CABINET CHAILLOT

The appeal filed by the appellant (opponent) lies against the decision of the Opposition Division rejecting the opposition filed against European patent No. 3 076 804.
By its interlocutory decision dated 24 June 2024, the Board decided that the conditions for a referral to the Enlarged Board of Appeal were met.
By its decision in case G 1/24, the Enlarged Board of Appeal answered the questions as follows:
"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."
Independent claim 1 as granted reads as follows:
"(a) A heated aerosol-generating article for use with an electrically-operated aerosol-generating device comprising a heating element,
(b) the aerosol-generating article comprising an aerosol-forming substrate
(c) in which the aerosol-forming substrate comprises a gathered sheet of aerosol-forming material circumscribed by a wrapper
(d) radially encircled by a sheet of thermally-conductive material, the wrapper being the sheet of thermally-conductive material which acts as a thermally conducting flame barrier for spreading heat and mitigating against the risk of a user igniting the aerosol-forming substrate by applying a flame to the aerosol-generating article."
The auxiliary request differs from the main request in that paragraph [0035] of the description of the contested patent has been deleted.
The issue under discussion is whether the spirally wound tobacco sheet (21) of the heated aerosol-generating article disclosed in D1 and shown in Figure 1 of this prior-art document takes away the novelty of a "gathered sheet of aerosol-forming material" within the meaning of feature (c ) of claim 1.
In the decision under appeal, the Opposition Division answered this question in the negative. It found that the spirally wound tobacco sheet (21) of the heated aerosol-generating article disclosed in D1 did not equate to a "gathered sheet" as this term was commonly understood by a skilled reader to mean a sheet that is "folded and convoluted to occupy a tridimensional space". In doing so, and in line with the respondent's submissions, the Opposition Division disregarded the broader definition of "gathered sheet" given in paragraph [0035] of the contested patent and thus construed claim 1 in accordance with the principle that recourse to the description for claim interpretation was only justified in exceptional circumstances, namely where the claimed subject-matter and/or its technical context required clarification. Conversely and in accordance with the "primacy of the claims" approach, where the wording of a claim was clear to the skilled person, as was the case for the term "gathered sheet" of claim 1, reliance on the description was neither necessary nor allowed.
The Board agrees with the Opposition Division that a skilled person in the relevant technical field of the tobacco manufacturing industry would understand the term "gathered sheet" of claim 1, when read in isolation, as defining a sheet convoluted and folded along lines to occupy a three-dimensional space. It is also common ground between the parties that if this term was read in isolation, claim 1 as granted would be novel over D1.
However, as follows from G 1/24, the claim cannot be interpreted in isolation, as done by the Opposition Division, but the description and drawings must be consulted. 
When consulting the description, the skilled person is necessarily confronted with paragraphs [0030] and [0035], which contain definitions of the terms "sheet" and "gathered" as used in the contested patent: "As used herein, the term 'sheet' denotes a laminar element having a width and length substantially greater than the thickness thereof" and "As used herein, the term 'gathered' denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod", respectively.
The Board has no doubt that a skilled person aiming to correctly determine the subject-matter for which protection is sought and reading the patent specification with a mind willing to understand will attribute considerable weight to any definition of a term used in the claims. Having cross-checked that the claim in itself and in the context of the other claims makes technical sense and is in line with the information presented in other passages of the description, the person skilled in the art will have no reason to disregard such definitions and to give the defined terms a different meaning in the claim.
The fact that the patent defines this term in the description is a clear indication that, at least for the patent proprietor when drafting the application, "gathered sheet" did not have a meaning that is so commonly accepted and well established that each further explanation would be superfluous.
The definition of "gathered" given in paragraph [0035] does not contradict but rather encompasses the commonly accepted meaning of the term "gathered sheet", namely a sheet that is folded and convoluted to occupy a three-dimensional space. The definition is simply not restricted to folded sheets but includes other forms of transverse constrictions of the extension of a sheet.
The wound tobacco sheet (21) of the aerosol generating article of D1 thus equates to the gathered sheet recited in feature (c) of claim 1 when this term is correctly interpreted according to paragraph [0035] of the description.
In conclusion and contrary to the findings of the Opposition Division in the decision under appeal, the subject-matter of claim 1 lacks novelty over the content of document D1.
The sole auxiliary request on file was submitted in response to the conclusions of the Enlarged Board of Appeal in case G 1/24. The sole amendment is the deletion of paragraph [0035] from the description. The claims remained unchanged. 
The auxiliary request does not comply with the requirements of Article 123(3) EPC.
Claim 1 contains neither explicit nor implicit features that necessarily limited the claimed aerosol-forming article to a rod-shaped configuration or, as a consequence, required the tobacco sheet to be gathered by being compressed or constricted substantially transversely to the cylindrical axis of a rod. In the absence of the definition formerly provided in paragraph [0035], claim 1 also encompasses aerosol-forming articles that are not rod-shaped, i.e. not substantially elongated in one direction and, if they are, sheets that are folded and gathered not substantially transversely to but along the cylindrical axis of the rod, like a bellows, thus extending the scope of protection compared with claim 1 of the main request.
The auxiliary request does not comply with the requirement of Article 123(3) EPC, and is therefore not allowable.
The patent is revoked.