T 1260/23 - Clarity and preferred features

Key points

• Claim 5 as granted: "5. The method of claim 4, wherein the soil and/or moisture resistant formulation is an aqueous polymer dispersion comprising dispersed particles having average particle sizes ranging from about 50 to about 150 nanometers, preferably wherein the aqueous polymer dispersion comprises from about 10 to about 40 % by dry weight of resin particles or solids selected from the group of polyurethane resins, polyether-urethane resins, urethane-acrylic resins, and mixtures thereof." 
• Claim 4 as granted " The method of claim 1, wherein the soil and/or moisture resistant formulation is an aqueous formulation containing one or more thermoplastic resins selected from the group of resins having an ester bond, polyurethane resins, functionalized polyurethane resins, and copolymers and mixtures thereof."
• Is the preferred feature of claim 5 open to the examination of clarity in opposition?
• The OD considered claim 1, amended with the mandatory and the preferred feature of claim 5 (and the feature of claim 4), to be unclear.  " The objection was based on an alleged ambiguity arising from the definition of two lists of polymers in claim 1, with the first including a broad reference to "resins having an ester bond" [i.e., former claim 4], and the second focusing on more specific chemical groups [i.e., the preferred list of claim 5]. According to the decision, it was unclear whether the second list was intended to limit the scope of all the groups in the first list, or simply to propose specific forms for some of them"
• The Board:  "the introduction of certain features by means of the term "preferably" merely indicates that they are optional, thereby rendering the defined subject-matter equivalent to that of an additional dependent claim. As argued by the proprietor, this corresponds to the case described in Reasons 3(a) of G 3/14 (the so-called "Type A(i)" cases), and is therefore not open to clarity objections during opposition or opposition-appeal proceedings."
• It is nice that the Board treats preferred features as "equivalent to that of an additional dependent claim" for the purposes of G 3/14 because you don't have to pay claim fees for preferred features.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231260eu1