T 0149/20 - Broad claims and support

Key points

• The requirement of support of Art.84 is sometimes used by Examining Divisions to refuse claims that are considered "too broad" without a need to find prior art that anticipates the claimed subject-matter or makes it obvious. 
• The present Board: "With regard to the requirement that claims are supported by the description, decision T 630/93 stated the following [] in Reasons 3.2: "[...] it must, however, be kept in mind, that the main purpose of a claim is to set out the scope of protection sought for an invention [...]. Therefore, the function of the essential features, although they normally are expressed in technical terms, is often to define the borders of an invention rather than to define the invention in detail within the borders. The detailed definition is normally made by the additional features, which may concern specific embodiments of the invention, in dependent claims appended to the main claim. [...]". Thus, in view of decision T 630/93, Reasons 3.2, the crucial issue here is whether the features of claim 1 clearly define the borders of the invention as necessary to prosecute the application."
• The cited paragraph of T 630/93 continues with:  "Thus, essential features often can be of a very general character, in extreme cases they could indicate only principles or a new idea. The degree of generalisation is, however, always dependent on the prior art which has been disclosed."
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• T 630/93 also states: "As explained above, when deciding upon how much detail concerning an invention must be identified in a claim in order to meet requirement (b), it is necessary to relate the invention to the prior art. '
• "To the Board, therefore, it appears that the applica- tion, in fact, discloses a new principle. It has thus not been shown that it is known to determine successive gradients as proposed by the Appellant. Therefore, a claim having a broad scope is justifiable. It is not necessary to identify in detail in which way the said comparison or said speed control is performed. The skilled person will get this information from the description (e.g. corresponding to Figure 6), where a preferred embodiment of the invention is described. However, as has been suggested by the Appellant, the skilled person realises that also other ways of comparison and speed control within the borders of Claim 1 would be possible."
• Turning to inventive step of broad claims:  "It is true that the features of Claim 1 do not in a compulsory way lead to the solution of the problem indicated in the description, i.e. that the overrun amount is reduced by a gradual reduction of the speed. However, the features indicated in the claim give the skilled person the possibility to perform such a control in a manner that leads to that result. Thus, in fact, the objective problem to be solved appears to be more general than indicated in the description, e.g. to achieve an almost continuous and graduated speed control. To establish such a generalised objective problem appears, however, in this case to be of only academic interest. '' 
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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/t200149eu1.html

3.3.3 With regard to the requirement that claims are supported by the description, decision T 630/93 stated the following (with emphasis added by the board) in Reasons 3.2: "[...] it must, however, be kept in mind, that the main purpose of a claim is to set out the scope of protection sought for an invention [...]. Therefore, the function of the essential features, although they normally are expressed in technical terms, is often to define the borders of an invention rather than to define the invention in detail within the borders. The detailed definition is normally made by the additional features, which may concern specific embodiments of the invention, in dependent claims appended to the main claim. [...]". Thus, in view of decision T 630/93, Reasons 3.2, the crucial issue here is whether the features of claim 1 clearly define the borders of the invention as necessary to prosecute the application.