T 1327/19 - Support under Art. 84

Key points

• In this appeal against a refusal, the Board reviews the rejection by the Examining Division based on the requirement of "support" of Article 84.
• "The board notes that Article 84 EPC requires, amongst other things, that the claims indicate all the essential features of the invention. Any features that are necessary in order to obtain the desired effect or, in other words, that are necessary in order to solve the technical problem with which the application is concerned are to be considered essential features (see decision T 32/82). In the present case, the problem solved by the application concerns providing "alternative communication paths [having] no single point of failure" (see page 5, lines 10-12)."
• Examining the claim at issue: "In view of the above, the board holds that the [three] features identified in the impugned decision as allegedly being missing are either not essential or are already reflected in the wording of claim 1, which thus fulfills the requirements of Article 84 EPC."
• The case is remitted. "The board notes that the examining division decided on the issues of added subject-matter (Articles 76(1) and 123(2) EPC) and lack of support/lack of clarity (Article 84 EPC). Novelty and inventive step were not assessed in the impugned decision.
• Under these circumstances, the board does not consider it appropriate to decide on the issues of novelty and inventive step without a decision of the examining division. Thus, the board holds that special reasons exist for remitting the case to the department of first instance."

EPO T 1327/19  -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191327eu1.html

2.2 Support by the description (Article 84 EPC)

In the impugned decision, the examining division held that independent claim 1 and independent claim 18 (former claim 14) of the main request were missing features essential for the definition of the invention. Therefore, the requirements of Article 84 EPC were not fulfilled.

2.2.1 As a first essential feature, the examining division identified the feature that "the first port of the third node and second port of the fourth node are assigned to serve as member ports of a Multi-Homing Group, MHG".

The examining division argued that this was essential "since these ports act as a multi-homing group to choose one distinct path to the destination node".

The appellant countered that omitting this feature constituted an allowable generalisation. Furthermore, the technical problems solved by the application related to "alternative communication paths" and thus did not rely on any group in general or a "Multi-Homing Group (MHG)" in particular.

The board notes that Article 84 EPC requires, amongst other things, that the claims indicate all the essential features of the invention. Any features that are necessary in order to obtain the desired effect or, in other words, that are necessary in order to solve the technical problem with which the application is concerned are to be considered essential features (see decision T 32/82). In the present case, the problem solved by the application concerns providing "alternative communication paths [having] no single point of failure" (see page 5, lines 10-12).

The board considers that claim 1 already mentions the fact that "the first and second ports are part of different communication paths", i.e. what the examining division argued was missing. Therefore, the board considers that the feature under scrutiny is not an essential feature of the invention.

2.2.2 As a second essential feature, the examining division identified the feature that "all the frames transmitted from the first node in the first network and destined to the second node in the second network are received at the third and fourth nodes".

The examining division argued that this was essential since "the third and fourth node both apply the hash function and are responsible for choosing the right path among the alternative paths to the destination node".

The appellant asserted that the examining division did not point out any passage in the description which would require all frames transmitted by the first node to the second node to be handled by both intermediate nodes.

The board considers that the description (see, e.g., page 13, lines 17-23) discloses that the sending of all frames to all intermediate nodes is only performed during the "MAC learning process", and not during regular operation. Hence, the description discloses that the technical problem is also solved if only certain frames are received at both the third and fourth nodes. Therefore, this feature cannot constitute an essential feature of the invention.

2.2.3 As a further essential feature, the examining division identified the feature of "responsive to the first (second) hash value being equal to the first (second) index value, sending the received first (second) Ethernet frame to the second node via the first (second) port of the third (fourth) node over the second network and discarding the first Ethernet frame by the fourth (third) node".

The examining division argued that this was essential as "the first frame has to be discarded at the other ports since only one port is chosen according to the hash function for forwarding the first Ethernet frame".

The board concurs with the appellant that these features are already implied by the formulation "sending ... via the first (second) port". Hence, adding these features into claim 1 would effectively not alter its scope.

2.2.4 In view of the above, the board holds that the features identified in the impugned decision as allegedly being missing are either not essential or are already reflected in the wording of claim 1, which thus fulfills the requirements of Article 84 EPC.

The same applies to independent claim 18.