T 3142/19 - A forest of optional features

 Key points

• The Examining Division refused the application because claim 1 would lack basis in the application as filed due to a combination of features. In particular, according to the ED: “Although the features were disclosed, there was no specific pointer to the particular combination claimed. All the features were described as optional, and there was no indication by way of the technical problem solved to lead the skilled person to the conclusion that some of the features were actually not optional or that they were meant to be combined.”.
• The Board: “ if the description indicates that some combination is desirable, or necessary to solve a technical problem, then a clear pointer to - and thus disclosure of - the combination is provided. If not, however, it does not automatically mean that the combination is not derivable by the skilled person.”
• “An excessive number of optional features may also have an impact on the assessment of compliance with Article 123(2) EPC, in that, in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this is indeed the case depends, however, on the specifics of the case, e.g. on the level of complexity caused by the optional features.”
• “According to Article 123(2) EPC, the content of the application as filed delimits at the outset the broadest protection that the applicant may obtain.”
• As a comment, the broadest scope of protection is typically considered under Article 123(3) and broadening claim amendments are possible before grant. 
• The Board finds the claims to comply with Article 123(2) and remits the case.

EPO T 3142/19 -  link

Main Request - Article 123(2)

3. The Examining Division rejected the main request on the basis of the argument that the claimed combination of features was not originally disclosed (point 2 in the grounds for the decision). Although the features were disclosed, there was no specific pointer to the particular combination claimed.

3.1 All the features were described as optional, and there was no indication by way of the technical problem solved to lead the skilled person to the conclusion that some of the features were actually not optional or that they were meant to be combined.

4. As basis for claim 1, the appellant provides (point 10 of the grounds of appeal) original claims 27, 30 and 31 in combination with paragraphs 23, 45 to 47 and 49. Referring to the "whole disclosure", the appellant also refers to the structure of the original claims.

[...]

5. The "gold standard" test can be seen as corresponding to two positive tests, one for each side of the argument. If one wants to show that the subject matter is not compliant with Article 123(2) EPC, it is necessary to indicate which information is added, i.e. goes beyond the content of the application as filed, from the perspective of the skilled person. The party claiming compliance with Article 123(2) EPC, in turn, needs to show that the skilled person would derive the identified information in a clear and unambiguous manner from the entirety of the documents as filed, using their common general knowledge.

6. The Examining Division identified the added information as being the specific claimed combination of features.

6.1 The argument of the Examining Division remains at a fairly abstract level and seems to state that if no positive hint to a combination of features, otherwise presented as optional, is provided, e.g. if the technical problem does not point to a certain combination of technical features as a solution, then any such combination is new technical information.

6.2 This argument is valid in its reversed, positive form: if the description indicates that some combination is desirable, or necessary to solve a technical problem, then a clear pointer to - and thus disclosure of - the combination is provided. If not, however, it does not automatically mean that the combination is not derivable by the skilled person.

6.3 According to Article 123(2) EPC, the content of the application as filed delimits at the outset the broadest protection that the applicant may obtain. For example, if the application, when filed, declares that one may do A and one may do B, a third party should expect that the applicant may try to cover any of the respective four logical combinations.

6.4 It is, however, true that an accumulation of optional features may make it difficult to determine what the invention actually is (cf. the impugned decision, page 10, top paragraph, taking issue with the amount of options), and what combination of features may eventually be claimed. This is detrimental for third parties and may negatively impact on the completeness of the search.

6.5 An excessive number of optional features may also have an impact on the assessment of compliance with Article 123(2) EPC, in that, in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this is indeed the case depends, however, on the specifics of the case, e.g. on the level of complexity caused by the optional features.

7. In this particular case, the appellant argues that the disclosure is based on the original claims 27 and 30, 31.

8. The Board sees three differences between present claim 1 and the wording of those three claims taken together (which is covered by original claim 31).

[...]

25. Based on the above, the Board concludes that the amendments to claim 1 are compliant with Article 123(2) EPC. The same holds for the analogous amendments to corresponding independent method claim 13, which are also compliant with Article 123(2) EPC.

[...]

Remittal

27. As noted above, there are outstanding issues before a grant can be ordered. In fact, one can see that no other issues than those relating to Article 123(2) EPC have been discussed during examination. If the Board were to carry out a complete examination by itself, this would be contrary to the primary object of the appeal proceedings, which is a judicial review of the impugned decision (Article 12(2) RPBA 2020).

28. The Board takes the view that this is a special reason justifying remittal (Article 11 RPBA 2020).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Examining Division for further prosecution.