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

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.

Wednesday, September 26, 2018 T 2355/12 - the boundaries of claim interpretation

A prior art user equipment

In a novelty objection the terms of the claims might be given a broader reading then the applicant would like. This decision shows that there are limits on how broad a term may be constructed.

The invention concerns a "A method for measuring audience size information based on playbacks of a recorded program" in which programs are recorded on "user equipment of a plurality of audience members".  In his refusal, the Examiner found that the central playback facilities in a video distribution system anticipates the term; after all such equipment is in common use by the plurality of audience members. 

The board agreed with the applicant that this interpretation conformed neither to the normal meaning of the term nor to the description of the present application. Unfortunately, for the applicant his victory was short lived as the objection was turned into an inventive step objection upon remittal. The current status of the file is a deemed withdrawal, more than 18 years after the priority date.

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. 

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, 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.

Tuesday, September 08, 2015 T 2371/10 - How not to write a claim

Sometimes one may wonder why parties bother to start an appeal procedure (or worse, write a claim and file an application). In this particular case, the applicant did not get past the Examining Division because a severe lack of clarity under Art 84 EPC. The Board did not think differently and the applicant (appellant) did not attend the oral proceedings. Just a good example of how one should not draft a claim. You can read the frustration of the Board in the decision text, and it took them 15 minutes to come to their decision. If someone knows how this HIFU system works, feel free to comment.

Summary of Facts and Submissions

I. The European patent application was refused by a decision of the examining division for reasons of lack of inventive step (Articles 52(1) and 56 EPC 1973) of the subject-matter of claim 1 of each of a main request and three auxiliary requests then on file and of lack of clarity (Article 84 EPC 1973) of claim 1 of the main request.

II. The applicant lodged an appeal against the decision.

The appellant requested that the decision be set aside and that a patent be granted on the basis of a new set of claims 1 to 10 filed with the statement setting out the grounds of appeal. Furthermore, an auxiliary request for oral proceedings was made.

III. The appellant was summoned to oral proceedings to take place on 23 July 2015.

In a communication pursuant to Article 15(1) RPBA the Board commented on the issues to be addressed during the oral proceedings. In this context, the Board pointed inter alia to a variety of clarity problems with the request on file.

IV. The appellant did not reply to the Board's observations nor did it file any further amendments. Instead, the appellant withdrew its request for oral proceedings by letter of 23 June 2015 and informed the Board that it would not attend or be represented at the oral proceedings. In addition, the appellant requested a decision on the state of the file.

V. Oral proceedings were held in the absence of the appellant.

VI. Independent claim 1 of the appellant's request reads as follows :

"1. A high intensity focused ultrasound (HIFU) system for scanning and treating tumor, comprising a combined probe, a high frequency electric power source, a B-mode ultrasound scanner, a multi-dimensional motional apparatus, a vacuum degasser, a therapeutic bed, and a computer operating system, wherein the combined probe comprises:

- a therapeutic head which generates high intensity focused ultrasound; and

- an image-displaying probe of the B-mode ultrasound scanner which is integrated with the therapeutic head,

wherein the combined probe is mounted on the multi-dimensional motional apparatus which comprises a three-dimensional rectangular coordinate and one- or two-dimensional rotational coordinate, the upper end of the combined probe being connected to a central hole of the therapeutic bed through an open water bag;

wherein the open water bag is mounted on the central hole;

wherein the lower end of the open water bag (2) is connected to the head of the combined probe (3);

wherein the combined probe (3) is further connected to the high frequency electric power source (6);

wherein the B-mode ultrasound probe is connected to the B-mode ultrasound scanner;

wherein the motional system (4) is connected to the digit-controlled scanning system;

wherein the open water bag (2) is connected to the vacuum degasser (5); wherein the computer operation system (9) is connected separately to the high frequency electric power source (6), B-mode ultrasound scanner (7), digit-controlled scanning system (8) and the vacuum degasser; and

wherein the therapeutic head can cause a temperature greater than 70 degrees centigrade in a focal region."

Tuesday, August 11, 2015 T 2049/10 - No clarity or lack of support?

This Examination appeal concerns a decision to refuse a claim solely on the basis of clarity. The refused claim read:

1. A portable computer, comprising:

a display assembly coupled to a base assembly, the base assembly having palm rest areas positioned to support a user's palms;

a touchpad disposed on the base assembly , wherein the palm rest areas are formed by the touchpad,  wherein the touchpad includes a sensor that can detect an object on a surface of the touchpad, and wherein the portable computer estimates a probability that the object detected on the surface of the touchpad is an intentional contact.

