Tuesday, October 06, 2020 T 1188/16 - Request filed in appeal is too late

 

Another case showing that filing new requests with the appeal can be a perilous undertaking. In first instance proceedings, the proprietor amended claims by including a 'fluid delivery interface' disclosed in paragraph 44 of the description. The opposition division objected that this was added matter since the amendment failed to include a 'reduced pressure interface' which was shown together with the former interface. In appeal, an auxiliary request is filed that addresses this objection, but the board will not allow it. 

The proprietor considered that the request  should be admitted, since it is responsive to objections first raised during oral proceedings. However, the board finds that the problem was unambiguously indicated at the oral proceedings, so that the appellant could have filed a request including the omitted feature then.

The appeal was dismissed. 

Tuesday, May 15, 2018 T 0802/13 - (Un)disclosed combination of features?

This case concerns a successful appeal of a patent proprietor against a decision of the Opposition Division to revoke a patent on the ground of added subject matter.

In the Opposition Division's view, claim 1 of the main request lacked features of the embodiments disclosed in the application as filed in combination with the features added to amended claim 1.

In the BoA's view (see also GL(2017), H-V, 3.2.1), the skilled person is presented with additional technical information if only some of the features of an originally disclosed combination of "inextricably linked" technical features are extracted.This is the case if the original disclosure conveyed the teaching, explicit or implicit, that all the features of that combination had to be present together in order for a specific technical effect to be obtained. In such a situation, claiming only some of those features would present the skilled person with the different (additional) technical information that the omitted features were optional for that specific technical effect (reason 4.3, last paragraph, of the present decision).

However, this was not found to be the case here essentially because those non-claimed  features of the embodiments disclosed were considered to contribute to technical effects different from the technical effect derivable from original claim 1 (and application as originally filed). The BoA considered those non-claimed features exemplary rather than limitative for achieving the desired technical effect. 

Furthermore, in view of the BoA, both the Opposition Division and the respondent did not clearly distinguish between what is covered by a claim from what is disclosed by a claim. A claim can cover much more than what it discloses, thus also embodiments which are not originally disclosed, but this is irrelevant for the evaluation of added subject matter. 

Monday, November 27, 2017 T 782/16 - Can the content of a divisional be derived from an omnibus parent?

In this opposition appeal the Board had to assess if the opposed claims could be derived from the filed divisional and parent. In the Board's view, the "gold" standard for the assessment of Articles 123(2) and 76(1) EPC requires that the subject-matter of an amended claim (or of a claim of a divisional application) be based only on what the skilled person would directly and unambiguously derive from the application as originally filed (or from the earlier application; see G 2/10). For a correct application of this standard, a distinction needs to be made between subject-matter which is disclosed either implicitly or explicitly in the original (or earlier) application and therefore can be directly derived from it, and subject-matter which is the result of an intellectual process, in particular a complex one, carried out on what is disclosed. The Board concluded that the latter was the case.

T 2333/11: What exactly does "divided into smaller objects" mean?

Another case showing the dangers of Art. 123(2) EPC: an amendment going beyond the original disclosure seals the fate of this patent application. Dividing configuration information into smaller objects and dividing content metadata into smaller objects are not considered to be the same thing.

Friday, January 20, 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?

Tuesday, January 26, 2016 T 1990/10 - Combining ranges

Can you puzzle the claimed range from multiple disclosed ranges?

The claims in this Opposition appeal contained ranges that were taken by combining ranges in the description. 

Claims 1 and 4 of the main request contained the ranges 'below 35°'C and 'about 26°C to 32°C'. Although these ranges are not explicitly disclosed, numerous other ranges are disclosed which might be combined to obtain the claimed ranges.  

For example, can you get 'below 35°'C from the disclosed ranges "below 37°C"  and "30°C to 35°C"? The board thinks not. In part because the qualifiers 'below' and 'about' are not disclosed correctly for the combined ranges.

The proprietor appellant (Appellant I) did not attend oral proceedings or respond in substance to the preliminary opinion. In response, the board canceled the oral proceedings.

