T 0254/10 - About is vague

EPO T 0254/10

For the decision, click here

Key points

• For the Second Auxiliary Request, the board confirms that: " It is established jurisprudence of the boards of appeal that a very rigorous standard, namely that of beyond any reasonable doubt, is to be applied when examining the allowability of amendments under Article 123(2) and (3) EPC." 
• The Board further decides that a range defined as " about less than 1%" is not clear and contravenes Article 84, in particular because the features is intended to distinguish over the prior art.

Reasons for the Decision
[...]

5.5 The board concurs with the respondent that the opposition division applied the wrong standard when considering Article 123(3) EPC. It is established jurisprudence of the boards of appeal that a very rigorous standard, namely that of beyond any reasonable doubt, is to be applied when examining the allowability of amendments under Article 123(2) and (3) EPC. If there is the slightest doubt that the unamended patent could be construed more narrowly than the patent as amended, and apparently the opposition division had such doubts, the amendments should not be allowed (cf. T 113/86 of 28 October 1987, point 2.2 of the Reasons; T 307/05 of 27 February 2007, points 3.3.1 and 3.3.2 of the Reasons).

5.6 For the aforementioned reasons, the board concludes that the amendments in claim 8 of the second auxiliary request do not comply with Article 123(3) EPC.

[...]

Fourth auxiliary request

7. Article 84 EPC 1973

7.1 Claim 1 of auxiliary request 4 differs from claim 4 as granted in that features (a) to (c) have been replaced by the feature "and about less than 1% total of 8,10 octadecadienoic acid, 11,13 octadecadienoic and trans-trans octadecadienoic acid".

In these circumstances, the board has the power under Article 101(3) EPC to examine whether the amendment introduces any contravention of requirements of the EPC, including Article 84 EPC 1973 (cf. T 301/87, OJ EPO 1990, 335, point 3.8 of the Reasons, confirmed in G 3/14 of 25 March 2015, paragraph 87 of the Reasons).

7.2 Article 84 EPC 1973 in combination with Rule 29(1) EPC 1973 requires that the claims must be clear and define the matter for which protection is sought in terms of the technical features of the invention. These requirements serve the purpose of ensuring that the public is not left in any doubt as to which subject-matter is covered by a claim and which is not. A claim cannot be considered clear in the sense of Article 84 EPC if it does not unambiguously allow this distinction to be made (cf. G 2/88, OJ EPO 1990, 93, point 2.5 of the Reasons). A claim comprising an unclear technical feature therefore entails doubts as to the subject-matter that the claim covers. This applies all the more if the unclear feature is essential with respect to the invention in the sense that it is intended to delimit the claimed subject-matter from the prior art, thereby giving rise to uncertainty as to whether or not the claimed subject-matter is anticipated (cf. T 560/09 of 20 January 2010, point 2 of the Reasons).

7.3 In the present case, the level of undesired isomers is essential to the invention, which aims at providing a safe and defined product suitable for consumption by animals and humans. This level also distinguishes the claimed compositions from those of the prior art (see page 3, paragraph [0010], of the patent in suit). It is therefore essential that this level is clearly defined.

However, claim 1 of auxiliary request 4 lacks a clear boundary in this respect, due to the use of the vague expression "about less than 1%", with the consequence that the skilled person is not able to establish with certainty which subject-matter is covered by claim 1 and which is not. Merely to illustrate this point, the board notes that it is not at all clear whether a composition with, for example, 1.4% total of undesired isomers falls within the scope of claim 1 or not.

7.4 The appellant, who had been made aware of this objection in the board's communication accompanying the summons to oral proceedings, did not provide any arguments in this respect.

7.5 For the above reasons, the board concludes that claim 1 of auxiliary request 4 does not comply with Article 84 EPC 1973.

8. Remittal

Since the board has come to the conclusion that the patent as granted cannot be maintained pursuant to Article 100(c) EPC 1973 and that the first to fourth auxiliary requests are not allowable under Article 123(2) or (3) or Article 84 EPC, there is no room for a decision on remittal of the case to the department of first instance.

Order

For these reasons it is decided that:

The appeal is dismissed.