T 0746/22 - On headnotes and the actual text (and optical lenses)

Key points

• One of the curious aspects of the case law is that the headnotes (catchwords) sometimes can not be found so clearly in the actual text of the decision. I'm not privy to who drafts the headnotes and when (does the entire Board approve of them?). Perhaps someone can share an insight in the comments.
• Headnote: "In a claimed optical lens system comprising a plurality of lenses, it must be examined whether the feature distinguishing the claimed lens system over the prior art has a technical effect. If no effect beyond an arbitrary modification of the prior art lens system can be attributed to the distinguishing feature over the whole scope of the claim, the claimed lens system does not involve an inventive step. See Reasons, point 1.5."
• This headnote is a bit particular in that, except for the part in italics, it is just a statement of established case law that arbitrary variants are not inventive. What is so special about optical lens systems?
• Turning to point 1.5 in its entirety:  "As for instance explained in T 176/97, point 4.4 of the Reasons for the Decision, if the distinguishing feature of a claim has no effect of technical relevance on the claimed subject-matter and does not credibly solve an objective technical problem, then no inventive step can be based on it. In the present case, the objective lens system of claim 15 is considered to be no more than an arbitrary modification of the objective lens system of D4 which does not involve an inventive step within the meaning of Article 56 EPC."
• On the other hand, point 1.3.2 contains some reasoning that could be very important for anyone prosecuting patents in the field of optical lens systems: "merely defining a minimum contribution of the optical power of a lens in a group of five lenses (all of which are barely defined by optical parameters) has no relevant technical effect on any of the optical characteristics of the objective lens system, such as reducing the total optical length, reducing the optical aberrations, improving the optical quality or increasing the field of view. Indeed, all of these optical characteristics of the objective lens system result from precise optical parameters of the objective lens system (e.g. radii of curvature of the constituting lenses, lens materials, distances between the lenses). In order to provide at least a contribution to a well-defined optical characteristic of the objective lens system, it would be necessary that the claimed objective lens system be defined in greater detail by optical parameters, such as the radii of curvature of the lenses, the relative positions of the lenses and the aperture stop, the material of the lenses. "
• The Board adds, for good measure: "the fact that the scope of protection of a claim comprising all relevant optical parameters necessary to achieve a desired optical characteristic of a lens design is rather limited cannot generally be a reason for omitting the optical parameters from the claim".
•  A clear instruction to those patent attorneys working in the field. Whether it is justified or too strict, I can't judge. That is for those intimately familiar with the technology to consider.

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220746eu1