T 1503/13 - Deemed to have been searched and R 137

Key points

• In this examination appeal, the ED did not admit amended claim 1 under Rule 137(5) EPC, wherein claim 1 as filed was amended by adding a number of features. 
• The Board notes that " according to the established case law an amendment of an original independent claim by mere addition of new features from the description, in particular to overcome - as it was the case in the present circumstances, see point 3.2 above - an objection of lack of novelty, is generally not open to objection under Rule 137(5) " 
• The Board also explains that the added features that are taken from the description are not unsearched subject-matter within the meaning of Rule 137(5) EPC. " In the board's view, the additional features incorporated in claim 1 [] constitute a more detailed definition of the feature [X] already defined in the original claim 1 and disclosed in detail in the description. Consequently, the features introduced in the amended claim are - contrary to the examining division's view - deemed to have been covered by the search because according to Article 92 EPC the search report is to be drawn up "on the basis of the claims, with due regard to the description and any drawings" 

EPO T 1503/13 -  link

Reasons for the Decision

[] 3. Main request - Rule 137(5) EPC, first sentence

3.1 Claim 1 as originally filed was directed to a fluid and control system comprising at least one modular component having means for measuring a variable, for controlling the variable, and "for broadcasting the value of said controlled variable over a network". Independent claim 2 as originally filed was also directed to a fluid and control system comprising the same features as those defined in claim 1 and specifying, in addition, an interface component with means for displaying the controlled variable; for these reasons, the examining division considered independent claim 2 to constitute a dependent claim. The remaining claims as originally filed (claims 3 to 5) were dependent claims defining means for inputting a set-point for a variable to be controlled, and a configuration ID for the components of the system.

3.2 In reaction to an objection of lack of novelty raised by the examining division, the appellant replaced the original claim 1 by a new claim 1 amended according to a main request, and in its decision the examining division held that this amended claim 1 contravened the requirements of Rule 137(5) EPC, first sentence. A similar finding was made in respect of claim 1 of some of the auxiliary requests then on file (cf. point II above). The amended claim 1 of the main request then on file included, in addition to the features of claim 1 as originally filed, a series of additional features requiring

- a plurality of modular components having different functions, each of the modular components being adapted to perform its respective function without external guidance, and one of the modular components having the features already defined in claim 1 as originally filed, and

- a system-wide distributed memory storing distributed variables, the variable being measured and controlled constituting one of the distributed variables of the distributed memory,

- the system being adapted to use a broadcast message and a set-point request message essentially as defined in claim 1 of the present main request (see the last two paragraphs of claim 1 in point VII above).

The reasons given by the examining division in support of its finding under Rule 137(5) EPC are essentially the following: Even though claim 1 as originally filed lacked novelty in view of document D1, the general inventive concept underlying the set of claims of the application as originally filed (cf. point 3.1 above) related to the remote communication/display of a process variable. The general inventive concept underlying the amended claim 1, however, related to the use of a fluid monitoring and control system comprising a distributed architecture, i.e. an architecture in which each module of the system has its own private memory and performs its own tasks locally. This inventive concept improved the autonomy of the system and was not related to features that would further define the inventive concept of claim 1 as originally filed. Consequently, the subject-matter of the amended claim 1 did not combine with the originally claimed invention to form a single general inventive concept within the meaning of Rule 137(5) in conjunction with Article 82 EPC.

3.3 Claim 1 of the present main request constitutes, in substance, a clarified version of claim 1 of the main request underlying the decision under appeal. Therefore, the objection raised under Rule 137(5) EPC by the examining division also concerns claim 1 of the present main request. The board, however, cannot endorse the examining division's finding under Rule 137(5), first sentence, for the following reasons:

