T 0935/14 - Broad but clear vs. broad and vague

 Key point

• In this examination appeal, the question is Article 84 of broad claims.
• “10.2 The Board agrees with the appellant [applicant] that broad features may be considered clear, but only under the proviso that the borders of the - broad - scope of protection can be clearly inferred by the skilled person. This makes the distinction between broad but clear and broad and vague. If a feature formulation is such that some further technical features appear to be implied, particularly in view of the features' technical function, but it is not clear what those precisely are, then the claimed feature is vague and not clear.”
• The Board finds the claims to be broad and vague.

T 0935/14 -

https://www.epo.org/law-practice/case-law-appeals/recent/t140935eu1.html

10.2 The Board agrees with the appellant [applicant] that broad features may be considered clear, but only under the proviso that the borders of the - broad - scope of protection can be clearly inferred by the skilled person. This makes the distinction between broad but clear and broad and vague. If a feature formulation is such that some further technical features appear to be implied, particularly in view of the features' technical function, but it is not clear what those precisely are, then the claimed feature is vague and not clear.

11. In the present case, the claim fails on more than one account in view of the above considerations.

[...]

11.2 A minimal claim construction, i.e. with no further implied features, would also be technically inconsistent: for instance, in that a hosted account is created to be used for messaging by the terminal, but is actually not used (point 7 above). This raises the question as to which other features may be implied, either as message formatting, or upon the server side, or both, so that the account is used.

11.3 The (intended) answer may lie in the account creation steps. But, as noted above, the creation steps are vaguely defined. For instance, under a literal reading, an account creation wherein the server merely checks whether the identification data relating to the terminal device is properly formatted falls under the claim scope. But then, the question arises how this account can be used, as required by the claim? For the claim to make technical sense, some further technical features need to be read into the claim. It is not clear which those are.

T 2015/20 - Only examples for other disease

Key points

• This is an appeal against a refusal. The Examining Division held that “The application did not provide any kind of evidence ... which made it credible that asthma could be treated with a metered nominal dose of 400 myg aclidinium by inhalation”, refusing the application under Art.83 EPC.
• “The application only presented experimental results concerning treatment of COPD, whereas it was part of the common knowledge ... that COPD and asthma are distinct diseases with different mechanisms involved.”
• The Board reviews D5 and finds that D5 “actually confirms, that asthma is influenced by cholinergic mechanisms, be it to a lesser extent than COPD” and that “D5 is therefore not considered to cast doubt on the statement in paragraph [0003] of the application that the defined dosing of aclidinium bromide is most effective for treating respiratory disorders, in particular asthma and COPD”.
• “in the present case the defined utility of aclidinium in treatment of asthma does not go against any prevailing opinion in the prior art. In this context the Board considers the statement in the application, that the treatment of respiratory disorders, particularly asthma and COPD, with aclidinium is most effective upon administration by inhalation in a dosage of about 400 myg metered nominal dose (paragraph [0003]) to represent a significant technical teaching, which is far from an invitation to perform a research programme and which does not prima facie lack plausibility. This teaching is as such falsifiable, in the sense that it is open to challenge, and is therefore considered to represent information in the form of a specific technical contribution which goes beyond some insufficient verbal statement. ”
• Hence, if a statement in the description is “as such falsifiable”, the statement “goes beyond some insufficient verbal statement” even that statement is not an experimental example, according to the present Board.
• For inventive step: “ the Board takes the view that it is reasonable to assume that the optimized dose for relief of patients suffering from COPD also represents an optimized dose for relief of patients suffering from asthma” in view of the closest prior art D1 (regarding aclidinium for astma, but lacking the claimed dose) and D5 as well as the examples of the application regarding COPD.
• The Board finds the claims to be sufficiently disclosed and also to be inventive. After reaching that conclusion and after an extensive review of the case law, the Board adds (rather as an obiter): “The Board is aware of concerns, that patents in the field of medicine should not be granted on the basis of pure speculation. The Board observes in this context that claims in patent applications typically involve generalisations which inherently include an aspect of speculation. Patent applications in the field of medicine represent in this respect no exception.
   [The Board's case law regarding] the assessment of sufficiency of disclosure and inventive step specifically take account of the technical contribution actually disclosed in a patent application to avoid patent protection resulting from unreasonable speculation on the basis of propositions that are prima facie implausible.”
• One may ask what was the “the technical contribution actually disclosed in [the]  patent application”: the examples regarding COPD only, or also the statement in paragraph [0003] regarding asthma? The Board based on a detailed analysis appears to conclude that the statement in combination with the examples is also a ‘technical contribution’.
• I note that in this case, the claims (asthma) do not encompass the examples (COPD). So the present claims involve something of a shift-generalisation.

