T 0315/15 - Clarity attack admissible

Key points

• This case is an opposition appeal about clarity of an amended claim.
• The Board first notes that the amended claim is open to examination of clarity: "[feature] 1-17 [] was not part of the granted claims but was taken from the description. It is, therefore, open to clarity objections " 
• The Board however doubts whether to admit the clarity objection of the opponent, which raises the question whether a clarity objection is a new fact or a new argument. The Board: "[it] is also questionable whether a further clarity objection merely constitutes a new argument that has to be admitted in accordance with decision T 1914/12 and the jurisprudence of the Enlarged Board of Appeal on which it is based. However, the board is satisfied that the clarity objection raised by the appellant in its written submission []  constitutes a reaction to the [preliminary opinion of the Board]".
• The Board therefore admits the clarity objection of the opponent, and concludes that claim 1 is unclear: "[as] the feature under consideration is part of the charactering [sic] features and, therefore, decisive for delimiting the claimed subject-matter over the state of the art, claim 1 does not clearly define the matter for which protection is sought. Thus, claim 1 does not comply with the requirements of Article 84 EPC." 
• As a comment, I am not sure if the requirement of clarity is indeed stricter for the characterizing features in case a claim is drafted in two-part form according to established case law. The Board does not cite any case law.

EPO  T 0315/15 -  link

Consequently, the main request cannot be allowed.

2. Auxiliary request 1

2.1 Admissibility

Auxiliary request 1 corresponds to former auxiliary request 1, which was filed in response to the statement of grounds of appeal, with the exception of the replacement of "effected" by "affected" in claims 1 and 8. This amendment constitutes the correction of an obvious error. As a consequence, the board admitted the request into the proceedings.

2.2 Compliance of feature 1-17 with Article 84 EPC

Claim [sic] 1-17 ("such that by a downward movement of the bead the inside opening angle of the bead is not increased") was not part of the granted claims but was taken from the description. It is, therefore, open to clarity objections (see decision G 3/14 of the Enlarged Board of Appeal, published in OJ EPO 2015, A102).

2.2.1 Admissibility of the late-filed objection

The board cannot endorse the argument that a board of appeal has to examine ex officio the clarity of claims amended by incorporating features that are taken from the description. It is also questionable whether a further clarity objection merely constitutes a new argument that has to be admitted in accordance with decision T 1914/12 and the jurisprudence of the Enlarged Board of Appeal on which it is based. However, the board is satisfied that the clarity objection raised by the appellant in its written submission dated 9 February 2016  constitutes a reaction to the communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), and in particular, to the definition of the opening angle proposed in point 5.1.8 of that communication [note, of 07.05.2018; the Board may be referring to the opponent's letter of 12.02.2019]. The reaction was filed within the time limit defined by the board (one month before the oral proceedings, see point 7) and cannot, therefore, be considered to be late-filed. As a consequence, the objection cannot be dismissed as inadmissible.

2.2.2 Clarity of feature 1-17

As explained in point 1.1.2, the patent does not provide an unambiguous definition of what is meant by "opening angle". The skilled person trying to determine what exactly is covered by the claim would be at a loss. As the feature under consideration is part of the charactering [sic] features and, therefore, decisive for delimiting the claimed subject-matter over the state of the art, claim 1 does not clearly define the matter for which protection is sought. Thus, claim 1 does not comply with the requirements of Article 84 EPC.

As a consequence, auxiliary request 1 has to be dismissed.