Zusammenfassung von EPC2000 Art 084 für die Entscheidung T0223/23 vom 08.01.2024

In T 223/23 claim 1 of the main request was directed at a product as such, namely a trace element solution. It clearly defined the solution by its technical features, i.e. the types and amounts of the trace elements (zinc, manganese, selenium and copper) dissolved therein. The examining division had found that the criteria of Art. 84 EPC were not met because it was the process of manufacturing that provided the increased concentrations of trace elements in solution. In its view, claim 1 was not supported because it lacked the essential features defining the identity of the product. Moreover, the examining division held that claim 1 defined the trace element solution by a result to be achieved, namely trace elements at high concentrations being able to remain in solution, but claim 1 did not state the essential features necessary to achieve this result. The board disagreed with the views of the examining division. The board noted that defining the claimed product in terms of the process used for its preparation, i.e. by a product-by-process feature, could only further characterise the composition insofar as this process gave rise to a distinct and identifiable characteristic of the product. In this sense, the steps of the process could not themselves be regarded as essential features of the product: at most the technical features imparted by this process to the resulting product could represent such essential features. The board understood the examining division's conclusions to be motivated by the finding that the preparation of a trace element solution with the claimed high concentration could not be achieved in the prior art and was part of the problem to be solved mentioned in the application, and that the process disclosed in the application was the first process to allow such a preparation. In contrast, the board held that this situation did not justify that each and every feature imparted by the process shown in the example to the resulting composition be seen as an essential feature. As explained in T 242/92, the mere fact that only one way of carrying out the invention was indicated did not in itself offer grounds for considering that the application was not entitled to broader claims. A lack of support would only arise if there were well-founded reasons for believing that the skilled person would be unable to extend the particular teaching of the description to the whole of the field claimed by using routine methods. In the underlying case the absence of reference in claim 1 to the EDTA used in the example did not lead to a lack of support, considering that the description mentioned EDDS as an alternative, and considering the absence of an indication that the skilled person could not use other chelants. Moreover, the board noted that the examining division had not determined which feature of the trace element solution would be missing from claim 1 and would be essential for obtaining the high concentration recited in the claim. The board concluded that even if, according to the description, the invention aimed at providing a highly concentrated trace element solution, and provided for the first time a process allowing the preparation of such a highly concentrated solution, this did not mean that the claims should be limited to that particular process or to a solution defined in terms of that particular process for them to comply with Art. 84 EPC.