T 0416/86 (Reflection photometer) of 29.10.1987

Summary of Facts and Submissions

I. The appellants are the applicants of European patent application 82 108 380.5 (publication No. 0 075 766).

II. The application was refused by the Examining Division. ....

The reason given for the refusal was that, when Claim 5 was transformed into an independent claim, the replacement of specific constructional features of an aperture by a general indication of its function corresponding to the problem constituted an amendment inadmissible under Article 123(2) EPC.

III. The appellants filed an appeal against this decision. ....

V. Claim 1 according to the main request was worded as follows:

"1. Device for measuring by reflectance photometry the reflectance of a measurement area (4) on an object surface, typically of a test panel (6) for identifying medically significant components of body fluids, comprising a light source (58) to illuminate the measurement area (4) preferably with diffuse light, a photodetector (2) to receive the light reflected by the measurement area (4) and an aperture (8) positioned in the optical path between measurement area (4) and photodetector (2), characterised in that the aperture surface (10) is substantially in the shape of a truncated cone tapering towards the photodetector and surrounds substantially symmetrically the axis of symmetry (30) of the optical path for part (16) of its length with an absorbing surface (11) so that a light beam reflected from outside the measurement area can pass to the photodetector neither direct nor by reflection from the aperture surface."

VI. Claim 5 as now worded according to the main request reads as follows:

"5. Device for measuring by reflectance photometry the reflectance of a measurement area (4) on an object surface, typically of a test panel (6) for identifying medically significant components of body fluids, comprising,

- a light source and an Ulbricht globe for the diffuse illumination of the measurement area (4), in which the Ulbricht globe has a reference area on its inner surface,

- a first photodetector (44) to receive the light reflected by the measurement area and a first aperture (8) positioned in the optical path between measurement area (4) and photodetector (44),

- a second photodetector (46) to receive the light reflected by the reference area,

characterised in that

- the light source is a light-emitting diode (58) and

- the two photodetectors (44, 46) are positioned in the Ulbricht globe,

- the first photodetector (44) is directed at the measurement area (4) and the first aperture (8) between the first photodetector and the measurement area (4) is so designed and positioned that it virtually completely blocks out extraneous peripheral rays, and

- the second photodetector (46) is directed at the reference area (62) of the Ulbricht globe." Claims 2 to 4 and 6 to 12 according to the main request are dependent on Claims 1 and 5 respectively. ...

VIII. With regard to the main request, the principal arguments advanced by the appellants in support of their contention that replacement of the structural features of the aperture (8) by the aperture function included in Claim 5 as identified in the main request according to which "the first aperture (8) ... is so designed and positioned that it virtually completely blocks out extraneous peripheral rays" are as follows: (a) The aperture function included in Claim 5 was explicitly disclosed in the original description, page 3, lines 31 to 33; ... (c) ... Novelty is a sufficient test of the scope of the previous disclosure, and the special aperture defined in the original Claim 5 destroys the novelty of the aperture defined generally in terms of its function in the contested version of that claim. ...

Reasons for the Decision

1. The appeal is admissible.

2. Re the main request:

2.1 Admissibility of the requested amendments to Claim 5.

2.1.1 The independent Claim 5 as identified in the main request is based on the original dependent Claim 5 whose substance has firstly been defined in greater detail by adding specific structural features disclosed in the description and secondly been generalised in that the features in Claim 1 characterising the aperture structure have been replaced by an indication of the aperture function disclosed in the description, page 3, lines 31 to 33. By virtue of the reference back to Claim 1 the measuring device claimed in original Claim 5 with two photodetectors positioned in an Ulbricht globe had apertures possessing the following four structural features: The aperture surface was in the shape of a truncated cone (feature 1) which surrounded substantially symmetrically the axis of symmetry of the optical path (feature 2), tapered towards the photodetector (feature 3) and had an absorbing surface (feature 4). The measuring device with two photodetectors positioned in an Ulbricht globe claimed in Claim 5 as now identified in the main request features, between the measurement area and a first photodetector, an aperture "which is so designed and positioned that it virtually completely blocks out extraneous peripheral rays".

2.1.2 The Board considers that replacing a disclosed specific feature by a broad general expression in this way must be regarded as an amendment inadmissible under Article 123(2) EPC where use of such a general expression for the first time implicitly associates with the subject-matter of the application specific features going beyond the initial disclosure. This in itself shows that the Board cannot go along with the appellants when they say in point VIII - b that the extension of a claimed feature merely entails an extension of the protection conferred for the purposes of Article 123(3) EPC. In the present case the replacement of the described specific aperture structure by its function means that apertures having the same function but a different structure to that described in Claim 1 in a measuring device with two photodetectors positioned in an Ulbricht globe are also being claimed. For the reasons given above such replacement would be admissible under Article 123(2) EPC only if, to a person skilled in the art, a measuring device with two photodetectors positioned in an Ulbricht globe and having at least one structure differing from the specific aperture structure claimed in Claim 1 were also covered by the content of the original application documents. This is not the case.

