T 2282/16 - Art.123(2) and US style dependent claims

Key points

•  First, about vico oral proceedings: "Both parties expressed their preference for in-person oral proceedings. Nonetheless, in view of the ongoing Covid-19-pandemic and the potential risks of infection and impediments in travelling, the Board decided to hold the oral proceedings by videoconference, applying its discretion under Article 15a(1) RPBA 2020. Since both parties accepted this format, there is no need for the Board to give more detailed reasoning for its decision."
• Note, the Board does not refer to G 1/21. The decision was taken 21.12.2021. The Board identifies a  "discretion" to hold vico oral proceedings without discussing in any way whether the requirements of G 1/21 are met.
• As to Article 123(2) and whether the claims as filed provide basis: " Claims 5 and 7 as filed are each only dependent on claim 1, but not on each other. They are thus not directly linked to each other by the claim structure. Such claims therefore do not form a direct and unambiguous basis for deriving a claim to their combination. This is also in line with established case law (see e.g. T 1362/15, Reasons 4). Therefore, the claims do not provide a literal, and thus explicit basis for a method [as defined in claim 1 as granted]"
• "The proprietor's further argument that multiple dependencies were not allowed or at least not common when drafting applications that covered the US, and the claim structure was to be interpreted before such background, is also not accepted. There being no general prohibition of multiple dependencies in US patent law, the applicant could have claimed the combination either in a dependent claim having multiple dependencies or by a further independent, more restricted claim. As there are not even claim fees due in the PCT procedure (noting that the application as filed is a PCT application), it is equally possible that not having formulated claim 7 to be dependent on claim 5 was simply the deliberate choice of the applicant. Any conclusion as to the intention of the applicant at the time of filing is mere speculation and thus not something directly and unambiguously derivable."
• "The Board therefore finds that claims 5 and 7 of the application as filed relate simply to two different concepts, each of which defines a separate fallback position. The skilled person would thus not derive their combination directly and unambiguously from the set of claims as filed.'
• 
  

EPO T 2282/16 -

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/t162282eu1.html

Reasons for the Decision

1. Oral proceedings by videoconference

Both parties expressed their preference for in-person oral proceedings. Nonetheless, in view of the ongoing Covid-19-pandemic and the potential risks of infection and impediments in travelling, the Board decided to hold the oral proceedings by videoconference, applying its discretion under Article 15a(1) RPBA 2020. Since both parties accepted this format, there is no need for the Board to give more detailed reasoning for its decision.

2. Main request - Article 100(c) EPC

The subject-matter of claim 1 extends beyond the content of the application as filed. The ground for opposition under Article 100(c) EPC thus prejudices maintenance of the patent as granted.

2.1 Claim 1 according to the main request is directed to a method for producing a wound dressing, wherein the moulding surface is a continuously moving surface and wherein the method further comprises a step of perforating the silicone mixture as it cures on the (moving) moulding surface. By claiming this combination with both features in such general form, the claim defines subject-matter which is not directly and unambiguously derivable from the application as filed.

2.2 As also referred to by the opponent, the "gold standard" for assessing whether an amendment fulfills the requirement of Article 123(2) EPC is laid out in G2/10 (OJ EPO, 296), which for the purposes of the present case can be summarised as being whether the subject-matter defined by the amended claim is, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed. The Board finds that this is not the case, neither in the claims nor in the description, nor in the combination of both.

2.3 Claims 5 and 7 as filed are each only dependent on claim 1, but not on each other. They are thus not directly linked to each other by the claim structure. Such claims therefore do not form a direct and unambiguous basis for deriving a claim to their combination. This is also in line with established case law (see e.g. T 1362/15, Reasons 4). Therefore, the claims do not provide a literal, and thus explicit basis for a method for producing a wound dressing, wherein the moulding surface is a continuously moving surface and which further comprises a step of perforating the silicone mixture as it cures on this moving moulding surface. This was as such not disputed by the parties. The proprietor nevertheless argued that there was an implicit basis for deriving the claimed method.

2.3.1 The proprietor argued that because both claims 5 and 7 as filed referred to the moulding surface, the skilled person would have understood that they could be combined and that they would have interpreted the application to cover such a combination. This is, however, not accepted by the Board.

It is true that both claims 5 and 7 mention the expression 'molding surface'. This alone cannot however establish a link between the two separate aspects of a moulding surface that is continuously moving on the one hand and on the other hand perforating the mixture as it cures on the moulding surface, where the moulding surface is of a non-specified (i.e. general) type. Furthermore, claim 8 additionally specifies a plurality of perforating elements extending from the planar moulding surface and having a particular height. Since claim 8 depends only on claim 7 and not on claim 5, this emphasises that the further features relating to perforating the silicone mixture in claim 7 cover an aspect which is separate and independent from the moulding surface being of a continuously moving type as defined in claim 5.

