T 2574/16 - It is normal for claims

Key points

• The Board explains that the requirements of clarity (Art. 84) and sufficiency of disclosure do not mean that the claims must be restricted to the examples.
• “the Board notes that the claim is indeed not limited to one simple way of simulating an operational element and in fact encompasses elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself is not a problem of lack of clarity or insufficiency of disclosure.”
• “In fact, it is normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim may have further characteristics that are not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development).” 

EPO T 2574/16 - link

3.6 As to the example referred to by the Examining Division, the Board notes that the claim is indeed not limited to one simple way of simulating an operational element and in fact encompasses elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself is not a problem of lack of clarity or insufficiency of disclosure. In fact, it is normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim may have further characteristics that are not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development).

In the present case, any method falling within the scope of claim 1 includes a step of modifying at least one graphical element to thereby simulate an operation of at least one operational element. This simulation may be very elaborate but may also be very simple. The contribution of this step to the claimed invention is essentially that some simulation takes place, not that such simulation is made possible for the first time. Given at least one operational element of an operational system, the skilled person would have no difficulty in implementing some simulation in the form of at least one modification to at least one graphical element. The contribution made by the step is therefore sufficiently disclosed.

3.7 Hence, the Examining Division's reasons for refusing the main request are unconvincing.