T 1362/15 - US style claims and basis

Key points

• This appeal is about Art. 123(2). “Claim 10 of [auxiliary request 2 has a feature X] . This feature was defined in the originally filed claim 14 which depended directly from independent claim 13 and was not linked to any other claim depending from independent claim 13, such as claims 15 and 17, which the appellant also provided as a basis for the subject-matter of claim 10.”
• The appellant requested a referral to the Enlarged Board, asking essentially the question “ if the features of a plurality of dependent claims are incorporated into an independent claim in a situation in which the application as originally filed includes a claims set with a "U.S. style" dependency” (i.e. no multiple dependent claims). 
• The Board does not refer the question. “Regarding the "U.S. style" claim dependency, the Board notes that there is no actual limitation regarding the possible combinations of features in the claims of a U.S. application. 35 U.S.C 112 allows multiple dependent claims to be drafted and states only that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim. Contrary to the argument of the appellant, this is however not an absolute prohibition or even an insurmountable limitation, as it could be overcome, merely for example, by the use of several independent claims in the same category and/or by redrafting of the dependent claims accordingly.”
• “The Board is not persuaded by this argument and finds that the criteria stated in point 3.2 are the necessary and sufficient criteria to assess the requirement of Article 123(2) EPC. The claimed subject-matter, i.e. the claimed combination of features, must be clearly and unambiguously derivable from the whole content of the application as originally filed. If the combination of originally filed claims alone does not fulfill this criteria, it must be established whether this combination of features is derivable from any other part of the application as filed. This criteria is valid, irrespective of the particular dependency structure of the originally filed claims.”

EPO T 1362/15 -  link

The questions which the appellant requested be referred to the Enlarged Board of Appeal read:

"1) Does it comply with Art. 123(2) EPC if the features of a plurality of dependent claims are incorporated into an independent claim in a situation in which the application as originally filed includes a claims set with a "U.S. style" dependency (with the relevant dependent claims referring back to the independent claim separately), and includes an embodiment in which the features of the independent claim and the dependent claims are shown in combination?

2) If the answer to question 1) is "yes", may the fact that the embodiment possibly shows additional features, result in a violation of Art. 123(2) because of an intermediate generalization despite the fact that the features added to the independent claim are disclosed separately in the U.S. style claims set?"

Reasons for the Decision

3. Request for referral of two questions to the Enlarged Board of Appeal

3.1 The appellant requested the referral of two questions to the Enlarged Board of Appeal under Article 112(1)(a) EPC (see point VIII. above)

3.2 It is first noted that Article 112(1) EPC provides for the Enlarged Board of Appeal only to have questions referred to it by a Board of Appeal in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. Concerning the issues at hand, the Enlarged Board of Appeal has already clearly defined the general principles which govern the requirements of Article 123(2) EPC inter alia in G 2/98 and G 2/10, i.e. that the skilled person must be able to derive the claimed subject-matter directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the original application as a whole.

3.3 Secondly, the referred question must not have a merely theoretical significance for the proceedings in the case to be decided, which would for example be the case if the referring Board were to reach the same decision regardless of the answer to the referred question (see G 3/98, item 62, and G 2/99, item 83).

3.4 Regarding the "U.S. style" claim dependency, the Board notes that there is no actual limitation regarding the possible combinations of features in the claims of a U.S. application. 35 U.S.C 112 allows multiple dependent claims to be drafted and states only that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim. Contrary to the argument of the appellant, this is however not an absolute prohibition or even an insurmountable limitation, as it could be overcome, merely for example, by the use of several independent claims in the same category and/or by redrafting of the dependent claims accordingly.

3.5 The Board also notes that in the present case the relevant dependent claims do not refer back to the independent claim separately in the way that "U.S. style" dependency is defined in question 1. For example, originally filed claims 16 and 17 refer back to originally filed dependent claim 15.

3.6 The further argument from the appellant that such an approach (the use of multiple dependent claims) would involve high cost, also does not constitute a (legal) limitation to the rights of the party. Thus, the Board cannot recognize any dependency "style" or any other reason that could change its way of assessing the compliance with Article 123(2) EPC referred to above under point 3.2.