2.1.3 The appellants' view that during the grant procedure a feature can be omitted, regardless of the significance assigned to it in the original documents, if no new technical teaching results is correct; cf. point VIII - c. However, in the present case changing the aperture with the structure defined in Claim 1 into any aperture defined only by its having the same function means that any equivalent of the originally claimed aperture could be combined with the other features of the measuring device claimed in Claim 5 - inter alia with the two photodetectors positioned in the Ulbricht globe. The fact that a technical means (in this case: an aperture of a given design) is known does not deprive its equivalents (in this case: apertures of a different design but having the same function as the former) of novelty even if the latter are already generally known as such (cf. Guidelines, EPO C-IV, 7.2). The equivalents of a disclosed technical means must therefore be regarded as new and not disclosed if no reference to them is contained in the original documents. This must always be taken into acount when using the "novelty test" to examine whether a generalisation of a feature of an invention is admissible. In the present case, therefore, it is necessary to establish whether the original documents contain any reference to the use of equivalent forms of aperture in the measuring device as claimed in the original Claim 5.

2.1.4 Having thoroughly examined the application documents the Board is satisfied, contrary to the opinion expressed by the appellants in point VIII - d, that the original documents give no indication to the skilled person that any other aperture - having the same function or not - than that defined in Claim 1 falls within the scope of the measuring device with two photodetectors in an Ulbricht globe claimed in the original Claim 5. Reference to other known forms of aperture in the description, page 4, lines 9 - 16, divorced from the measuring device with the Ulbricht globe and the two photodetectors, merely teaches the skilled person that the aperture described in Claim 1 enables the residual reflection of the unwanted flare to be reduced by a factor of 10 compared with the state of the art. The skilled person certainly could not deduce from this information concerning the advantage of the invention that the apertures belonging to the state of the art, in which residual flare reflection is ten times higher, can be used in the measuring device having two photodetectors positioned in an Ulbricht globe. On the contrary, the description, page 2, lines 22 -29, expressly states that minimising flare is essential in the case of the small, handy appliances such as those incorporating the measuring device with two photodetectors positioned in an Ulbricht globe. The Board likewise cannot share the appellants' view as stated in point VIII - d that in the description of the measuring device with two photodetectors positioned in an Ulbricht globe (Figure 2) on description pages 6 to 8 and 11 to 13 the device's specific aperture structure is not defined in detail. To start with, three of the aperture's structural features, namely its cone frustrum shape, its positioning symmetrical to the optical path and its absorbing surface are mentioned on page 11, lines 20, 21 and 26. Secondly, as a result of the customary mode of representing identical subject-matter in patent applications by using the same reference symbol, the skilled person would connect the description pertaining to Figure 1 with the aperture represented in Figure 2 because of the reference symbols 8 and 10 used in both. Moreover, in the opinion of the Board the skilled person would deduce from the way in which aperture 8 is drawn in Figures 1 and 2 that the separately described aperture of Figure 1 and the aperture in Figure 2 disclosed in conjunction with the Ulbricht globe containing the two photodetectors were identical in design.

2.1.5 The question of whether it is admissible, when checking what has been disclosed to include in the common knowledge which the skilled person brings to bear on the content of the original application documents, in addition to information which can be supported by general reference works and textbooks (cf. Decision T206/83, OJ EPO 1987, 5, Points 4 to 6), the "Seralyser" document filed on 9 January 1985 need not be gone into here. On the basis of the relevant specific information given in the description, page 2, lines 22-29, and contrary to the opinion of the appellants in point VIII - e, the skilled person would not restrict the teaching of the original application documents - even when considered in conjunction with such prior art - to the small distance between the conical surface and the photodetector but would also regard the exclusion of extraneous light as an essential requirement. However, no means for excluding the extraneous light other than the aperture claimed in Claim 1 are disclosed in the original application documents. The Board therefore concludes that, to the skilled person, the combination between the aperture claimed in Claim 1 and the two photodetectors positioned in the Ulbricht globe, i.e. the measuring device according to Claim 5, would be essential.

2.1.6 For the above reasons Claim 5 as set out in the main request does not meet the requirements of Article 123(2) EPC. The appellants' main request cannot therefore be granted.

3. The auxiliary request: ...

3.4 Claim 1, as requested in the alternative, is therefore allowable (Article 52(1) EPC).

Order

For these reasons it is decided that:

1. The contested decision is set aside.

2. The case is remitted to the department of first instance with the order that a European patent be granted on the basis of the following documents: ...