Key points
- This is the third appeal in this opposition case (opposition received: 2011), and concerns only the adaptation of the description to the amended claims that were held allowable in the first appeal decision. The OD took the first decision in 2013. In 2019, the Board decided to maintain the patent in amended form (those were the days, six years in appeal). Petition for review R 15/19 was allowed, and in 2023 the Board issued a new decision, again to maintain the patent with amended claims and a description to be adapted, and remitted the case to the OD. The OD decided on the adapted description in 2024. The third appeal followed (by the opponent), and the third appeal decision was issued in May 2026 (hence, the adaptation of the description took three years, due to the Board's choice to remit).
- The patent was maintained with only the device claims. The method claims were deleted. The proprietor deleted a couple of paragraphs in the description, but kept one paragraph. According to the Board, that paragraph pertained in the application as filed only to the embodiment of the (now deleted) method claims. Moreover, the device claims and the former method claims differed in their technical features on precisely the point of that paragraph. Therefore, keeping the paragraph in violated Article 123(2), according to the Board.
- The Board: "the impermissible extension does not arise from the mere fact that individual paragraphs have been deleted, but from the fact that the selective retention of paragraph [0042] establishes a connection between the temperature compensation described therein and the claimed fire detector, which is not immediately and unambiguously apparent to the person skilled in the art from the original disclosure."
- The lower-ranking AR with paragraph 42 also deleted was allowed by the Board, but procedurally that was not trivial.
Machine translation
7. First auxiliary request - Article 123 (2) EPC
7.1 In the first auxiliary request, which was introduced into the appeal proceedings for the first time with the reply to the appeal, a selective deletion of paragraphs was carried out, whereby paragraph [0042] was not deleted. Paragraph [0042] contains, among other things, the statement that "According to a further embodiment of the invention [...] the temperature measurement signal [...] is used for a compensation of temperature-dependent effects of the optical measuring device".
7.2 The Board agrees with the appellant that the failure to delete paragraph [0042] in the first auxiliary request constitutes an extension which is contrary to Article 123 (2) EPC.
7.3 Contrary to the arguments of the respondent and the reasons given in the contested decision, it is incorrect to assert that paragraph [0042] discloses device features of the claimed fire detector. The disputed paragraphs [0031] to [0045] are contained within a section of the description which, without exception, reiterates the wording of the granted process claims and explains their technical effect. Although paragraph [0042] does not explicitly refer to a process, the Board is convinced that this is unequivocally clear to the person skilled in the art from the overall context of paragraphs [0031] to [0045]. This is all the more true since paragraph [0042] is almost identical in wording to granted process claim 10. The Chamber is therefore unable to see why it should be immediately and unambiguously apparent to the person skilled in the art from paragraphs [0031] to [0045] that the features and effects of the previously claimed method specified therein should be reflected in device features of the fire detector.
7.4 To the extent that the respondent argues that no substantive connection or inseparability of paragraphs [0031] to [0045] can be inferred from the consecutive numbering of these paragraphs, the Board agrees with this view in principle. However, the decisive factor is not the formal numbering of the paragraphs in the description, but rather the technical content and the context of disclosure of the passages in question. Even with consecutively numbered paragraphs, it must be examined in each case whether selective deletions create new technical information or place existing information in a changed technical context and thereby acquire a different meaning.
7.5 In the present case, the impermissible extension does not arise from the mere fact that individual paragraphs have been deleted, but from the fact that the selective retention of paragraph [0042] establishes a connection between the temperature compensation described therein and the claimed fire detector, which is not immediately and unambiguously apparent to the person skilled in the art from the original disclosure.
7.6 While it is true that the disputed paragraph [0042] begins with "[g]arising from a further embodiment of the invention", this is not equivalent to a disclosure relating to a device. The fact that the category of the invention is not specified in paragraph [0042] does not unambiguously mean that the content of paragraph [0042] can be interpreted as a feature of the claimed fire detector. This is particularly true because, as correctly argued by the appellant, the wording of paragraph [0042] is almost identical to the wording of granted claim 10 of the method.
7.7 Contrary to the respondent's arguments, it is not sufficient for the present examination for inadmissible amendments to establish that paragraph [0042] was originally disclosed. This is undisputed. However, the appellant argues that the selective deletion of paragraphs [0031] to [0035] as well as [0044] and [0045] constitutes an inadmissible amendment.
7.8 In the Board's view, recourse to the A1 document (EP 2 091 029 A1) is no more necessary than recourse to the application as filed, since the disclosure of paragraphs [0031] to [0045] of the B1 document corresponds to the corresponding paragraphs of the A1 document and the corresponding pages of the application as filed. The only issue here is to determine whether the amendments made by the respondent to the original disclosure of paragraphs [0031] to [0045] infringe Article 123(2) EPC.
7.9 The Board does not consider the connection between the disclosure of paragraph [0022] and that of paragraphs [0042] and [0043], as asserted by the respondent and also affirmed in the contested decision, to be established. With regard to the fire alarm, the original disclosure contains no indication whatsoever that the temperature measurement signal used as an additional hazard detection input by the claimed fire alarm can also be used for temperature compensation of the optical path. As correctly noted by the appellant, the description of the fire alarm and the description of the method for detecting a hazardous situation relate to completely different objects, which process different signals and perform different steps.
7.10 The fire detector claimed in claims 1 to 7, which are maintained, is consistently described as using the temperature measurement signal as an additional hazard detection input. In contrast, the formerly claimed method consistently describes a hazard detector with only a single signal input and a measuring device whose optical path is temperature-compensated. The connection between the fire detector and the method, which the respondent argues is also based on the use of identical terms, is not convincing to the Board. The respondent has not identified any passage in the patent or the filed application from which it could be directly and unambiguously inferred that, in addition to temperature compensation, the temperature measurement signal is actually used as an additional hazard detection input in the method. This is particularly not immediately and unambiguously apparent from paragraph [0017] of the patent specification, to which the respondent referred in its letter of September 29, 2025. Paragraph [0017] makes no mention of temperature compensation, let alone a combination of temperature compensation with its use as an additional hazard detection input. Whether differing terms are used synonymously for the method on the one hand and the fire detector on the other is irrelevant in this context. The Board therefore agrees with the appellant that the connection created by the deletion of paragraphs [0031] to [0035] and [0044] and [0045] between the now claimed fire detector and the temperature compensation originally disclosed for the formerly claimed method goes beyond the content of the application as filed.
7.11 The Board also examined the respondent's objections regarding the alleged lack of or belated substantiation of certain arguments by the appellant, in particular insofar as these relate to the use of the term "immediate predecessors" or to concordances submitted only later. However, these objections would not lead to the challenged amendments being disregarded. The core of the objection under Article 123(2) EPC – namely, the question of whether a new technical relationship is created by selective deletions of the description – can already be examined on the basis of the patent description itself and requires no further terminological clarification.
7.12 Even if individual terms or aids such as concordances were disregarded, this would not change the fact that, on the basis of the documents in the proceedings, the Board is convinced that the amendments made go beyond the content of the application as filed.
7.13 In light of all this, the Board has concluded that the subject matter of claim 1 of the first auxiliary request infringes Article 123(2) EPC.
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