T 1462/14 - The skilled person vs a lawyer

Key points

• In this examination appeal, a feature is omitted in claim 1 of the main request compared to claim 1 as filed. The issue is whether this amendment complies with Art. 123(2) EPC.
• The Board: "The mere fact that the conditions defining the essentiality test, referred to in the guidelines for examination are met, is not conclusive."
• " Contrary to the general statement later incorporated into the Guidelines for Examination, the original English text of the decision [T331/87] did not state that meeting the three conditions would be sufficient for the amendment to be allowable; but rather that such an amendment may not violate Article 123(2) EPC" (italics in present decision; as a comment I refrain from discussing the meaning of the phrase "may not").
• The requirement of G 2/10 refers to the skilled person. 
• "Many of the appellant's arguments rely on the knowledge to be attributed to the skilled person, as opposed to that of a lawyer.  In the appellant's view, the skilled person would have recognised that the claimed circuit could be used in various environments.[...] Contrary to a lawyer's, the skilled person's understanding would not be limited to the literal content of a written disclosure." 
• The Board is not persuaded. "The Board notes that the skilled person is a notional entity that has been elaborated by the jurisprudence of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. The jurisprudence makes it clear that this notional person cannot be equated with any real person in the technical field of the invention. Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, can be equated with the skilled person. This also applies to a representative, independently of any qualification."
• " The question to be answered is thus whether this fictional skilled person would have derived from the application as a whole that the disclosed circuit is not limited to the field of contactless communication devices." 
• " The Board thus has no doubt that the skilled person would have construed the invention as a voltage supplying circuit to be used in the context of contactless communication devices only." 
• As an obiter, the Boards add that  "[t]he Board finds further support for this view in the following observations. Rule 42 EPC specifies the requirements which apply to the patent description. A distinction is made therein between the technical field of the invention (Rule 42(1)(a) EPC), the disclosure of the invention (Rule 42(1)(c) EPC) and the possibility of incorporating examples when describing in detail at least one way of carrying out the invention (Rule 42(1)(e) EPC)."
• The Board then discusses that para. [0006] at issue is the disclosure of the invention under Rule 42(1)(c) rather than an example under Rule 42(1)(e) EPC. " The reading in accordance with Rule 42(1) EPC confirms thus that contactless communication devices define the field of the invention and not a possible example of its use."
• This raises the question of whether the "fictional skilled person"  reads a patent application with detailed knowledge of Rule 42 EPC.

T 1462/14 - link

Reasons for the Decision

Main request - Added subject-matter

1. Claim 1 of the main request specifies that the claimed circuit comprises first and second input terminals. The indication in original claim 1 according to which the circuit comprises an input "configured for coupling to an antenna and for receiving an alternating voltage from the antenna" has been deleted.

Essentiality test

5. The mere fact that the conditions defining the essentiality test, referred to in the guidelines for examination are met, is not conclusive.

6. The conditions defining the essentiality test were first defined in the context of case T 331/87, "Removal of a feature", OJ EPO 1991, 22. Contrary to the general statement later incorporated into the Guidelines for Examination, the original English text of the decision did not state that meeting the three conditions would be sufficient for the amendment to be allowable; but rather that such an amendment may not violate Article 123(2) EPC (see T 331/87 point 6, and also T 1852/13, points 2.2.3 and 2.2.7; Case Law of the Boards of appeal, Section II.E.1.4.4 c), 9th edition 2019).

7. As underlined in decision T 1852/13, the correct approach is the so-called "gold standard" as summarised in G 2/10, "Disclaimer/SCRIPPS", OJ EPC 2012, 376: "... any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed" (G 2/10, point 4.3).

Gold standard - the skilled person

8. The definition of the invention, contained in paragraphs [0006] and [0007] of the published application, albeit imperfect, confirms that the claimed invention is to be used with antennas.

9. The patent application as originally filed is, in effect, devoid of ambiguity as to the fact that the claimed circuit is to be used in the context of contactless communication devices, the communication being established by means of antennas.

