T 2186/14 - On the ashtray example

Key points

• In this examination appeal, the board finds claim 1 unclear. Claim 1 is directed to essentially a nasal spray device for spraying a medicine into a patients nose and has the feature that the device "is configured such that at least 30 % of the dose [of the medicine is deposited in a specific part of the nose], and thereby provides a [pain relieve] effect which is significantly greater than that predicted from a counterpart blood plasma concentration of the [medicine]".
• The appellant argues that these features meet the requirements for allowable 'result to be achieved' features according to GL F-IV.4.10.
• GL F-IV.4.10: "For example, the invention may relate to an ashtray in which a smouldering cigarette end will be automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. So long as the claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the skilled person to determine the required dimensions by routine test procedures "
• The present Board: "In this example [of the Guidelines about the ashtray], it is clear which structural features have to be appropriately designed to achieve the desired effect. The relative dimensions of the ashtray may vary but will always be such that a cigarette is automatically extinguished. However, in the present case, the specific structural features which have to be appropriately designed are not clear from the wording of the claim. The only structural features included in the claim are a nosepiece unit comprising a nozzle and a substance supply unit."
• I guess that the ashtray example was already in the first edition of the GL (still looking for those) and comes from some actual (older) decision of the German Patent Office (most likely) but I would like to learn more about that. Apparently, the self-extinguishing effect of the ashtray was due to both the shape and the relative dimensions and it was sufficient that the claim specified the shape of the ashtray as clearly as possible. 

EPO T 2186/14 -  link

3. Article 84 EPC

3.1 Article 84 EPC requires that the claims define the matter for which protection is sought in a clear and concise manner and that the claims be supported by the description. These requirements ensure that the public is not left in any doubt as to the subject-matter covered by a claim.

3.2 Claim 1 includes a functional feature, namely, that the delivery device is configured such that at least 30 % of the dose as initially deposited in the nasal airway is deposited in an upper posterior region of the nasal airway which is posterior of the nasal valve and above the inferior meatus.

3.3 While, in general, a functional feature defining a technical result can be permissible in a claim, in the present case, the skilled person would have been left in doubt regarding how the feature "configured such that at least 30 % of the dose as initially deposited in the nasal airway is deposited in an upper posterior region of the nasal airway" could be reduced to practice. In fact, the claim does not specify any structural technical feature of the delivery device which provides for the deposition of at least 30 % of the dose in the upper posterior region of the nasal airway.

[...]

3.7 The appellant referred to the case underlying decision T 68/85 and to the ashtray example, both mentioned in the Guidelines for Examination (F-IV, 4.10).

Decision T 68/85 states that the claimed features may be expressed in structural or functional terms, the latter if, from an objective point of view, the features cannot otherwise be defined more precisely without unduly restricting the scope of the claim, and if the functional features provide instructions which would have been sufficiently clear for the skilled person to reduce them to practice without undue burden. However, this decision also found that an applicant cannot simply define a technical feature as it wishes. Rather, the objectively most precise form must be chosen (T 68/85, Reasons, 8.4.2).

The Board agrees with the appellant that the extent of protection should not be unduly limited. Nevertheless, the claim must clearly define the subject-matter for which protection is sought, and it must be possible to determine from the definition of the subject-matter whether any given device falls under the scope of the claim. In the Board's view, this is not the case for claim 1, as explained above.

The example referred to by the appellant concerns an ashtray in which a smouldering cigarette end is automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. As long as a claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the reader to determine the required dimensions by routine test procedures.

In this example, it is clear which structural features have to be appropriately designed to achieve the desired effect. The relative dimensions of the ashtray may vary but will always be such that a cigarette is automatically extinguished.

However, in the present case, the specific structural features which have to be appropriately designed are not clear from the wording of the claim. The only structural features included in the claim are a nosepiece unit comprising a nozzle and a substance supply unit. Apart from this, no indication is given as to how the device has to be configured so as to provide for the deposition of at least 30 % of the dose in the upper posterior region of the nasal airway.

3.8 In conclusion, claim 1 does not meet the provisions of Article 84 EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.