T 0602/24 - Who decides what features are essential?

Key points

• The Board, in translation: "The objection of lack of "essential features" raised by the Examining Division with reference to Article 84 EPC can only be understood to mean that claim 1 of the main request lacks "essential features" within the meaning of the case law"
• "An analysis of the decisions cited in these parts of the CLBA shows that the term "essential features" is not accorded a uniform meaning in case law. This is due not only to the application of different legal bases for such a requirement (clarity of the claim or support by the description), but also to the criteria against which the absence of "essential characteristics" must be assessed"
• " The Examining Division's rejection of the independent claim for lack of essential features with reference to Article 84 EPC is not based on a lack of formal support for claim 1 in the description, but rather evidently on an insufficient disclosure of its subject-matter within the meaning of Article 83 EPC. "
• "Such an objection based on Article 84 EPC is, in the Board’s view, untenable in the light of the purpose of Rule 43 EPC and recent case law, as will be shown below."
• " since, under Article 84 EPC, the claims define the matter for which protection is sought ("l'objet de la demande pour lequel la protection est recherchée"), i.e. the subject-matter formulated by the applicant for which a European patent is sought, the essential features of the invention must, according to Rule 43(3) EPC, be those which the applicant considers to be essential for the patent protection sought and not those which the examining division considers sufficient to satisfy substantive requirements."
• " The possibility of rejecting claims which cannot withstand substantive scrutiny because they are unreasonably broad, for the same reasons under Article 84 EPC, is also not in line with the "travaux préparatoires" of the EPC 1973 and the EPC 2000, as is clear from decisions T 1020/03 and G 3/14" (follows an analysis)
• " In view of the meaning to be given to the expression "essential features" in Rule 43(3) EPC, namely the features which the applicant considers to be essential for obtaining patent protection, and the indication in recent case law relating to the "travaux préparatoires" to the EPC 1973 and the EPC 2000 that the breadth of the claim does not provide a basis for an objection under Article 84 EPC on substantive grounds, the Board concludes that the Examining Division's rejection of the main request on the ground, with reference to Article 84 EPC, that its claim 1 does not contain all the essential features relating to the achievement of a glass transition temperature (Tg) of more than 60°C for the crosslinked composition is not convincing."
• A very welcome decision. Art 84, second sentence, is no bypass to the proper examination of novelty, inventive step, and sufficiency. 
• 
  
• The Board does not remit the case but examines Art. 83 and novelty.
• Claim 1 is directed to a manufacturing process and specifies inter alia that the product   has a glass transition temperature Tg above 60 °C.
• The Board reviews the facts of the case and concludes: "Under these circumstances, the Board is convinced that the skilled person is able, with a few experiments, to adjust the Tg of the cross-linked polymer to a value above 60°C."
  
• "The Examining Division's rejection of the main request is based on the absence of features in claim 1 that enable a crosslinked composition with a Tg above 60°C to be obtained. The fact that not all features defined to satisfy this requirement are present in claim 1 is not sufficient to conclude that the claimed subject-matter is insufficiently disclosed. Rather, it must be examined, taking into account the principle set out in point 4 above, whether the application contains a technical teaching that enables the skilled person to satisfy this functional feature without undue burden."
• Indeed, the nature of the claims is not that of a tutorial.
• Is it all good news for the applicant? No: the Board sets up the novelty/sufficiency squeeze.
• "In view of (...) the teaching of the application according to which the Tg can be influenced via the choice of polyol or polyisocyanate components or the crosslinking density (see point 4.2 above [i.e., the reasoning on sufficiency]), the Board considers it credible that the composition described in Example 3 of D6, which concerns a similar composition with a 2,2'-MDI component and a triol with a molecular weight of 260, necessarily leads to a Tg of the crosslinked composition which is in the claimed range above 60°C."
• " Therefore, in the absence of evidence to the contrary, features (8) and (9) do not constitute a distinguishing feature vis-à-vis D6. Should the applicant provide valid reasons or evidence to the contrary that features (8) and (9) constitute distinguishing features of the claimed process vis-à-vis Example 3 in D6, this would constitute a change of fact, so that the Examining Division would no longer be bound by the board's assessment as to the fulfilment of the two features for the analysis of inventive step, but also as to the feasibility of the present invention with regard to achieving features (8) and (9)."
• Not the subtle difference between res judicata and the binding effect of the ratio decidendi here. 

EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t240602du1