T 0327/18 22-07-2021
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Safety override circuit for pneumatic positioner and method of use thereof
Amendments - intermediate generalisation
Amendments - added subject-matter (main request, auxiliary request
Amendments - yes)
I. The opponent and the patent proprietor filed appeals against the interlocutory decision of the opposition division on the form in which European patent No. 1 984 630 ("the patent") could be maintained.
II. In the decision under appeal, the opposition division held that auxiliary request 2 as filed during the oral proceedings before the opposition division on 13 October 2017 met the requirements of the EPC.
III. Initially, both parties requested summons to oral proceedings.
IV. In a communication dated 25 January 2021, the board summoned the parties to oral proceedings on 21 June 2021. On 23 April 2021, the board issued a communication under Article 15(1) of the Rules of Procedure of the Boards of Appeal in the version which entered into force on 1 January 2020 (RPBA 2020), informing the parties, inter alia, of its preliminary opinion that neither of the patent proprietor's requests appeared to comply with Article 123(2) EPC.
V. By letter dated 7 May 2021, the patent proprietor withdrew its appeal, leaving the opponent as the sole appellant. By the same letter, the patent proprietor further withdrew its request for oral proceedings and requested a partial reimbursement of the appeal fee.
VI. In a communication dated 17 June 2021, the board informed the parties that the oral proceedings scheduled for 21 June 2021 had been cancelled.
VII. The opponent (appellant) requests that the decision under appeal be set aside and that the patent be revoked.
The patent proprietor (respondent) requests, as a main request, that the decision under appeal be set aside and that the patent be maintained on the basis of the claim set labelled "Auxiliary Request 1" filed along with the statement of grounds of appeal on 23 March 2018 or, as an auxiliary request, that the decision under appeal be set aside and that the patent be maintained on the basis of the claim set labelled "Auxiliary Request 2" filed along with the statement of grounds of appeal on 23 March 2018.
VIII. The independent claims of the main request (claim set labelled "Auxiliary Request 1") have the following wording (the feature numbering used by the board is indicated in square brackets):
Claim 1:
[1.A] A pneumatic positioner (100), comprising:
[1.B] a converter (102) operable to produce a pressure at an output port in response to a control signal (114, 115) ;
[1.C] control circuitry (108) powered using an input control signal (106) to the pneumatic positioner (100) and [1.D] operable to generate the control signal (114) for the converter (102) based at least partially on the input control signal (106); and
[1.E] a safety override circuit (200) operable to receive the input control signal (106),
[1.F] provide the input control signal (106) to the control circuitry (108), and
[1.G] modify the control signal (114) for the converter (102) in response to an input signal (104; 106)
[1.H] the modified control signal (115) causing the converter to transition into a safe state and
[1.I] the safety override circuit allowing the control circuitry (108) to continue being powered by the input control signal (106) while the converter (102) is in the safe state.
Claim 9:
[9.A] A method performed at a pneumatic positioner (100), comprising:
[9.B] receiving an input control signal (106) at a safety override circuit {200) [sic];
[9.C] the safety override circuit (200) supplying the input control signal (106) to control circuitry (108) of the pneumatic positioner (100) to power the control circuitry (108);
[9.D] generating a control signal (114) for a signal-to-pressure converter (102) with the control circuitry (108) based at least partially on the input control signal (106);
[9.E] detecting an unsafe operating condition for the pneumatic positioner (100) based on an input signal (104; 106);
[9.F] modifying the control signal (114, 115) in response to detecting the unsafe operating condition to cause the converter (102) to transition to a safe state; and
[9.G] the safety override circuit (200) allowing the control circuitry (108) to continue being powered by the input control signal (106) while the converter (102) is in the safe state.
Claim 1 of the auxiliary request (claim set labelled "Auxiliary Request 2") differs from claim 1 of the main request in that the following features have been added:
[1.J] at least one sensor operable to detect an unsafe operating condition for the pneumatic positioner (100),
[1.K] wherein the control circuitry (108) can modify the control signal to transition the converter (102) to a safe state based on the detection.
Claim 8 of the auxiliary request (claim set labelled "Auxiliary Request 2") includes features 9.A to 9.G of claim 9 of the main request and the following additional features:
[8.H] the method further comprising: sensing an unsafe operating condition for the pneumatic positioner (100);
[8.I] and modifying the control signal (114, 115) to transition the converter to a safe state based on the detection.
IX. The opponent's arguments, in as far as they are relevant for this decision, can be summarised as follows:
Neither the main request nor the auxiliary request of the patent proprietor complied with Article 123(2) EPC, since claim 9 of the main request and claim 8 of the auxiliary request had been amended in such a way that they contained subject-matter which extended beyond the content of the application as filed.
