T 0695/16 - Support under Art 84

Key points

• In this examination appeal, the ED had refused the application solely on the grounds that the claims would lack 'support' in the description as required by Article 84. There was no issue of Article 123(2) as the claims had verbatim basis in the application as filed. The claims were also verbatim repeated in the description. The ED also accepted that the claims were clear and concise. There were no comments on novelty and inventive step.
• Hence, the question raises: what does the requirement of 'support' in Article 84 mean?
• The ED considered that “neither the figures nor the description of the preferred embodiment describe in detail at least one way of carrying out the invention and that claim 1 is not supported by the description”.
• The Board: “It is further undisputed that there exists in the description at least a verbatim repetition of the characterising features of claim 1 []. This means, that said features, clearly defined in claim 1, are also disclosed, obviously also in a clear manner, in the description, supporting thereby the wording of claim 1. Due to this fact, the scope of the claims is not broader than is justified by the extent of the description, as argued by the examining division[].”
• “the Board concurs with the applicants that any reading of the description and viewing of the figures must be done with the knowledge that the features a and b are present and that these features interact to produce audible signals [the claim is basically directed to a packaging that 'clicks' when locked]. Under these circumstances the person skilled in the art would recognise the relevant features in the figures, having thereby a detailed description of them, including their location and their shape.”
• The issue is that in the figure, the features are described only in specific terms and not using the same wording as in the characteristic features of the claim.
• “The Board considers that since the features a and b are per se clear to the person skilled in the art, []  a specific denomination of said features in the part of the description directed to the specific embodiment depicted in the figures is not mandatory.”

EPO T 0695/16 - link




2. Support by the description - Article 84 EPC

2.1 According to Article 84 EPC the claims shall define the matter for which protection is sought. The claims shall be clear and concise and be supported by the description.

2.2 According to Rule 42(1)(e) EPC the description shall describe in detail at least one way of carrying out the invention claimed, using examples where appropriate and referring to the drawings, if any.

2.3 In the impugned decision the examining division accepts that claim 1 is clear and concise, see chapter 3.5, second paragraph of the impugned decision. On the other hand, it considers that neither the figures nor the description of the preferred embodiment describe in detail at least one way of carrying out the invention and that claim 1 is not supported by the description, see chapter 3.3 and chapter 4.1, last paragraph of the impugned decision.

2.4 The examining division argues that although there exists in the description a verbatim repetition of the characterising feature of claim 1, see chapter 3.5 of the impugned decision, due to the fact that "nowhere in the description can be found a detailed description (in terms of a representation, or example) of the "projection" of the circular collar or of its position" and also of "the "non-rotating feature" of the inner surface of the over-cap" the requirements of Article 84 EPC and Rule 42(1)(e) EPC are not met, see chapter 4.1 of the impugned decision.

2.5 The Board notes that the features claimed in the characterising part of claim 1, namely feature a (the projection of the circular collar), feature b (the non-rotating feature of the inner surface of the over-cap) and their interrelation are indisputably clear to the person skilled in the art, see chapter 3.5, second paragraph of the impugned decision. This means that their structural form, their function and their interrelation are clear to the person skilled in the art. It is further undisputed that there exists in the description at least a verbatim repetition of the characterising features of claim 1, see chapter 3.5 of the impugned decision. This means, that said features, clearly defined in claim 1, are also disclosed, obviously also in a clear manner, in the description, supporting thereby the wording of claim 1. Due to this fact, the scope of the claims is not broader than is justified by the extent of the description, as argued by the examining division, see last paragraph of chapter 4.1 of the impugned decision.

2.6 What the examining division considers as the "missing link" between claim 1 and the description, said "missing link" rendering claim 1 as not being supported by the description, is the lack of denomination of the characterising features a and b of claim 1 in the figures and in the text of the description referring to the example presented therein.

2.7 The Board considers that since the features a and b are per se clear to the person skilled in the art, see chapter 3.5, second paragraph of the impugned decision, a specific denomination of said features in the part of the description directed to the specific embodiment depicted in the figures is not mandatory.

2.8 Furthermore, the Board concurs with the applicants that any reading of the description and viewing of the figures must be done with the knowledge that the features a and b are present and that these features interact to produce audible signals. Under these circumstances the person skilled in the art would recognise the relevant features in the figures, having thereby a detailed description of them, including their location and their shape.

2.9 The Board sees no reason for not following the applicants' argument that figures 4 and 8, viewed in the light of the other figures and the whole originally filed application, show two sail-like non-rotating feature(s) projecting radially inward from the inner wall of the skirt 48 of the upper body 42, i.e. from the inner surface of the over-cap (feature b) and a small, upright, rectangular projection from the circular collar at the outer wall of the bridge element 30 (feature a) that must interact therewith to produce the audible signal(s). The Board cannot recognise in figure 4 that the radial projection from the outer wall of the bridge element 30 does not extend beyond from the knurled outer wall 28 of the circular collar 4, as argued by the examining division.

2.10 Accordingly, the sprayhead depicted in the figures meets the requirements of Rule 42(1)(e) EPC in that one way of carrying out the invention claimed is illustrated.

3. Conclusions

3.1 The Board concludes from the above that the requirements of Article 84 EPC and Rule 42(1)(e) EPC are met. Therefore, the findings of the examining division and the reasoning underlying the impugned decision cannot be upheld by the Board.

3.2 Consequently, the decision under appeal is to be set aside. However, since the decision under appeal only deals with the issue of clarity, and the primary object of the appeal proceedings is to review the decision under appeal (Article 12(2) RPBA 2020), the Board following the corresponding applicants' request considers that special reasons for a remittal are present (Article 11 RPBA 2020) and finds it appropriate to remit the case to the examining division for further prosecution in accordance with Article 111(1) EPC.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the main request filed on 17 December 2013.