Key points
- For novelty over a public prior use, the critical issue is what the term “push-pull-turn hose” in the claim means. The patentee argued that “The devices described in documents B1 to B4 comprise air push rods. Such rods do not qualify as hoses.” The opponent disagreed.
- The Board: “ The patent does not provide a definition for this expression.” The Board considers the OED dictionary and para. [0010] of the patent in suit. Further, “It is uncontested that the air push rod (document B2, page 6: Luftschiebestange) of the device sold by the respondent [opponent] is suitable for pulling, pushing and turning the packer in domestic pipes.”
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“The board is well aware that the concepts "hose" and "rods" are not interchangeable and that there are rods that cannot reasonably be called hoses and vice versa. However, the question to be answered by the board is not whether and to what extent the concepts of "hose" and "rod" are interchangeable. The question to be answered is whether the object referred to as an "air push rod" (Luftschiebestange) in document B2 qualifies as a PPTH within the meaning of claim 1 or, to put it another way, whether it falls within the scope of the expression PPTH. ”
- “what the general public would have understood by "hose" is irrelevant for the question at issue. ”
- “The arguments [of patentee] that even a child would be able to distinguish a hose from a rod and that Franklin D. Roosevelt expected to be understood when referring to a hose in one of his speeches are both based on the observation that there is some sort of intuitive understanding of what a hose is. However, this sort of intuitive concept or archetype is not decisive when dealing with patent claims because the purpose of such claims is to precisely define what is claimed in an objective way and not to provide some intuitive mental picture of what is referred to. To put it another way, the literary genre of patent claims is different to the literary genres of political speeches and children's books, and so are the conventions that need to be observed therein.”
- The Board, still: “The very core of the invention appears to lie in the discovery that the devices of the state of the art, which the inventor had purchased, could be improved by using elements of greater flexibility (such as the hoses mentioned in paragraphs [0055] and [0056] of the patent) than the known air push rods. In such a situation, it is necessary to carefully define the distinguishing feature(s). It is not sufficient to rely on using a concept ("hose") which may evoke certain associations in the general public (such as the typical flexibility of a garden hose) but which does not bear closer scrutiny because there are very different types of hoses, not all of which correspond to the stereotype.” (emphasis added)
- “The appellant also relied on the CPC classes, according to which hoses (class F16L11/00) are part of the general class of pipes (F16L) but form a considerable technical field in themselves. However, these observations are without relevance for the question to be decided by the board. The CPC classes are the result of a historical process. They provide a possible way of classifying technical objects, but they are in no way unique or normative. Therefore, as a rule, the fact that a given object is (or is not) part of a given class does not make it possible to conclude that it cannot be part of another, distinct class.”
- The Board, in conclusion: “None of the appellant's [patentees] arguments was found persuasive. Therefore, the board maintained its provisional opinion that the air push rod of the prior use qualifies as a PPTH within the meaning of claim 1.”
- As a comment, G 3/14, r. 55 can be cited: “For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to ... (ii) Article 100(a) EPC / novelty []”
4.3 Feature 1-6: "push-pull-turn hose" (PPTH)
The patent does not provide a definition for this
expression.
The OED defines the word "hose" as "a flexible tube or pipe for the conveyance of water or other liquid to a place where it is wanted". The term "hose" as such does not allow conclusions to be drawn on the level of flexibility of the object designated as such. Some hoses are extremely flexible (e.g. fabric fire hoses), whereas others may be quite rigid (e.g. steel-reinforced hydraulic hoses).
A relevant piece of information regarding the PPTH is found in paragraph [0010] of the patent:
"... The flexible but stable push-pull-turn hose provides for a tool to push and position the bladder arrangement effectively. The flexibility of the push-pull-turn hose allows the push-pull-turn hose to pass through narrow and bended [sic] pipe and its stability allows it to transmit sufficient push- and rotation force to the bladder arrangement."
Thus, a PPTH is a flexible tube or pipe sufficiently flexible to pass through pipe bends (i.e. completely inflexible hoses are excluded) and sufficiently rigid to transmit forces both along the longitudinal axis of the hose (push-pull) and in a direction of rotation around that axis (turn).
5. Alleged public prior uses
In point 13 of the decision under appeal, the opposition examined the alleged public prior uses. In its annex to the summons to oral proceedings before the opposition division, the opposition division noted that several of the alleged prior uses were substantiated but not adequately proven and that it was necessary to hear the witness Mr Bichler in this respect. The witness was heard at the oral proceedings (see document WAB). Subsequent to this hearing, the opposition division concluded that the prior uses had been proven beyond any reasonable doubt (point 13.9, last paragraph, of the decision under appeal).
It is uncontested that the opponent had sold devices for installing a liner in a pipe to Svensk Röranalys before the priority date. However, there were two main points of contention, namely (1) whether it was proven beyond reasonable doubt that the devices sold had the features described in documents B1 to B4 and (2) whether these devices anticipated the subject-matter of claim 1.
source http://justpatentlaw.blogspot.com/2021/12/t-096117-ii-claim-interpretation.html