Four different clarity objections were raised against this claim: The claim has palm rest areas, but no keyboard. The claim has a 'sensor', instead of a 'hand location sensor'. The claim introduces the surface of the touchpad with 'a surface of the touchpad', which should be 'the'. The claim does not specify the type of input provided by the touchpad that allows calculation of the probability.

The board considers clarity satisfied but considers support instead. Some observations are made regarding the claim that "the invention opens up a whole new field and is entitled to more generality in the claims".


In the end the Applicant settles and includes a keyboard and a hand location sensor in the claim. The application is remitted to allow the Examining division to decide on the inventiveness. 

The following claim is the main request that was eventually remitted:

1. A portable computer , comprising:

a display assembly coupled to a base assembly , the base assembly having palm rest areas positioned to support a user's palms; a keyboard disposed on the base assembly;

a touchpad disposed on the base assembly , wherein the palm rest areas are formed by the touchpad ; and a hand location sensor being able to detect a hand location when a user's hand is positioned on the keyboard ,

 wherein the portable computer filters each contact sensed by the touchpad to either accept the contact as an intentional input command, or reject the contact as unintentional, based on the hand location detected by the hand location sensor."

Wednesday, April 22, 2015 T 0849/11 - Reflection on parameters

This decision shows that one should never think too lightly about the use of parameters in claims. The applicant who chooses to define the scope of the claim by parameters should ensure that a skilled person can easily and unambiguously verify whether he is working inside or outside the scope of the claim, and the applicant should convincingly show that all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy to fulfill the requirements of Art 84 EPC.


Summary of Facts and Submissions

I. The present appeal lies from the decision of the examining division to refuse European patent application No. EP 03 731 456 for lack of inventive step.

II. With the notice of appeal the appellant (patent applicant) filed a new main request and auxiliary requests 1 and 2.

III. In its communication under Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), the Board expressed its preliminary non-binding opinion and raised objections under Articles 123(2), 84, 83 and 56 EPC. In particular, it was indicated that claim 1 contained several parameters and that no measurement method was present in claim 1, so that the requirements of Article 84 EPC were not met.

Friday, April 17, 2015 T 0887/11: an exception to the prohibition of reformation in peius

I rarely see that the principle of prohibition of reformatio in peius (G 1/99) is discussed in appeal proceeding. In T 0887/11 this is an important point of the discussion between the parties. This appeal extends from a decision of the Opposition Division. The Opposition Division decided that the patent could be maintained with amended claims. The Opponent filed the appeal (appellant)

The main message of G 1/99 was "In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected." It seems to be a fair principle which provides some security to the appellant. After this general principle, the Enlarged Board of Appeal discusses an exception to this principle: " However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision. (...)". 
A first line of reasoning of the Board of Appeal is that the appellant is not in a worse position because a deleted feature in claim 1 of auxiliary request 3A "did not imply any clear structural limitation to the claimed subject-matter". Then the decision becomes a little confusing because, although it seems that there is no reformatio in peius, the Board discusses (most probably for sake of completeness) that the above discussed exception to the principle of prohibition of reformation in peius also applies to this case.

Tuesday, April 07, 2015 T 0556/11 - In any shape or form

Defining a shape without functional language can be hard

 The  Examining division had rejected a claim to a vaginal speculum as lacking clarity because its shape was only defined in terms of functional features. The Board of Appeal agrees with this assessment; This claim ought to include further structural features. The argumentation seems almost interchangeable with one for an objection based on a missing essential feature (which would be based on the same Article 84 EPC).


Claim 1 of the main request reads as follows:
"1. Vaginal speculum (1) comprising two spoon blades (3,4) which form a spoon blade assembly and:
- are intended for introduction into the vagina (25);
- are elongated in a longitudinal direction; and
- are located alongside and opposite one another;
the one spoon blade (4) at one end of the spoon blade assembly being provided with two bodies (6) which together with said one spoon blade form a housing part having a U-shaped cross section and other spoon blade (3) being accommodated between said bodies (6) such that it is hingeable with respect to the one spoon blade (4), wherein an exterior of the housing part having the U-shaped cross section (4,6) is shaped for accommodating said housing part having the U-shaped cross section in the mouth of the vagina (25) after the spoon blades (3,4) have been introduced into the vagina (25); and for holding said housing part having the U-shaped cross section, at least when the spoon blades (3,4) are in a position in which they have been brought together, in place in the mouth of the vagina (25) by the ring (50) of the muscle tissue (30,31) extending around, the mouth of the vagina."

