T 2291/15 - Essential features

Key points

• This examination appeal is about the requirement of "support" of Article 84 EPC.
• " It is established case law of the Boards of Appeal that the requirement under Article 84 EPC  as to clarity of the claims implies that all the essential features of the invention have to be indicated in an independent claim. The essential features are those features which are necessary for solving the technical problem with which the application is concerned" 
• The question is: what is " the technical problem with which the application is concerned"? Is it the objective technical problem - which is always defined in view of one prior art document? Or is it the "subjective technical problem" as is apparent from the description only? 
• Still in connection with Article 84, the Board states: " In the present case, the board agrees with the appel­lant in that the technical problem of the application cannot be considered the prevention of the presence of hydrogen in the oxide layer. Such a formulation­ con­tains a pointer to the solution of the invention, which should be avoided as it results in an inadmissible ex post facto approach when assessing inventive step." 
• This means that the "problem" under Article 84 needs to be formulated according to the same rules as the objective technical problem for inventive step? (although I understand the Board's point).
• The Board: " The description of the invention starts by outlining the relevant state of the art, in particular the use of sili­con nitride layers in semi­conductor devices in or­der to improve their electronic properties and to pro­vide an environmental barrier. However, when chemi­cal vapour deposition (CVD) is used to form such nitride layers, they tend to contain hydrogen due to the use of silane (SiH4) or ammonia (NH3) as pre­cursors in the CVD schemes. The hydrogen may [...] degrade device performance of semi­con­duc­tor devices made of Group III nitrides or silicon carbide [...] . These are thus considered the tech­nical problems with which the application is concerned." (emphasis added).
• As a comment, for inventive step, the provision is an alternative can be sufficient. Hence, for inventive step, the applicant is not required to put in the claim all (or any) the features mentioned in the description as solving some problem. Under Article 84 EPC it seems that the Examiner can require so even though the subject matter is otherwise patentable. 

EPO T 2291/15 -   link

Reasons for the Decision

1. Clarity

1.1 The independent claims of the main and first auxiliary request correspond - apart from minor clari­fications and a spelling correction - to the respective indepen­dent claims of the main and first auxiliary requests underlying the decision under appeal.

In the contested decision the examining division held that the feature that the sputtered nitride layers were hydrogen-free was essential for solving the problem of preventing the presence of hydrogen in the oxide layer. Since the independent claims of the main and first aux­il­iary requests pending at the time did not con­tain this feature they were unclear (see points 22 and 23 of the Reasons).

1.2 It is established case law of the Boards of Appeal that the requirement under Article 84 EPC 1971 [sic!] as to clarity of the claims implies that all the essential features of the invention have to be indicated in an independent claim. The essential features are those features which are necessary for solving the technical problem with which the application is concerned (see Case law of the Boards of Appeal of the EPO, 8th edition 2016, section II.A.3.2).

1.3 In the present case, the board agrees with the appel­lant in that the technical problem of the application cannot be considered the prevention of the presence of hydrogen in the oxide layer. Such a formulation­ con­tains a pointer to the solution of the invention, which should be avoided as it results in an inadmissible ex post facto approach when assessing inventive step.

The description of the invention starts by outlining the relevant state of the art, in particular the use of sili­con nitride layers in semi­conductor devices in or­der to improve their electronic properties and to pro­vide an environmental barrier. However, when chemi­cal vapour deposition (CVD) is used to form such nitride layers, they tend to contain hydrogen due to the use of silane (SiH4) or ammonia (NH3) as pre­cursors in the CVD schemes. The hydrogen may lead to parasitic capaci­tan­ces or de­graded ohmic contact characteristics and thus limit or degrade device performance of semi­con­duc­tor devices made of Group III nitrides or silicon carbide (see paragraphs [0006] to [0012] of the descrip­tion of the applica­tion). These are thus considered the tech­nical problems with which the application is concerned. 

1.4 According to the invention the nitride layers are de­posited using sputtering rather than chemical vapour deposition. In this manner the nitride layers are sub­stantially hydrogen-free thereby overcoming the above problems (see e. g. paragraphs [0034] and [0039] of the descrip­tion of the applica­tion).

In the decision the examining division was of the opin­ion that the sputtering technique would not auto­mat­ic­ally result in a hydrogen-free nitride layer, because other process parameters such as hydrogen contamination in the process chamber could lead to the presence of hydrogen in the nitride layer (see point 22.3 of the Reasons).

The board notes that sputtering is conven­tion­ally per­formed using a noble gas such as argon or kryp­ton as the sputtering gas filling the sputtering chamber in or­­der to avoid reactions with the target source mate­ri­al. Only when such reactions are intended in reactive sput­ter­ing schemes the gas may also comprise the de­sired par­ticles. Accordingly, in the present case of sputter de­positing nitride layers the gas comprises argon and nitro­gen (see e. g. paragraph [0053] of the description of the application). Hence, the board con­siders that under realistic conditions there is no hydro­gen present when nitride layers are sputter de­posited.

Consequently, the features related to the sputter de­posited nitride layers and the corresponding deposition steps as claimed in the independent claims of the main request and first auxiliary request (see features (a)-(c) and (d)-(e), respectively) overcome the tech­nical problems stated above thereby leading to improved de­vice per­for­mance.

The independent claims of the main request and of the first auxiliary request are thus considered to contain all the essential features of the invention.

1.5 In the independent claims of the second auxiliary re­quest it is explicitly specified that the sputtered nitride layers are hydrogen-free. Hence, the above issue concerning lack of clarity due to the absence of precisely this feature as an essential feature does not arise for these claims.

1.6 In view of the above the board is of the opinion that the claims of the main request and of the first and second auxil­iary requests meet the requirements of the EPC as to clarity of the claims (Article 84 EPC 1973 in combi­na­tion with Rule 29 EPC 1973).

2. Further procedure

In the decision under appeal only the requirement of the EPC as to clarity of the claims (Article 84 EPC 1973 in combi­na­tion with Rule 29 EPC 1973) was dealt with. The other requirements of the Conven­tion were not dis­cussed. In order to allow for the examination of these requirements in two instances, remittal of the case to the department of first in­stance under Article 111(1) EPC 1973 - as requested by the appellant - is deemed appro­priate.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.