T 0030/16 - Contribution to the art

Key points

• In this examination appeal, the Board assesses whether the claim complies with A84 in that all essential features are specified.
• The Board first recalls established case law " It is established case law that, [under A84 EPC], an independent claim must indicate all the essential features of the object of the invention [.] In this respect, "the essential features" is considered to mean all the features which are necessary to obtain the desired effect or, in other words, which are necessary to solve the technical problem with which the application is concerned"  " Further, the requirements of Article 84 EPC reflect the general legal principle that the extent of the monopoly conferred by a patent, as defined in the claims, should correspond to the invention's technical contribution to the art []. This means that the technical contribution of an invention does not lie in the fact that the problem is solved, but rather in the combination of features by which it is solved, i.e. in the features necessary to solve the technical problem underlying the invention." 
• The Board takes a rather unusual approach in this case. " As explained in the declaration by Mr Mir [one of the inventors in the present case] submitted in the examination proceedings, the filtration module according to the invention is set up as a single-pass tangential flow module without a recirculation loop and its specific feed flow rate must be adjusted to less than 200 lmh. These features, identified as essential to the performance of the invention by one of the inventors, are now reflected by the subject-matter of independent claims 1 and 10." 
• As a comment, such a use of Inventor's Declarations (also against the applicant?) to assess allowability of claims, seems to something that is more typical for the USPTO.

EPO T 0030/16 -  link

2. Main request - Article 84 EPC

2.1 It is established case law that, in order to comply with the requirements of Article 84 EPC, an independent claim must indicate all the essential features of the object of the invention (see G 2/88, point 2.5 of the Reasons, and G 1/04, point 6.2 of the Reasons; see also Case Law of the Boards of Appeal, 8th ed. 2016, II.A.3.2). In this respect, "the essential features" is considered to mean all the features which are necessary to obtain the desired effect or, in other words, which are necessary to solve the technical problem with which the application is concerned (see in particular T 32/82, point 15 of the Reasons).

Further, the requirements of Article 84 EPC reflect the general legal principle that the extent of the monopoly conferred by a patent, as defined in the claims, should correspond to the invention's technical contribution to the art (see T 409/91, point 3.3 of the Reasons). This means that the technical contribution of an invention does not lie in the fact that the problem is solved, but rather in the combination of features by which it is solved, i.e. in the features necessary to solve the technical problem underlying the invention.

2.2 In the present case, the problem underlying the invention is defined on page 6, lines 1 to 3, of the application as filed as being the provision of a single-pass filtration process providing high conversion with a relatively low hold-up volume.

2.3 As explained in the declaration by Mr Mir (one of the inventors in the present case) submitted in the examination proceedings, the filtration module according to the invention is set up as a single-pass tangential flow module without a recirculation loop and its specific feed flow rate must be adjusted to less than 200 lmh.

These features, identified as essential to the performance of the invention by one of the inventors, are now reflected by the subject-matter of independent claims 1 and 10.

2.4 The claimed subject-matter has been further limited to a specific type of membrane, namely a flat-type membrane, so that claim 1 can no longer be held to be broader than justified, as alleged by the examining division.

2.5 It follows from the above considerations that the claimed subject-matter now corresponds to the invention's technical contribution to the art, as it should according to T 409/91 (see point 2.1 above), so that the specific requirement of Article 84 EPC that the claims be supported by the description is fulfilled.

3. Since the reasons that led to the refusal of the application no longer apply, the board exercises its discretion under Article 111(1) EPC and remits the case to the examining division for further prosecution.

Order