Wednesday, April 29, 2015 T 1791/12: referall to Enlarged Board of Appeal as a last resort

Now and then, when I read a decision of a Board of Appeal, I get a sad feeling because the patent owner tries everything to maintain his patent or to maintain it in amended form and it seems that none of his argument are convincing and none of his auxiliary requests solve the problems. "Dear Board, my claims are inventive, there are no violations of Art. 123(2) and I have a number of auxiliary requests which should be admitted to the procedure and solve all the problems." And then the answers of the Board are: "No, No, No." Under EPC 1973 a last resort for the patent owner was to request the Board to refer the case to the Enlarged Board of Appeal "in order to assume the uniform application of law". Maybe you can guess the answer to this question.
This appeal extends from a decision of the Opposition Division. The Opponent and the Proprietor filed the appeal. Besides a discussion about novelty, inventive step, an important part of the decision relates to violations of Art. 123(2) and intermediate generalization. In this context, the proprietor defined a question that should be referred to the Enlarged Board of Appeal and its subject relates to intermediate generalizations. 


Summary of Facts and Submissions

(...) 

IV. With letter dated 28 June 2013, the proprietor requested the following question to be referred to the Enlarged Board of Appeal according to Article 112(1)(a) EPC:"What principles apply for judging an intermediate generalization in sense of Art. 123(2) EPC especially in view of the differing interpretations as given in T1906/11 and T0248/12?"

Tuesday, March 10, 2015 T 1122/11 - Close, closer, closest prior art

This decision shows that it may be useful to appeal a refusal of an application, and show that the initial closest prior art in an inventive step rejection should actually not have been considered to be the closest prior art. Starting from another closest prior art document, the result here was that the appeal board came to different conclusion than the examining division (and in fact agreed with the applicant).
Besides that, for readers that may struggle with the meaning of blood, blood-based sample, blood sample, serum sample, plasma sample, blood-derived sample, etc., this decision clarifies that one can never be too careful in describing in the application as filed what samples are being used, since these terms are certainly not readily exchangeable. The components in blood are multifold and endless different kinds of blood-based samples may possibly be used, according to the board.

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division announced at oral proceedings on 1 December 2010 refusing European patent application No. 07 754 043.3.

Claim 1 of the application as originally filed read as follows:

"1. A method of determining whether a patient will be responsive to a drug or treatment, the method comprising:

obtaining a test spectrum produced by a mass spectrometer from a serum produced from a patient having a disease;

processing the test spectrum to determine a relation to a group of class labeled spectra produced from respective serum from other patients having a same or similar clinical stage disease and known to have responded to or not responded to a drug or treatment; and 

determining, based on the relation of the test spectrum to the group of class labeled spectra, whether the patient will be responsive to the drug or treatment."

Friday, August 01, 2014 T 1944/10 - A sensor for secure delivery

In this opposition appeal the board had to decide if an amendment allowed by the opposition division was an intermediate generalization or not. The opposition division had allowed the following claim. (Changes are shown with respect to Claim 1 as granted; formatting has been added for clarity.)

Apparatus for the secure delivery of an article having a readable codebarcode, which apparatus comprises

-              a box (9; 70; 80; 209; 309) having a door (30; 30a; 30b; 230; 330) and locking means for locking the door,

-              an input device (362) capable of enabling a deliverer to enter a delivery code,

-              a controller for controlling access to the box having a pre-programmed code stored therein and capable of verifying the delivery code with the pre-programmed code characterised in thatwherein there further comprises

-              an article codebarcode reader (361) for reading the article codebarcode (253) to verilyverify delivery of the article, the controller being arranged to control the locking means and to release the locking means if at least a part of the article barcode read by the article barcode reader (361) matches the pre-programmed code stored in the controller, and

-              a transmitter (363) arranged to transmit the article codeidentity of the article, the identity of the deliverer, the time and/or date of delivery and the identity of the box to a desired location after the door is locked.

Support for this claim had to come from the 'fifth embodiment'.  This part of the application text refers also to a sensor, which is not in this claim. For example:  (page  16, lines 1-3)

The presence of the article is detected by sensor 367 thereby causing sensor 367 to signal to the controller 365 that an article has been placed in the box 309. When the door closes, the controller 365 signals the lock 311 to lock the door 330.

On the other hand, the text also contains suggestions that the sensor is optional. For example: (page 15, lines 18-20)

The box is preferably further provided with one or more article sensors (for example infra red/optical sensors) 367 and a transmitter/receiver 36.

 The Board had to decide if the sensor could be omitted without violating article 123.



Reasons for the Decision

1. The appeals are admissible.

2. Background of the invention

2.1 The present patent is concerned in the first place with "secure article delivery", see title, and first line of claim 1. In particular, as already stated in the original application as published, see page 1, 2**(nd) and 3**(rd) paragraphs, it addresses problems in secure delivery of items requiring recipients to be at home to sign for them.
The application as published, see claim 1, and the general statements on page 1, lines 23 to 27, and page 8, lines 1 to 5, describe the proposed solution in general terms: namely a box with a door that is openable by a deliverer when empty but which, once closed with an article inside, can only be opened by the recipient of the article.

