T 1458/14 29-08-2018

1. Article 100(c) EPC

1.1 The objections of the respondents concern the amended feature of claim 1 (all requests) "the second detection portion (66, 76, 93) is aligned with the first detec­tion portion in a first direction in which the ink car­tridge (3) is inserted into the image forming apparatus (1) during installation of the ink cartridge (3) into the image forming apparatus (1)" and in particular with the two detection portions being "aligned".

1.2 In decision G 2/10 of 30 August 2011 (point 4.3 of the Reasons, first paragraph), the Enlarged Board of Appeal stated the following: "The importance and the applica­bility, without exception, of Article 123(2) EPC was underlined in the jurisprudence of the Enlarged Board of Appeal as early as in its opinion G 3/89 and deci­sion G 11/91 (OJ EPO 1993, 117 and 125, relating to amendments by way of correction). From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons" (empha­sis added by the board). The underlined text is fre­quently referred to as the "gold standard" for asses­sing any amendment for its compliance with Article 123(2) EPC (see G 2/10, point 4.3 of the Reasons, last paragraph).

In the present case, it is thus necessary to determine whether the skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed the feature "the second detection portion (66, 76, 93) is aligned with the first detec­tion portion in a first direction in which the ink cartridge (3) is inserted into the image forming apparatus (1) during installation of the ink cartridge (3) into the image forming apparatus (1)" from the application documents as filed.

1.3 This feature is not disclosed in the text of the des­cription or claims of the application as originally filed.

1.3.1 Paragraph [0008] of the application as published gene­rally discloses that "[t]he second detection portion may be positioned away from the first detection portion along the ink cartridge in a direction in which the cartridge is installed, the second detection por­tion may be detected by the detector only during instal­la­tion or removal of ink cartridge in one predetermined direction into or from the image forming apparatus". This disclosure is cast in much more general terms ("may be positioned away from ... in a direction ...") than the particular special case of the first and second detection portions having to be aligned. Insofar as the disclosure of paragraph [0008] is concerned, it is only necessary for both detection portions to pass in front of the detector on the image forming apparatus during instal­la­tion of ink cartridge. Singling out the special case in which the first and second detection portions are, in addition, "aligned" adds technical information which has no basis in para­graph [0008]. The appellant's approach which seeks to have the precise term "aligned" of the claims interpreted more broadly according to paragraph [0008] is contrary to article 84 EPC 1973, first sentence, according to which "[t]he claims shall define the matter for which protection is sought". Thus, if a specific term is to be given an unusual defi­nition, then this definition would have had to have been in­cluded in the text of the claim. This was not done.

1.3.2 The term "aligned" does occur in paragraph [0072] of the application as published in the context of the example of figures 9A and 9B and refers to the detec­tion portions 76a and 76b into which the protrusion 76 of the second detection portion is split: "The pro­tru­sion 76 is of substantially a fork shape with detection portions 76a, 76b vertically aligned": This pas­sage only refers to the second detec­tion portion and thus does not provide a basis concerning the disposi­tion of the first and second detec­tion portions re­lative to the direction in which the ink car­tridge is inserted into the image forming apparatus during in­stallation of the ink cartridge into the image forming apparatus.

1.3.3 Interpretation of the term "aligned" as used in the description as filed

The board cannot follow the appellant's interpretation that the skilled person would necessarily only under­stand the term "aligned" in the context of the rest of paragraph [0072] which discloses that "[w]hen the large ink cartridge 3d' is mounted on/installed in or removed from the holder 4, the light from the light emitting portion 14a is blocked twice by the detection portions 76a, 76b of the protrusion 76". Whether the detection portions 76a, 76b of the protrusion 76 may also block the light from the light emitting portion 14a twice when they are slightly offset from one another while still passing between the light emitting and light receiving parts of a detec­tor 14 such as the one shown in figure 7 is not actually discussed in paragraph [0072] of the application as published, nor is it directly and unambiguously dis­closed that an intended particular meaning to be given to the term "aligned" is such as to cover such a configuration either when used in that paragraph or when sub­se­quently used in a claim.

