T 1702/12 - Broader dependent claim

T 1702/12
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Catchword
Auxiliary requests 2 and 3: extension of protection conferred (yes) - scope of granted dependent claim cannot be greater than that of independent claim 1 on which it depends


Key points

• Claim 1 recited a range of 100 to 500 poise, dependent claim 6 range of up to 2000 poise. Amending claim 1 in opposition to recite a range of 100 to 2000 poise contravenes Art. 123(3) EPC because a dependent claim can not have a scope greater than that of the independent claim.
• Change of the upper limit of claim 1 from 500 to 5000 under Rule 139 as correction of an error was neither allowed. 

Reasons for the Decision

Auxiliary requests 2 and 3

4. Claim 1 of each of auxiliary requests 2 and 3 differs from claim 1 as granted in that the viscosity of the oil phase is specified as 100 to 2000 poise, and 200 to 2000 poise, respectively, rather than 100 to 500 poise.

4.1 The Appellant submitted that said claim did not extend the scope of protection conferred by the claims as granted, since claim 6 as granted disclosed an upper limit of 2000 poise of the oil phase viscosity range, such that the scope of claim 1 of auxiliary requests 2 and 3 was not broader than that of the granted claims as a whole.

4.2 However, claim 6 as granted is dependent on inter alia claim 1, since it is worded as "A composition according to any of the preceding claims..." (see point I above), claims 2 to 5 also all being dependent on inter alia claim 1. Hence, claim 6 must be construed to incorporate all the limitations of claim 1, including the upper limit of the oil phase viscosity range of 500 poise. Thus, the scope of protection afforded by granted dependent claim 6 cannot be greater than that provided by granted claim 1.

4.3 Since the upper limit of both the oil phase viscosity ranges in claim 1 of each of these requests is higher than that in granted claim 1, namely 2000 instead of 500 poise, the scope of protection conferred by claim 1 of each of auxiliary requests 2 and 3 has been broadened vis-à-vis that of the claims as granted, such that the the requirements of Article 123(3) EPC are not satisfied.