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Case Law of the Boards of Appeal

 
 
6.1. General principles

The skilled person, when considering a claim, should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding (T 190/99; confirmed inter alia in T 437/98, T 1084/00, T 920/00, T 552/00, T 500/01, T 1023/02, T 749/03, T 859/03, T 1241/03, T 1418/04, T 906/05, T 405/06, T 1537/05, T 1204/06, T 1771/06).

However, in T 1408/04 the board emphasized that this is understood to mean only that technically illogical interpretations should be excluded. A mind willing to understand did not require that a broad term needed to be interpreted more narrowly (even if, as in the case at issue, the narrower interpretation would refer to a structure which is very common, but not exclusive, in the technical field concerned).

In T 1771/06 the board held that a claim which specifically referred with closed language to the characterising part (GBSS gene fragment in the antisense direction) of the gene construct and, in a legitimate attempt to generalise, left open other structural elements necessary to operate the system ("comprising a fragment ... which codes for ...., said fragment consisting of a nucleotide sequence selected from ... SEQ ID No: ..."), was not an unusual claim formulation and saw no problem with it. The board did not accept the appellant's argument that the scope of the claim extended to gene constructs which comprised any DNA in addition to the GBSS gene fragments. The skilled person would certainly take into account the fact that the gene construct was made for the purpose of introducing the GBSS DNA fragment into the potato cells and integrating it into the genome. Accordingly, the gene construct would be thought to contain all necessary DNA elements for these steps to take place.

In T 409/97 the board held that an erroneous statement in the introduction to the description was of no assistance in interpreting the claim and establishing the subject-matter for which protection was being sought, where this statement contradicted its actual content.

Two methods having no technical bearing on each other cannot form a single multi-step process (i.e. a "technical whole") even though they are linguistically linked together in a claim (T 380/01).