Reasons for the Decision

Saturday, March 28, 2015 G 3/14 (2) - EPC requires all dependent claims to be examined on clarity too

 

We discussed the main answers given by the Enlarged Board in G 3/14 to the referred questions in yesterday's post "G 3/14 - is the clarity issue newly introduced or not?". Today, we give attention one of the analyses underlying the decision: must all claims be examined on clarity by the Examining Division, also all dependent claims? The Enlarged Board seems to answer this with a very clear "yes".

Background / Summary of Facts and Submissions

Introduction

I. During the appeal proceedings in the referring case (T 373/12) the proprietor filed an auxiliary request for maintenance of the patent which consisted of a combination of granted claim 1 and granted dependent claim 3. This granted dependent claim contained a lack of clarity, namely that the claimed article was coated "over substantially all its surface area". By its decision dated 2 April 2014 and in the light of what was seen as conflicting jurisprudence of the Boards of Appeal, the Board referred the following questions to the Enlarged Board of Appeal under Article 112 EPC (hereafter: "the referred questions"):

Friday, March 27, 2015 G 3/14: is the clarity issue newly introduced or not?

G 3/14 relates to the examination of clarity in opposition proceedings. 
Yesterday, the Enlarged Board of Appeal decision G 3/14 has been published by the EPO. A 97 pages long document with extensive discussions of the all submissions and of case law of the Boards of Appeal. This blog mainly relates to the reasons of the Enlarged Board with respect to the question of law. The referring Board of Appeal asked questions about the interpretation of decision G 9/91, however, the Enlarged Board of Appeal changed the question of law towards: What is the correct interpretation of Art. 101(3) EPC?
After studying the reasons, it seems that "introduces" is the most important term in the catchwords. A combination of granted claims does not comprise newly introduced clarity issues, because these issues were already present in the granted claims. 
One of the main lines of reasoning is: A claim tree with dependent claims represents (quite often) a large number of independent claims which are the result of writing out all claimed combinations. When the patent is granted, all the possible combinations of claims are, at least in theory, fully examined (for example also for clarity, Art. 84 EPC). When, in opposition proceedings a dependent claim is combined with an independent claim, a number of the granted combinations of claims is deleted and one of the already examined and granted combination is chosen to be the independent claim. 
According to the Enlarged Board, it is an explicit choice in the EPC that clarity is not a ground for opposition and it is an explicit choice of the legislator that clarity must be addressed in Examination proceedings - "opposition is not a continuation of the Examination proceedings". Therefore, only newly introduced clarity issues can be a ground of revocation of the patent under Art. 101(3) EPC.

Catchwords

In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

Friday, March 06, 2015 T 2130/11: disclaimers and Art. 84 EPC: an inescapable trap?

Disclaimers are always a nice subject for a complicated and expensive appeal procedure and quite often result in "important" case law. In this appeal, which lies from a decision of the Opposition Division, claim 1 of the main request comprises a long disclaimer which tries to disclaim embodiments of a relevant Art. 54(3) prior art document. According to this Board, G1/03 defines that the disclaimer has to fulfill the requirement of Art. 84 EPC. G1/03 defines that the patent owner may not disclaim more than strictly necessary to be novel over the Art. 54(3) document. In order to disclaim all embodiments of the relevant Art. 54(3) prior art document, but not disclaim more than strictly necessary, the patent owner considered it necessary to introduce the long disclaimer. However, this disclaimer has to fulfill Art. 84 EPC. It seems to be an inescapable trap. How to disclaim not more than strictly necessary when the embodiments as disclosed in the Art. 54(3) document do not fulfill the requirements of the Art. 84 EPC (e.g. clarity and conciseness).
In this decision the Board refused the main request because the disclaimer did not fulfill the requirements of Art. 84 EPC (clarity). However, the Board formulated its decision in such a way that the requirements of G1/03 and Art. 84 EPC are not directly an inescapable trap.

Catchwords
 
The difficulty for the applicant or 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 a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, point 3 in the reasons, second paragraph, last sentence) may have as a consequence the watering down of one of the requirements of the EPC. The requirements of Article 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim (see point 2.9).
On the other side, the condition that the disclaimer should not remove more than is necessary to restore novelty 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, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10).