In particular, features 9.C and 9.G of claim 9 of the main request had been amended to specify that the cited method steps were carried out by the safety override circuit, although this claim did not define which entity was to carry out the method steps set forth in features 9.E and 9.F. There was, however, no basis in the original application documents for a method in which steps 9.C and 9.G. were carried out by the safety override circuit, whereas steps 9.E and 9.F were carried out by arbitrary entities. Similarly, with regard to claim 8 of the auxiliary request, there was no basis in the original application documents for a method in which steps 9.C and 9.G were carried out by the safety override circuit, whereas steps 9.E, 9.F, 8.H and 8.I were carried out by arbitrary entities.
X. The patent proprietor's arguments, in as far as they are relevant for this decision, can be summarised as follows:
Regarding the support for the phrases in claim 8 of the auxiliary request, called into question by the opponent, "these are supported by page 9, lines 29 and 30 of our published WO 2007/003218 and by the equivalent phrases in our claim 1" (see patent proprietor's letter dated 8 August 2018, page 1).
1. Main request, added subject-matter
1.1 Claim 9 of the main request has been amended as compared with originally filed claim 9 of the application on which the patent is based, inter alia, by specifying that method steps 9.C and 9.G are carried out by the safety override circuit. Feature 9.F of claim 9 of the main request, however, has not been amended accordingly and therefore leaves open which entity is to carry out the cited method step of modifying the control signal.
1.2 In the decision under appeal (see section 5.2 of the reasons for the decision), the opposition division found the amendments to features 9.C and 9.G of claim 9 of auxiliary request 1 (now the main request) allowable, since these amendments aligned claim 9 with claim 1, and "[s]ince claim 1 meets the requirements of Article 123(2) EPC". In the same section of the decision under appeal, further reference was made to page 9, lines 29/30, of WO 2007/092476 A2.
1.3 The patent proprietor appears to concur with this view. Although the patent proprietor, in its reply to the statement of grounds of appeal of 8 August 2018, refers to "our published WO 2007/003218", the board notes that the international publication number WO 2007/003218 refers to a publication entitled "APPARATUS FOR HIGH-RESOLUTION NMR SPECTROSCOPY AND/OR IMAGING WITH AN IMPROVED FILLING FACTOR AND RF FIELD AMPLITUDE" which does not appear to be related to the patent. The board therefore presumes that the reference contained in the patent proprietor's letter was intended to be to WO 2007/092476 A2, which was also cited by the opposition division in the decision under appeal.
1.4 The argument that claim 1 of the main request provides adequate support for the above amendments in claim 9 of the main request, as argued by the patent proprietor and the opposition division, is not convincing. Article 123(2) EPC explicitly refers to the content of the application as filed, and not to the content of amended documents submitted after the filing date of the application, such as e.g. during the examination or opposition proceedings. This distinction is especially relevant with regard to claim 1 of the main request, which has been cited as a potential basis for the amendments to claim 9, since claim 1 of the main request has been amended as compared with originally filed claim 1. In particular, feature 9.C of claim 9 of the main request corresponds to feature 1.F of claim 1 of the main request. However, feature 1.F was not present in claim 1 of the application as filed.
Therefore, claim 1 of the main request does not provide an adequate basis for the amendments in claim 9 of the main request for the purposes of Article 123(2) EPC.
1.5 Claim 1 of the application as originally filed includes a feature defining that the safety override circuit allows the control circuitry to continue being powered by the input control signal while the converter is in the safe state (see feature 1.I), which corresponds to feature 9.G of claim 9.
However, in claim 1 of the application as originally filed, it is further defined that it is the safety override circuit that is operable to modify the control signal for the converter in response to an input signal to cause the converter to transition to the safe state (see features 1.G and 1.H). By contrast, feature 9.F of claim 9 of the main request merely defines "modifying the control signal (114, 115) in response to detecting the unsafe operating condition" without specifying that this step is carried out by the safety override circuit, as would correspond to the cited wording of claim 1 of the application as originally filed.
The question of whether the isolated amendment to feature 9.G, without also including the definitions of claim 1 of the originally filed application cited above, complies with Article 123(2) EPC will be discussed below.
1.6 With regard to the amendment to feature 9.C of claim 9 of the main request, the board further notes that the text passage on page 9, lines 29-31, of WO 2007/092476 A2, cited by the opposition division, reads:
"the safety override circuit 200 receives the input signal 106 and provides it to the control circuitry 108. The control circuitry 108, powered by the input signal 106 ...".
