T 2343/14 - Adapting the description

Key points

• In this examination appeal, the ED had objected under Rule 42(1)(c) that the description still mention a feature no longer present in the claims, namely a step of " disrupting the surface" .
• The Board notes, firstly, that the requirement to adapt the description to the claims is usually based on the requirement of support in Article 84 EPC, and further that " the displacing step in claim 1 of the main request encompasses "disrupting the surface". This is clear from the set of claims as filed. (...) With respect to embodiments directed to methods including the step of disrupting the surface layer, claim 1 of the main request is supported by the description." 
• Rule 42(1)(c) EPC 2000 " disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art" 

EPO T 2343/14 - link 

Summary of Facts and Submissions

I. The appellant (applicant) filed a notice of appeal on 9 October 2014 against the decision of the examining division, posted on 30 July 2014, by which European patent application No. 05 713 290.4 was refused. The statement setting out the grounds of appeal was filed on 9 December 2014.

The examining division held that the subject-matter of claim 1 []  was not new [].

The examining division further held that the term "rough" in dependent claim 10 of the main request was not clear, Article 84 EPC, and that the provisions of Rule 42(1)(c) EPC were not fulfilled for the fourth and fifth auxiliary requests, since these requests no longer contained claims directed to a method including the step of disrupting the surface layer, whereas the description still included such methods, [].

Reasons for the Decision

5. Objection under Rule 42(1)(c) EPC in the decision under appeal

5.1 The examining division held (see point 4 of the Reasons of the decision under appeal) that the provisions of Rule 42(1)(c) EPC were not fulfilled for the fourth and fifth auxiliary requests, since the description had not adapted to these sets of claims. In particular, the feature "disrupting the surface" was no longer covered by said sets of claims, whereas the description still included this feature as falling within the scope of the claimed invention.

5.2 Rule 42(1)(c) EPC corresponds to Rule 27(1)(c) EPC 1973 ("Content of the description"), which provides that the description shall "disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art".

It may be noticed that boards of appeal frequently cite this provision as the basis for the problem and solution approach, see Case Law of the Boards of Appeal, 7th edition 2013, I.D.2 and I.D.4.2 (for the purpose of requesting the applicant or patentee to bring the description and drawings into conformity with the claims on file, boards of appeal usually refer to Article 84 EPC, viz "The claims ... . They shall ... be supported by the description").

5.3 The set of claims of the main request no longer contains claims that are expressis verbis directed to a method including the step of disrupting the surface layer.

Since the description currently on file (see the communication dated 10 May 2012 of the examining division, point 1) contain passages (see eg page 2, lines 20 to 22, page 4, lines 20 to 22, page 7, lines 3 to 11, of the published version of the application as filed (hereafter: application as filed), and drawings (see eg Figure 9) that concern disruption of the surface layer, it must be investigated whether claim 1 of the main request is supported by the description.

The board is of the opinion that the displacing step in claim 1 of the main request encompasses "disrupting the surface". This is clear from the set of claims as filed. Claim 1 as filed is directed to "A method of making a load bearing member for use in an elevator system, comprising: displacing at least some material on at least one surface of a polymer jacket that generally surrounds at least one tension member". Dependent claims 2, 5 and 7 all refer to claim 1 and require that the method of claim 1 including "chemically removing the material from the one surface", "mechanically removing the material from the one surface" and "disrupting the one surface", respectively.

This also follows from the following. Disrupting the surface can be achieved by a roller as shown in Figure 9, cf page 7, line 3, of the application as filed. Disrupting the surface does not necessarily remove material from the surface, but may only move or deform it, or in other words, displace material from the surface", see page 7, lines 5 and 6, of the application as filed.

5.4 With respect to embodiments directed to methods including the step of disrupting the surface layer, claim 1 of the main request is supported by the description.

6. It follows from the above that the grounds for refusing the application no longer hold for the main request. The decision under appeal is therefore to be set aside.