T 2685/19 - On the need to adapt the description

Key points

• Board 3.5.02, in machine translation: "Based on decision T 1989/18, Reasons No. 5, the appellant argues that if the claims do not have a problem of clarity, the description cannot give rise to an ambiguity of the claimed subject-matter."
• "The board does not agree"
• "According to the settled case law of the Boards of Appeal, the description must therefore be adapted to the amended claims, as has apparently already been requested in the present case by the opposition division with regard to the request on which the decision under appeal is based. This means, among other things, that embodiments no longer covered by the amended wording of the claim are to be identified as such in the description. This is not the case for the description submitted with auxiliary request IIIbis. ... Therefore, all embodiments that only have a two-part structure at the end area no longer fall under claim 1 and are to be marked accordingly. In the present case, as can already be gathered from the version on which the contested decision is based, only the embodiment according to FIG. 5 has a three-part structure at the end area."
• "Since the description submitted with auxiliary request IIIbis does not clarify that the claimed invention concerns only the embodiment corresponding to the subject-matter of the claims, there is a contradiction between the claims and the description, as a result of which the claims, contrary to the requirement of Article 84, second sentence, EPC, are not supported by the description."
• "The weighting of the criteria specified in Article 84, second sentence, EPC in favor of the clarity of the claims, which was the basis in decision T 1989/18, cannot be inferred from Article 84 EPC. Rather, the board follows the established case law of the boards of appeal in this regard, as recently found in decisions T 1516/20, reasons for decision no. 5, T 1024/18, reasons for decision no. 3.1, and T 2293/18, reasons for decision no. 3.3 has been confirmed. In the decisions mentioned, it has been shown very clearly and convincingly that the criterion for the claims being supported by the description in Article 84, second sentence, EPC is an independent criterion which is not subordinate to the clarity of the claims."

EPO 

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/t192685du1.html

5. Auxiliary request IIbis - Article 13 (1) RPBA 2020

The board exercised its discretion under Article 13(1) RPBA 2020 not to admit auxiliary request IIbis to the appeal proceedings, as prima facie it is not suitable for overcoming the objection to auxiliary request II under Article 123(3) EPC.

Claim 1 of auxiliary request IIbis still contains the amendment already found to violate Article 123(3) EPC in relation to auxiliary request II, namely that the wall is no longer necessarily "put on the end part (60)", but instead also "put on or screwed on and /or attached by welding". Auxiliary request IIbis is therefore prima facie not suitable for overcoming this objection to claim 1 of auxiliary request II.

6. Auxiliary request IIIbis - Article 84 EPC

Auxiliary request IIIbis does not meet the requirements of Article 84, second sentence, EPC.

Irrespective of the question as to whether auxiliary request IIIbis should not have already been submitted and brought to a decision in the first instance proceedings pursuant to Article 12(4) RPBA 2007, the Chamber came to the conclusion that auxiliary request IIIbis met the requirement of Article 84 EPC that the claims must be supported by the description is not met.

Based on decision T 1989/18, Reasons No. 5, the appellant argues that if the claims do not have a problem of clarity, the description cannot give rise to an ambiguity of the claimed subject-matter.

However, the Chamber does not agree. The weighting of the criteria specified in Article 84, second sentence, EPC in favor of the clarity of the claims, which was the basis in decision T 1989/18, cannot be inferred from Article 84 EPC. Rather, the board follows the established case law of the boards of appeal in this regard, as recently found in decisions T 1516/20, reasons for decision no. 5, T 1024/18, reasons for decision no. 3.1, and T 2293/18, reasons for decision no. 3.3 has been confirmed. In the decisions mentioned, it has been shown very clearly and convincingly that the criterion for the claims being supported by the description in Article 84, second sentence, EPC is an independent criterion which is not subordinate to the clarity of the claims.

According to the settled case law of the Boards of Appeal, the description must therefore be adapted to the amended claims, as has apparently already been requested in the present case by the opposition division with regard to the request on which the decision under appeal is based. This means, among other things, that embodiments no longer covered by the amended wording of the claim are to be identified as such in the description. This is not the case for the description submitted with auxiliary request IIIbis. According to the characterizing part of claim 1 according to the set of claims considered allowable by the opposition division (auxiliary request 2 of May 16, 2019), three parts are attached to the end area of ​​the claimed spark plug, namely the end part, the ground electrode carrier and the wall, as already submitted by the former opponent in its statement of grounds of appeal on page 11 above. Therefore, all embodiments that only have a two-part structure at the end area no longer fall under claim 1 and are to be marked accordingly. In the present case, as can already be gathered from the version on which the contested decision is based, only the embodiment according to FIG. 5 has a three-part structure at the end area.

Since the description submitted with auxiliary request IIIbis does not clarify that the claimed invention concerns only the embodiment corresponding to the subject-matter of the claims, there is a contradiction between the claims and the description, as a result of which the claims, contrary to the requirement of Article 84, second sentence, EPC, are not supported by the description.

The auxiliary request IIIbis is consequently also not allowable.

7. Summary

In the absence of an allowable request by the appellant, the appeal fails.

decision formula

For these reasons it is decided:

The complaint is rejected.