T 2676/16 - Broad but clear

Key points

• The Board recalls that the clarity requirement of Article 84 EPC does not mean that claims can be refused in examination simply because they are broad.
• “The mere fact that a feature may be implemented in various ways does not necessarily render this feature unclear”.

T 2676/16 -  link


The board further notes with respect to point 2.4 of the reasons of the appealed decision [of the Examining Division] that the mere fact that a feature may be implemented in various ways does not necessarily render this feature unclear.

2.5 Hence, claim 1 of the main request is clear (Article 84 EPC). The same applies mutatis mutandis to independent apparatus claim 7 and the computer-readable memory claim 16. As a consequence, the board is satisfied that claims 1, 7 and 16 of the main request comply with the requirements of Article 84 EPC.

2.6 Furthermore, in view of the above findings, the board is also satisfied that the claimed invention according to the present main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC), contrary to the obiter dicta statement in point 5 of the reasons of the decision under appeal.

3. Remittal (Article 111(1) EPC and Article 11 RPBA 2020)

3.1 Given that claims 1, 7 and 16 of the main request now comply with Article 84 EPC, the sole ground for refusal is overcome. However, the main request has to be examined for compliance with the other requirements of the EPC, in particular novelty and inventive step, which was not decided upon by the Examining Division. Under the present circumstances it is therefore not appropriate to take a final decision on novelty and inventive step for the first time in these appeal proceedings. The board considers that the above represents "special reasons" within the meaning of Article 11 RPBA 2020 for remittal of the case.

3.2 In view of the above, the board decides to remit the case to the Examining Division for further prosecution under Article 111(1) EPC, on the basis of the claims of the main request on file.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.