The opinion of the examining division that the original set of claims was directed to the "remote" communication/display of a process variable (see point 3.2 above, second paragraph) may have been based on an interpretation of the feature "broadcasting the value of said controller variable over a network" of original claim 1 according to which the network was used for broadcasting the value to a remote location. However, a proper interpretation of the claimed subject-matter in its context, in particular in the context of the further feature defined in claim 2 as originally filed requiring that the system further comprised an "interface component comprising means for displaying at least one said controlled variable" and also in the context of the description (see for instance page 2, lines 9 to 17, and page 4, line 12 to page 5, line 12), indicates that in claim 1 as originally filed the value of the variable is not broadcast by the network to a remote location, but within the claimed system itself (as subsequently clarified in the amended claim 1) and in particular to the interface component of the system. Already for this reason, the board cannot follow the examining division's formulation of the general inventive concept underlying the set of claims as originally filed.

In addition, the examining division did not dispute that the amended claim 1 contained all the features of original claim 1, and in this respect the board does not see how a general inventive concept identified by the examining division as being present in original claim 1 might no longer be present in the general inventive concept of the same claim after amendment by way of incorporation of features that only have the effect of restricting its subject-matter. In the board's opinion, the original claim 1 was directed to a fluid monitoring and control system comprising a modular component for measuring and controlling a variable and for broadcasting the value of the variable within the system and, as submitted by the appellant, this same concept is present in the more detailed definition of the system formulated in claim 1 as amended in the main request underlying the decision under appeal and also in claim 1 of the present main request. Consequently, although the general inventive concept underlying the amended claim 1 might be formulated in more specific terms, it cannot be denied that - as submitted by the appellant - the general inventive concept of original claim 1 is still present in the general inventive concept of the amended claim 1 and is therefore common to the latter because the amendments to the claim only resulted in a more limited definition of the same invention defined in the original claim 1.

Therefore, the board cannot follow the examining division's view that the subject-matter of the amended claim 1 did not combine with the originally claimed invention to form a single general inventive concept within the meaning of Rule 137(5) EPC, first sentence. It is also noted in this respect that according to the established case law an amendment of an original independent claim by mere addition of new features from the description, in particular to overcome - as it was the case in the present circumstances, see point 3.2 above - an objection of lack of novelty, is generally not open to objection under Rule 137(5) EPC, first sentence (see "Case Law of the Boards of Appeal", 8th edition 2016, EPO, sections IV-B-5.3 and IV-B-5.4 and decisions cited therein, in particular decision T 2334/11 (point 2.2.2 of the reasons)).

It is also noted that in its decision the examining division assumed that the amended claim 1 constituted "unsearched subject-matter" within the meaning of Rule 137(5) EPC, first sentence, without however giving the reasons why in its opinion the amendments introduced into the original claim 1 resulted in amended subject-matter that was not searched or was deemed not to have been searched. In the board's view, the additional features incorporated in claim 1 of both the main request then on file and the present main request constitute a more detailed definition of the feature "means for broadcasting the value of said controlled variable over a network" already defined in the original claim 1 and disclosed in detail in the description. Consequently, the features introduced in the amended claim are - contrary to the examining division's view - deemed to have been covered by the search because according to Article 92 EPC the search report is to be drawn up "on the basis of the claims, with due regard to the description and any drawings" (see in this respect the Guidelines for Examination in the EPO, Part B-III, 3.5, and also "Case Law of the Boards of Appeal", supra, section IV.B.5.3.2 and the decisions cited therein, in particular T 2334/11 (point 2.2.1 of the reasons)). This is especially the case in the present circumstances in view of the fact that the description is relatively short (pages 1 to 11, with the whole text on page 1, line 13 to page 5, line 12 being identical to the text on page 6, line 4 to page 10, line 22, except for the additional passages on page 2, lines 18 to 22, page 7, line 6 to page 8, line 5, and page 9, lines 8 and 9) and its content is mostly directed to a description of the modules of the claimed system and of the broadcasting of data between the modules.

3.4 In view of all these considerations, the board concludes that claim 1 of the main request underlying the decision under appeal did not contravene Rule 137(5) EPC, first sentence, and that the same conclusion applies to claim 1 of the present main request.