Friday, February 06, 2015 T 2001/12 - Insufficiency, clarity or inventive step

Can an objection of insufficient disclosure under Article 83 be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect? What are the consequences of a doubt that the invention as claimed is capable of solving the problem defined in the application? Does it make a difference if the question arises because the claim fails to specify those features which are disclosed in the application as being essential for providing the solution to the problem, or because, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem? The Board of Appeal provided a thorough analysis and guidance in this decision. 

Summary of Facts and Submissions

I. The appeal is against the decision of the Examining Division refusing European patent application No. 08 764 638 "because the main request does not meet the requirements of Article 83 EPC, Article 84 EPC, and Article 54 EPC, and because the auxiliary request does not meet the requirements of Article 83 EPC and Article 84 EPC."

II. The following documents [...]

III. In the letter stating the grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or one of auxiliary requests I-VI, all filed with the said letter.

IV. Claim 1 according to the main request reads as follow:

"A memory device (1), comprising at least:

a first semiconductor region (100) having a length (Lg), a first surface (100A), and a cross-section surrounded by the first surface (100A);

a memory means (300) provided on the first surface (100A), wherein the memory means (300) is a multilayered insulation film; and

a gate (400) provided on the memory means (300);

wherein an equivalent sectional radius (r) of the cross-section of the first semiconductor region (100) is defined as a radius of curvature of a circle having the same cross-sectional area as the cross-section; and

an equivalent silicon oxide film thickness (tm) of the memory means (300) is defined as a sum of values of thickness of each layer of the multilayered insulation film, wherein each value of thickness is the film thickness of said layer multiplied by dielectric constant of silicon oxide and divided by dielectric constant of said layer;

and wherein the equivalent sectional radius (r) of the cross-section of the first semiconductor region (100) is equal to or smaller than the equivalent silicon oxide film thickness (tm) of the memory means (300);

characterized in that

the equivalent silicon oxide film thickness (tm) of the memory means (300) is 20 nm-to 6nm."

V. The Examining Division argued essentially as follows:

[...]

VII. The appellant argued essentially as follows:

[...]

Reasons for the Decision

1. The appeal is admissible.

[...]

3. Main Request: Article 83 EPC 1973

3.1 Paragraph [0011] of the description begins as follows:

- "According to to the above-mentioned configuration, the equivalent sectional radius r is set to be equal to or smaller than the equivalent oxide film thickness tm of the memory means".

This relationship between the equivalent sectional radius and the equivalent oxide film thickness is included in claim 1 of the main request.

Paragraph [0011] then continues:

- "and therefore it becomes possible to realize a memory device which can reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device."

This feature, which is not comprised in claim 1 of the main request, is central to the objection under Article 83 EPC made in the contested decision.

In particular, by comparing Examples 1 and 2 of the present application with the disclosures of documents D2 and D8, the Examining Division came to the conclusion that it was not credible that the invention defined by claim 1 of the main request would achieve the technical effect of reducing the voltage for writing and erasing to approximately 70% or less of that of a conventional planar type device. For this reason the Examining Division judged that the requirements of Article 83 EPC were not met.

3.2 Hence, a first question which arises is whether the allegation that the claimed invention is incapable of achieving the above-mentioned effect would - even if true - justify refusing the application for failure to meet the requirements of Article 83 EPC.

3.3 In Decision G 1/03 (OJ, 2004, 413) the Enlarged Board of Appeal stated the following:

- "a lack of reproducibility of the claimed invention ... may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)." (See Reasons, point 2.5.2.)

This passage has since been cited in other decisions; for example in T 1079/08 the point is made as follows:

- "In Decision G 1/03 (OJ, 2004, 413) the Enlarged Board of Appeal indicated that a lack of reproducibility of the claimed invention is relevant under the requirements of sufficiency of disclosure if the technical effect is a technical feature of the claim, since then it is a feature characterising the subject-matter claimed (see point 2.5 of the reasons)." (T 1079/08, Reasons, point 4).

