T 2599/12 - The Essentiality Test

Key points

• In this opposition appeal case, the Board comments on the " essentiality test". The Board finds the test moot because in  this case there is direct and unambiguous disclosure of the claimed subject-matter. 
• "[It] will normally not be admissible under Article 123(2) EPC to extract isolated features from a set of features originally disclosed only in combination in a particular embodiment unless the skilled person recognises without any doubt that the isolated feature is structurally and functionally unrelated to those other features and may therefore be applied in a more general context." 
• " Claim 1 is directed at a teat cup liner, a nozzle means and a check valve 19, thus an arrangement comprising these features. The Board considers that there is a direct and unambiguous disclosure of such a group of features, isolated from the rest of the teat cup, in the original application (see application as published, page 3, lines 6 to 10). There, precisely this group of elements (liner, nozzle, check-valve) is disclosed, isolated from the remainder of the teat cup, allowing their easy replacement together." 
• " In the light of this direct and unambiguous disclosure, the Board sees no reason for any further investigation, for example by applying the test laid out in T 331/87 (see reasons 6). Ultimately, the essentiality test is meant to provide an indication of whether an amendment complies with Article 123(2) EPC as interpreted according to the "gold standard", see above. It does not take the place of the "gold standard" and should not lead to another result than when applying the "gold standard" directly. Having considered compliance of the amendment with the "gold standard" directly and confirmed compliance, the discussion, for example, as to whether or not a teat cup in its entirety is indispensable for carrying out the invention is therefore moot." 

EPO T 2599/12 - link

3. Article 123(2) EPC, main request (as upheld)

3.1 In deciding the question of allowability of amendments under Article 123(2) EPC, the Board, following well established practice (see Case Law of the Boards of Appeal, 8th edition, 2016 (CLBA), II.E.1.2.1 and the decisions cited therein), must consider whether the amendments in question are directly and unambiguously derivable by the skilled person from the application as filed, using normal reading skills and, where necessary, taking account of their general knowledge. This is the "gold" standard according to which amendments are assessed (see G2/10, reasons 4.3).

Furthermore (see CLBA, II.E. 1.7 and the decisions cited therein), it will normally not be admissible under Article 123(2) EPC to extract isolated features from a set of features originally disclosed only in combination in a particular embodiment unless the skilled person recognises without any doubt that the isolated feature is structurally and functionally unrelated to those other features and may therefore be applied in a more general context.

3.2 Claim 1

Claim 1 is directed at a teat cup liner, a nozzle means and a check valve 19, thus an arrangement comprising these features. The Board considers that there is a direct and unambiguous disclosure of such a group of features, isolated from the rest of the teat cup, in the original application (see application as published, page 3, lines 6 to 10). There, precisely this group of elements (liner, nozzle, check-valve) is disclosed, isolated from the remainder of the teat cup, allowing their easy replacement together. That the action of replacing liner, nozzle and check-valve of the teat cup involves the rest of the teat cup (for receiving the replaced elements), does not change the fact that the replaced elements are disclosed as a separate group. If this were not so, they could never be replaced in the first place.

Furthermore, that certain features were claimed in original claim 1 as being part of a teat cup, but which are now not defined as part of the liner (check valve, delivery tube, nozzle) is merely a semantic consequence of the claimed elements being without the rest of the teat cup (which the Board considers justified), rather than defining those elements in new, previously undisclosed relationships.

Furthermore, in the Board's view, the elements (liner, nozzle and check-valve) are not claimed in a way which extracts them from their original context in which they are structurally and functionally linked to features that have not been claimed (see again published application, page 3, lines 6 to 10, with nozzle and check valve formed as a unit mounted internally of the liner).

As claimed, the nozzle is connected via the check valve to the fluid delivery tube. Thus there is no delivery tube between nozzle and check valve, in other words these two parts are implicitly a unit. The skilled person would immediately see that whether these were formed as a unit, or for example formed separately then joined together as a unit, changes neither how they function nor their structure. Therefore, applying the above approach, the Board sees no subject matter added by not defining the nozzle and check valve as being formed as a unit.

Furthermore, since the claimed nozzle means is arranged to discharge fluid into the head portion of the liner, it can but be mounted, with its associated valve, internally of the liner. In other words this is implicit.

Therefore the Board considers that there is a direct and unambiguous disclosure of the subject matter of claim 1 in the application as filed, so no subject matter is added.

In the light of this direct and unambiguous disclosure, the Board sees no reason for any further investigation, for example by applying the test laid out in T 331/87 (see reasons 6). Ultimately, the essentiality test is meant to provide an indication of whether an amendment complies with Article 123(2) EPC as interpreted according to the "gold standard", see above. It does not take the place of the "gold standard" and should not lead to another result than when applying the "gold standard" directly. Having considered compliance of the amendment with the "gold standard" directly and confirmed compliance, the discussion, for example, as to whether or not a teat cup in its entirety is indispensable for carrying out the invention is therefore moot.