T 1363/12 - Amendments and the gold standard

EPO Headnote

The fundamental test under Article 123(2) EPC remains the "gold" standard referred to in G 2/10, namely, what would a skilled person directly and unambiguously derive, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the original disclosure.

The decision in T 2619/11 did not lay down a different test, namely, of what was "really disclosed" to the skilled person.

Decisions on Article 123(2) EPC are very case-specific and care should be taken in applying statements of Boards of Appeal made in the context of particular factual situations to other factual situations.

Analysis

• In 2014, Guidelines H-IV, 2.3, the following paragraph was added: "From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons." 
• This wording seems to have been based on T 2619/11 (Board 3.4.02, published 14.03.2013).
• The present Board "can find no suggestion that the relevant statements in T 2619/11 were in any way intended to override or provide a new assessment of the "gold" standard [of G2/10, point 4.3], nor can they be construed as introducing a more lenient criterion for the assessment of amended subject-matter."

T 1363/12 published 17.03.2015

Dated 12.12.2014 - Board 3.2.06 (Harrison, Rosenblatt, Garnett) - distribution B - for the decision, click here

Summary of Facts and Submissions

I. The appellant (applicant) filed an appeal against the decision of the examining division to refuse European patent application No. 04 254 686.1. [...]

Reasons for the Decision

Main request

1. The issue to be decided in this appeal is whether amended claim 1 contains subject-matter extending beyond the content of the application as filed (Article 123(2) EPC).

1.1 The basic principle when applying Article 123(2) EPC is to be found in the jurisprudence of the Enlarged Board of Appeal and was summarised and confirmed in its decision G 2/10 (OJ EPO 2012, 376, point 4.3). While referring to opinion G 3/89 and decision G 11/91 (OJ EPO 1993, 117 and 125), the Enlarged Board of Appeal considered the following definition given therein to have become the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC:

"From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons."

1.2 The appellant has relied on the revised Guidelines for Examination of the European Patent Office, in the version valid as of 1 November 2014, in support of a general submission that a more lenient standard than the "gold" standard should be applied. In particular, the appellant referred to the following paragraph which has been added in section H-IV, 2.3:

"When assessing the conformity of the amended claims to the requirements of Art. 123(2) EPC, the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole."

Quite apart from the fact that the Boards of Appeal are not bound by the Guidelines for Examination, as was acknowledged by the appellant, it is to be noted that the principles established by the Enlarged Board of Appeal (see above) for the assessment of the requirement of Article 123(2) EPC cannot be changed by issuing amended Guidelines. Consequently, the appellant's suggestion that the above statement was somehow applicable in this appeal at the time of the oral proceedings before the Board is wrong: there has been no change in the standard to be applied under Article 123(2) EPC. Thus, in the present case, the assessment to be made is still whether the subject-matter of amended claim 1 is directly and unambiguously derivable from the application as filed.