3.7 The appellant further argued that, in cases where the amended claim was a combination of features containing features from originally filed dependent claims that did not respect the original dependency, the existence of an embodiment in the disclosure containing all the combined features (albeit with even more features) should be enough to fulfill the requirement of Article 123(2) EPC and this was a relevant point of law in which Boards diverged considerably. The appellant pointed to an alleged contradiction between T 2619/11 and T 1414/11.

3.7.1 The Board is not persuaded by this argument and finds that the criteria stated in point 3.2 are the necessary and sufficient criteria to assess the requirement of Article 123(2) EPC. The claimed subject-matter, i.e. the claimed combination of features, must be clearly and unambiguously derivable from the whole content of the application as originally filed. If the combination of originally filed claims alone does not fulfill this criteria, it must be established whether this combination of features is derivable from any other part of the application as filed. This criteria is valid, irrespective of the particular dependency structure of the originally filed claims.

3.7.2 In T 1414/11 (see Reasons 2.2.2 and 2.2.3), the Board found that the first sentence of the fourth paragraph of page 5 in the description directly and unambiguously enabled the skilled person reading the application to derive that the binding agent with graphite particles was applicable to all the carbon and graphite layers of the invention, including the layer materials of dependent claims 2 and 3 and thus provided the basis for the combination of features of dependent claims 2 and 3 with the amended claim 1.

3.7.3 In T 2619/11 (see Reasons 2.5 to 2.9), the Board found that what was directly and unambiguously disclosed for the skilled person reading the application was that the tapered portion of the tube with the features of Figure 3 could extend over "the entire length" of the tube, which was the same as "the whole length" defined in the original claims, and that "substantially the whole length" was a more specific embodiment of "at least a substantial portion" and not an alternative thereto. The Board thus came to the conclusion that the Examining Division had made a mistake by focusing disproportionately on the claim structure of the original application and not on what the skilled person would clearly and unambiguously derive from the application as a whole (see also T 1629/15, Reasons 2.10.2).

3.7.4 The Board thus concludes that both decisions rely on the (same) criteria mentioned above in point 3.2 and do not contradict each other.

3.8 Thus, the Board came to the conclusion that a referral to the Enlarged Board of Appeal was not justified. The Board thus refused the request for referral.

4. Auxiliary requests 2-4 - Article 123(2) EPC

4.1 Claim 10 of auxiliary requests 2 to 4 defines inter alia that the catalytic converter comprises an oxygen sensor secured to the intermediate position. This feature was defined in the originally filed claim 14 which depended directly from independent claim 13 and was not linked to any other claim depending from independent claim 13, such as claims 15 and 17, which the appellant also provided as a basis for the subject-matter of claim 10.

4.2 The appellant argued that although no combination of dependent claims provided the specific combination of features of claim 10 of any of auxiliary requests 2 to 4, the embodiment of Figures 5 to 7 comprised all the features of claim 10 of auxiliary requests 2 to 4 and thus provided a basis for the respective combination of features.

The Board does not accept this. The description relating to the embodiment of Figures 5 to 7 on page 5, line 18, to page 6, line 4, does not disclose an oxygen sensor. Only Figures 5 to 7 disclose an oxygen sensor. The oxygen sensor and its positioning disclosed in these Figures is however more specific than the one defined generally in claim 10 of auxiliary requests 2 to 4. For example, it is secured to the intermediate portion through a sensor mount 36 that is not defined in claim 10 of any of auxiliary requests 2 to 4.

4.3 The appellant argued that the claimed oxygen sensor was not defined in further detail because it was not relevant for the invention, but the Board does not find this argument convincing. Figures 5-7 disclose an oxygen sensor with certain specific features and in the whole of the disclosure it is nowhere stated that such an oxygen sensor or any part of it is less relevant or can for example be left out. Thus, in the absence of any information to the contrary, the skilled person would only directly and unambiguously derive an oxygen sensor with more specific features (such as the sensor mount mentioned above) than defined in claim 10 of auxiliary requests 2 to 4, when using Figures 5 to 7 as the basis.

4.4 For the reasons stated above, the subject-matter of claim 10 of auxiliary requests 2, 3 and 4 extends beyond the content of the application as originally filed and the requirement of Article 123(2) EPC is thus not fulfilled. Consequently, auxiliary requests 2, 3 and 4 are not allowable.

Order

For these reasons it is decided that:

1. The request for referral of questions to the Enlarged Board of Appeal is refused.

2. The appeal is dismissed.