T 0660/14 - Undisclosed disclaimer and technical contribution

Key points

• The proprietor submitted that an amended claim complied with Article 123(2) EPC because "the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled."
• The present Board does not analyze whether the undisclosed disclaimer was justified based on e.g. an Article 54(3) EPC prior right.
• Rather the Board examines whether the disclaimer provides a technical contribution. "Contrary to the proprietor's contention that the excluded features had no real meaning apart from excluding an incorrect interpretation of claim 1, [] the pivotable arrangement [] is of a technical nature, not least through the disclosure of the ergonomic benefits for the user [].. With the above pivotable arrangement of the axes providing a technical contribution, so too must the disclaiming of this arrangement as well." 
• " This finding is furthermore confirmed by considering whether merely a quantitative change to the original technical teaching has occurred or indeed whether a qualitative change has resulted from the introduction of the undisclosed disclaimers "

EPO T 0660/14 - link

Claim 1 of auxiliary request 4 further reads as claim 1 of auxiliary request 1 with the following features appended:

"wherein the operating member (41) and the control member (40) are arranged to be pivotable about non-common offset axes along said brake operating path, wherein the operating member and the control member are not pivotable commonly about either of said offset axes."

Reasons for the Decision

5. Auxiliary request 4

5.1 Admittance (Article 13(1) Rules of Procedure of the Boards of Appeal, RPBA)

5.1.1 This request was filed during the oral proceedings before the Board and thus represents an amendment to the proprietor's complete case (Article 12(2) RPBA). Under Article 13(1) EPC such amendment to a party's case may be admitted and considered at the Board's discretion (Article 13(1) RPBA), such discretion being exercised inter alia in view of the need for procedural economy. As is established case law of the Boards of Appeal, such procedural economy implies that amended requests should at least be prima facie allowable in order to be admitted.

5.1.2 As a first basis for claim 1, the proprietor suggested a combination of claims 1, 2 and 7 together with paragraphs [0012], [0013] and [0041] of the description as originally filed. This is however not accepted, as not one of these sections of the filed application discloses either:

- the operating member and the control member being arranged to be pivotable about non-common offset axes along said brake operating path; or

- the operating member and the control member not being pivotable commonly about either of said offset axes.

Whilst claim 7 discloses the option of pivoting about offset axes, paragraph [0041], which is alleged to provide the basis for these 'non-common offset axes', discloses solely the distinct wording that these two axes are 'different but parallel'. At least on a prima facie basis therefore, the added features are not directly and unambiguously disclosed to the skilled reader.

5.1.3 As regards the proprietor's alternative basis for the subject-matter of claim 1 meeting the requirement of Article 123(2) EPC, that the subject-matter of claim 1 includes an undisclosed disclaimer, this is also not accepted. 

[The proprietor's argument is that: " An alternative basis could be found by considering the alleged undisclosed features as either one or two undisclosed disclaimers. The disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled." ]

According to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1).

5.1.4 In the present case, two undisclosed disclaimers have been introduced:

The first concerns the operating and control members being pivotable about non-common axes, while the second concerns the operating member and the control member not being pivotable commonly about either of the offset axes. The question to be answered is thus whether the introduction of these disclaimers can be considered as providing a technical contribution to the content of the application as filed.

5.1.5 In this regard, it is noted that claims 7 and 8 as filed (mirrored in paragraphs [0013] and [0014] of the granted patent) address the operating member and the control member being arranged to be pivotable about parallel and/or offset axes. This may be seen as providing ergonomic advantages for the user of the bicycle control device as also indicated in col. 3, lines 5 to 6 of the application as filed. It follows that the pivotability of the operating member and the control member about the offset axes is of a technical nature.

5.1.6 As originally filed, the operating member and control member were disclosed to be pivotable about parallel and/or offset axes along the brake operating path (for example, see claim 8 as filed). By way of the introduced disclaimers relating to the operating and control members being pivotable about non-common axes and not being pivotable commonly about either of the offset axes, a technical difference has been introduced to the amended claim when compared to the content of the originally filed application. Contrary to the proprietor's contention that the excluded features had no real meaning apart from excluding an incorrect interpretation of claim 1, as already identified in 5.1.5 above, the pivotable arrangement of the operating and control members about the axes is of a technical nature, not least through the disclosure of the ergonomic benefits for the user of the bicycle control device with the originally filed axes arrangement. With the above pivotable arrangement of the axes providing a technical contribution, so too must the disclaiming of this arrangement as well.

5.1.7 This finding is furthermore confirmed by considering whether merely a quantitative change to the original technical teaching has occurred or indeed whether a qualitative change has resulted from the introduction of the undisclosed disclaimers (see also G1/16, Reasons point 46.4). By disclaiming both common offset axes and common pivoting about either of the offset axes, the ergonomic considerations identified in the application as filed have been modified resulting in a qualitative change to the originally disclosed technical teaching in the sense that the proprietor's position with regard to inventive step would be changed.

5.1.8 As a consequence therefore, with the requirement for an undisclosed disclaimer not to provide a technical contribution to the subject-matter disclosed in the application as filed not being met, the undisclosed disclaimers in claim 1 do not, at least prima facie, meet the requirement of Article 123(2) EPC.

5.1.9 The subject-matter of claim 1 thus prima facie fails to meet the requirement of Article 123(2) EPC. Therefore, the subject-matter of claim 1 is not prima facie allowable, which would be necessary for fulfilling the need for procedural economy and consequently admitting the request into the proceedings. Accordingly, the Board exercised its discretion under Article 13(1) RPBA not to admit this request.