2.2 The original description presents a number of distinct embodiments of this idea, some of which are mechanical and others electronic. For example, in the purely mechanical embodiment of figures 1 to 10, the bottom of the box is provided with a sprung platform. As long as no article is in the box a deliverer can open the door. When an article is in the box it weighs the platform down, the deliverer then shuts the door. Thus lowered with the door shut, the platform activates a latch which prevents the deliverer from reopening the box. See for example page 8, line 6 to page 9, line 5 and figure 1. Secure delivery is thus achieved by denying the deliverer access to the box after he has placed the item inside and shut the box.

The electronic embodiments are described in the application as published, page 15, line 6 to page 19, line 13 in conjunction with figures 11a, 11b and 12. These embodiments, referred to as the "fifth embodiment" offer an electronically controlled version of the box, page 15, lines 6-9. Here secure delivery is achieved by a controller 365 locking the door after an article has been placed in the box and the door closed (application as published, page 16, lines 1 to 6). Delivery verification takes place in a remote server based on delivery information sent once the article is secure in the closed box (application as published, page 16, lines 8 to 18).

3. Added subject matter, Article 123(2) EPC

3.1 As acknowledged by the respondent, claim 1 as granted and the amended version upheld by the decision under appeal claim are directed at the embodiment shown in figures 11 and 12 and described in detail as the fifth embodiment on pages 15 to 19 of the published application. Thus, claim 1 as upheld is directed at an apparatus for the secure delivery of an article having a readable code, and includes (amongst others) the features of a box with a locking means, an article barcode reader, a controller for controlling access to the box and a transmitter. According to the claim the controller controls access to the box by releasing the locking means when part of the article barcode read by the reader matches a stored pre-programmed code, the transmitter transmitted relevant delivery data after the door is locked. The description of the article barcode reader, the controller and the transmitter, and their operation using the pre-programmed codes is found specifically in the published application on page 15 , last paragraph, and the 2nd paragraph on page 16.

In addition to these features that are present in claim 1 as upheld, the description of the fifth embodiment on pages 15 to 17 also mentions other features that have not been included. In particular it mentions a sensor detecting the presence of an article in the box, see page 16, first paragraph ("the presence of the article is detected by sensor 367 ... to signal ... that an article has been placed in the box 399"), and shown at 367 in figures 11 and 12. This feature disclosed in combination with those mentioned above on pages 15 to 18 has thus been omitted from the combination of features appearing in claim 1 as upheld. Claim 1 as upheld thus lifts some but not all features from the specific combination of features originally disclosed in relation to the fifth embodiment.

3.2 According to established jurisprudence, it is normally not allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description, see Case Law of the Boards of Appeal, 7th edition, 2013, II.E.1.2 and the decisions cited therein. Such an amendment results in an intermediate generalisation, in that it further limits the claimed subject-matter, but is nevertheless directed at an undisclosed combination of features broader than that of its originally disclosed context, see for example T1408/04 and T461/05. It is justified only in the absence of any clearly recognisable functional or structural relationship among the features of the specific combination, see T1067/97, and if the extracted feature is thus not inextricably linked with those features, see T714/00.

3.3 The Board must therefore consider whether such a justification exists in the present case. In other words it must examine whether the skilled person would derive directly and unambiguously from the original application documents that those features described in combination on pages 15 to 18 and incorporated into claim 1 of all requests, in particular controller, barcode reader and transmitter, have no clearly recognisable functional or structural relationship with the features of the fifth embodiment not incorporated, in particular that of the article sensor.

3.4 It is true that this part of the description relating to a fifth embodiment, said to be an "electronically controlled version of the [mechanical] box 309, see application as published page 15, lines 6 to 9, in following lines 18 to 24, that certain features, such as "one or more article sensors" may be "preferably" provided. This paragraph opens the description of the fifth embodiment by briefly describing its main features, some of which (article sensors, transmitter/receiver controller, barcode reader and keypad) are presented as preferable or dispensable. The following paragraphs on pages 15 to 18 then give a detailed description of how this particular embodiment is specifically realized, in terms of the interaction between its various features when an article is delivered. It is only then that the skilled person is given a complete teaching as to how the various features cooperate to achieve the stated purpose of the invention, that is secure article delivery. Far from being independent of each other, these paragraphs together describe a complete sequence of steps for securely delivering an article.