EPO Headnote

Claims in patent applications typically involve generalisations which inherently include an aspect of speculation. Patent applications in the field of medicine represent in this respect no exception. The approaches developed in the jurisprudence of the Boards of Appeal of the EPO for the assessment of sufficiency of disclosure and inventive step specifically take account of the technical contribution actually disclosed in a patent application to avoid patent protection resulting from unreasonable speculation on the basis of propositions that are prima facie implausible (see also points 2.6, 2.7 and 5 of the Reasons).

2. Sufficiency

2.1 Article 83 EPC requires that the application discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

According to established jurisprudence of the Boards of Appeal of the EPO a convincing objection of lack of sufficiency of disclosure presupposes that there are serious doubts, substantiated by verifiable facts, on the possibility for a skilled person to carry out the invention as claimed. (see Case Law of the Boards of Appeal of the EPO, 9th Edition 2019, sections II.C.7.1.4 and II.C.9; see also Guidelines for the Examination in the EPO, October 2019, F-III,1).

T 0901/16 - Breadth of claim 1

Key points

• In this examination appeal, the Board observes as follows:
• " The breadth of claim 1 however does not render it unclear in the present case. Article 84 EPC is essentially concerned with setting clearly defined limits on the scope of protection conferred as well as indicating the essential technical features of the solution." 
• "In the present case, the wording of the features of claim 1 is technically and linguistically not ambiguous, and the broad claim is also supported by the numerous embodiments set out in the description.
• " claim 1 defines how the input signals, the prototype signal, the non-linear function and the linear estimate interact to generate the output signal. These are the essential features which result in an improved performance as regards the presence of sonic artefacts and/or processing latency []" 
• " it is not necessary, having regard to the requirement of clarity, that every possible embodiment embraced by the claim provide an improved performance, since this is not claimed." 
• The case is remitted to the Examining Division. 

EPO T 0901/16 -  link

The breadth of claim 1 however does not render it unclear in the present case. Article 84 EPC is essentially concerned with setting clearly defined limits on the scope of protection conferred as well as indicating the essential technical features of the solution.

In the present case, the wording of the features of claim 1 is technically and linguistically not ambiguous, and the broad claim is also supported by the numerous embodiments set out in the description. In this latter respect, although embodiments relating to upmixing predominate in the description, there are indications of other applications (cf. page 3, lines 14-21; page 10, line 16 - page 11, line 5). The input signals also need not be a multichannel source (e.g. a stereo signal), but for example may be signals from a microphone array (cf. page 7, line 1).

Further, the problem of "performing upmixing in a manner that accurately renders spatially separated audio channels from a multichannel source" is not the most general problem to which the claimed subject-matter is said to provide a solution, which is "synthesizing output signals that both permit flexible and temporal and/or frequency local processing while limiting or mitigating artifacts in such output signals" (cf. page 3, lines 5-7). Finally, claim 1 defines how the input signals, the prototype signal, the non-linear function and the linear estimate interact to generate the output signal. These are the essential features which result in an improved performance as regards the presence of sonic artefacts and/or processing latency (cf. page 11, lines 3-5), whereby it is not necessary, having regard to the requirement of clarity, that every possible embodiment embraced by the claim provide an improved performance, since this is not claimed.

