T 1464/21 - Implicit disclosure and interpreting a cross-sectional drawing

Key points

• I think it is important to carefully distinguish between inherent features and implicit disclosure.
• "Furthermore, it is established jurisprudence of the boards of appeal that a disclosure can be implicit, where an implicit disclosure relates solely to matter which is not explicitly mentioned but is a clear and unambiguous consequence of what is explicitly mentioned (Case Law of the Boards of Appeal of the European Patent Office, 10th edition, July 2022, II.E.1.3.3). 
• The Board uses "clear and unambiguous consequence "
• Note, the different phrase "inevitable consequence" could be appropriate for inherent features : possibly with a focus on unpredictable inevitable consequences. Such features need not be clear from a document itself (e.g. reworking a described chemical experiment may be necessary  to find out exactly what product is obtained). (edits in italics)
• "Fig. 3A shows only a cross-section of the objective and therefore only a cross-section of the frame 30. However, the person skilled in the technical field under consideration would understand in the technical context of document D1, and in particular in view of Fig. 3A together with the cylindrical symmetrical configuration of the optical system represented in Fig. 3B, that a "frame" configured to fix the lens 29A to the deflection prism 29B (D1, column 4, lines 23 to 25) would - as held by the opposition division in its decision - be a frame encircling the lens. The board concurs in this respect with the appellant's view that it would be unrealistic ("lebensfremd") that the skilled person would construe the disclosure of document D1 relating to the frame as possibly only involving a frame constituted by two distinct portions separated from each other. For these reasons, in the board's view, document D1 discloses implicitly that the frame 30 encircles the lens 29A along its whole perimeter as this is a clear and unambiguous consequence of what is explicitly mentioned."
• Comment: D1 is a patent document, does this mean that an amendment of D1 to explicitly mention the feature ("the frame 30 encircles the lens 29A along its whole perimeter ") would comply with Article 123(2) ?

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211464eu1

Furthermore, it is established jurisprudence of the boards of appeal that a disclosure can be implicit, where an implicit disclosure relates solely to matter which is not explicitly mentioned but is a clear and unambiguous consequence of what is explicitly mentioned (Case Law of the Boards of Appeal of the European Patent Office, 10th edition, July 2022, II.E.1.3.3). Fig. 3A shows only a cross-section of the objective and therefore only a cross-section of the frame 30. However, the person skilled in the technical field under consideration would understand in the technical context of document D1, and in particular in view of Fig. 3A together with the cylindrical symmetrical configuration of the optical system represented in Fig. 3B, that a "frame" configured to fix the lens 29A to the deflection prism 29B (D1, column 4, lines 23 to 25) would - as held by the opposition division in its decision - be a frame encircling the lens. The board concurs in this respect with the appellant's view that it would be unrealistic ("lebensfremd") that the skilled person would construe the disclosure of document D1 relating to the frame as possibly only involving a frame constituted by two distinct portions separated from each other. For these reasons, in the board's view, document D1 discloses implicitly that the frame 30 encircles the lens 29A along its whole perimeter as this is a clear and unambiguous consequence of what is explicitly mentioned.

Therefore, the frame 30 of document D1 constitutes a rim, and in particular an outer ring (document N6) or an "Einfassung" (document N5), "encompassing the concave optical surface" of the lens as required by feature 4 of claim 1.