3.5 In more detail, a deliverer first unlocks the box by inputting a code or scanning an article barcode with the barcode reader, places the article inside and closes the door (page 15, last paragraph). Next, a sensor 367 detects that an article is in the box and signals this to the controller 365, which signals the lock to lock the door (page 16 first paragraph, which suggests various alternative sensing arrangements). Lastly, when the door is shut and "the package is secure inside the box", information pertaining to the delivery is sent via the transmitter to a central database for delivery verification (page 16, middle paragraph).

From the above sequence, the skilled person understands that the door can only be locked if an article is inside - the sensor must detect an article in the box and appraise the controller thereof which then locks the door. Therefore the skilled person understands the term "secure inside the box" to mean that the door is locked with an article inside. This understanding is consistent with the stated purpose of the invention and with all the other embodiments of the invention, as in the mechanical embodiment mentioned above (see above, section 2.2) in which the article's weight causes the lock to latch against further opening by the deliverer.

3.6 No other interpretation of what is meant by "secure" delivery can be derived from the original application as filed. Notably, the original application does not clearly and unambiguously disclose that "secure" might imply some lesser degree of security, in particular one in which it is ascertained only that the box has been opened with a barcode, but may then have been locked without the article being inside. Although the application does appear to suggest different degrees of secure delivery and ways of achieving this (see application as published page 20, lines 4 to 11), the skilled person will nevertheless understand that the minimum delivery security level consistently disclosed throughout the application as filed is for an article to be confirmed as being inside the box with the box locked.
Thus the skilled person understands "secure delivery of an article" in the context of the fifth embodiment, consistent with the stated aim of the invention (application as published, page 8, lines 1 to 5) and with the remaining embodiments, to mean that an item must be in the box and the box locked.

3.7 The only way to achieve such secure delivery disclosed in the description of the fifth embodiment requires the sensor signaling to the controller that the article is present in the box (application as published, page 16, first paragraph), thus these two features are functionally directly related. Furthermore, according to the fifth embodiment, verification of delivery (also claimed) is achieved by sending information, including that read by the barcode reader, to the controller, which sends it via the transmitter once the package is secure inside the box (page 16, middle paragraph). Consequently, this verification also requires input from the sensor to confirm the presence of the article in the box and cause the processor to lock the door. Thus the sensor is likewise functionally related to the barcode reader and transmitter. Furthermore, as can be seen from the system architecture shown in figure 12, the sensor 367 communicates directly with the controller 365, which in turn communicates with the barcode reader 361 and transmitter 363. The sensor is therefore structurally linked with the controller, barcode reader 361 and transmitter 363.

3.8 From the above it follows that the cited paragraphs provide a direct and unambiguous disclosure in the original application of a specific combination of features of a box with a door and a lock, an article sensor, an article barcode reader, a controller and a transmitter, which all cooperate using a pre-programmed code in the manner described to ensure verifiable secure delivery of the article inside the box. In that specific combination and within the context of achieving such a secure delivery of an article and verifying delivery, the claimed processor, barcode reader and transmitter are originally disclosed cemented in a tight functional and structural relationship, in other words inextricably linked, with the article sensor, which has not been claimed.

Where the published application on page 15, lines 18 to 24, refers to features such as the sensor being "preferably" provided, this is taken to refer to variants of the fifth embodiment for which no complete disclosure exists, in particular as regards how the various remaining features interact to provide for "secure delivery" in the only sense directly and unambiguously derivable from the application as filed. The only detail is provided in relation to the particular combination of specifically interacting features discussed above, in which the article sensor is a central, indispensable element.

3.9 The Board concludes that, by omitting the article sensor from this combination of features that forms the basis for claim 1 of all requests, those features that have been included, in particular processor, barcode reader and transmitter cooperating in the specified manner result in a combination of features for which there is no direct and unambiguous disclosure in the original application documents. Stated otherwise, this new, more general combination of features constitutes a teaching - namely that secure delivery can be achieved using a pre-programmed code and the article barcode read by the reader without a sensor sensing the article placed in the box - which the skilled person cannot derive directly and unambiguously from the application as filed. This results in a new subject matter which extends beyond the original application as filed, contrary to Article 123(2) EPC. This finding applies equally to the main and auxiliary requests 1 to 5, none of which include the feature of an article sensor.

(...)


This decision has European Case Law Identifier: ECLI:EP:BA:2014:T194410.20140314. The whole decision can be found here. The file wrapper can be found here. Photo by David Goehring obtained via Flickr.

Friday, May 23, 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.