The same point had been made in earlier decisions, for example in T 939/92 (cited by the Enlarged Board in the above excerpt from G 1/03), and in T 260/98 (also citing T 939/92) in which the following conclusion was drawn:

- "However, since the claims only specify a reduced abrasiveness and do not require any synergistic activity of the components, the question as to whether or not such a synergic effect is achieved by the claimed printing inks is not relevant to the issue of sufficiency, although it may properly arise under Article 56 EPC, if this technical result turns out to be the sole reason for the alleged inventiveness of the printing inks (T 939/92 of 12 September 1995, Headnote point 2 and Reasons Nos. 2.4 to 2.6, OJ EPO 1996, 309)." (T 260/98, Reasons, point 3.6.6.)

3.4 It is therefore the consistent position of the boards that an objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect.

In the present case, the technical effect in question is the reduction of the writing and erasing voltage to approximately 70% or less of the program voltage of a conventional planar type device. Achieving this effect is not part of the invention defined by claim 1 of the main request, and hence the Examining Division's objection that the application as a whole does not disclose features which would enable this effect to be obtained does not constitute a valid objection under Article 83 EPC 1973.

3.5 The Board therefore judges that claim 1 of the main request complies with the requirements of Article 83 EPC 1973.

4. Article 84 EPC 1973

4.1 The Examining Division also found that since claim 1 of the main request did not define features which would enable the above-mentioned effect to be obtained, the requirements of Article 84 EPC 1973 were not met, since the claims did not recite all the features essential for the definition of the invention.

4.2 Article 84 EPC requires that the claims are clear, concise and supported by the description. According to established case law of the boards, Article 84 EPC is to be interpreted as requiring that the claims indicate all essential features of the invention (see Case Law of the Boards of Appeal, 7th edition 2013, II.A.3.2).

In the decision T 32/82, the matter was put as follows:

- "Article 84 EPC requires amongst other things that the claims, which define the matter for which protection is sought (i.e. the object of the invention as implied by Article 52(1) EPC) be clear. The Board of Appeal considers that this has to be interpreted as meaning not only that a claim from a technical point of view must be comprehensible, but also that it must define clearly the object of the invention, that is to say indicate all the essential features thereof.

- "As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed which are necessary to solve the technical problem with which the application is concerned." (see T 32/82 OJ 1984, 354, Reasons, point 15.)

In the decision T 133/85 the point was made as follows:

- "A claim which does not include a feature which is described in the application (on the proper interpretation of the description) as an essential feature of the invention, and which is therefore inconsistent with the description, is not supported by the description for the purpose of Article 84 EPC." (T 133/85, headnote I).

This requirement to eliminate inconsistency between the claims and the description also implies that where an invention has been presented in the description in terms of a modification of prior art which is cited or otherwise acknowledged in the application, the modifying features must be seen as essential (see e.g. T 813/03, point 5.1).

Hence, if the claims do not comprise a feature which is described in the application as essential, or which is disclosed in the description as being indispensable for solving the problem defined in the application, then an objection under Article 84 EPC 1973 may properly arise.

Examination for compliance with this requirement does not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to any prior art cited in the application with respect to which the invention has been disclosed.

4.3 By contrast, the determination of the objective contribution of the claimed invention, i.e. having regard to the totality of the prior art, and in particular the objectively identified closest prior art, forms part of the examination for inventive step.

If, as a result of the comparison with the prior art, objective doubts arise that the claimed invention would actually be capable of solving the problem defined in the application (whatever may be asserted in the description), then an objection under Article 56 EPC 1973 may be raised, possibly requiring a reformulation of the problem (see e.g. T 400/98, points 4.3 - 4.3.6, and Case Law, op. cit. I.D.4.3.2).

This is also consistent with the passage cited from G 1/03 under point 3.3, above, in which a lack of reproducibility the claimed invention (i.e. a failure of the claimed features to deliver the effect aimed for) is seen to represent, in the case of an effect which is not expressed in a claim but is part of the problem to be solved, "a problem of inventive step".

4.4 In summary, a doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

- If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

- If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised.

4.5 In the light of the above analysis, the Board is called upon to decide whether the Examining Division was correct in concluding that the claim 1 of the auxiliary request (essentially corresponding to claim 1 of the present main request) failed to meet the requirements of Article 84 EPC in that it did "not recite all the features essential for the definition of the invention". The Board's answer to this question is no, for two reasons.

4.6 Firstly, in the section entitled "Problem to be Solved by the Invention" (paragraphs [0007]-[0009]), several problems are mentioned, including providing a "memory device which can reduce the voltage for writing and erasing".