T 2676/16 - Broad but clear

Key points

• The Board recalls that the clarity requirement of Article 84 EPC does not mean that claims can be refused in examination simply because they are broad.
• “The mere fact that a feature may be implemented in various ways does not necessarily render this feature unclear”.

T 2676/16 -  link


The board further notes with respect to point 2.4 of the reasons of the appealed decision [of the Examining Division] that the mere fact that a feature may be implemented in various ways does not necessarily render this feature unclear.

2.5 Hence, claim 1 of the main request is clear (Article 84 EPC). The same applies mutatis mutandis to independent apparatus claim 7 and the computer-readable memory claim 16. As a consequence, the board is satisfied that claims 1, 7 and 16 of the main request comply with the requirements of Article 84 EPC.

2.6 Furthermore, in view of the above findings, the board is also satisfied that the claimed invention according to the present main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC), contrary to the obiter dicta statement in point 5 of the reasons of the decision under appeal.

T 3003/18 - Why the description must be adapted to the claims

Key points

• The EPO frequently requires that the description is amended to be consistent with the claims as granted or as amended in opposition. But why? E.g. the USPTO does not have such a requirement at all (and in fact, US clients may not always know beforehand how strictly this requirement is applied by the EPO).
• In this opposition appeal, the opponent “submitted that these amendments to the description of the patent as granted were not occasioned by a ground for opposition under Article 100 EPC, and that for this reason the amendments were contrary to Rule 80 EPC.”
• The Board: “compared with claim 1 as granted, present claim 1 has been amended to require that the fiber optic connector of the claimed fiber optic plug [is selected from three particular types of connectors], and that this amendment [of the claim] was occasioned by the grounds for opposition of lack of novelty and of inventive step raised under Article 100(a) EPC by the opponents during the proceedings.” The amendments of the description make the description consistent with the amended claim. 
• The Board: “Furthermore, according to Article 101 (3) EPC the amendments to the patent as granted shall meet the requirements of the EPC, and in particular the requirements of Article 84 EPC according to which the claims shall be supported by the description, together with the requirements of Rule 42 (1) (c) EPC according to which the description shall disclose the invention as claimed.” (emphasis added) 
• Rule 42(1)(c) prescribes that “the description shall ... disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art”.
• Article 84, second sentence specifies that “[The claims] shall be clear and concise and be supported by the description.”. The EPO publication of the EPC does not crosslink Article 84 to Rule 42 or vice versa (link). It's the third requirement of Article 84, second sentence, that matters here ('shall be supported by the description'). 
• Article 101(3) specifies that the "the patent and the invention to which it relates meet the requirements of the [EPC]", not that the “the amendments to the patent as granted shall meet the requirements of the EPC”, but perhaps the present Board tries to reflect the holding of G3/14 that “the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC”
• Upon first reading, the prescriptive part of Rule 42(1)(c) may appear to be the ‘in such terms’ phrase, but the Board leaves out the comma and recognizes an independent requirement that “according to [Rule 42(1)(c)] the description shall disclose the invention as claimed.”
• The 'supported by the description' requirement should of course not be confused with Article 83 EPC or Article 123(2) EPC. 

EPO T 3003/18 -  link



4. Description - Rule 80 and Articles 123(2) and 76(1) EPC

4.1 Amended pages 3 and 4 of the description marked "18:12" correspond to pages 3 and 4 of the description of the patent specification amended as follows:

i) the expressions "according to an embodiment of this invention", "of this invention", and "according to one embodiment of this invention" in the passages in column [0012] and [0014] referring to Fig. 1, 2 and 9 have been deleted; and

ii) the passage in paragraph [0016] reading "[...] depending upon the type of fiber optic connector. Although the fiber optic plug may include a variety of fiber optic connectors including MTRJ connectors, SC-DC connectors, Unicam**TM connectors, SC connectors, LC connectors, and the like, the fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but not of limitation" has been amended to read "[...] depending upon the type of fiber optic connector, the fiber optic connectors being MTRJ connectors, SC connectors, or LC connectors. The fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but falling outside of the scope of the claimed invention."

