not be examined for compliance with Article 84 EPC for the following reasons:
The characterising portion of granted claim 1 ("said gas separation module is adapted to deliver nitrogen-enriched gas from the nitrogen-enriched gas flow to the fuel tank through the fuel tank vent and through the fuel tank valve") defines a fluidic connection between the gas separation module and the fuel tank, i.e. between two nodes of a network delivering gas, and two elements - fuel tank vent and fuel tank valve - installed between the two nodes, without further specifying said installation. Installation of two elements in a network between two nodes can be either in parallel or in series. To put it differently, the expression "through the fuel tank vent and through the fuel tank valve" in the granted version of claim 1 encompasses at least embodiments which might be characterised by a first expression reading "either through the fuel tank vent or through the fuel tank valve" (i.e. in parallel), which could also be reworded as in current claim 1, and a second expression reading "through the fuel tank vent and at the same time through the fuel tank valve" (i.e. in series). The wording of claim 1 according to the current request now excludes a series installation as specific embodiment, which was objected to with regard to granted claim 1 in opposition proceedings for not being originally disclosed, and therefore one of the two embodiments possible under the wording of granted claim 1, which cannot introduce any non-compliance with Article 84 EPC by way of the amendment. In particular, claim 1 as granted already left open, although comprising a parallel arrangement, whether the piping of the fluidic connection between the gas separation module and fuel tank had to comprise as essential features two valves, only one of which (the fuel tank valve) was - and still is - claimed.


The following is noted in this respect:
- In granted claim 1, "and" is not to be understood within the meaning of Boolean logic, which would exclude a parallel arrangement as defined by "either ... or" and which would be contradictory to the sole specific embodiment according to Figure 3 of the contested patent.
- An expression "either through A or through B" might be reworded to read "through A without through B, and through B without through A", or even "through A, and through B without through A", corresponding to the wording of current claim 1.
Moreover, the term "adapted to" already formed part of claim 1 as granted, so the clarity objection raised by the opposition division (see paragraph 6.4 of the contested decision) that "claim 1 must clearly specify which function is performed by which element", and that the selective delivery function cannot be allocated to the gas separation module itself, is not to be considered. It is also noted that the Enlarged Board in decision G 3/14 disapproved the line of diverging jurisprudence which was cited by the opposition division (T 1459/05, T 656/07) in exercising its discretion to examine the claim under Article 84 EPC.


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Order


For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance with the order to maintain the patent in amended form on the basis of the following:
- Claims: No. 1-21 of the main request as filed during oral proceedings.
- Description: Pages 2-9 of the patent as granted.
- Drawings: Figs. 1-4 of the patent as granted.



Reasons for the Decision

This decision T 1112/12 (pdf) has European Case Law Identifier:    ECLI:EP:BA:2015:T111212.20150617. The file wrapper can be found here. Illustration made by J. Willekens.

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