T 0712/21 - The inherent limitations of technical language

Key points

• Claim 1 of this examination appeal is directed to "1. A process for producing biofuel or biofuel components, comprising:  .... wherein the feed material is contacted, in at least one catalyst bed..., with a combination of hydrodeoxygenating (HDO) and hydrodewaxing (HDW) catalysts"
• " The examining division argued that Article 84 EPC was not satisfied because the invention was defined in terms of a result to be achieved, namely hydrodeoxygenation (hereinafter "HDO") and hydrodewaxing (hereinafter "HDW") steps, for which no indication was given as to the extension of the desired reactions. According to the examining division, in order to meet the requirements of Article 84 EPC, the claim should define all the essential features for obtaining these results, i.e. for carrying out the HDO and the HDW steps."
• "2.4.2 In the Board's view the features HDO and HDW also meet the requirement of clarity under Article 84 EPC, and in this respect, it is important to emphasise the differences between lack of clarity and breadth of the claims. A feature may be considered to be unclear if its boundaries are diffuse, leaving the reader in doubt as to whether certain embodiments fall within or outside the scope of protection. This generally occurs when the feature is defined in confusing or incomplete terms (e.g. an ill-defined parameter) and/or when it is inherently unsuited for providing a well-defined scope (e.g. relative terms)."
• "On the contrary, features with generally accepted meanings shouldn't be considered unclear just because they are broadly defined. The confusion between breadth and lack of clarity arguably results from the minor ambiguities found at the edge of the scope defined by broad technical terms. For instance, one could question whether the term "furniture" encompasses household accessories or decorative elements. Similar ambiguities can arise with simple terms like "window," which might be difficult to distinguish from certain elements like patio doors with a framed glass."
• "In the present case, it is undisputed that the terms "HDO" and "HDW" have a generally accepted meaning in the underlying technical field. Therefore, although it may be argued that the scope of these features could overlap with that of similar processes (e.g. does a hydrotreating process fall within or outside the scope of HDO?, or does a hydroisomerisation step fall within or outside the scope of HDW?), such challenges arise not due to a faulty or incomplete definition, but because language can't comprehensively capture every detail of real-life objects or processes, an issue which becomes more pronounced when features are broadly defined."
"The Board therefore considers that the basic question to be asked is whether the vagueness of the scope of protection is the result of an incorrect, incomplete or relative feature, or whether it is simply the result of the inherent ambiguity of technical terms. In the present case, the Board concludes that the features HDO and HDW would be clear to a person skilled in the art and that any ambiguity in distinguishing them from other similar processes should be attributed to the inherent limitations of technical language."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t210712eu1

2. New main request - Article 84 EPC

2.1 While the claims of this request have been filed for the first time at the appeal stage, the Board notes that the objections raised by the examining division in the appealed decision would still apply to claim 1 at issue.

2.2 The examining division argued that Article 84 EPC was not satisfied because the invention was defined in terms of a result to be achieved, namely hydrodeoxygenation (hereinafter "HDO") and hydrodewaxing (hereinafter "HDW") steps, for which no indication was given as to the extension of the desired reactions. According to the examining division, in order to meet the requirements of Article 84 EPC, the claim should define all the essential features for obtaining these results, i.e. for carrying out the HDO and the HDW steps.

2.3 The objection of the examining division appears to have two different implications:

On the one hand, since the HDO and HDW seek to limit the scope in terms of a result to be achieved, namely a chemical reaction leading to certain products, the claim should also define the degree to which such results are achieved and/or all aspects considered essential for carrying out these chemical reactions. In the absence of such details, the claim would not include all the essential features of the invention, contrary to the requirements of Article 84 EPC (i.e. support by the description) in conjunction with Rule 43(3) EPC.

On the other hand, the above objection also seems to imply that the HDO and HDW features should be considered as unclear under Article 84 EPC, because there is no indication as to how they should be identified, i.e. how much HDO or HDW reactions are required for a process to be considered as falling under these features. In such circumstances, HDO and HDW may be indistinguishable from other hydrotreatment processes.

2.4 The Board has however concluded that the subject-matter of claim 1 at issue meets the requirements of clarity and support by the description under Article 84 EPC for the following reasons:

2.4.1 First, it is to be noted that HDO and HDW are well-known chemical processes in the field of petrochemistry. Thus, the features relating to these processes - i.e. "HDO and HDW catalysts" or "treating the material... to cause hydrodeoxygenation, isomerization and cracking" - should be treated as allowable functional definitions rather than as results to be achieved. In this respect, it should be noted that "result to be achieved" objections usually concern situations where the claim defines a result or effect, but omits the feature(s) required (according to the application or patent) to achieve it. In other words, an objection of essential feature(s) missing should in principle be raised where a claim defines an effect or result which is technically challenging in the sense that a skilled person reading the claim and applying common knowledge would not know how to achieve it without the information provided by the omitted (essential) feature(s). This is not the case with the process of claim 1 at issue, since the claimed subject-matter defines the active metals in the catalysts and the operating ranges necessary to carry out the HDO and HDW reactions, and so claim 1 includes all the essential features of the invention.

2.4.2 In the Board's view the features HDO and HDW also meet the requirement of clarity under Article 84 EPC, and in this respect, it is important to emphasise the differences between lack of clarity and breadth of the claims. A feature may be considered to be unclear if its boundaries are diffuse, leaving the reader in doubt as to whether certain embodiments fall within or outside the scope of protection. This generally occurs when the feature is defined in confusing or incomplete terms (e.g. an ill-defined parameter) and/or when it is inherently unsuited for providing a well-defined scope (e.g. relative terms).

On the contrary, features with generally accepted meanings shouldn't be considered unclear just because they are broadly defined. The confusion between breadth and lack of clarity arguably results from the minor ambiguities found at the edge of the scope defined by broad technical terms. For instance, one could question whether the term "furniture" encompasses household accessories or decorative elements. Similar ambiguities can arise with simple terms like "window," which might be difficult to distinguish from certain elements like patio doors with a framed glass.

In the present case, it is undisputed that the terms "HDO" and "HDW" have a generally accepted meaning in the underlying technical field. Therefore, although it may be argued that the scope of these features could overlap with that of similar processes (e.g. does a hydrotreating process fall within or outside the scope of HDO?, or does a hydroisomerisation step fall within or outside the scope of HDW?), such challenges arise not due to a faulty or incomplete definition, but because language can't comprehensively capture every detail of real-life objects or processes, an issue which becomes more pronounced when features are broadly defined.

The Board therefore considers that the basic question to be asked is whether the vagueness of the scope of protection is the result of an incorrect, incomplete or relative feature, or whether it is simply the result of the inherent ambiguity of technical terms. In the present case, the Board concludes that the features HDO and HDW would be clear to a person skilled in the art and that any ambiguity in distinguishing them from other similar processes should be attributed to the inherent limitations of technical language.

The Board also notes that the above conclusions are consistent with, and to some extent explain, the well-established practice of giving technical terms their broadest reasonable technical meaning when assessing patentability.

2.5 The requirements of Article 84 E