T 1180/14 - Essential features

Key points

• In this examination appeal, the Board assess whether the claim recites all essential features, as required under Article 84.
• The Board recalls established case law. " An independent claim should explicitly specify all of the essential features needed to define the invention in order to comply with the provisions of Article 84 EPC [and] Rule 43(1)(a) EPC . [E]ssential features are those features which are necessary to obtain the desired effect or to solve the technical problem with which the application is concerned" 
• " The appellant further argued, referring to recent decision T2131/12 of 20 March 2018, that a claim lacked the essential features of an invention only if the technical problem as defined in the respective description could not be solved without such features and if such features were considered to be essential for carrying out the invention." 
• " The board is not persuaded by this argument either. [In] decision T2131/12, the deciding board held that, irrespective of whether or not the relevant feature itself was derivable from the application documents, it could not deduce any hint that the feature concerned was indeed essential for carrying out the invention [.] However, this board follows the conclusions of T32/82 and T2001/12 that essential features are features which are necessary to "obtain the desired effect" and to "solve the technical problem with which the application is concerned, rather than features considered to be necessary "to carry out the invention", as set out in T2131/12 [.] The board believes that the latter definition is more related to the issue of sufficiency of disclosure (Article 83 EPC 1973) than to the issue of clarity of a claim (Article 84 EPC 1973)." 

EPO T 1180/14 - link

2.1 Lack of essential features (Article 84 EPC 1973)

2.1.1 An independent claim should explicitly specify all of the essential features needed to define the invention in order to comply with the provisions of Article 84 EPC 1973 in combination with Rule 29(1)(a) EPC 1973, now Rule 43(1)(a) EPC (cf. G 2/88, OJ EPO 1990, 93, Reasons 2.5; G 1/04, OJ EPO 2006, 334, Reasons 6.2). According to the jurisprudence of the Boards of Appeal, essential features are those features which are necessary to obtain the desired effect or to solve the technical problem with which the application is concerned (see e.g. T 32/82, OJ EPO 1984, 354, Reasons 15; T 2001/12 of 29 January 2015, Catchword a).

2.1.2 In the present case, the technical problem with which the application is concerned is that transmitting scheduling assignments (SAs) separately to individual mobile terminals (UEs) e.g. of a group of UEs causes "traffic congestion due to sudden increase in uplink traffic"  [...]

However, feature C) only indicates that the base station takes the "first identifier" as the destination identifier if the scheduling assignment is for the UE corresponding to the first identifier, and takes the "second identifier" if the scheduling assignment is for all of the plurality of UEs, i.e. a group of UEs, without any reference to the relevant channel noise/interference conditions. Consequently, the board holds that claim 1 lacks the essential features for solving the underlying technical problem and thus for defining the present invention, contrary to Article 84 EPC 1973.

2.1.7 The appellant further argued, referring to recent decision T 2131/12 of 20 March 2018, that a claim lacked the essential features of an invention only if the technical problem as defined in the respective description could not be solved without such features and if such features were considered to be essential for carrying out the invention. In the present case, the underlying problem of avoiding "traffic congestion due to sudden increase in uplink traffic" could, however, be solved without any consideration of uplink-channel conditions, and so the latter were not essential for carrying out the present invention.

The board is not persuaded by this argument either. Firstly, the board has doubts whether the facts underlying case T 2131/12 are directly comparable to those in the present case, since in the former case the examining division considered that a certain feature was essential based on its own assessment only, without providing any concrete basis in the corresponding description (see T 2131/12, Reasons 1.4). Secondly, in decision T 2131/12, the deciding board held that, irrespective of whether or not the relevant feature itself was derivable from the application documents, it could not deduce any hint that the feature concerned was indeed essential for carrying out the invention (see Reasons 1.5 and 1.6). However, this board follows the conclusions of T 32/82 and T 2001/12 that essential features are features which are necessary to "obtain the desired effect" and to "solve the technical problem with which the application is concerned, rather than features considered to be necessary "to carry out the invention", as set out in T 2131/12 making reference to the Guidelines for Examination in the European Patent Office, F-IV, 4.5.2, in its November 2017 edition (see Reasons 1.3). The board believes that the latter definition is more related to the issue of sufficiency of disclosure (Article 83 EPC 1973) than to the issue of clarity of a claim (Article 84 EPC 1973). 

Thirdly, the board holds that if, in the case of high noise/interference (i.e. corresponding to low RoT values), a certain scheduling assignment was, for example, sent to the individual UEs of all available UEs separately, the problem of traffic congestion would even be aggravated significantly, contrary to the desired effect to be achieved by the present invention.

2.2 In conclusion, the main request is not allowable under Article 84 EPC 1973.