10. The appellant's reference to paragraph [0014] of the published application, in particualar to the statement that "In some implementations, LC circuit 110 comprises antenna 112", is not persuasive. Indeed, it would be misleading to say that, in other implementations, there may be no antenna. The whole sentence reads "In some implementations, LC circuit 110 comprises antenna 112 (e.g., a coil) coupled in parallel to capacitor 114." What is optional is not the antenna, but the specific arrangement consisting of the antenna in parallel to the capacitor.

11. Many of the appellant's arguments rely on the knowledge to be attributed to the skilled person, as opposed to that of a lawyer.

12. In the appellant's view, the skilled person would have recognised that the claimed circuit could be used in various environments. It was thus not limited to the field of contactless communication devices. Similarly, the skilled person would have also recognised that the claimed circuit could be used with a signal already rectified or provided by a DC source. Contrary to a lawyer's, the skilled person's understanding would not be limited to the literal content of a written disclosure.

13. The Board concurs that literal support is not required under Article 123(2) EPC: what is relevant is the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person, reading the original disclosure, would have derived from its content (description, claims and drawings) considered in its entirety. This approach might lead to the identification of subject-matter which has not been explicitly stated as such in the application as filed, but nevertheless derives directly and unambiguously from its content (cf. T 667/08, point 4.1.4). What the skilled person will derive from the content of an application or other written disclosure depends, however, on both his skills and inabilities.

14. The Board notes that the skilled person is a notional entity that has been elaborated by the jurisprudence of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. The jurisprudence makes it clear that this notional person cannot be equated with any real person in the technical field of the invention.

15. Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, can be equated with the skilled person. This also applies to a representative, independently of any qualification.

16. The question to be answered is thus whether this fictional skilled person would have derived from the application as a whole that the disclosed circuit is not limited to the field of contactless communication devices. In other words, it should be established whether the reference to an antenna would have been construed by the skilled person as referring to a mere example of use of the claimed circuit.

17. As stressed above, the original application is consistent as to the fact that the claimed voltage supply circuit is to be used in association with an antenna input i.e. in the context of contactless communication devices. The wording of original claim 1 is corroborated by the statement in the description regarding the definition of the invention (cf. paragraphs [0006], [0007]). Nothing in the description suggests that some other applications might have been envisaged. In particular, paragraph [0014] does not suggest it.

18. The Board thus has no doubt that the skilled person would have construed the invention as a voltage supplying circuit to be used in the context of contactless communication devices only.

19. The Board finds further support for this view in the following observations.

20. Rule 42 EPC specifies the requirements which apply to the patent description. A distinction is made therein between the technical field of the invention (Rule 42(1)(a) EPC), the disclosure of the invention (Rule 42(1)(c) EPC) and the possibility of incorporating examples when describing in detail at least one way of carrying out the invention (Rule 42(1)(e) EPC).

21. In the present case, the subject-matter is defined in paragraph [0001] as relating "generally to electronic interfaces, and more particularly to contactless interfaces..." in accordance with Rule 42(1)(a) EPC. As underlined above, the disclosure of the invention is disclosed in paragraphs [0006] and [0007] in relation with an inductive antenna in accordance with Rule 42(1)(c) EPC. In accordance with Rule 42(1)(e) EPC, the detailed description of the invention incorporates examples of the contactless interface, switching regulator circuit and timer for switch control.

22. The reading in accordance with Rule 42(1) EPC confirms thus that contactless communication devices define the field of the invention and not a possible example of its use.

23. It follows that the deletion of the reference to the antenna leads to a non-allowable generalisation of the claimed subject-matter, contrary to Article 123(2) EPC.

Subsidiary set of claims - Added subject-matter

24. The independent claim of the auxiliary request differs from claim 1 of the main request in that the features considered to be missing in claim 1 of the main request have been reintroduced.

25. The Board is satisfied that overcomes the objection under Article 123(2) EPC.

26. Since the decision to refuse the application relied exclusively on this objection, the case is remitted to the Examining Division for further prosecution.

Order

For these reasons it is decided that:

The case is remitted to the department of first instance for further prosecution on the basis of the set of claims 1 to 3 according to the subsidiary set of claims filed on 30 September 2019.