T 1582/17 - The vagueness has to be lived with

Key points

• In this opposition appeal, sufficiency of disclosure is the issue. 
• " the limitation expressed in the characterising portion of the claim is vague [...] and extremely broad. The vagueness and the breadth of this definition are a matter of clarity and possibly of support by the description (Article 84 EPC), and affect the assessment of novelty. " 
• " Since claim 1 of the main request is the claim as granted, its clarity cannot be examined in opposition/appeal proceedings, but could only have been considered in the examination proceedings. 
• For the examination of the ground of opposition under Article 100(b) EPC the vagueness has to be lived with and the claim has to be interpreted. " 
• Repost - first posted on the wrong date (25 June instead of 26 July)

EPO T 1582/17 - link

3. Main request - sufficiency of disclosure

3.1 The invention of claim 1 does not concern a method but an apparatus. Therefore, in order to carry out the invention it is not necessary to actually "orient a relative position of the prosthetic femoral head to the acetabulum such that the indicia signifies proper relative position of the prosthetic femoral head in the acetabulum". What is necessary instead is to produce a device according to the claim.

[...]

The contentious issue is whether, on the basis of the information in the patent in suit and his common general knowledge, the person skilled in the art would be able to produce a device wherein the indicia "is configured to orient a relative position of the prosthetic femoral head to the acetabulum such that the indicia signifies proper relative position of the prosthetic femoral head in the acetabulum". To answer this question it is necessary to consider which product limitation, if any, is defined by this wording.

[...]

T 2249/16 - Broad but enabled

Key points

• In this examination appeal, the ED found that claim 1 is directed to an "extremely large number of possible compositions". Moreover, the claims were broad compared to the examples. The application was therefore refused under Article 83 EPC.
• The Board: " Dies alleine begründet keine mangelnde Offenbarung." . The Board notes that the description teaches a general concept for preparing the compositions, discusses it in detail and also gives examples.
•  "Die angefochtene Entscheidung führt keinerlei Gründe oder Argumente an, warum ein Fachmann nicht in der Lage sein sollte, das in Anspruch 11 definierte Verfahren auszuführen und demgemäß die in Anspruch 1 definierten Kompositleuchtstoffe zu erhalten." 
• The Board finds Article 83 to be complied with. 
•  The ED had also refused the application for lack of support under Article 84 because a number of the examples would actually be outside the pending claims.
• "  Nach Ansicht der Kammer ist diese Frage jedoch für die ausreichenden Stütze der Ansprüche durch die Beschreibung unter Artikel 84 EPÜ zweitrangig." 
• The ED had also argued that the description "  seien keine ausreichende Stütze für die Ansprüche. Die Ansprüche seien zu breit und beträfen eine Vielzahl möglicher Verbindungen und Verfahren." To me this seems to be a typical "the claims are too  broad" objection. 
• The Board fins this reasoning to be insufficient. " Die Kammer hält diese Begründung nicht für stichhaltig. Die beanspruchten Verfahren und Leuchtstoffe sind als solche in der Beschreibung wörtlich wiedergegeben. Das Herstellungsverfahren für die beanspruchten Kompositleuchtstoffe ist auf Seiten 14-19 in technisch nachvollziehbarer Weise beschrieben. Es wurden von der Prüfungsabteilung keine Gründe angeführt, aus denen hervorginge, dass die Beschreibung technisch unvollständig oder unglaubwürdig wäre. " 
• The ED had also repeatedly referred to Rule 137(5) EPC to challenge claims that were not limited to searched subject-matter. The Board points out (in r.6) that because unity of invention was never objected to, Rule 137(5) first sentence does not apply. The second sentence does not apply because no Communication under Rule 62a or 63 was issued during the search and because the search report had already been drawn up before 1 April 2010. 

