T 0257/24 - Amended description, support under Art. 84

Key points

• A case with description amendments, Art. 123(2) and the support requirement of Art. 84. 
• This is an appeal against a decision to refuse a patent application.
• "The main request was filed with a letter dated 11 August 2021. It includes an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit. The main request further includes amended pages 12 to 14 of the description in which, additionally, new figure 4 is described in a manner identical to originally filed figure 3, albeit replacing parallel LC resonant circuit with series LC resonant circuit."
• "The Board is not persuaded by the appellant's argument that page 13, lines 6 to 11 of the application as filed directly and unambiguously discloses, as an alternative to the embodiment of figure 3, a complete embodiment in which the resonant circuit comprises a capacitor and an inductor connected in series."
• "The Board also does not agree with the appellant that the original application contains an evident error in figure 3 and page 10 whose correction necessarily yields a resonant circuit comprising a capacitor and an inductor connected in series. "
• "It follows that the new figure 4 and description passages of the main request and of auxiliary requests 3, 6, 9, 13 and 14, as well as the claims of auxiliary request 12, insofar as they introduce a concrete series-LC embodiment, add subject-matter extending beyond the content of the application as filed.  
• "Auxiliary request 15 corresponds to the application documents as published. The objections under Article 123(2) EPC directed to added figure 4 and the amended description are therefore irrelevant for that request. However, the objections under Article 84 EPC [see below] remain valid. The published claims still define the grounding merely as comprising a "resonant circuit ... resonating at the first undesired frequency", without specifying the technical features necessary to delimit the claimed solution in a manner supported by the description. Since the description as published discloses only the specific parallel-LC embodiment, auxiliary request 15 likewise lacks support in the description and omits essential features. "
• Regarding Art. 84: "The Board agrees with the examining division that, in the context of the claimed invention, the broad term "resonant circuit" is not supported by the description and that essential technical features are missing from the independent claims, contrary to Article 84 EPC. The application as filed describes only one detailed embodiment of the resonant circuit, namely a circuit with a capacitor and an inductor arranged in parallel. No further concrete example of a resonant circuit at the claimed grounding location is disclosed. The claims, however, are not restricted accordingly and cover an unjustifiably broad range of possible resonant circuits. It is therefore not clear from the claim wording which specific circuit realisation is meant to solve the identified technical problem."
• "Nor can an unduly broad claim be rendered compliant with Article 84 EPC merely if the skilled person disregarded certain embodiments as unsuitable. The requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240257eu1