Zusammenfassung von EPC2000 Art 084 für die Entscheidung T1266/19 vom 18.07.2023

In T 1266/19 claim 1 of the main request (patent as granted) was directed to a method which comprised at least six process steps. The process steps (i) to (v) defined a chronological order in which the claimed method had to be performed. It was, however, disputed between the parties whether step (vi) had to be performed as last step in the method as defined in claim 1. Step (vi) read as follows: "determining a statistical value for an allele call in a genotyping assay that cannot be derived from the read number alone", ("step (vi)")." The respondent (patent proprietor) had submitted that step (vi) had to be carried out as last process step. This was the necessary result of the claim's structure which mentioned this feature as its last step and the skilled person's interpretation of claim 1 in the context of the patent's teaching as a whole. Reference in this regard was made to the patent and the case law of the Boards of Appeal, in particular decision T 1646/12. The board did not agree with the respondent and noted that neither the process steps (i) to (v) nor the preamble of claim 1 mentioned the terms cited in step (vi). Claim 1 was also silent on using formal identifiers for the at least six process steps, such as, for example, (a) to (f). Nor could the use of step (vi) as last process step be derived from the structure of claim 1 in any other way. On the contrary, the use of the term "including" in claim 1 which immediately followed the preamble left the order of the steps open, since this term in the context of patent claims was commonly understood to have the same meaning as comprising. The board also considered that the skilled person reading claim 1 was familiar with the terms "statistical value", "allele call", "genotyping assay" and "read number" as mentioned in step (vi) and aware of their meaning. These terms were thus clear in themselves and in their relation to each other. In such a situation, it was established case law that terms in a claim must be given their broadest technical sensible meaning, and that a definition in the description which is absent from a claim cannot give these terms and, hence, the claim as a whole a more narrow/restrictive meaning. In the present case it was thus neither necessary nor justified to rely on isolated passages of the description to interpret the claim more narrowly, let alone to read into claim 1 further limitations as derivable from the description only which were absent from the claim (see T 169/20). Besides, the board observed that step (vi) did not specify "how" and "when" the statistical value was to be determined, except for indicating the purpose of its determination. Accordingly, step (vi) included the determination of statistical values in any way and at any time of the claimed method as long as such a value served the indicated purpose. The board further pointed out that decision T 1646/12 specified that two extremes should be avoided when interpreting the claims. Firstly, it was not permissible to regard the claims and the description as communicating vessels, so to speak, for example by reading limiting features mentioned in the description but not in the claims into the latter. Such a transfer of limiting features could not be achieved by construction, but by amending the claims only. Secondly, the claim cannot be considered as being completely separate from the description either. According to the board, in the present case the respondent applied the first extreme by arguing that the skilled person, based on the description, would interpret that step (vi) had to be carried out after steps (i) to (v). The board concluded that claim 1 did not set any chronological order for the application of step (vi). Hence, step (vi) comprised any statistical value irrespective of when and how the value had been obtained, except that the value must be used for an allele call in a genotyping assay that could not be derived from the read number alone. The respondent had also submitted that the term "allele call" used in step (vi) was defined in the description as "determining whether a subject is homozygous or heterozygous at a locus" which limited claim 1. The board disagreed and recalled that, as set out above, it was established case law that terms in a claim must be given their broadest technical sensible meaning, and that a definition in the description which was absent from a claim could not give the claim a more narrow/restrictive meaning.