T 0809/12 - Result to be achieved

EPO Headnote:

If an independent claim contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application, to comply with Article 84 EPC 1973 the remaining features of the claim must comprise all essential features necessary for achieving that result.

Comment - The hadnote requires a bit of analysis. Of course, any claim must contain "all essential features necessary for achieving that result", not only claims containing a result-to-be-achieved feature - as the Board acknowledges. In fact, the Board distinguishes over T 68/85 and subsequent case law that held that it is not necessary to include all such features, if this would unduly restrict the claim. The Board notes that in T 68/85, the claimed technical result (i.e. result to be achieved recited as feature in the claim) did not in fact correspond to the problem underlying the application.

 EPO T 809/12 - [C] - link

Reasons for the Decision

[...] 2.2 Claim 1 contains, apart from structural features such as the thickness of the first and second Ni or NiCr inclusive layers, the feature "said coated article has a DeltaE* value (glass side) no greater than 2.5 after or due to heat treatment". The question to be answered by the board is whether this feature leads to non-compliance with Article 84 EPC 1973.

2.3 The application concerns low-E coated articles and methods of making the same. According to the description, page 3, second paragraph, "there ... exists the need in the art for a low-E coating or layer system which after heat treatment substantially matches in color ... its non-heat treated counter part. In other words, there exists a need in the art for a low-E matchable coating or layering system". Further according to the description, page 13, lines 4 et seq., "The value ... DeltaE* ... [is] important in determining whether or not there is matchability, or substantial matchability, in the context of the invention". The contentious feature relating to the DeltaE* value thus amounts in essence to claiming the effect aimed at by the invention, i.e. improved matchability of the coated article. Put differently, the feature relating to the DeltaE* value is defined as a result to be achieved corresponding essentially to the problem underlying the application.

2.4 According to the case law of the boards of appeal, functional features defining a technical result may be permissible under certain circumstances as long as the clarity of a claim as required by Article 84 EPC 1973 is not jeopardised (see the Case Law of the Boards of Appeal, 7th ed., II.A.3.4).

2.5 A particular situation arises when a product is defined by the result to be achieved, the result corresponding in essence to the problem underlying the application. The boards of appeal have dealt with such situation on several occasions.

2.5.1 For instance, in T 573/03 the independent process claim did not contain any physical process step and was defined only by the final result of the process, which final result corresponded to the problem underlying the application (see reasons 2, 3 and 7.3.3). The board concluded that the requirements of Article 84 and Rule 29(1) EPC 1973 were not complied with (see reasons 2.5).

2.5.2 In T 383/04 it was held that a definition amounting merely to claiming the underlying technical problem without including all technical features which were essential for solving the problem was not permissible under Article 84 EPC 1973 (see reasons 3.1 to 3.3).

2.5.3 In T 1787/08, the feature in question defined a result to be achieved which corresponded to the problem underlying the application. The independent claim did not give a complete indication as to which structural measures would have to be taken in order to achieve the result. The board concluded that there was a lack of clarity (see reasons 4.1, first and second paragraphs).

2.5.4 In T 2065/10, a decoder was claimed which was merely defined by its input and output parameters and by a result to be achieved, rather than in terms of structural features allowing the technical problem underlying the application to be actually solved. The result to be achieved corresponded to the problem underlying the application as filed. The board concluded that this led to a lack of clarity (see reasons 2.2.1 and 2.2.2).

2.6 It is also established case law that an independent claim must indicate all the essential features of the object of the invention in order to comply with the requirements of Article 84 EPC 1973 (see G 2/88, reasons 2.5 and G 1/04, reasons 6.2; see also the Case Law of the Boards of Appeal, 7th ed., II.A.3.2). All those features have to be regarded as essential 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 in particular T 32/82, reasons 15).

2.7 Furthermore, the requirements of Article 84 EPC 1973 also reflect the general legal principle that the extent of the monopoly conferred by a patent, as defined in the claims, should correspond to the technical contribution to the art and should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art (see T 409/91, reasons 3.3).

