T 1561/23 - G 1/24 in action

Last month, the Enlarged Board of Appeal of the European Patent Office handed down its decision in referral G 1/24, concerning the use of the description for interpreting patent claims.  It held that:

The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.

In a recent decision (T 1561/23), the appellant argued, with reference to G 1/24, that a particular meaning (allegedly derivable from the description of the application) should be ascribed to some of the claimed terms.  The Board rejected the appellant’s position and found that the claims lacked novelty.  Examples (as disclosed in the description) of what a particular term could mean did not support the applicant’s position.

This article provides a brief overview of the decision with a view to showing how the Technical Board of Appeal applied the principles developed in G 1/24.

The decision is in German; the excerpts reproduced below are machine translations.

Background

This was an appeal from the decision of the Examining Division to refuse the application.

The application in suit related to a programmable logic controller (PLC) and a corresponding method.

A PLC is computer that is used for industrial automation and is designed to operate reliably in harsh usage environments.  It can automate a specific process or machine function (e.g. control of actuators and sensors), or even an entire production line.  A PLC receives information from connected sensors or input devices, processes the data, and triggers outputs based on pre-programmed parameters.

According to the description of the application, the control of actuators and sensors is performed on the PLC in the form of so-called “tasks”.  In addition to the “tasks”, there are other systems in a production plant, the functions of which must be synchronized with the production process and its control by the PLC.  Those systems are referred to as “additional functions”.

Claim 1 of the Main Request generally defined a “method for executing at least one additional function within a real-time environment in which at least one task with a given task runtime is executed, wherein at least one additional function with an indefinite function runtime is to be executed within the specified task runtime […]”.

The description of the application stated that examples of such “additional functions” include complex "vision systems", but also condition monitoring, machine learning and numerical controls.

According to claim 1, the at least one task is executed with a specified task runtime, whereby at least one additional function is to be processed within the specified task runtime.

Lack of novelty

D5 was discussed in the context of lack of novelty of claim 1.  One of the points relevant to the discussion was whether D5 disclosed “additional functions” as well as “tasks”.

The appellant argued that, in the method of D5, “only tasks are executed, but no additional functions” and that there is a clear distinction between “tasks” and “additional functions”. The “additional functions according to the application were complex, and therefore had an indefinite functional duration” while that the “tasks” of D5 would, in contrast, “only exceed their running time in exceptional cases, for example in error situations”.

To support its position, the appellant also referred to the description of the application, arguing that “tasks” are described to control actuators and sensors, while “additional functions” control “vision systems” or “condition monitoring”.

The Board considered the “tasks” and “additional functions” to be indistinguishable by their nature.  The Board argued that:

“it is not clear from the terms - even in the light of the description - how complex the "additional function" is in contrast to the "task" and how likely it is that the specified task running time will be exceeded.

On the one hand, the task runtime itself is not defined. On the other hand, the application mentions not only vision or machine learning as examples of additional functions, but also condition monitoring, which carries out an "assessment of the condition of the production plant by measuring and analyzing machine parameters.

It is not disclosed, and there is no reason to suppose, that such condition monitoring must be particularly complex and that its duration must therefore be "unpredictable" in a similar way to a vision system.

Furthermore, the board does not see that the claim or description would contain any indication that different degrees of unpredictability should be distinguished or how.”

G 1/24

During the oral proceedings before the Board, the appellant tried to dispute the Board’s interpretation of the claimed terms, relying on the teaching of G 1/24 summarised above (the hearing was held a few days after publication of the decision in G 1/24).

In response, the Board reasoned as follows:

“G 1/24 does not define what it means to use the description and drawings in an individual case, but refers to the case law of the Boards of Appeal.  Decision G 1/24 does not even explicitly require that the definition of a term from the description must necessarily be used for the interpretation of a claim.

The relevant question 3 ("may a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims [...]") was held to be inadmissible and it follows from the answer to Question 2 […] that such a definition cannot be disregarded, since it is to be used as part of the description and the drawings.

In the present case, as can be seen from the preceding analysis, the board has used the description and drawings in accordance with G 1/24.  It also explained why, in its view, this recourse would not justify a narrower interpretation of the wording of the claim.  In particular, it took into account the fact that the application does not provide a definition ("or similar information") for the terms at issue, regardless of whether or under what circumstances such a definition would then restrict the claimed subject-matter.

As stated above, the present application only gives examples of additional functions, but it cannot be deduced from this how "tasks" and "additional functions" would differ specifically and fundamentally.”

Accordingly, the Board found that the Main Request lacked novelty over D5.

Lack of inventive step

When discussing inventive step of Auxiliary Request 1, the appellant argued that the technical effect of the purported invention is that “in contrast to D5, in which pre-emptive tasks that exceed the intended running time are simply discontinued, a meaningful processing result of the additional function is always reported back” according to claim 1. The appellant referred to the description, wherein it was disclosed that a meaningful result could be a partial result or a result with at least up-to-date accuracy.

In addition to dismissing this reasoning from a technical standpoint, the Board noted that “[i]n this respect, too, the description contains only examples, and no general definition or other general explanation of what should be considered a meaningful editing result and how to ensure that a premature termination of any additional function produces such a meaningful result”.

Conclusion

G 1/24 requires that the description be consulted when interpreting the claims.

If key claimed terms are intended to be distinguishable, it may be helpful to include definitions to that effect at the drafting stage. 

In this case, the applicant appeared unable to rely on explicit definitions and instead had to piece together various passages of the description to support a particular interpretation.  Importantly, “examples” of what a particular term could mean did not help the applicant.

I will continue to monitor developments in the application of G 1/24 by the EPO Boards of Appeal.  In the meantime, if you have any questions or comments, or if there is anything I can help you with, please do not hesitate to get in touch.

This article is for general information only and is not intended to constitute legal advice. If you would like tailored advice on a specific matter, please do not hesitate to contact me.