Friday, October 18, 2024 T 56/21 - The end (?) of the debate on whether the description must be adapted to match allowable claims of more limited subject-matter

This decision came online earlier this week, on  14 October 2024, and the outcome was a surprise to many. Whereas it had earlier been indicated that a referral to the Enlarged Board of Appeal was likely (and was a reason why the Guidelines were not amended further in the last few years - see e.g. item 127 in here), the Technical Board of Appeal 3.3.04 decided themselves. When reading the decision, it almost reads like an Enlarged Board: the format of the decision including a detailed Table of Contents, the detailed consideration of the (alleged) relevant EPC Articles and Rules (Art. 84, Rules 42, 43, 48 EPC) incl their interpretation and function (interestingly, in view of pending referral G 1/24, also addressing Art. 69 EPC), extensive discussion of earlier decisions of the Boards, and a clear, firm and reasoned conclusion in reasons 100-104 that no referral is needed "since the requirements of Article 84 EPC for the purpose of examining European patent applications appear unequivocal when considering the different elements of interpretation (see points 7. and 8.), the guidance by the Enlarged Board of Appeal (see, the references in point 35.), and the practical implications. The wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter." Will this close the debate after a long period of uncertainty and will the Guidelines be amended as of the next edition? It is hoped so, although quite some practioners would have preferred a decision from the Enlarged Board, so that it would effectively be binding without reservations/ uncertainty and with immediate effect.

Friday, November 04, 2022 T 2194/19 - The "invention" is not necessarily and always to be equated with the "invention claimed", not required that all described "embodiments" must fall within the scope of the amended independent claims

In the present case, the examining division regarded several  paragraphs of the description to be at odds with independent claim 1, as amended.  The examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims", and concluded that the description so adapted was not in conformity with the independent claims, contrary to Rule 42(1)(c) EPC, because the term "embodiment" was used in parts of the description that describe subject-matter that was not part of the subject-matter of these independent claims. Moreover, the examining division held that the "invention" must always be the "invention claimed" and the "invention" was defined by the independent claimws. The Board did not agree and held:
1) the EPC does not define that “the "invention" is necessarily and always to be equated with the "invention claimed"”, 
2) concluding from Art. 84 EPC that "embodiments" of the description of a patent application have to be within the scope of the (independent) claim cannot be derived from the EPC and can also also not be derived from the jurisprudence of the Boards of Appeal, and 
3) in particular Rule 42(1)(c) EPC cannot be the legal basis for establishing such a general and broad requirement for an adaptation of the description to the claims. It is simply not what this provision says.”
Herein, the Board deviates from the strict practice that the first instance nowadays applies as well as from Guidelines (2022) F-IV, 4.3. The Board does however not address the Guidelines, although that could have been expected in view of Art. 20(2) RPBA2020. Also, the Board hardly addresses the case law that the EPO considers to support the “delete all non-covered embodiments" approach that is used by the drafters of the Guidelines, and as a consequences do not discuss whether a referral to the Enlarged Board would be necessary acc Art. 20(1) RPBA2020. Note that the Board also does not mention T 1989/18 of 16.12.2021 that concluded that, as a general rule, not is not required to bring the description in line with (amended) claims intended for grant.

Thursday, December 23, 2021 T 1989/18 - As a general rule, not required to bring the description in line with (amended) claims intended for grant

In the present case, the examining division found the set of amended claims of the main request to be allowable, but nevertheless it held that the amendments to the description adapted to those claims (submitted with the same letter) did not comply with the requirements of Article 84 EPC, in particular because they related to subject-matter which was broader than the subject-matter of independent claim 17 of the request, and refused the European patent application for that reason. The Board carefully assessed the applicability of Art. 84 EPC as well as of Rule 42(1)(c) and Rule 48(1)(c) EPC as possible legal basis requiring adaptation of the description, and concluded that such basis does not exist (except possible in the case of non-unity). The Board also argued why it distinguished from earlier decisions (some of whuch being cited in the Guidelines in support of such alleged requirement).

Friday, June 19, 2020 T 2133/14 - Skilled person resolving a clarity problems in the claim

Sending an interrogation signal

How much can the skilled person bring to the table when establishing the meaning and enablement of a claim? This application was refused by the Examining division for being neither clear nor sufficiently disclosed. But the board has a higher opinion of the skilled person, and consider him capable enough to bridge the gaps.

The claims relate to a first device that stores 'multiple versions of application software'. The first device want to communicate with a second device, but its software may not be compatible. This is solved according to Claim 1 by sending 'an interrogation signal' to the second device and receiving back 'identification information'. The first device's method then comprises, based on the identification information:

correlating (225) thereto a version of the application software from among the multiple versions of application software associated with the first electronic device that is compatible with the recognized version of the application software currently being utilized by the second electronic device, wherein the correlating step utilizes a look-up-table."