The Board further notes that neither the above cited statement in the Guidelines nor the entire section H-IV, 2 thereof contains any reference to the decision G 2/10 or the earlier decisions of the Enlarged Board on this issue. The added wording is also not derivable from G 2/10 and appears instead to have been taken from T 2619/11. Although the latter decision was taken after G 2/10, the relevant passages therein (see the Catchword and Reasons, point 2.1) are not expressed to be a development of the Enlarged Board's decision in G 2/10 or the earlier jurisprudence of the Enlarged Board of Appeal. Rather, they were made in the specific factual context of that case, in the light of which the Board came to the conclusion that the Examining Division had made a mistake by focusing disproportionately on the claim structure of the original application and not on what the skilled person would clearly and unambiguously derive from the application as whole. The present Board observes that whether subject-matter has been added in the sense of Article 123(2) EPC can only be decided on the basis of the facts of each individual case (see G 1/93, OJ 1994, 541, Reasons, point 17), i.e. the issue is very case-specific. While the above passage from the Guidelines may well be correct when applied to particular factual situations similar to that which arose in T 2619/11, the present Board does not consider that any more general principle can be derived from this decision. Indeed, the Board can find no suggestion that the relevant statements in T 2619/11 were in any way intended to override or provide a new assessment of the "gold" standard referred to above, nor can they be construed as introducing a more lenient criterion for the assessment of amended subject-matter. In particular, the present Board does not consider the Board's statement in T 2619/11 (point 2 of the Reasons) that such disproportionate focusing had been to the detriment of what was "really disclosed" to the skilled person was intended to add a gloss to the "gold" standard. This can be seen from a consideration of the structure of the reasoning in that case. Thus, first, the Board identified what it considered to have been the mistake made by the Examining Division, namely, that the focus of the decision was "disproportionally directed to the structure of the claims as filed to the detriment of what is really disclosed to the skilled person by the documents as filed." The Board then went on to consider the application as filed in detail, after which it came to a conclusion about what was "directly and unambiguously disclosed to the skilled person ..." (see point 2.8 of the Reasons). The Board at this stage did not ask itself what was "really disclosed" to such person.

Finally, the appellant's argument that a more lenient criterion applied throughout the EPO might be to the benefit of applicants, while no doubt true, is not in itself relevant.

1.3 Therefore the issue to be decided remains the same, i.e. whether the amended subject-matter of claim 1 is directly and unambiguously derivable from the application as filed, taking into account the skilled person's common general knowledge. The facts in T 2619/11 do not correspond to the facts underlying the present case, such that the statement there about not focusing "disproportionally" on the claim structure of the original application has no relevance to the facts of the present case.

1.4 The feature in the characterising portion of amended claim 1, "a reinforcement (70) is mounted to extend across the opening (11) in a position to reinforce the strength of the cabinet (10) and to couple the front wall of the cabinet (10) to the rear wall of the cabinet (10)", is not directly and unambiguously derivable from the application as filed.

Original claim 1 defines "a reinforcement placed at a predetermined portion of the opening to support and reinforce the top plate". Similar definitions are also made in the other independent claims originally filed in regard to the reinforcement and its purpose, i.e. "to support and reinforce the top plate". The purpose of the reinforcement according to amended claim 1 of the main request is however defined differently, namely, that besides coupling its front and rear walls, it shall reinforce the strength of the cabinet. This does not not mean to specifically reinforce and support the top plate, because according to the claim's preamble the cabinet comprises the front and rear walls but not the top plate. The remaining features of amended claim 1 also do not define any structural or functional feature relating to the originally defined purpose, such purpose implying certain limitations with respect to the structural features required for achieving it, such as the structure embodying the "reinforcement" being installed so that it can take up forces acting on the top plate. The amended claim covers arrangements in which the reinforcement extends across the opening somewhat below an upper edge of the cabinet on which the top plate could be located without coming into contact with or necessarily supporting the top plate. Such arrangements, which were not covered by the original claims, are neither disclosed in the originally filed claims nor in the description or figures of the application.

The passages in the originally filed description indicated by the appellant as a basis for the amended feature, in particular page 13, lines 28 to 30, indeed disclose the wording "to reinforce the strength of the cabinet" within the description of the preferred embodiment. It is however clear from the context in which this wording is found, i.e. from the immediately following sentence as well as from the final sentence of the complete paragraph, that the function of the reinforcement resides in reinforcing the strength of the top plate. To this purpose the reinforcement is constituted by a support plate and two upwardly extending side plates. The general purpose of strengthening the top plate is for example also confirmed by the initial paragraph of the description or the last three lines of the first paragraph on page 4, line 12-16. The appellant did not indicate any other passages from which the objected feature was directly and unambiguously derivable, nor could the Board identify a basis for it.

1.5 At least for the above reason the requirement of Article 123(2) EPC is not met, such that the appellant's main request is not allowable.

Auxiliary request 1

[...]

Order

For these reasons it is decided that:

The appeal is dismissed.