2.3.2 The proprietor's further argument that multiple dependencies were not allowed or at least not common when drafting applications that covered the US, and the claim structure was to be interpreted before such background, is also not accepted. There being no general prohibition of multiple dependencies in US patent law, the applicant could have claimed the combination either in a dependent claim having multiple dependencies or by a further independent, more restricted claim. As there are not even claim fees due in the PCT procedure (noting that the application as filed is a PCT application), it is equally possible that not having formulated claim 7 to be dependent on claim 5 was simply the deliberate choice of the applicant. Any conclusion as to the intention of the applicant at the time of filing is mere speculation and thus not something directly and unambiguously derivable.

2.3.3 The Board therefore finds that claims 5 and 7 of the application as filed relate simply to two different concepts, each of which defines a separate fallback position. The skilled person would thus not derive their combination directly and unambiguously from the set of claims as filed.

2.4 In an alternative line of argument, the proprietor stated that the claims had to be construed in the context of the application as filed, such that even though the combination was not explicitly claimed, the basis therefor could still be seen in claims 1, 5 and 7 when taking the whole teaching of the application into account. In support of this view, the proprietor argued that the skilled person was not a patent professional. Then, with a mind willing to understand, the skilled person would not only look for literal support in the claims but would instead derive from the application as a whole that the features of claims 5 and 7 could be combined. Again, the Board does not accept this.

2.4.1 As also argued by the opponent, the person skilled in the art, when considering the subject-matter claimed, would have the skills of a process engineer, and would apply their technical knowledge and understanding when reading the claims. There is however no basis for the combination of claims 5 and 7 when considering the broad definitions used in them, not even in the eyes of a skilled person having the insights of a process engineer. On the contrary, a person with a technical background in producing wound dressings, but who is not trained in patents, would most probably understand claim 5 in view of the description as relating to the belt mentioned at numerous places therein. If anything, an engineer would thus understand the "continuously moving surface" as being a reference to such a belt, merely defined in more general language, as is well known to be common in the field of patents. It is not necessary to be a patent professional to draw this conclusion.

2.4.2 The proprietor's further argument that page 6 and the embodiment on pages 20 to 24 exclusively referred to moving moulding surfaces and that the skilled person thus read the claims to include this combination, is not persuasive. The application indeed describes an embodiment which includes the combination of a moving moulding surface and perforating the mixture as it cures. However, there is still no other type of moving moulding surface than a belt derivable from any part of the description.

2.4.3 In the application as filed, page 6 represents the most general description of the combination of a moving moulding surface (the moulding surface being described here as being a surface which "is a belt that moves") and perforating the mixture as it cures (by a plurality of perforating elements extending from the belt and having a particular height). The only directly and unambiguously derivable disclosure therefore does not give any hint that the features defined in the general manner of claims 5 and 7 should be combined, but only in the specific form stated there.

2.5 In a further alternative line of argument, the proprietor argued that since claim 5 was dependent on claim 1, the additional features required could be taken from the description and incorporated into original claim 1. According to the proprietor, there was thus a clear disclosure for the method of claim 1 together with a continuously moving moulding surface in its general form. This subject-matter (i.e. the subject-matter of claim 5 as filed) could then be combined with the step of 'perforating the silicone mixture as it cures on the moulding surface' as derivable from several parts of the description, including the disclosure on page 6. The same allegedly applied when starting from claim 7, the subject-matter of which was thus combinable with the general idea of a continuously moving moulding surface. However, neither of these arguments relates to a disclosure which is directly and unambiguously derivable.

2.5.1 Starting from claim 5, the skilled person would not find a disclosure of perforating in the description that were as general as the definition in claim 7. In particular on page 6, perforating is only described together with perforating elements extending from the planar moulding surface in the form of a belt, the perforating elements having a height greater than the thickness of the silicone mixture. The general concept as claimed is thus not derivable from page 6.

2.5.2 The proprietor further referred to page 21 of the application as filed, where it was stated that the moulding surface is 'preferably in the form of a belt'. By using the word 'preferably', the belt was thus not presented as an essential part of the invention. This, however does not change the Board's finding.

The standard in the assessment of whether a generalisation is allowable is what a skilled person directly and unambiguously derives from a disclosure, not what they could imagine being used instead. In this case the embodiment which is shown and described on page 21, does use a belt, even if the description mentions this in the specific context of that embodiment as being 'preferable'. However there is no disclosure of a continuously moving surface other than a belt, but the claim covers all kinds of alternatives therefor. None of these alternatives, and even well-known ones, form part of the disclosure in the context of the requirement of Article 123(2) EPC. Leaving aside the question of whether one aspect of that specific embodiment, described as preferable, could be selected in isolation from its context and inserted into claim 1, there is anyway no other form of moulding surface than a belt derivable from the application as filed, be it continuously moving or not. It is thus only the skilled person's imagination which might lead them to alternatives for the belt. This is however not part of the disclosure in the application but must be attributed to an intellectual activity of the skilled person.

2.6 The Board thus finds that, for the combination of features of claim 1 in their general form, the description does not provide a basis either, whether taken alone or together with claims 1, 5 and/or 7 as filed.

Since claim 1 defines subject-matter extending beyond the content of the application as filed, the ground for opposition under Article 100(c) EPC prejudices maintenance of the patent. The main request is thus not allowable.