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Instead the term "aligned" as used in paragraph [0072] of the application as published only refers to the two plate like protrusions 76a and 76b as shown in figures 9A and 9B and is thus understood by the skilled person to mean that the generally planar protrusions 76a and 76b lie in a same plane.

In consequence, the skilled person understands the term "aligned" used in the feature "the second detection por­tion (66, 76, 93) is aligned with the first detec­tion portion in a first direction in which the ink car­tridge (3) is inserted into the image forming appa­ratus (1) during instal­la­tion of the ink cartridge (3) into the image forming apparatus (1)" to mean that the first and second detection portions must lie in a same plane.

1.3.4 In summary, contrary to what has been advanced on be­half of the appellant, there is nothing in the text of the description or claims of the application as filed which would cause the skilled person to inter­pret the expression "the second detection por­tion (66, 76, 93) is aligned with the first detec­tion portion ..." as synony­mous with an arrangement allowing detection of both portions by the same sensor when the cartridge is moved along the insertion direction, given that the is­sue of "the second detection portion (66, 76, 93) [being] aligned with the first detec­tion portion in a first direction ..." was not disclosed or addressed in any way in the text of the application as filed. Such an interpreta­tion would requi­re the skilled person to actively seek to derive a generalisation concerning the configuration of the ink cartridge, an acti­vi­ty which is not needed when there is a direct and unam­biguous disclosure.

1.4 Since the contested feature is not disclosed in the text of the description or claims of the application as originally filed, the only remaining possibility consists of the figures relating to embodiments of the invention. This raises the question what are the embodiments of the invention as claimed in claim 1.

1.4.1 Claim 1 according to all requests requires "a first detection portion (60) positioned on the ink cartridge..." (emphasis added by the board).

1.4.2 However, according to paragraph [0008] of the appli­cation as published, "[t]he first detection portion may be a light shielding plate formed of a material that is substantially impermeable to light. The light shielding plate may be movably provided in the cartridge body so as to change position in response to variations in an amount of ink in the cartridge body" (emphasis added by the board). Indeed, figures 2A, 2B, 2C, 3, 4 and 7 re­la­te to a same configuration (paragraph [0024]) in which "[a] light shielding plate 60 of the shutter me­chanism 23 is disposed in an inner space of the protrusion 34" and "[t]he light shielding plate 60 is a thin plate member that has a predetermined area and is dis­posed in the vertical plane parallel to the sheet of FIG. 4" (paragraphs [0032], [0044], emphasis added by the board).

1.4.3 The board thus agrees with the appellant in that figu­res 2, 3, 4 and 7 relate to a same configuration in which the "[t]he first detection portion" in form of "light shielding plate 60" is disposed inside pro­tru­sion 34 on the ink cartridge 3. However, contrary to the appellant's position, the board does not accept that this may also be described as the "first detection portion (60) [is] positioned on the ink cartridge..." (emphasis added by the board): the "light shielding plate 60" constituting the "first detection portion" is clearly not "positioned on the ink cartridge...", because it is disposed inside pro­trusion 34 and is thus inside (and not "on") the cartridge 3. The fact that the pro­trusion 34 is provided "on" the cartridge does not mean that anything disposed inside the protrusion is somehow displaced to end up being disposed "on" the cart­ridge as well.

1.4.4 There is also no basis in the application as filed to give the term "on" the broader meaning of "is part of". The appellant's approach of seeking to re-interpret clear words used in a claim to achieve an overlap with all of the disclosure in the description is again contrary to article 84 EPC, first sentence, according to which "[t]he claims shall define the matter for which protection is sought".

1.4.5 In consequence, the configura­tions shown in the figures do not constitute embodi­ments of the inven­tion as claimed in claim 1 (all requests).

1.5 Nevertheless, the opposition division considered that the contested feature was supported by figures 3 and 7 which show the protrusion 34 (inside which the first detection portion 60 can move) and the second detection portion 66 (contested decision, page 25, sections 5.2 and 5.3).

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However, only figure 4 explicitly shows the light shiel­ding plate 60 forming the first detection portion. Figure 7 is a sectional view of the ink cartridge taken along the line VII-VII of figure 4 and thus starts be­low the first detection portion (light shiel­ding plate 60) which is there­fore not visible in figure 7. In conse­quence, the lateral posi­tion of the first detec­tion portion 60 inside protru­sion 34 is not disclosed in figure 7.