EPO T 2249/16 - link

II. Der unabhängige Anspruch 1 des Hauptantrags, auf dem die Entscheidung beruht, lautet wie folgt:

Kompositleuchtstoff, umfassend eine anorganische Matrix und einen organischen Fluoreszenzfarbstoff,
wobei die anorganische Matrix aus einer Verbindung, ausgewählt aus der Gruppe, bestehend aus MgCO3, CaCO3, SrCO3, BaCO3, MgSO4, CaSO4, SrSO4, BaSO4, Mg3(PO4)2, Ca3(PO4)2, Sr3(PO4)2, Ba3(PO4)2, Mg3(PO4)2, LaPO4, ScPO4, GaPO4, InPO4, ZrO(HPO4), ZrO(H2PO4)2, Zr3(PO4)4, einschließlich Zr(HPO4)2 bzw. Zr(H2PO4)4, und Kombinationen davon, aufgebaut ist,
wobei der organische Fluoreszenzfarbstoff eine oder mehrere funktionelle Gruppen, ausgewählt aus Sulfatgruppen, Phosphatgruppen, Phosphonsäuregruppen, Phosphansäuregruppen oder Carboxylatgruppen, aufweist, über welche der Fluoreszenzfarbstoff mittels ionischer Bindung in die anorganische Matrix eingebaut ist,

T 2154/11 - Breadth does not diminish clarity

Key points

• The decision under appeal relieD on the finding that the claims of the main request did not comply with Article 84 EPC due to the "extreme breadth" of the claim wording. 
• "  It is established jurisprudence of the boards of appeal that the clarity of a claim is not diminished by the mere breadth of a term of art contained in it if the meaning of such term - either per se or in the light of the description - is unambiguous for a person skilled in the art ([CLBA] II.A.3.3)." 
• " Hence, the objections of the examining division that the expressions "metadata describing an event", "taking", "connecting" were broad and embraced well-known activities are not considered per se a valid reason for a lack of clarity." 
• " Similarly, the fact that some of these method steps may be understood to refer to "mental acts" or "normal human actions" is no valid reason for a finding of lack of clarity as long as these steps do not give rise to ambiguity, as in the case at hand. If a method step can be interpreted to refer to a normal human activity, then this assessment should be taken into account for novelty and inventive step."
• The Board accepts as technical effect of the distinguishing feature that " information about similar events in other episodes of the television program is retrieved from a website" . The Board does not expressly discuss why this feature is technical. 

Reasons for the Decision

1. The appeal is admissible.

2. The present application

The present application relates to a method and system for retrieving information about television programs.

The invention aims at providing more significant information about the program such as its history or background. Information about a particular character's role in the program, a description of a particular program in a series, a history of a series or a summary of other episodes may be retrieved using one or more tags that provide links to dedicated websites [].

T 0745/11 - Broad but clear

Key points

• The Board reiterates, as established case law, that broad claims are not per se unclear.
• The Board finds that it is not relevant that the term at issue possibly has no clear, unitary, objective and widely accepted definition. The requirement of clarity of Article 84 EPC does not require, that each term used in a claim is entirely clearly defined. Rather, it is desirable to use terms of the art with a precise meaning when formulating the claims. Even the jargon of the art does not, generally, involve a completely clear or formally defined semantics. As a rule, the applicant should have the possibility to define the invention in the claims in the usual language (jargon). In the opinion of teh Board, it is desirable that, if an Examining Division considers the generally used jargon to be unclear, the Examining Division indicates, which specific problem of interpretation or limitation the term at issue causes. 

EPO T 0745/11 - link

Hauptantrag - Klarheit

3. Bei dieser Beschwerde geht es ausschließlich um das Erfordernis der Deutlichkeit nach Artikel 84 EPÜ und insbesondere darum, ob die Zurückweisung der Anmeldung wegen der Verwendung des Ausdrucks "Funktion" in Anspruch 1 gerechtfertigt war.

3.1 In der Entscheidung wird nicht ausgeführt, welche konkreten Auslegungsprobleme oder Abgrenzungsprobleme (zum Beispiel Unsicherheit bei der Abgrenzung gegenüber einem Dokument, das zum Stand der Technik gehört) sich für das beanspruchte Verfahren aufgrund der behaupteten Unklarheit des Begriffs "Funktion" ergeben.

