Zusammenfassung von EPC2000 Art 084 für die Entscheidung T0111/22 vom 28.06.2023

In T 111/22 the board interpreted the feature "wherein component (ii) comprises 10- 45 wt.% of palatinose" in claim 1 of the patent as granted (main request) in order to compare the claimed subject-matter with the original disclosure. The appellant (patent proprietor) had argued that claim 1 was unclear on how to calculate the range 10-45 wt.% of palatinose and thus the description had to be used for interpretation. In the description, this amount was calculated referring to the total amount of available carbohydrates. This was evident from page 5, lines 15 to 20 of the description as filed. Therefore, according to the appellant, the skilled person would have interpreted claim 1 as granted calculating the 10-45 wt.% of palatinose on the basis of the "available carbohydrates composition" and not on the basis of the amount of component (ii). The board recalled that patent claims must be interpreted through the eyes of the person skilled in the art, who should try with synthetic propensity to arrive at an interpretation which is technically sensible and takes into account the whole disclosure of the patent. However, the extent to which the meaning of a claimed feature may be affected by the description and/or the drawings was limited. There was a consensus within the boards about the primacy of the claims in claim interpretation (see T 1473/19, T 73/19 and T 169/20). This meant that in case of a clear conflict between the claims and the description, the claims took precedence. In other words, if a person skilled in the art understood a claim in a certain manner without doubt, taking into account the rules of grammar, the ordinary meaning of the terms used and common general knowledge, this understanding usually took precedence over an incidental and conflicting statement in the description, in particular if that statement was only made in the context of an alleged embodiment. Thus, the board concluded that the requirement in claim 1 that the composition contain a component (ii) "wherein component (ii) comprises 10-45 wt.% of palatinose" could only be understood so that it was component (ii) - and not the entire amount of carbohydrate in the composition - which comprised 10-45 wt.% of palatinose. This interpretation corresponded to the unambiguous wording of claim 1 and was "technically sensible". The board noted that there were no reasons to adopt a different claim interpretation based on the preferred embodiment described in paragraph [0021] of the description. Since no basis for the feature "wherein component (ii) comprises 10-45 wt.% of palatinose" could be found in the application as originally filed, claim 1 of the main request contained added subject-matter, contrary to the requirements of Art. 123(2) EPC. The same conclusion applied mutatis mutandis to auxiliary requests 1 to 7. Claim 1 of auxiliary requests 8 to 11 required that "15-45 wt.% of component (ii), based on the available carbohydrate composition, consists of palatinose". The appellant had argued that by virtue of Art. 69 EPC, paragraph [0021] of the granted patent, which defined the amount of palatinose on the basis of the available carbohydrate composition, had to be taken into account to determine the scope of protection of the granted patent. Hence, the scope of protection was not extended. The board pointed out that Art. 69(1), second sentence, EPC could not be relied upon for replacing a claim feature with a different one which could only be found in the description (see T 450/20). Reading the statement in paragraph [0021] into the clear wording of claim 1 as granted to establish compliance with Art. 123(3) EPC would have the consequence that the wording of this claim merely served as an empty shell (see Case Law of the Boards of Appeal, 10th ed. 2022, II.E.2.3.1c), in particular T 1172/08). This would undermine the principle stipulated in the first sentence of Art. 69(1) EPC and reiterated in decision T 1473/19 that the claims have primacy for determining the extent of protection conferred by the European patent. In the board's view, it would also be at odds with providing a reasonable degree of legal certainty for third parties as required by Art. 1 of the Protocol on the Interpretation of Art. 69 EPC. The board concluded that claim 1 of auxiliary requests 8 to 11 extended the scope of protection beyond that conferred by the patent as granted (Art. 123(3) EPC).