Zusammenfassung von EPC2000 Art 084 für die Entscheidung T0447/22 vom 28.09.2023

In T 447/22 the board construed the "steering device" in claim 1 as an actual physical component of the machining device which was adapted for actively controlling the direction of the machining device. The board recalled that it was a general principle applied throughout the EPC that a term of a claim could be interpreted only in context. The claims did not stand on their own, but together with the description and the drawings they were part of a unitary document, which must be read as a whole (see e.g. T 556/02, T 1646/12, T 1817/14 and T 169/20). The board stressed that the extent to which description and drawings could provide an aid to interpret the claims was however subject to certain limitations. In particular, a claim could be interpreted in the light of the description and the drawings to the extent that they contained logical and technically sensible information. Furthermore, interpreting the claim in the light of the description and the drawings did not make it legitimate to read into the claim features appearing only in the description or the drawings and then relying on such features to provide a distinction over the prior art. This would not be to interpret claims but to rewrite them (see T 881/01). Many decisions of the boards of appeal had concluded that a discrepancy between the claims and the description was not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (see, for example, T 431/03, T 1597/12, T 1249/14). The description could not be used to give a different meaning to a claim feature which in itself imparted a clear, credible technical teaching to the skilled reader (T 1018/02, T 1391/15). On a similar note, the board in T 197/10 had held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims were not, as a rule, to be taken into account for the examination of novelty and inventive step. In the present case, the board concluded that, despite the inclusion of several examples without a steering device in the paragraphs referring to embodiments of the invention, the description was consistent with the board's interpretation of "steering device" in claim 1. Only one sentence in paragraph [0030] stood out, since it stated that the "springy protruding parts act as the steering device". In the board's view, taking account of this deviant note would mean ignoring the natural reading of the claim and disregarding the extensive contextual information provided by the rest of the description. It could only lead to a technically discrepant claim interpretation which the skilled person would be unwilling to adopt and would actually deprive the claims of their intended function. The board noted that the Regional Court of Düsseldorf reached a different conclusion in its judgement concerning infringement proceedings on the patent in suit. Regarding adaptation of the description, the board concurred with the large body of case law of the boards of appeal according to which Art. 84 EPC is the basis for bringing the description in line with the amended claims in order to avoid inconsistencies (see, for example, T 977/94, T 1808/06, T 2293/18). Hence, any disclosure in the description and/or drawings inconsistent with the amended subject- matter should normally be deleted or a statement should be added that an embodiment was not covered by the claims (see e.g. T 1808/06). In the underlying case the board agreed with the submissions of the opponents (appellants II and III) that the amended description still contained passages that were inconsistent with a claim of auxiliary request 2. The board noted, however, that these inconsistencies had already existed in the patent as granted. In this context, it pointed out that the Enlarged Board of Appeal had concluded in G 3/14 that a granted claim may turn out not to comply with Art. 84 EPC but that "such non- compliance must be lived with" (see point 55 of the Reasons). By analogy, the same must apply in respect of a claim amended in opposition proceedings where a non- compliance with Art. 84 EPC - whether concerning a lack of clarity or a lack of support by the description - already existed in the patent as granted. Since neither clarity nor lack of support as expressed in Art. 84 EPC constituted a ground for opposition under Art. 100 EPC, it must thus be accepted that the removal of an inconsistency between description and claims was not possible in such a case (see, for example, T 433/97, T 367/96 of 3 December 1997, T 1808/06, T 2391/18). Hence, the board concluded that the inconsistencies raised were not open to examination in opposition appeal proceedings, in accordance with decision G 3/14.