However, although providing a writing/erasing voltage of approximately 70% or less of that of a conventional planar type device is mentioned in the description, achieving this effect is not stated to be the problem to be solved by the invention, either in paragraphs [0007]-[0009] or elsewhere. There is therefore no basis for arguing that features necessary to achieve this degree of reduction are essential to the definition of the invention.

4.7 Secondly, even if it were accepted that the technical problem underlying the invention is to provide a writing/erasing voltage of approximately 70% or less compared to a conventional planar type device, according to the application this degree of reduction is achieved by ensuring that "the equivalent sectional radius r is set to be equal to or smaller than the equivalent oxide film thickness tm of the memory means" (see e.g. paragraph [0011]).

Since this feature is indisputably comprised in claim 1 of the main request, no legitimate objection could be raised under Article 84 EPC 1973 that claim 1 lacks a feature presented in the description as essential to solving the problem.

4.8 The actual objection of the Examining Division was that, in the light of document D2 (cited in the International Search Report) and document D8 (cited by the Examining Division), and despite the assertions in the description of the present application, it was not considered technically credible that the devices of the present application did in fact reduce the writing/erasing voltage to 70% or less than that of a conventional planar type device.

In the light of the analysis presented above, the Board takes that view that while such an argument might conceivably be of relevance in an examination of inventive step under Article 56 EPC 1973, it is not relevant to the question of compliance with the requirements of Article 84 EPC 1973.

4.9 The remaining objection against claim 1 under Article 84 EPC 1973 (mentioned under point 24.1 of the section "Additional Comments") is that in the case of a hollow semiconductor region, claim 1 does not provide a clear definition of which "first surface" (internal or external) is meant.

In the opinion of the Board, however, it is clear that the external surface is intended. Claim 1 of the main request defines:

- "a first semiconductor region (100) having a length (Lg), a first surface (100A), and a cross-section surrounded by the first surface (100A)".

Hence the "cross-section surrounded by the first surface" is a cross-section of the first semiconductor region. Taking the first surface to mean the internal surface of a hollow semiconductor region would imply that the cross-section of the semiconductor region would enclose none of the actual semiconductor material, but only the hollow interior region. It would be clear to the skilled person from the wording of the claim that this is not what is intended.

4.10 Claim 1 of the main request is therefore judged to meet the requirements of Article 84 EPC 1973.

5. Further Procedure

5.1 No objection of lack of novelty was raised against the subject-matter of claim 1 of the first auxiliary request then on file, nor does the Board see any reason to raise such an objection against the (broadly similar) subject-matter of claim 1 of the present main request in the light of the prior art currently on file.

5.2 In view of the statement in the contested decision that "no supplementary European search report has been established for the present application and no further search for relevant prior art has been conducted during the written procedure", the Board considers that the Examining Division's proposal that "it would be appropriate to return the file to the division for a detailed search and examination to be conducted" is sensible. Hence it is appropriate for the Board to exercise its discretionary power under Article 111(1) EPC 1973 to remit the case to the department of first instance for further prosecution.

5.3 In the section headed "Additional Comments" (said not to form part of the reasons for which the application was refused) the Examining Division briefly indicated its view (under point 25.1) that the subject-matter of claim 1 of the first auxiliary request did not involve an inventive step with respect to document D5/D5a. The Board finds it appropriate to refrain from commenting on this matter for the following reasons.

If, following the search mentioned above, the document D5/D5a is confirmed as the closest prior art in the remitted procedure and the Examining Division maintains its view on inventive step, then the applicant would be entitled to a full explanation of this objection in terms of the problem-solution approach, and taking into account any counter-arguments of the applicant (for example, those presented in the notice of appeal). For the Board to decide this matter in the present decision would deprive the appellant of two instances on the issue. Moreover, the search may reveal new relevant prior art which may either become the starting point for examination, or have a bearing on the argument starting from D5/D5a.

5.4 Hence, for the avoidance of any doubt, the Board has decided only that claim 1 of the main request filed with the notice of appeal satisfies the requirements of Article 84 EPC 1973 and Article 123(2) EPC, and that in respect of the invention defined in claim 1 of the main request filed with the notice of appeal the application meets the requirements of Article 83 EPC 1973.

All other matters remain to be decided by the Examining Division in the remitted procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

Headnote

An objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (point 3.4).

A doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

a) If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

b) If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised (point 4.4).

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T200112.20150129. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Impossible object" by Till Krech obtained via Flickr under CC BY 2.0 license (no changes made).