Friday, 20 January 2017

T 1148/12 - Does the figure show parallel electrodes?

Figure 9 shown above shows a garment with chest lead electrodes. According to the applicant the electrodes are arranged substantially parallel from each other and arranged in row. His main claim was amended by adding the restrictions 'parallel' and 'in row'. Can you get support from this amendment by looking at this and similar figures?

Reasons for the Decision
3.1 The appellant indicated that the features of a "parallel" and "in row" arrangement of the electrodes could be derived from the original description in combination with the figures, for example, paragraphs [0066], [0078] and [0093] referring to Figures 4 and 5, or paragraph [0105] in combination with Figure 9.
3.2 The Board agrees with the Examining Division's view in the decision under appeal that the text of the application as filed is entirely silent regarding the arrangement of the electrodes in "parallel".
Moreover, according to established case law following decision T 169/83 (as cited in Case Law of the Boards of Appeal, 8th edition 2016, II.E.1.12.1), features may be extracted from drawings provided that their structure and function are clearly, unmistakably and fully derivable from the drawings by the skilled person.
In the present case, Figures 4A, 5A and 9 schematically depict a shirt with a number of strip-shaped chest electrodes placed side by side. However, the schematic nature of these figures does not allow the skilled person to clearly and unmistakably derive that the arrangement of the electrodes is necessarily parallel. Nor does the description of the original application (particularly paragraphs [0066], [0078], [0093] and [0105] cited by the appellant) allow him to clearly and unmistakably derive anything related to the function of the purported parallel arrangement. Less than that, the skilled person would certainly not be able to recognise any meaningful technical purpose or function in the alleged parallel placement of the electrodes on the described elastic shirt, knowing that in use such parallel arrangement would invariably be lost when the elastic shirt was irregularly stretched over a rounded, bulging or busty chest of the user. Thus, these aspects distinguish the present case from that underlying decision T 748/91, cited by the appellant, in which the disclosure of the original application as a whole was held by the deciding Board to provide the skilled person with a discernible and reproducible technical teaching to extract a size ratio from the schematic drawings.
3.3 For the reasons given above, the subject-matter of claim 1 of all requests extends beyond the content of the application as filed, contrary to Article 123(2) EPC.
This decision T 1148/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T114812.20161124. The file wrapper can be found here. Illustration taken from the underlying patent application  05721407.4 (no changes made).

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