However, it is noted that the embodiment discussed in this text passage further provides that it is the safety override circuit that modifies the control signals (see e.g. page 9, lines 5/6, and page 7, lines 22-26, of WO 2007/092476 A2).
1.7 In summary, both claim 1 of the application as originally filed (potentially providing support for the amendment to feature 9.G) and the embodiment addressed in the cited text passage from the description (potentially providing support for the amendment to feature 9.C) additionally define that it is the safety override circuit that modifies the control signals. In contrast, as also indicated by the opponent, claim 9 of the main request leaves open which entity is to modify the control signals as per feature 9.F. Hence, the question of a potentially unallowable intermediate generalisation arises.
According to established case law (see e.g. Case Law of the Boards of Appeal, 9th Edition, July 2019, II.E.1.9), 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. An intermediate generalisation can be justified only in the absence of any clearly recognisable functional or structural relationship among the features of the specific combination or if the extracted feature is not inextricably linked with those features.
No arguments have been provided by the patent proprietor as to why it would be allowable to include, from claim 1 of the application as originally filed, the definition that it is the safety override circuit that allows the control circuitry to continue being powered by the input control signal while the converter is in the safe state (feature 1.I), without also including from that claim the definition that it is the safety override circuit that modifies the control signal in response to detecting the unsafe operating condition (feature 1.G).
Indeed, there is a clearly recognisable structural and functional relationship between these two features. Claim 1 of the application as originally filed essentially defines that the safety override circuit, inter alia, (a) directs the converter to enter the safe state by modifying the control signal (see features 1.G and 1.H), while (b) allowing the control circuitry to be powered while the converter is in the safe state (see feature 1.I). Hence, the presence of the "safe state" of the converter (as referred to in features 1.I and 9.G), is defined by the action of the safety override circuit, namely by the safety override circuit modifying the control signal, as defined in feature 1.G. The functional relationship between the step of the safety override circuit modifying the control signal (feature 1.G) and the definition of the converter as being in the safe state (feature 1.I) is further highlighted by the text passage on page 9, lines 5-8, of WO 2007/092476 A2 (referring to the same embodiment as the text passage on page 9, lines 29/30, cited by the patent proprietor as support for the amendments made in claim 9 of the main request):
"The safety override circuit 200 may be any collection of electronic components that can interrupt or modify the communication of the control signals 114 to the E/P converter 102 without disrupting the ability of the input signal 106 to power other components of the pneumatic positioner 100."
Hence, there is a clear functional relationship between features 1.G and 1.I. These features also have a clear structural relationship since the execution of steps 1.G and 1.I of claim 1 of the application as originally filed are structurally integrated into the same entity, namely the safety override circuit. These considerations further lead to the conclusion that these features are inextricably linked with each other.
1.8 Extracting, from claim 1 of the application as originally filed, only the definition that the safety override circuit allows the control circuitry to continue being powered by the input control signal while the converter is in the safe state (see feature 9.G), without also including the definition that it is the same safety override circuit that modifies the control signal to cause the converter to transition to a safe state, therefore gives rise to an unallowable intermediate generalisation.
1.9 The subject-matter of claim 9 of the main request thus extends beyond the content of the application as filed, thereby contravening Article 123(2) EPC.
2. Auxiliary request, added subject-matter
Claim 8 of the auxiliary request contains the same amendments to features 9.C and 9.G as does claim 9 of the main request, without specifying that method step 9.F is carried out by the safety override circuit.
Therefore, mutatis mutandis, for the same reasons as indicated above with regard to the main request, the auxiliary request does not meet the requirements of Article 123(2) EPC.
3. Conclusion
In view of the above observations, taking into consideration the amendments made by the proprietor to the patent during the opposition proceedings, the patent and the invention to which it relates do not meet the requirements of the EPC. Hence, the patent must be revoked.
4. Partial reimbursement of the proprietor's appeal fee
According to Rule 103(3)(a) EPC, the appeal fee will be reimbursed at 50% if the appeal is withdrawn after expiry of the period under Rule 103(1)(b) but within one month of notification of a communication issued by the Board of Appeal in preparation for the oral proceedings.
In the present case, the board issued a communication pursuant to Article 15(1) RPBA 2020 on 23 April 2021. The patent proprietor withdrew its appeal in a letter dated 7 May 2021 and received on 10 May 2021, i.e. within one month of notification of the board's communication.
Therefore, the conditions of Rule 103(3)(a) EPC are fulfilled with respect to the patent proprietor's appeal fee, which is consequently to be reimbursed at 50%.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. The appeal fee paid by the patent proprietor is reimbursed at 50%.