T 0758/13 - Must restrict to illustrated embodiment

Key points

• In this examination appeal, the Board finds claim 1 to lack support under Article 84 EPC.
"The wording [of the claim feature] is reflected in the description on page 6, lines 22 to 27" 
• "However, in the detailed description of the embodiments, the rendering device consistently receives the first image component and the text component (typically the subtitles) as separate components." The Board then points to Figure 3.
• "Summarising, the wording [of the feature] is partly repeated in the description, but the detailed description of the embodiments does not disclose the text component being an integral part of the first image component. Therefore, the board finds that this repetition of the wording of the claim does not provide support for claim 1 [...]" 
• The Board also notes that according to some other feature of claim 1 "the text component is not an integral part of the first image component" but does not raise a clarity objection, nor explicitly identifies the relevance of this observation for the question of support. 
• The Board refers to CLBA II.A.5.1. The decision indeed seems to be fully in line with that case law.
• As a comment, assuming that the claim is novel and inventive by other features and that the skilled person has no difficulty in carrying out the invention (the Board makes no objection under Article 83)  the application is still refused because there is no drawing or detailed description of the feature. Even though the decision entirely leaves open the possibility that the skilled person would not need such a detailed description to carry out the invention. The feature at issue could even be entirely conventional.  The Board also does not say that the feature is an essential feature. 
• As a further comment, it seems that the in the critical issue "the detailed description of the embodiments does not disclose the text component being an integral part of the first image component" the Board does not use "disclose"  in the sense of Article 123(2) - at least I assume that literally repeating the wording of the claim feature under the caption of "detailed description"  does not help. However, the Board leaves open what is necessary, perhaps because the Board does not identify any technical reason at issue for why the feature is problematic without detailed explanation in the description - at least I don't see such a reason explicitly in the Board's decision. 

EPO T 0758/13 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Support by the description - second, third, fourth and fifth auxiliary requests (Article 84 EPC)

2.1 According to Article 84 EPC, the claims must be supported by the description. It is established case law that this means that the subject-matter of the claim must be taken from the description and it is not admissible to claim something which is not described (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, II.A.5.1).

Purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Article 84 EPC (ibid., at II.A.5.2).

2.2 Claim 1 of each request specifies:

"a text component embedded in the first image component".

The technical meaning of this feature is that the text is an integral part of the first image component.

2.3 The wording quoted in point 2.2 above is reflected in the description on page 6, lines 22 to 27:

"the step of creating a three-dimensional image signal comprises including the text component in the first image component. The text component (for example a subtitle) [...] does not need to be transferred as a separate component. The receiving apparatus that is going to render the 3D image can still control the 3D display parameters in the region of the subtitle, even if that subtitle is embedded in the first image component of the signal".

According to the quoted passage, the rendering device receives the text component and the first image component as one single component.

2.4 However, in the detailed description of the embodiments, the rendering device consistently receives the first image component and the text component (typically the subtitles) as separate components.

In particular, Figure 3 and the passage of the description on page 11, lines 21 to 24, disclose that the "playback device 18 provides the [first and second image] components 10 and 12, with the subtitles 30 and a data component 34 which comprises location information describing the location of the text component 30 within the ultimate 3D image 14, to the renderer 24".

The board notes that the reference in claim 1 to "part of the first image component and the rendered text component" (emphasis added) confirms that the text component is rendered separately from the first image component, i.e. the text component is not an integral part of the first image component.

2.5 Summarising, the wording quoted in point 2.2 above is partly repeated in the description, but the detailed description of the embodiments does not disclose the text component being an integral part of the first image component. Therefore, the board finds that this repetition of the wording of the claim does not provide support for claim 1 of the second, third, fourth and fifth auxiliary requests.

[...]

2.7 In view of the above, the board concludes that claim 1 of the second, third, fourth and fifth auxiliary requests does not meet the requirements of Article 84 EPC.

3. Since none of the appellant's requests is allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.