An auxiliary request restricts claim 1 to a control device and an implantable medical device. Although the board reverses the Examining division on clarity and sufficient disclosure, in the end the claims are found to be non-inventive. 

Reasons for the Decision

The invention

1. The application is concerned with ensuring the compatibility of application software running on two communicating electronic devices, preferably an implantable medical device such as a cardiac pacemaker and an associated control device (see paragraphs 1 and 15).

1.1 More specifically, it is observed that the application software running on the implantable device (the "second" device in claim 1 of the main request) may be updated during its lifetime and stated that, for proper operation, the control device (the "first" device) will need to run a "compatible version of application software" (see paragraph 17).

1.2 According to a prior art solution, discussed in paragraph 4 (U.S. patent application 5,800,473), if it is detected that the implant runs a more recent version of the application software than the control device, then the more recent software "objects" are downloaded from the implant to the control device. In the application, this solution is stated to require an undesirably complex implantable device, too much energy and time, and to have the further disadvantage that the control device will at any point in time only run a single version of the application software, which may not be compatible with all implantable devices (see paragraph 4, lines 11-15, and paragraph 5). The invention is intended to overcome these disadvantages (see paragraph 9).

1.3 As a solution, it is proposed that a control device for communicating with a specific implantable device generate and transmit an "interrogation signal" to the implantable device. In response, the latter generates and transmits a "response signal" to the control device, the response signal comprising "identification information" including one or more of its type and a "unique identification number" and the version of the application software installed on it (see paragraphs 10, 20 and 23-30). The control device stores "multiple, preferably all, updates, versions or generations of the application software for the control device" in question (see paragraphs 16 and 34). Based on the received "identification information", the control device "correlates or maps" to the implantable device a compatible version of the application software using a lookup table (see paragraphs 21 and 22). Subsequently, the control device uses the so-determined compatible version (see para­graph 33). The procedure is depicted in figure 2.

Clarity and sufficiency of disclosure,

Articles 84 and 83 EPC

2. The examining division found the independent claims of both requests to be unclear for the following reasons (see the decision, points 19-22 and 25).

2.1 It was left open what kinds of interrogation and response signals could be processed by all possible electronic devices. At least for some pairs of elec­tronic devices, it would require inventive skill to provide suitable interconnection signals, while the description did not disclose further details. As a consequence, the independent claims were not supported over their full breadth by the description, Article 84 EPC, and, because "said clarity objection" could not be resolved using the description, their subject-matter was insufficiently disclosed, Article 83 EPC (see esp. the recitation of section 9.1.1.2 on pages 6 and 7 of the decision).

2.2 The claimed invention presupposed that the different software versions all had different interfaces. Because this was an unrealistic assumption, the intended "system context" was unclear (see the recitation of sections 9.1.1.3 to 9.1.1.5 on page 7 of the decision).

2.3 The claims left open how the control device was meant to be "'equipped with multiple software versions initially' for all diverse types of 'second electronic devices', [and] for all their respective versions of software", and how it was avoided that the first electronic device had to be modified whenever the application software was changed (i.e. continuously or frequently). Also, for combinatorial reasons it was unrealistic to assume that each first electronic device could store all versions of the application software for all types of second electronic device. This rendered the claims unclear, Article 84 EPC, and meant that their subject-matter was insufficiently disclosed, Article 83 EPC, because "said clarity objection" could not be resolved using the description (see the recitation of sections 9.1.2.1 to 9.1.2.5 on pages 9 and 10 of the decision).

2.4 "Correlating" a version of the application software to the second device did not have a clear technical effect, since the "correlated version of [the] application software" was neither loaded nor used for communication (see esp. the recitation of section 9.1.3 on page 11 of the decision).

The board's view on clarity and sufficiency

3. The board does not share the conclusions of the examining division on clarity of the independent claims.

3.1 While the board agrees with the examining division's view that "correlating" has no clear technical effect (see point 2.4 above), this alone does not imply a lack of clarity.

3.2 The board also agrees with the examining division that the claims do not specify any details about the inter­rogation or response signals, or what it would mean for two devices to be compatible or incompatible. The claims further do not include any feature that would allow an estimate of the number of versions the first electronic device would have to store and when or how the first electronic device would have to be updated.

3.3 None of these omissions however implies, in the board's view, a lack of clarity - or an insufficiency of disclosure, for that matter.