3.2 Die Entscheidung legt auch nicht näher dar, wie eine deutlichere Angabe des Verfahrens hätte erfolgen können. Hierzu wird durch die Prüfungsabteilung ohne weitere Begründung lediglich festgestellt, dass die von der Anmelderin im seinerzeitigen Hauptantrag vorgenommene Einschränkung, dass die technische Funktion "eine elektrische, eine mechanische oder eine optische Funktion" darstellt, nicht dazu beitragen könne, den Funktionsbegriff selbst klarzustellen.

Diese Argumentation deutet darauf hin, dass die Entscheidung den Kontext des für unklar erachteten Begriffs nicht ausreichend berücksichtigt.

3.3 Die Richtlinien für die Prüfung, November 2015, führen unter F-IV, 4.2 zur Auslegung von Ansprüchen folgendes aus:

"Der Wortlaut eines jeden Patentanspruchs ist so zu verstehen, dass sich für die einzelnen Wörter die Bedeutung und die Reichweite ergeben, die sie auf dem betreffenden Gebiet normalerweise haben, es sei denn, die Beschreibung verleiht den Wörtern in bestimmten Fällen durch ausdrückliche Definition oder auf andere Weise eine besondere Bedeutung. [...] Der Patentanspruch muss auch so gelesen und verstanden werden, dass er technisch einen Sinn ergibt."

Nach der ständigen Rechtsprechung der Beschwerdekammern ist die Breite eines Anspruchs jedenfalls nicht mit mangelnder Klarheit gleichzusetzen, ein breiter Anspruch ist somit nicht per se undeutlich (siehe Rechtsprechung der Beschwerdekammern des Europäischen Patentamts, II.A.3.3).

T 0206/13 - Sufficiency and preferred features

EPO T 206/13

For the decision, click here.

Key points

• The present decision shows how to rebut an objection that the claim is too broad under Article 84 EPC.
• The Board states that for sufficiency of disclosure, also the embodiments of dependent claims and of optional features in claims must be disclosed in an enabling way. 

Reasons for the Decision

[...]

3. Main request - Sufficiency of disclosure

3.1 The invention pertains to the field of surface-enhanced spectroscopy (SES), and more particularly to the field of SES-active composite nanoparticles, and claim 1 is directed to a particle comprising a SES-active analyte bound to a metal nanoparticle, both the analyte and the nanoparticle being surrounded by an encapsulant. In addition, according to dependent claim 11 the encapsulant "comprises a polymer, preferably a polymer that does not interfere with the SERS activity".

In its decision the examining division held that a particle as defined in claim 1 with an encapsulant comprising a polymer as defined in dependent claim 11, and more particularly [preferably] with a polymer that does not interfere with the surface-enhanced Raman spectroscopy activity, was not sufficiently disclosed within the meaning of Article 83 EPC.

3.2 With the statement setting out the grounds of appeal the appellant submitted that, due to the expression "preferably" in the formulation of dependent claim 11, the preferred feature constituted only an illustrative and non-limiting feature and therefore an optional feature that does not restrict the claimed subject-matter. According to the appellant's contention, the preferred feature would not be relevant for the assessment of sufficiency of disclosure.

The Board, however, cannot accept the appellant's submissions to the effect that preferred or optional features defined in a claim should be disregarded in the assessment under Article 83 EPC. According to the established case law the requirement of sufficiency of disclosure defined in Article 83 EPC is only complied with if the disclosure of the invention allows the skilled person to perform, without undue burden, essentially all the embodiments covered by the claimed invention (see "Case law of the Boards of Appeal", EPO, 7th ed., 2013, Chapter II, section C-4.4). This applies in particular to the specific particular embodiments of an invention defined in dependent claims pursuant to Rule 43(3) EPC (see for instance decision T 1011/01, point 2.3 of the reasons) and, by the same token, to any optional feature defined in a claim since such a feature also constitutes, by its very nature, a particular embodiment of the claimed invention, irrespective of whether the optional feature is qualified as being "preferred" or not.