Friday, June 27, 2014 T 1577/10 - Keep your eye on the ball

As the world championship is well under way in Brazil, a decision related to a football is appropriate. Claim 1 concerns  "A laminated ball (1) for a ball game". 

The claim contains a feature of which the clarity was questioned in opposition:  a peripheral edge portion of the leather panel is folded toward an inside by about 90° or by about 180°. 

The word 'about' is suspect in Claim drafting. The guidelines tell us that (F-IV, 4.7)"Particular attention is required whenever the word "about" or similar terms such as "approximately" or "substantially" are used. (...) In each case, the examiner should use his judgment as to whether the meaning is sufficiently clear (...)".

Claim 1 of the main requests was based on a combination of dependent claims (claims 1, 2, 3 and 4 as filed), and amendments taken from the description. 

Given the fact that this claim was amended after grant, even including part of the description, one might fear that the Board will take this opportunity and do a full examination of the Claim, including clarity. 

Interestingly, after this board made its decision during the Oral proceedings on 26.03.2014, but before the decision was published on 16.06.2014, another board referred a question to the Enlarged board which deals with exactly this problem. The question is currently pending before the Enlarged board in referral case G 3/14 - (referred in T 0373/12).

Let's see what this board has to say about the matter.

Reasons for the Decision

3.2 Clarity, Article 84 EPC

3.2.1 The appellant has argued that the feature "a peripheral edge portion of the leather panel is folded toward an inside by about 90° or by about 180°" is unclear as such, and renders the claim unclear, Article 84 EPC.

3.2.2 The Board is aware of the current debate regarding the question whether and to what extent a board has the power under Article 101(3) EPC to examine clarity of amendments in opposition or a subsequent appeal made by a straightforward, literal combination of granted claims in correspondence with their dependency (see T373/12 of 2 April 2014 subsequent to the present decision and referring the question to the Enlarged Board). Whereas it was generally accepted that Article 101(3) EPC authorized the full examination of amendments for compliance with the requirements of the EPC (cf. G9/91, reasons 19) and that this also included those of Article 84 EPC (but not those of Article 82, G1/91) the broad view hitherto was that this applied only to the extent that an amendment introduced a contravention of a requirement, cf. CLBA, II.A.1.4 and T301/87 (OJ EPO 1990, 335) cited therein, more recently T478/09 and T589/09. A differing view has emerged in recent case law, see in particular T1459/05, T459/09, T681/00, T1324/09 and T409/10. T1459/05, T1324/09 and T681/00 held that a Board may exceptionally examine such an amendment for clarity, for example if it prevents a meaningful assessment of patentability, or raises to prominence a contradiction previously hidden. Though T459/09 (followed by T409/10 without comment) considered such amendments to be substantial and thus in principle always open to examination for clarity, there also, the amendment in question brought to the foreground a contradiction between newly juxtaposed features when considered in the light of the description, which would not have been immediately apparent in the granted claims.

3.2.3 In the present case the relevant features concern the peripheral edge of the panel being folded toward an inside by about 90° or by about 180°, which literally repeats the wording of granted claims 2 and 3, each dependent on granted claim 1. Issue is taken with the term "about" and whether the angle should be measured at the middle of the panel or at the edge, meaning that alleged lack of clarity would be intrinsic to the wording of the features rather than arising from a sudden contradiction with other features. Granted claims 2 and 3 are moreover the next highest ranking claims after claim 1 and relate to the most distinctive feature of the two embodiments, the fold angle, and thus can hardly be considered to have been hidden from view in the granted patent. Finally, this particular feature is not critical to the assessment of novelty or inventive step. Therefore, in so far the Board might have been inclined to follow this more recent case law (it is not) it finds that the exceptional conditions of the cited case law do not apply in the present case. Irrespective, the two fold angles distinguish the two embodiments as shown in the figures in a manner that the Board believes the skilled person with his mind willing to understand will be likely to understand with no undue effort. Prima facie therefore such a lack of clarity objection seems of little substance.

3.2.4 For these reasons the Board decided that it did not have the power under Article 101(3) EPC to examine the issue.

This decision has European Case Law Identifier ECLI:EP:BA:2014:T157710.20140326. The whole decision can be found here. The file wrapper can be found here.

Photo by Steven Depolo obtained from Flickr.