The cross sectional view of the cartridge disclosed in figure 4 discloses a cross hatched second detection portion 66 and a light shielding plate 60 which is not cross hatched: figure 4 thus does not provide a basis for claiming that the second detection portion 66 and a light shiel­ding plate 60 are "aligned", since, in accordance with conventional drawing conventions, they do not necessa­rily both lie in the cross sectional plane of figure 4. Corresponding paragraph [0044] of the appli­cation as published which discloses that "the light shielding plate 60 is [...] disposed in the vertical plane parallel to the sheet of FIG. 4" also does not permit the con­clusion that the first and second detection portions are aligned.

The appellant's argument that the illustrated narrow width of the protrusion 34 shown in the figures would cause the skilled person to centre the light shielding plate 60 inside the protrusion 34 is speculative, since the exact disposition of the light shielding plate 60 is not disclosed in the application as filed and may be fur­ther influenced by additional considerations.

Thus there is no direct and unambiguous disclosure of the light shielding plate 60 inside protrusion 34 being aligned with the second detection portion 66. Further­more, a light shielding plate 60 which is not aligned with the second detection portion 66 (e.g. by being slightly offset therefrom inside protrusion 34) would not affect the detection processes of the inven­tion, because such a first detection por­tion 60 would still be detectable by the detection ar­ran­gement 14a and 14b on either side of the protru­sion 34 as dis­closed in figure 7. The claimed alignment is thus also not an impli­cit­ly neces­sary feature of the confi­gurations shown in the figu­res.

Therefore, even if the configurations of the figures had fallen under the scope of claim 1 according to all requests, they do not provide a direct and unambiguous disclosure of the contested feature either.

1.6 With respect to the variant "without using the light shielding plate 60" of paragraph [0084] of the appli­cation as published, there is no detailed disclosure of the corresponding cartridge. A detailed embodiment of such a cartridge is thus not directly and unambiguously disclosed.

1.6.1 Even if the skilled person nevertheless were to refer to the existing figures in lieu of such an embodiment, figure 7 discloses that the second detection portion 66 is offset from the inner side of the walls of protru­sion 34 where the interface of the ink and the wall of the cartridge body reflects light to be received by the light receiving portion of the detector. Thus figure 7 cannot provide a basis for the contested alignment of the first and second detection portions, even if it were related to the variant "without using the light shielding plate 60" of paragraph [0084] of the appli­cation as published.

1.6.2 Figures 2B and 9A and 9B are exterior views of ink cartrid­ges and do not directly and unambiguously disclose the wall thickness of protrusion 34 in relation to the second detection portion 66 or 76a and 76b. Thus contrary to the position of the appellant, these figures do not provide a direct and unambiguous basis for an alignment of the inner wall of protrusion 34 and the second detection portion 66, 76a and 76b. Furthermore, as already noted above, there is no basis for assuming that these figures also relate to the variant embodiment of para­graph [0084].

1.6.3 The board also cannot follow the further argument presented on behalf of the appellant, that since all of the inner walls of protrusion 34 are sui­table for detection by a suitably positioned detec­tor on the (unclaimed) image forming apparatus, it would be possible to position the detector such that the part of the protrusion 34 which was aligned with the second detection portion 66 would serve as first detection portion. The argument merely demonstrates that the configu­ration of figure 7, when hypothetically modified in a particular and undisclosed manner, may not be incom­pa­tible with the contested feature. Ignoring that this proposed modification of the figures is in itself already specu­lative, an argument merely indicating a potential implemen­tation of the contested feature is not the same as identifying a direct and unambiguous dis­clo­sure of the contested feature in the application documents as filed.

1.7 In con­se­quence, there is no direct an unam­biguous disclosure of the "the second detection portion (66, 76, 93) is aligned with the first detection portion in a first direction ..." in the application documents as filed. Claim 1 according to all requests does not meet the requirements of of article 100(c) EPC in combina­tion with article 123(2) EPC.