3.3.1 The board considers that the skilled person would have no technical difficulty in implementing a form of interrogation/response-protocol in devices even in a "non-standard scenario" such as a smartphone communicating with a cardiac pacemaker (see paragraph bridging pages 6 and 7 in the decision).

3.3.2 The skilled person would interpret the notion of "compatibility" as used in the claims broadly. In the broadest reasonable sense, two pieces of software would be considered "compatible" if they are intended - and can, thus, be assumed - to interoperate properly. Apparently, this would not be the case if their interfaces did not match. However, even software with matching interfaces might not properly interoperate, for various reasons apparent to anyone skilled in the art of programming. The skilled person would understand that, effectively, "compatibility" is what the "correlating" step establishes, and - for the purposes of the claimed subject-matter - two pieces of software are compatible if the look-up-table "says so".

3.3.3 It would have been evident to the skilled person that the memory requirements on the first electronic device grow with the number of versions of the application software to be stored. The board also agrees with the examining division that this number might well be larger than what a typical such "first electronic device" can actually store (see also "all possible versions" in claim 2). However, while it might be undesirable or impracticable for various reasons, it would not be technically difficult to either enlarge the memory of the first electronic device or to limit the number of versions to some (the most recent say, or only those needed for some "second" device types) to the detriment of others.

3.4 The board takes the view that the skilled person would not need any explicit statement in the application to be able to handle the mentioned situations properly. Hence, in the board's view, the independent claims are neither unclear in the mentioned respects, nor insufficiently supported. Their subject-matter is also not insufficiently disclosed.

4. The findings in point 3 are further corroborated by the following considerations.

4.1 An objection that a claim is too broad to be supported by the description over its full breadth can be addressed by limiting the claim to a breadth which is. For that reason, the limitation of a claim covering standard and non-standard scenarios (claim 1 of the main request) to only the standard scenario of a control device and an implantable medical device (see the auxiliary request) is a valid attempt to overcome at least one of the objections regarding incomplete support by the description labelled "9.1.1.2" (see paragraph bridging pages 6 and 7 of the decision).

4.2 Moreover, the board does not agree that the subject-matter of a claim which is not supported over its full breadth by the description or which is unclear is ipso facto insufficiently disclosed, as the examining division suggests (loc. cit.). Accordingly, the board considers that the objection under Article 83 EPC is not correctly reasoned in the decision.

5. In the following, the board takes the view that the skilled person would construe claim 1 of the auxiliary request as follows. The first electronic device (the control device), storing multiple versions of some application software, asks the second electronic device (the implantable medical device) for identification information which, inter alia, identifies the version of the application software it runs. This information is then used to identify a preferred version of the software to be run on the first electronic device. This version is identified using a look-up table and referred to in the claims as "compatible".

(...)

This decision T 2133/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T213314.20200603. The file wrapper can be found here . Image by Stafford Green (staffordgreen0) obtained under the Pixabay license

Wednesday, December 12, 2018 T 2303/16 - refused for lack of two-part form, conciseness and reference numerals

Car towed because of a parking violation

The application was refused after a single office action on the grounds of lack of conciseness, two-part form and reference numerals. In appeal these are addressed but no interlocutory revision was given. 

After entering the regional phase at the EPO in 2006, the applicant received its first office action in 2014. The office action raised clarity issues and a few smaller problems, in particular lack of reference numerals. The international search report had complained earlier about lack of two-part form, and lack of conciseness due to too many independent claims (in addition of substantive problems). In it's reply, the applicant amended for the clarity issue, and addressed the patentability of the claims. The second communication in ten years was a refusal. 

The board did not see a problem with a refusal based on formal issues that were only identified in the ISR, but did rule that interlocutory revision should have been granted. 

Tuesday, October 02, 2018 T 1399/13 - On the size of the hole

The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.

Friday, September 14, 2018 T 2489/11 - panning once, continuous panning or scrolling

This appeal was filed against a decision of the Examining Division to refuse the application for violating Art. 84, EPC and Art. 83, EPC.

The applicant filed a main and seven auxiliary requests in support of the statements of the grounds of appeal.

Claim 1 of the main request is directed to a device comprising a touch interface. The claim  attempts to distinguish a 'click' touch from a 'panning' touch merely based on a duration of the touch measured in the device.

The Board does not admit the main request  (Art. 12(4), RPBA) because the applicant attempts to broaden claim 1 by unjustifiably returning to the claim 1 as filed. Original claim 1 was limited during the early stage of examination in that the distinction between 'click' touch and 'panning'  touch was not only based on the duration of the touch but also on a position of the touch. 

