T 2067/12 - Result to be achieved

Key points

• The Board decides on clarity of a functional feature " defin[ing] the device by a technical result to be achieved". The Board states that in accordance with established case law  such features are permissible in a claim " if (i) from an objective viewpoint they could not otherwise be defined more precisely without restricting the scope of the invention, and (ii) if they provide instructions that are sufficiently clear for a skilled person to be able to reduce them to practice without undue burden, if necessary with reasonable experiments [] In other words, the functional feature must not only be such that the skilled person can understand it, but he must also be able to implement it in accordance with the requirements of Article 84 EPC."  (As a comment, I am not sure whether this introduces an element of sufficiency of disclosure)
• The Board finds that in this case, the functional feature defines an advantage of the device in its functioning state. Thus, the functional feature amounts to a mere desideratum. " It is not apparent how such a broadly defined desideratum could provide the skilled person with instructions which are sufficiently clear to enable him to reduce them to practice" . Therefore, the requirement (ii) is not complied with. 

EPO T 2067/12 - link

Reasons for the Decision

1. Amendments

1.1 Claim 1 of the sole request differs from claim 1 as granted in that the device is further defined by indicating at the end of the claim that

"and only the needles that have been inserted into the product deliver liquid".

This feature is based on page 2, lines 5 to 6 of the application as filed (see also paragraph [0006] of the patent specification).

The amendment was made during the opposition proceedings in order to establish novelty over a public prior use involving device MBI-135-C No. 420 (D6). The opposition division had denied novelty of granted claim 1 because this known device disclosed both the features of the preamble of claim 1 and the characterising part, namely that locking means were provided for locking the needles in their position projecting relatively less far out of the holder.

1.3 The amendment amounts to the introduction of a functional feature into the claim, in the sense that it now defines the device by a technical result to be achieved, that is to say the locking means (15) of the device are to be constructed in such a way that they ensure that "only the needles that have been inserted into the product deliver liquid" (and, by implication, that those not inserted do not deliver liquid).

1.4 As the claim has been amended by introducing a feature taken from the description, it is first necessary to examine whether it fulfils the clarity requirements of Article 84 EPC.

1.4.1 In accordance with established case law of the boards of appeal, functional features defining a technical result are permissible in a claim if (i) from an objective viewpoint they could not otherwise be defined more precisely without restricting the scope of the invention, and (ii) if they provide instructions that are sufficiently clear for a skilled person to be able to reduce them to practice without undue burden, if necessary with reasonable experiments (see decision T 68/85, OJ 1987, 228, headnote). In other words, the functional feature must not only be such that the skilled person can understand it, but he must also be able to implement it in accordance with the requirements of Article 84 EPC.

Concerning the first criterion it is noted that the patent specification in paragraphs [0007] to [0009] describes technical features of a locking system that ensure that only the needles that have been inserted into the product deliver liquid and that they do this both when they are being pushed into the product and when they are being extracted from it.

1.4.3 Whether or not the introduction of these specific technical features would unduly restrict the scope of the invention can be left unanswered because the functional feature does not in any case fulfil the second criterion, namely it does not provide clear instructions of how to put it into practice. This is the case for the following reasons:

- Firstly, the functional feature defines an advantage of the device in its functioning state, as can be seen from paragraph [0006] of the patent specification. Thus, the functional feature amounts to a mere desideratum. It is not apparent how such a broadly defined desideratum could provide the skilled person with instructions which are sufficiently clear to enable him to reduce them to practice (see in this context point 8.4.3 of T 68/85). It is, for example, not clear whether and how the added functional feature is interrelated with the locking means (15), whether the control of the delivery of liquid occurs automatically or via the locking means (15), or which other means are envisaged.

Moreover, this lack of clarity is aggravated by the fact that the use of the device includes a first descending step of inserting the needles into the product and a second ascending step of extracting them. Although it is mentioned in paragraph [0006] of the patent specification that the needles deliver liquid both when they are being pushed into the product and when they are being extracted from it, this is not clear from the wording of the claim itself, which is open on this issue.

1.5 In summary, the functional definition present in claim 1 cannot be accepted and the claim does not fulfil the requirements of Article 84 EPC.

2. Consequently, the respondent's request is not allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.