T 2548/19 - The opportunity of cutting down the claims

Key points

• "3. According to the established case law, the skilled person should try, in a constructive way, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Case Law of the Boards of Appeal, 10th edition, 2022, II.A.6.1)."
• "6. It has to be noted, however, that whereas in the embodiment the control units are embodied as control "cards", there is no such limitation in claim 1. Also, whereas in the embodiment there is a control card for each pair of independent capstans 14, there is no such limitation in claim 1. According to established case law, for the purposes of judging novelty and inventive step, Article 69 EPC and its Protocol cannot be relied on to read into a claim an implicit restrictive feature that is not suggested by the explicit wording of the claim. In proceedings before the EPO, where the patentee has the opportunity of cutting down the claims to accord with stricter limits given in the description, the scope of a claim should not be cut down by implying into it features which appear only in the description, as this would deprive claims of their intended function (Case Law, II.A.6.3.4)."
• 
  

• EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t192548eu1