T 0933/23 - The boundary between functional features and results-to-be-achieved

Key points

• The Examining Division rejected the claims under Art. 84.
• The Board: "The feature of "allowing a radial displacement" in the characterising portion of claim 1 is defined in terms of a function which is close to the technical effects the application seeks to provide. The current case thus concerns the boundary between allowable functional features (dealt with in the Guidelines, F-IV, 6.5, []) and an unallowable definition of the invention in terms of a result-to-be-achieved, amounting in essence to the problem underlying the application (Guidelines, F-IV, 4.10, []), in which case essential features defining the invention are missing (Guidelines, F-IV, 4.5 [])."
• "The Board appreciates the examining division's scrutiny and diligence in this regard (see G 1/24, Reasons 20)."
• In the case at hand, claim 1 of the new main request meets the requirements of Article 84 EPC for the reasons set out in the following.
• "The Board firstly notes that the characterising feature does not relate solely to effects or results to be achieved, but specifies the structural feature of the connection, namely that "the valve element is fixed to the lead nut in axial direction" by a technical means, namely a "spring element". For this reason alone, the subject-matter of the invention in the characterising portion is not solely defined in terms of the problem to be solved."
• "The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element. The proposed solution resides in the provision of a more flexible connection that transmits axial movement while allowing some radial play (radial displacement). The technical effects of this solution include relaxed positioning demands at manufacture without increasing wear, and the problem could thus be considered to reside in the provision of these effects."
• " the functional feature of the connection "allowing a radial displacement" is directed to an element of the solution (flexible connection), not to the technical effects or the problem underlying the solution, and is thus not defined in terms of an unallowable "result-to-be-achieved"."
  
  
• "It is generally accepted that the definition of a feature in terms of its function is acceptable, if a skilled person understands, without exceeding their normal skills and knowledge and without undue burden but if necessary with reasonable experiments, how to reduce it to practice and if it can be determined without ambiguity whether the claimed functional requirement is satisfied by a given prior art"
• (follows a technical analysis)
• "Hence, the skilled person knows how to put the functional feature into practice. Moreover, the Board has no doubt that it can also be determined without ambiguity whether a given construction fulfils the claimed function. It is thus not decisive whether the functional expression can or could have been formulated differently, e.g. in structural terms."
• "Essential features are those features which are constitutive for the definition of the invention, that is, all features which are necessary for solving the technical problem with which the application and the claim is concerned. In this regard, Article 84 EPC not only requires that the claimed subject-matter is comprehensible, but also that it contains a clear definition of the object of the invention by defining all essential features thereof"
• In the Board's view, the features in the characterising portion are sufficient for defining the invention and for solving the stated problem discussed in point 3.2.3.
• Point 3.2.3, in part: "In the Board's view, the problem of "ensuring a long lifetime with low production costs", as stated in the application (page 1, lines 25 to 26) and submitted by the appellant, is too broad. The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element."
• The Board does not simply say that it is the applicant who decides what features are "essential". 
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EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230933eu1