The board is of the opinion that the technical contribution does not normally reside in the fact that the problem is solved, but rather in the combination of features by which it is solved, i.e. by the essential features necessary to solve the technical problem underlying the application.

2.8 The board thus concludes that, if an independent claim contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application, to comply with Article 84 EPC 1973 the remaining features of the claim must comprise all essential features necessary for achieving that result.

2.9 According to the appellant, in line with consistent case law it was not necessary to include structural features in a claim when this would unduly restrict the scope of the claim.

2.9.1 The appellant referred to decision T 68/85 and subsequent citing case law such as T 484/92 cited in the proceedings before the examining division (see the Case Law of the Boards of Appeal, 7th ed., II.A.3.4). According to this jurisprudence, functional features defining a technical result are permissible in a claim, if from an objective viewpoint such features cannot otherwise be defined more precisely without restricting the scope of the invention, and if these features provide instructions which are sufficiently clear for the skilled person to reduce them to practice without undue burden, if necessary with reasonable experiments (see T 68/85, reasons 8.4.1 to 8.4.3).

2.9.2 The board observes that this decision indeed does concern functional features defining a technical result. The feature in question was "in an amount generating a synergistic herbicidal effect" (see reasons 8.4.4: "in einer eine synergistische Herbizidwirkung erzeugenden Menge"), whereas the problem underlying the application was said to be "the economically and ecologically desirable decrease of the applied herbicide amount and in addition the increase of the safety margin on grain and soy bean cultures" (see reasons 5: "die ökonomisch und ökologisch wünschenswerte Senkung der herbiziden Aufwandmenge und zudem die Erhöhung der Sicherheitsmarge auf Getreide- und Sojabohnenkulturen"). Thus, the claimed technical result did not in fact correspond to the problem underlying the application. Therefore, the facts underlying this decision are substantially different from the ones underlying the present case. Therefore and in the light of the above considerations (see supra points 2.52.5 to 2.82.8 ), the board does not agree with the appellant that it is not necessary to state in the independent claim all essential features necessary to achieve the result claimed. The board remarks however that these essential features may in turn of course be structural or functional in nature.

2.10 Applying the conclusions reached supra in point 2.82.8 , the board needs to establish whether claim 1, apart from stating the result to be achieved corresponding to the problem underlying the application, comprises all the features necessary to achieve the result.

2.10.1 Uncontestedly, the central passage of the description relevant for determining the essential features, i.e. the features necessary to achieve matchability, is on page 10, lines 3 to 19, which reads: "... the preferred thicknesses and materials for the respective layers on the glass substrate 1 are as follows:

[...]

2.10.4 The board thus concludes that the essential features that need to be present in claim 1 at least include the features (i) that the Ni or NiCr layer 9 is thicker relative to the embodiments of D1 and (ii) that at least one of the dielectric layers 3 and 11 is thinner relative to D1.

2.10.5 In the embodiments of D1, the highest value for the thickness of the NiCr layer is 15 Å (see column 14, lines 30 to 32 and 36 to 39 and column 18, lines 11 to 15). In claim 1 of auxiliary request 0a, the lower limit of Ni or NiCr layer 9 is 20 Å (cf. "each of said first and second Ni or NiCr inclusive layers is at least 20 angstroms (Å) thick"). Thus, the essential feature (i) above is present in claim 1.

2.10.6 In claim 1 of this request the first and second dielectric layers are not limited in their thickness. Thus, they also encompass embodiments wherein neither of them is made thinner relative to D1. Hence, the essential feature (ii) above is missing from claim 1.

2.10.7 As a consequence, claim 1 at issue does not comprise all essential features necessary for obtaining the result whose achievement is claimed.

2.11 The requirements of Article 84 EPC 1973 are therefore not met for auxiliary request 0a.