T 2483/16 - Beyond what is justified by the description

Key points

• In this examination appeal, the Board comments on the requirement of ‘support’ in Article 84.
• By way of introduction, if the claims are novel, inventive and sufficiently disclosed, and also have verbatim basis in the application as filed, can they still be refused under the 'support' requirement of Article 84? 
• The Board: “[The requirement of support in Article 84] means that the claimed subject-matter must have an adequate basis in the description and that the scope of the claims may not go beyond what is justified by the description and the drawings. In particular, the claimed subject-matter must have technical support in the description reflecting the applicant's effective contribution to the art. However, purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling this requirement”.
• As a comment, how to assess what is 'justified' by the description and the drawings?
• In this case, the Board notes “that none of the described embodiments disclose that the relaxed graded layer is epitaxially grown over the uniform cap layer as specified in feature [C]”.
• The Board does not expressly deal with the question of whether this feature C is perhaps a routine feature in the technical field at issue and does not comment on common general knowledge of the skilled person. The Board does not say that the skilled person would have any difficulty in reducing this feature to practice (indeed, established case law about Article 83 requires 'serious doubts' also in pre-grant examination). 

EPO T 2483/16 -  link



2. Support by the description

2.1 According to Article 84 EPC 1973 the claims define the matter for which protection is sought and have to be, inter alia, supported by the description.

This requirement means that the claimed subject-matter must have an adequate basis in the description and that the scope of the claims may not go beyond what is justified by the description and the drawings. In particular, the claimed subject-matter must have technical support in the description reflecting the applicant's effective contribution to the art. However, purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling this requirement (see T 127/02, point 3 of the Reasons; T 1048/05, point 11 of the Reasons). [...]

2.4. [...]

It is to be noted that none of the described embodiments disclose that the relaxed graded layer is epitaxially grown over the uniform cap layer as specified in feature (c1). This holds for all requests.

Rather, in relation to the first embodiment shown in Figure 1 it is indicated in the description of the application that the cap layer 150 is the outermost layer of a "virtual substrate" and constitutes the layer over which the compressively strained layer 160 and/or the tensilely strained layer 170 are disposed. [...]

Hence, the description of the embodiments of the invention does not provide technical support of the claimed subject-matter in relation to feature (c1).