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.
In G3/14 the Enlarged Board of Appeal explained that during opposition no clarity objection can be raised for a number of specific types of amendments - in particular, if the amendments only relate to combining granted claims (or combining a granted claim with a portion of granted claim) or deleting alternatives from the granted claims, no clarity objections can be raised for clarity problems that were already in the granted claims because clarity is not a ground of opposition. In this case there was an amendment made by the patent proprietor and according to the opponent the amended claim lacked clarity. The clarity issue raised by the opponent was similar to a clarity issue raised by the Opposition Division. The Board concluded that this clarity problem was already in the granted claims. According to the Board of Appeal the amendment could be interpreted as deleting an alternative from the granted claim and, as such, the clarity objection is not allowed into this appeal procedure.
The interesting thing in this case is that the two alternatives are not defined as alternatives in the claims. According to the Board, the wording of a specific feature of the granted claims is such that only two alternatives fall within the scope of protection of that specific feature. One of the alternatives is excluded from the scope of protection in the amended claims. Subsequently this Board concludes that this is "deleting an alternative from the granted claims as meant by the Enlarged Board of Appeal in G3/14". Now I wonder whether I may conclude that: "By adding a disclaimer to a claim that excludes one of the alternatives that falls within the scope of protection of the granted claims, one prevents that the Opponent may raise clarity objections to your amended claim."?
Of course the reality of this case is a little bit more complex: during the opposition proceedings a not-supported-by-the-original-disclosure-objection was also raised against the now excluded / disclaimed alternative.
