T 1886/10 - Clarity and Art 123(2)

T 1886/10
For the decision, click here. 04.11.2015

Key points

• If  claim 1 is combined with unclear dependent claim 4 in an opposition procedure, this can not be objected on the ground of that lack of clarity (G 3/14). Neither does this combination extent beyond the content of the application as filed.
• Board: "As already said above, claim 1 of the main request incorporates claims 1, 2, 4 and 10 as filed and, despite any apparent clarity problem, complies with Article 123(2) EPC. Thus, no objection as regards added matter can arise in this context."

Reasons for the Decision

1. Amendments

1.1 The appellant accepted that the subject-matter of claim 1 of the main request (claims 1-16 as upheld by the interlocutory decision under appeal) is a combination of granted claims 1, 2, 4 and 10. However it argued that the manner of combining the subject-matter of these four claims, in particular claims 1 and 4 as granted, gave rise to problems of added matter, extension of protection and clarity.

1.2 [...]When claim 1 as granted refers to egg white in its foamed state, it specifies an aerated foam or foamed egg white. In the board's view the term "the egg white" in granted claim 4 therefore refers to the [liquid] egg white mentioned in granted claim 1. Thus, the order of steps inferred by the board and the respondent from the wording of claim 1 of the main request was already present in claim 4 as granted (and presumably in claim 4 of the application as filed). It should be added at this juncture that such an order is also exemplified in the sole example in the patent specification. According to paragraph [0011] a mixture of egg white, water and a small part of sugar syrup was left for 24 hours. The egg white mixture was subsequently whipped until a foamy mass was created.

In view of the above, the order of steps implied in claim 1 of the main request cannot lead to an objection under Article 123(2) EPC.

1.3 The appellant further argued that the combination of claims 1 and 4 as granted led to a clarity problem in claim 1 of the main request with respect to the weight ratio of the foamed egg white and the caramel to be mixed with it. [...]

1.3.1 The board acknowledges that there is indeed a clarity issue with regard to the meaning of the weight ratio of foamed egg white to caramel in claim 1 of the main request. However, since the order of steps in that claim was already present in claim 4 as granted, the clarity problem raised for claim 1 of the main request had already existed in the same way in claim 4 as granted. More specifically, in claim 4 as granted, according to which sugar is added to the [liquid] egg white, it had already been unclear whether the weight ratio related to pure foamed egg white or to a foamed egg-white composition (including sugar syrup). In view of the ruling of G3/14 of 24 March 2014, such a clarity issue, which results from the combination of granted claims, cannot be objected to under Article 84 EPC in opposition/opposition appeal proceedings for the purposes of Article 101(3) EPC.

1.3.2 Thus, there exists a lack of clarity in claim 1 of the main request which cannot be objected to. Nevertheless, for the assessment of the remaining patentability issues, it is necessary to interpret the term objected to with a mind willing to understand the claim and not a mind desirous of misunderstanding it (see T 190/99).

[...]

1.3.3 The appellant argued that the above lack of clarity also led to an objection under Article 123(2) EPC. However, the board concurs with the respondent that this objection relates solely to clarity and has no impact on the requirements of Article 123(2) EPC. As already said above, claim 1 of the main request incorporates claims 1, 2, 4 and 10 as filed and, despite any apparent clarity problem, complies with Article 123(2) EPC. Thus, no objection as regards added matter can arise in this context.

1.4 Since the subject-matter of claim 1 of the main request is more restricted than that of claim 1 as granted - in view of the limiting embodiments from dependent claims 2, 4 and 10 as granted - it is narrower in scope than granted claim 1 and thus also complies with Article 123(3) EPC.