T 1147/21 - Broad but clear claims

Key points

• Broad claims. I suppose they sometimes annoy Examiners who can't find novelty-destroying prior art quickly.
• The Board: "Claim 1 of the first auxiliary request meets the requirements of Article 84 EPC, as opposed to the examining division's conclusion. "
• "the features of claim 1 are perhaps broad, but they are technically sensible and clear for the skilled person."
  "Under established case law, complexity is not equivalent to a lack of clarity"
• "Moreover, a broad claim is not unclear per se []. However, while the scope of the claim is clear, its broadness could have an influence on the assessment of inventive step."
• "The measurement of the oxidised nitrogen concentration is not an essential feature. Instead of being measured, it could also be calculated. The frequency of the measurements is not an essential feature of the invention either. Nor did the examining division provide any evidence."
• "The measurement of the oxidised nitrogen concentration is not an essential feature. Instead of being measured, it could also be calculated. The frequency of the measurements is not an essential feature of the invention either. Nor did the examining division provide any evidence."
• The case is remitted. 

• 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/en/boards-of-appeal/decisions/t211147eu1

First auxiliary request

The first auxiliary request is identical to that considered in the decision under appeal.

1. Amendments

Claim 1 is based on claims 11 and 15 as well as on the last five lines of paragraph [0004] as originally filed.

Therefore, this request meets the requirements of Article 123(2) EPC.

2. Clarity

Claim 1 of the first auxiliary request meets the requirements of Article 84 EPC, as opposed to the examining division's conclusion.

2.1 In the current case, the features of claim 1 are perhaps broad, but they are technically sensible and clear for the skilled person.

Under established case law, complexity is not equivalent to a lack of clarity (Case Law of the Boards of Appeal of the EPO, 10th edn., II.A.3.1).

Moreover, a broad claim is not unclear per se (Case Law of the Boards of Appeal of the EPO, 10th edn.,

II.A.3.3). However, while the scope of the claim is clear, its broadness could have an influence on the assessment of inventive step.

2.2 The measurement of the oxidised nitrogen concentration is not an essential feature. Instead of being measured, it could also be calculated.

The frequency of the measurements is not an essential feature of the invention either. Nor did the examining division provide any evidence.

2.3 The skilled person knows where and with what frequency the measurements are to be carried out. This belongs to the general knowledge of the skilled person in process engineering.

2.4 The fact that claim 1 allows for the adjustment of three possible variables (i.e. dissolved oxygen, duration of the aerobic period and/or duration of the anaerobic period) to control one of two controlled variables (i.e. the ratio or the sum) perhaps renders claim 1 complex but not unclear.

2.5 The board does not see a reason why the skilled person could not establish whether a given method allows to maintain an "ammonia concentration [...] higher than 1.5 mg/L as nitrogen for more than 75% of the transiently-aerated reactor volume in space or time".

In the current case, the risk of a conflict between the criteria of claim 1 evoked by the examining division is hypothetical and not sufficiently substantiated.

3. Sufficiency of disclosure

Several issues raised by the examining division and mentioned above under point 2. relate instead to the requirements of Article 83 EPC. However, the board sees no reason why the invention according to claim 1 could not be carried out be the skilled person.

The desired effects do not form part of the claim. Thus, Article 83 EPC does not presuppose that such effects are obtained.

It is sufficient that the skilled person change one or more of the three parameters to maintain the ratio or the sum. There is no doubt that they can do this.

Remittal to the examining division

4. Article 111(1) EPC

Article 11 RPBA 2020 stipulates that a case is only to be remitted to the department whose decision was appealed for further prosecution if there are special reasons.

The fact that the decision under appeal does not deal with Articles 54 and 56 EPC qualifies as such special reasons.

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 on the basis of the first auxiliary request submitted with the statement setting out the grounds of appeal.