All other requests introduce the position of the touch in the claims but further attempt to distinguish a 'continuous panning' from 'panning once'  and/or 'panning' from 'scrolling' which the Board finds unclear (Art. 84, EPC) or not sufficiently described with examples in the description (Art. 83, EPC, Rule 42(1)(e), EPC).

Wednesday, November 01, 2017 T 514/14 - Respondent could have reacted to the raised objections well in advance to the oral proceedings

In this opposition appeal, the parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests. Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to a specific paragraph of the Case Law Book. The Respondent/proprietor commented on the points addressed in the Board's communication, and defended inter alia its position submitting that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7. Oral proceedings before the Board were held. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant/opponent asked not to admit auxiliary request 1bis due to its late-filing. 

Tuesday, June 20, 2017 T 2456/12 & T 0059/13 - Interpretation by the skilled persion

In two recent decisions in opposition appeal, the Board addressed how the skilled person interprets the claims. In interpreting the claims for assessing novelty and inventive step, the Board refers to established case law and emphasizes that "the patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding" and that "the skilled person should try with synthetical propensity, to arrive at an interpretation which is technically sensible and takes into account the whole of the disclosure of a patent". 

Friday, May 12, 2017 T 1811/13 - Can lack clarity imply lack of sufficiency?

Where exactly are the boundaries of the forbidden  area?

Can a lack of clarity in a claim lead to insufficiency of disclosure? The opponent tries to convert a clarity objection into a lack of sufficiency. The argument is that, the impossibility for the skilled person to know whether he is working within the forbidden area entails the impossibility of carrying out the invention.

To support the point a number of T decisions are cited which side with this argument. The board trumps it though with even more T decisions that do not agree. At the end, the board does concede though that in other situations this argument might work. 

Tuesday, January 03, 2017 T 488/13 - A printing error

This printing error increases value

Due to a printing error, a value in the claims differed between the printed patent and the Druckexamplar. During oral proceedings, the proprietor corrected a value in a request to the value in the Druckexamplar. Earlier, the proprietor had also filed requests in which unclear claims were cancelled. The opponents objected to both amendments on the basis of them being late filed, but the board rejects the objections. 

Friday, December 23, 2016 T 623/13 - Deficient in clarity

Clear from the words alone?

This examination appeal deals with the clarity of the claims, and whether a clarity deficiency in the claim wording can be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define. In line with established case law, the Board decides that the claims must be clear by themselves.

Friday, August 26, 2016 T 2052/14 Disclosure of relative dimensions in drawings

The Examining Division held that the subject matter of claim 1 was not new with respect to D1 (EP 1748243 A2). The division derived from the figure a ratio of 0.9 and thus anticipating a claimed ratio from about 0.1 to about 1.0. The Board disagrees. D1 does not indicate that the drawings are to scale. Moreover, D1 is not related to the claimed aspect and there would thus also not have been any reason for D1 to be to scale. This raises the issue whether the skilled person would derive the claimed ratio from a schematic drawing. The Board thinks not.

The Examining Division also regarded to formulation from about 0.1 to about 1.0 unclear (Art.84). The Board disagrees; this formulation only allows a wider interpretation. The Board regards the wider range to be new.

Friday, August 12, 2016 T 799/12 - Clarity in opposition appeal

In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.

Sunday, August 07, 2016 T 1727/12 Sufficiency of disclosure for a broad claim

In this decision the Board has to go into different forms of lack of disclosure. The Board is not a big fan of the British term ‘Biogen sufficiency’ and goes back to the original decision T 409/91 and terminology used in that decision (“the patent monopoly should be justified by the actual technical contribution to the art”). 

In opposition proceedings, Art.84 cannot be used in this respect. In the opinion of the Board, the opposition division has not been convincing in proving that Art.83 was violated. In particular, the opposition division believed that features of dependent claims 3-5 were required for the invention of claim 1, but the division did not come up with options which the skilled person would not know how to carry out. The burden of proof was thus not met.

The Board remitted the case back to the opposition division for further prosecution. No oral proceedings were held, since the request "In the event that the Patent is not to be maintained in the form in which it was granted, the Proprietor requests oral proceedings" does not cover the situation wherein the Board does not take a final decision on the case itself but remits the case.

Tuesday, May 31, 2016 T 2182/11 - Lack of clarity is no lack of sufficiency

Vague and broad, who can object to that?

In this opposition appeal, the opponent tried to raise insufficient disclosure objections (Art. 83 EPC) based on broad or vague terms in the granted patent claim. Below are the relevant portions of the main claim.

