T 0088/12 - Conceivable but not disclosed

Key points

• The issue is basis in the application as filed for the claimed drying machine. Original claim 1 was for a laundry machine (i.e. washing or drying). Washing machines were described throughout, an embodiment with a drying machine was only mentioned in passing in a single sentence (in paragraph 73). The Board finds that this provides no basis.
• " The Board has no doubt that in the light of the cited problem and on the basis of paragraph 73, original claim 1 and the details of the disclosed preferred embodiment of a drum type washing machine the skilled person was able and could have conceived without difficulty a drying machine incorporating the combination of features as defined by claim 1. This is however not the issue to be dealt with when regarding whether the requirement of Article 123(2) EPC is met or not. In this regard, only subject-matter which is directly and unambiguously derivable from the application is to be considered and not subject-matter which the skilled person might arrive at upon further reflection, even if this were only based on the skilled person's common general knowledge."

T 0088/12  - link

Reasons for the Decision

11.1 Paragraph 73 contains a general introduction to the first embodiment of a laundry machine according to the invention, i.e. a drum type washing machine. It lists some of its features, some but not all of which being also defined in original and granted claim 1 and its amended version considered here.

11.2 The paragraph finally states that "[i]n the case that the laundry machine is a drying machine, the tub, in which washing water is received, is not necessarily provided for the drying machine".

11.3 In the Board's view this statement per se does not disclose anything explicit in regard to the features a drying machine should comprise apart from that it might or might not comprise a tub.

Taken in its context in which it addresses an alternative to a laundry machine according to the first preferred embodiment of the invention, its teaching with respect to the features of such alternative embodiment being a drying machine still remains, to say the least, ambiguous. This is so because the immediately preceding disclosure of features of the drum type washing machine as an embodiment of the invention recites features, a tub and a water inlet pipe, which are not defined in claim 1. According to the respondent, claim 1 as filed defined the features which all embodiments of the invention, and hence also drying machines as part of the class of laundry machines covered by the claim, had to have in common. The Board notes, that contrary to the tub, which is not defined in claim 1 and is presented explicitly in the cited paragraph as being optional for drying machines, nothing similar in this respect is stated in regard to the water inlet pipe in paragraph 73. The Board concludes, that the skilled person is already left in doubt whether a drying machine as mentioned in paragraph 73 does or does not comprise a water inlet pipe.

12. The question concerning which features of such a drying machine could be considered as being directly and unambiguously derivable from the application as filed is also not clarified, even when taking the specific problem identified in paragraphs 23 to 25 for drying machines into account. It is nevertheless noted that the statement in paragraph 73 contains no link to this anyway.

13. The Board has no doubt that in the light of the cited problem and on the basis of paragraph 73, original claim 1 and the details of the disclosed preferred embodiment of a drum type washing machine the skilled person was able and could have conceived without difficulty a drying machine incorporating the combination of features as defined by claim 1. This is however not the issue to be dealt with when regarding whether the requirement of Article 123(2) EPC is met or not. In this regard, only subject-matter which is directly and unambiguously derivable from the application is to be considered and not subject-matter which the skilled person might arrive at upon further reflection, even if this were only based on the skilled person's common general knowledge.

14. Moreover, if for the sake of argument it were admitted - which the Board nevertheless does not accept - that the skilled person would have understood the cited sentence in paragraph 73 as referring specifically to drying machines identical in their major components required for the drying function to those disclosed for the drum type washing machine, concluding thus that such drying machine comprised the features explicitly defined in original claim 1, whereas for example the dampers shown in all figures of the preferred drum type washing machine embodiments or the previously mentioned water inlet pipe, could be dispensed with in a drying machine, a drying machine with a drum rotatable around a horizontal axis could still not be directly and unambiguously derived from the application as filed.

14.1 Firstly because the orientation of the drum's axis is not linked to the specific problem for drying machines. The skilled person would thus have had no reason to select this particular feature, if it were disclosed (see below) in combination with the other features to solve such problem.

14.2 Secondly, and as indicated, the feature "horizontal axis" per se is not directly and unambiguously derivable from the application as filed. As pointed out by the appellant, the skilled person knew as part of common general knowledge that a front access laundry machine could well have a drum axis which was slightly inclined. The respondent did not contest this argument. The Board further accepts the appellant's argument that the precise angle of the drum's axis of rotation cannot be derived from the schematically drawn figures of the application referred to by the respondent as a basis for this feature. The Board thus concludes that the schematic drawings in Figures 1 to 4, 10 to 16 and similarly the description of a front opening in paragraphs 74 and 79 do not allow to directly and unambiguously derive a drum rotatable around a horizontal axis.

14.3 The respondent had in this respect also pointed to paragraph 2.

This paragraph contains the only reference in the application of a horizontal drum axis. It mentions, in the section concerning background art, as an example of a general laundry machines with such a horizontal axis a "drum type washing machine". A washing machine is indeed the type of laundry machine according to the preferred embodiments of the invention. The Board finds however that the general classification of paragraph 2 would not have been understood by the skilled person to constitute a definition of what should fall under a "drum type washing machine". The Board finds that this paragraph would in particular not be understood by the skilled person to exclude embodiments with slightly inclined axes from falling in the class of "drum type washing machine", as referred to by the appellant. Furthermore, the statement does not relate unambiguously to drying machines, but merely to laundry machines in general.

15. The Board thus concludes that the skilled person would not directly and unambiguously derive a drying machine with the features defined by claim 1 from the description and the figures taken as whole. The subject-matter of the claim thus extends beyond the content of the application as originally filed, contrary to Article 123(2) EPC.

16. As a consequence, the patent cannot be maintained with the claims found allowable by the opposition division.