T 0085/16 - No three-point-test for omitted features

Key points

• In this opposition appeal, claim 1 at issue does not contain three features compared to claim 1 of the (parent) application as filed. 
• "The [patentee] argued that the three-point-test developed in T331/87 was applicable in the present case. "
• "However, the basic principle underlying Articles 76(1) and 123(2) EPC is independent of particular tests that have sometimes been used in other decisions, even if this might, in certain cases, have become common practice of the EPO. While such tests might give some guidance in certain situations, they do not substitute the application of said basic principle. The question to be answered is hence what a skilled person can derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed. This is known as the gold standard (see G2/10, Reasons 4.3)."
• Turning to the omitted features at issue, "The [patentee] argued that the non-woven fabric was not "essential" for solving the technical problems."
• The Board: "However, whether something is essential or not is not the same as whether subject-matter is directly and unambiguously derivable by a skilled person. For example, a reader might well conclude, after having deliberated on the essentiality of the non-woven fabric for any particular purpose or reason, that another material could also have been used for the laminate's sheets, but this does not mean that it has been directly and unambiguously disclosed. There is no disclosure in the earlier application - be it explicit or implicit - of the general sheets with which the feature "non-woven fibre sheet" was replaced. These general sheets cannot be derived directly and unambiguously from the original documents. Having ascertained this, it is of no relevance whether the sheets of the non-woven fibre type have been presented as being essential for the invention or whether they were indispensable for its function."

EPO T 0085/16 -  link

1.3 Omission of features - the relevant standard and test

1.3.1 As already stated in the communication of the Board (see points 1.1 and 1.2), when assessing whether the subject-matter of granted claims 1 and 2 of the patent extends beyond the content of the earlier application as filed under Article 76(1) EPC the same principles apply as when examining whether the requirement of Article 123(2) EPC is met. The basic principle therefor can be found in the case law of the Enlarged Board of Appeal and was summarised in G2/10 (see Reasons 4.3).

1.3.2 The appellant argued that the three-point-test developed in T331/87 was applicable in the present case. It further referred to T2311/10, in which decision it was pointed out that the risk existed of applying the three-point-test in the wrong way by formulating an objective technical problem with regard to some state of the art instead of deriving it directly from the application. In the appellant's view, such risk did not exist in the present case and the test should be applied.

1.3.3 However, the basic principle underlying Articles 76(1) and 123(2) EPC is independent of particular tests that have sometimes been used in other decisions, even if this might, in certain cases, have become common practice of the EPO. While such tests might give some guidance in certain situations, they do not substitute the application of said basic principle. The question to be answered is hence what a skilled person can derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed. This is known as the gold standard (see G2/10, Reasons 4.3).

1.3.4 Applied to the present case, it thus has to be established whether the disposable pants and the method of manufacturing them, as defined in claims 1 and 2, i.e. without the limitations to a non-woven fabric, a reinforcement sheet and a back sheet (the omitted features in item 1.2 above), can be derived directly and unambiguously from the original documents of the earlier application (i.e. the parent).