3. Point 2 of the order in G 1/93
3.1 Decision G 1/93 deals with the conflicting requirements of Article 123(2) and (3) EPC. The Enlarged Board of Appeal acknowledged the inescapable trap that may result from Article 123(2) and (3) EPC (see point 1 of the order). It then went on to specify certain circumstances under which an undisclosed feature was not to be considered to infringe Article 123(2) EPC, discussed in points 15 to 17 of the reasons and summarised in point 2 of the order reproduced below:
"A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature."
3.1.1 Several decisions of the technical boards of appeal have assessed whether or not an undisclosed feature was to be considered added subject-matter under Article 123(2) EPC in view of point 2 of the order of G 1/93. In the majority of cases, the competent board has found that the undisclosed feature provided a technical contribution, concluding that the conditions set out in point 2 of the order of G 1/93 were not fulfilled (see for example T 412/22 and T 312/16). Occasionally, however, an undisclosed feature was found to be allowable under Article 123(2) EPC on the basis of point 2 of the order of G 1/93 (see for example T 1779/09, T 1595/11, T 824/08 and T 535/08).
3.2 The respondent argued that, even if the contested feature were considered not to be disclosed in the application as filed, the amendment would still be allowable in view of point 2 of the headnote of G 1/93. In particular, the contested feature did not provide a technical contribution and merely limited the scope of protection. The Board does not consider this line of argument convincing.
3.3 The contested feature that the imaging positions are the same results in a restriction of the possible ways of establishing a relationship between the regions designated on the displayed non-X-ray image and the corresponding locations of the X-ray generator. This has technical implications for other features, in particular the controller of claim 1 and the "calculating" step of claim 4. Accordingly, the contested feature may potentially become relevant for the assessment of inventive step, as well as for the question of sufficiency of disclosure regarding the calculation of locations of the X-ray generator. Hence, as submitted by the appellant, the undisclosed feature added to each of claims 1 and 4 provides a technical contribution to the subject-matter of the claimed invention within the meaning of point 2 of the order of G 1/93. For this reason alone, the respondent's reference to G 1/93 cannot establish compliance with Article 123(2) EPC.
3.4 For the sake of completeness, the Board notes that T 768/20, Reasons 2.2.1, states that point 2 of G 1/93 seems to address undisclosed disclaimers, which were examined in greater detail by later decision G 1/03. The present Board further notes that the allowability criteria according to point 2 of the order of G 1/93 are different from those laid down for undisclosed disclaimers in G 1/03. Accordingly, an undisclosed disclaimer can comply with the criteria according to point 2 of G 1/93 without complying with the (stricter) criteria set out in G 1/03. In the Board's view this can only mean that, to the extent that point 2 of G 1/93 concerns undisclosed disclaimers, it must be considered to have been superseded by the Enlarged Board's later decisions G 1/03 and G 1/16 (the latter reconfirming the applicability of G 1/03 to undisclosed disclaimers). In any case, the amended feature under consideration does not concern an undisclosed disclaimer as per G 1/03.
3.5 Moreover, regardless of whether or not point 2 of G 1/93 addresses undisclosed disclaimers, it concerns amendments in the form of "a feature which has not been disclosed in the application as filed". Pursuant to G 1/93, such an amendment can still be allowable under Article 123(2) EPC if the criteria referred to in point 2 of G 1/93 are fulfilled. Hence, to the extent that point 2 of G 1/93 addresses amendments other than undisclosed disclaimers, this would establish a second exception to the gold standard as set out in G 2/10 and G 2/16, i.e. an exception in addition to the one concerning undisclosed disclaimers under G 1/03. Also in this regard, the Board refers to T 768/20, Reasons 2.2.1, in which it was stated that the case law of the Enlarged Board of Appeal does not seem to provide for any further exception to the gold standard.
3.5.1 It follows that the respondent's line of argument based on G 1/93 cannot succeed.
4. Conclusion
The main and only claim request comprises added subject-matter and infringes Article 123(2) EPC. The patent is thus to be revoked.
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