4 Apr 2018

T 0903/16 - Known embodiments are disclosed

Key points

  • In this examination appeal, the application was filed with only method claims. Later a device is claimed. The ED refused the application under Art. 123(2) EPC.
  • " [T]he Examining Division apparently considered that the devices disclosed in the application were not declared to belong to the invention, and for this reason claiming them constituted an infringement of Article 123(2) EPC." 
  • The Board explains that the ED's approach is wrong. " [The crucial consideration is whether the subject-matter as such is clearly and unambiguously derivable from the application as filed[]. The fact that in the application the disclosed range of devices is stated to be within the means known to one skilled in the art may be considered when examining other EPC requirements, e.g. novelty and inventive step, but it has no bearing on the question of disclosure for the purposes of Article 123(2) EPC." 


EPO T 0903/16 -  link


3. Added subject-matter - main request
The Examining Division argues in the appealed decision that the original disclosure does not "indicate, define or imply" that the devices described therein could be new and inventive (see reasons 21.3): "To then claim such devices is considered an infringement of Article 123(2) EPC". On the face of it, the Examining Division apparently considered that the devices disclosed in the application were not declared to belong to the invention, and for this reason claiming them constituted an infringement of Article 123(2) EPC.
According to established case law, the requirements laid down in Article 123(2) EPC are understood to mean that an amendment may 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 content of the description, claims and drawings as filed (see see Case Law of the Boards of Appeal of the European Patent Office (CLBA), 8th edition 2016, Chapter II.E.1.2.1, with further reference to the "gold standard" cited in decision G 2/10). The question of whether or not the amended subject-matter in the documents originally filed is declared to be new and inventive, or whether such an assessment of novelty and inventiveness can merely be implied from the wording used in the application, is not relevant to the requirement of Article 123(2) EPC. Accordingly, the crucial consideration is whether the subject-matter as such is clearly and unambiguously derivable from the application as filed, i.e. in the present case of a device claim - the subject-matter of the claim being a device - whether the device with the claimed combination of features is clearly and unambiguously described in or derivable from the application as filed. The fact that in the application the disclosed range of devices is stated to be within the means known to one skilled in the art may be considered when examining other EPC requirements, e.g. novelty and inventive step, but it has no bearing on the question of disclosure for the purposes of Article 123(2) EPC.
The Board holds that the subject-matter of the claims is clearly and unambiguously derivable from the disclosure of the handheld blow dryer on page 16, lines 4-30. In lines 19-20 of page 16 it is further explicitly mentioned that the blow dryer can have a comb device attached to it, such as the device with reference numeral 60. The comb device with reference numeral 60 is further described on page 14, line 15, to page 15, line 5. Thus the further details of the attached comb device included in the dependent claims find their basis in this part of the description as originally filed.
From the above the Board concludes that the amended set of claims has a clear basis in the application as filed and is compliant with Article 123(2) EPC.

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