T 0169/83 - Features taken from the drawings - #44

Citation rank: 44
No. of citations: 102

T 169/83 is concerned with the question of whether features of an invention, which are originally only disclosed in the drawings, can be included in the claims to distinguish the claimed invention from the prior art.

In the underlying opposition case, the proprietor had restricted the claim by features, which were originally disclosed only in the drawings. The opponents did not argue that the structure or function of those features could not be deduced from the application as-filed, but they simply argued that the features did not emerge from the description and claims.

The appeal Board found nothing objectionable in the fact that features were originally disclosed only in the drawings. The Board stated:

"Since under Article 78 a European application must, where reference is made to them in the description or claims, contain drawings in addition to a request for grant, description, claims and abstract, there is no doubt that where drawings exist they are to be regarded as an integral part of the documents disclosing the invention." (point 3.2 of the reasons)

The Board also noted that nowhere in the EPC was a statement according to which the disclosure in drawings was in any manner "subordinate" to the disclosure in the description and the claims. The only statement in the EPC regarding subordinancy of parts of the application was with respect to the abstract. Here the EPC states that it serves merely as technical information and may not be taken into account for any other purpose (Art. 85).

The Board found that amendments based on drawings are allowable, if the respective features are "clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art". It must also be clear from the context that the features are indeed part of the invention.

After concluding that the amendments taken the drawings were not infringing Art. 123(2) EPC, the Board decided that the amended claims were new and inventive over the prior art. They remitted the case back to first instance with the oder to maintain the patent in the amended form.

Remark: The EPO Guidelines discuss the possibility of making amendments based on features taken from the drawings, but they promote a cautions approach (Guidelines H-V, 6).

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Headnote:

The European Patent Convention does not exclude the possibility that in the course of opposition proceedings followed by an appeal the claims of a European Patent which in accordance with Article 123(3) do not extend the protection conferred may be limited by the fact that specific features referred to in the claims are clearly shown in the drawings originally filed and are clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art and so relatable by him to the content of the description as a whole as to be manifestly part of the invention.

The full text of the decision can be found here.

T 0204/83 - Features taken from schematic drawings - #70

Citation rank: 70
No. of citations: 71

T 204/83 made comments on how much technical information is contained in schematic drawings.

In the underlying examination case, the ED made measurements in a Figure 9 of a prior art document, which Figure, according to the description, was a "diagrammatic representation of an embodiment of the invention". According to the ED, the figure clearly showed a cylindrical portion, in which "the height h as measured between the two horizontal lines defining the narrower cylindrical portion was greater than 0.5 d and less than 0.66 d, d being taken as the distance between the hatched walls defining the internal diameter of the cylindrical portion", i.e., a feature of the claim under examination. Based on this interpretation of the Figure, the ED refused the application.

The Board generally confirmed that features only shown in the drawings form part of the disclosure of a document, however, whether or not such features can indeed be extracted depends on the circumstances of the specific case. They stated:

"When a feature is shown solely in a drawing without any other clarifying description a careful check should be made to establish whether the mere diagrammatic representation enables a person skilled in the art to derive a practical technical teaching therefrom. It would be impossible to lay down general rules as to how this should be done because the reply in each case will depend on the knowledge of the person skilled in the art and of the way in which the feature is shown in the drawing. Thus if a drawing is specifically devoted to disclosing a certain feature or if that feature is systematically included in a number of drawings a person skilled in the art will see it as an important item of technical information even if the illustration is unaccompanied by a verbal description or numerical information. If on the other hand, the feature is shown in the drawing merely as an ancillary element of a complicated device a person skilled in the art will sometimes be unable to elicit useful technical information from the drawing, at least without the information supplied in the newly filed patent application." (point 4 of the reasons)

The Board considered that "diagrammatic representations" cannot be regarded as exact representations of the represented subject-matter. Dimensions obtained only by measurements on a diagrammatic representation do not constitute part of the disclosure. Thus Figure 9 was considered not to disclose that the cylindrical portion of the claimed Venturi tube which must have a height greater than 0.5 d and less than 0.66 d. The decision of the ED to refuse was thus set aside.

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Headnote:

Features shown solely in a drawing form part of the state of the art when a person skilled in that art is able, in the absence of any other description, to derive a technical teaching from them. Dimensions obtained merely by measuring a diagrammatic representation in a document do not form part of the disclosure.

The full text of the decision can be accessed here.