A sanitary napkin adapted to be worn in a crotch portion of an undergarment, said sanitary napkin having opposed longitudinally extending side edges and a longitudinal axis and comprising:
(...)
b) an absorbent system under said cover layer, said absorbent system having an absorbent width of at least 64 mm;
(...)
f) said absorbent system including at least a pair of preferential bending zones that extend along said longitudinal axis and are adjacent to respective side edges of the sanitary napkin, said preferential bending zones register with respective linear, longitudinally extending adhesive zones, this construction allowing said sanitary napkin to fold at said preferential bending zone in response to lateral compression applied to said napkin and permitting said napkin to acquire a three-dimensional deformation profile,
 (...)

Arguing insufficiency without experimental data is always hard. This attempt also failed, as the board considered the potential problems in the claim to fall under clarity, which is not a ground for opposition.

Friday, May 20, 2016 T 1641/13: three different objects agains the word "separate"

In this opposition appeal there were three different discussions that were all related to one single word in the first claim: "separate". The proprietor (Appellant) introduced that word in the claim of the discussed request, and, according to the opponent (Respondent), the word was not supported by the description, extended the protection of the patent, and was not clear. The support in the description was discussed on basis of two figures and the description of the figures. With respect to the extension of protection the Board discussed whether the product defined in the granted claims is different from the product that is defined by the claims of the main request of the Appeal. Further, the general meaning of the word "separate" was used to discuss the clarity objections of the opponent.
Because the outcome of the appeal proceedings, it seems that changing "..., separately molded side pieces..." into "..., separate, molded side pieces" makes at least an important difference.

Tuesday, March 22, 2016 T 0967/10 - Pathogen resistant veggies

Where the examining division refused the application under Art 123(2) EPC, lack of inventive step under Art 56 EPC and because one of the auxiliary requests related to an unpatentable plant variety under Art 53(b) EPC, the Board here took a different approach and denied patentability straight away due to lack of clarity under Art 84 EPC. The issue was raised by the examining division as well, but this issue was enough for the Board to dismiss the appeal. Because plants having a phenotype of "reduced susceptibility towards infection with Bremia lactucae" were known in the prior art, the claim lacked clarity because, based on the specification and the claims, it could not be determined by the skilled person what the genetic information present in the genome of the claimed plants finally would be, which would render them less susceptible towards a Bremia lactucae infection. The take-home message being that it is wise to define some part of the genome that causes the reduced susceptibility (some SEQ ID) and include that in the claim. Then at least it can be easily determined whether a plant obtained by a crossing process is within the claim scope or not.

Summary of Facts and Submissions

I. An appeal was filed by the applicant (appellant) against the decision of the examining division to refuse European patent application number 05759731.2. The application was filed as an international application and published as WO 2005/124108 (the application as filed) with the title "Reduced susceptibility towards pathogens, in particular comycetes, such as downy mildew in lettuce and spinach".

II. The examining division considered that the subject-matter of main request and auxiliary request 1 did not meet the requirements of Article 123(2) EPC, while the subject-matter of auxiliary request 2 related to a plant variety pursuant to Article 53(b) EPC and was therefore held as not being patentable. Moreover, the subject-matter of auxiliary request 2 was held to lack inventive step.

The board issued a summons to oral proceedings and later, a communication pursuant to Article 15(1) RPBA in which it set out its preliminary appreciation of substantive and legal matters concerning the appeal. The board was of the preliminary opinion that claim 1 of the main request lacked clarity because the claimed lettuce plants were not defined by any identifiable features which would allow the skilled person to distinguish the claimed plant from one of the prior art in a straightforward manner. The resistance phenotype itself could not serve this purpose, as the same phenotype could potentially arise from various different genetic origins. Nor was there any additional disclosure in the application of the genetic cause of the resistance phenotype in the deposited seeds. In other words, the trace left in the claimed plant by the process mentioned in the claim was unknown. The board also noted that lettuce varieties with field resistance to B. lactuca were known in the art.

Friday, February 19, 2016 T 475/12 - Medical examination may be a treatment

Camera unsuitable for in-vivo use

Can a method or examination become a treatment just because some of its steps may have a therapeutic effect? Claim 1 of the main request is a medical examination method that comprises administering a laxative to a subject, before the subjects swallows an in-vivo imaging device.

According to the applicant the laxative enables a better collection of data through the in-vivo imaging device. Administering the laxative should not be seen as a therapeutic step.

The board has a different opinion. If the subject happens to have constipation, the examination method might be therapeutic. Moreover, the laxative may prevent complications.

The applicant tries to save the claims by inserting the word non-therapeutic, but the Board does not accept this either (see the end of the decision).

Tuesday, February 02, 2016 T 809/12 - Wish, result-to-be-achieved of functional claim?

Can an  independent claim that contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application comply with Article 84 EPC? That was one of the core items of the decision below.