1.4. Ersetzen oder Streichen eines Merkmals aus einem Anspruch

In T 345/24 the board considered the omission of the qualifier "good" in feature 1.3 of the patent as granted to lack a direct and unambiguous basis in the application as filed.

The board explained that, relative to claim 1 as filed, feature 1.3 had been introduced into the claim, in which the acquisition distribution layer (ADL) was defined to be "in contact with" the body-facing side of the absorbent core. The basis for this amendment was stated by the opposition division to be paragraph [0198] of the application as filed where, however, the ADL was disclosed to be "in good contact with" the body-facing side of the absorbent core.

The board found the word "good" in the expression "good contact" to be technically relevant in the present context. For a skilled person, a good contact, at least in the technical field of absorbent articles, would imply face-to-face contact over a large area between two elements of the article. Conversely, if two elements were merely "in contact" with one another, at one extreme the expression encompassed merely single point contact over a small area. This latter condition of minimal contact between two elements would not be considered by the skilled person as embodying "good" contact between the elements. Despite the term "good" being somewhat imprecise, in the context in which it was used in the description it would be understood nonetheless to indicate a certain kind, amount and/or quality of contact. The proprietor's argument, with reference to G 1/93, that the term "good" could be omitted from claim 1 due to it lacking a technical meaning was thus not accepted by the board.

Furthermore, the board explained that the purpose of an ADL in absorbent articles was to remove liquid deposited on a topsheet and ensure its distribution within itself, but also to ensure swift transfer of the liquid to the absorbent retention part of the core of the article. In this context, a "good" contact between the ADL and the absorbent core had to be contact which efficiently promoted the transfer of liquid from the ADL to the absorbent core such as, for example, by providing a large face-to-face contact area. Consequently, at least a contact promoting swift transfer of liquids was implied through the expression "good contact", which the word "contact" alone failed to achieve.

Finally, the proprietor's argument that the ADL being positioned between the topsheet and the absorbent core as a closed, layered structure unambiguously implied that significant face-to-face contact (i.e. "good" contact) was achieved was, at least in this generality, not accepted by the board. The board agreed with the opponent that claim 1 did not exclude further layers being positioned between the ADL and the absorbent core which would allow, for example, contact of merely the peripheral edge of the ADL with the absorbent core. The board concluded that a skilled person would not equate such peripheral contact over a limited area to be "good" contact in the sense of the application as filed.

Hence, the board decided that the ground for opposition under Art. 100(c) EPC was prejudicial to the maintenance of the patent as granted.

In T 1535/23 the board observed that the Court of Appeal of the Unified Patent Court ("CoA UPC") in UPC_CoA_382/2024 applied the same test as the EPO to determine whether an amendment extended beyond the content of the application as filed. This test is known as the "gold standard" (see G 2/10).

The issue at stake in both T 1535/23 and UPC_CoA_382/2024 concerned the omission of a feature from a claim in the context of added matter. In T 1535/23 claim 1 of auxiliary request 5 essentially differed from independent claim 19 of the parent application as filed in that the specific surface area contained in independent claim 19 of the parent application as filed had been omitted and instead two characteristics of a powder X-ray diffraction pattern had been added. The board explained that the parent application as filed disclosed that the said specific surface area was an essential feature of the invention. All the independent claims of the parent application as filed required the said specific surface area, either directly or by reference to another independent claim. Furthermore, in the summary of the invention, the parent application as filed referred, in a first broad aspect, to a crystalline free base of palbociclib having the said specific surface area. Therefore, it was clear to the skilled person that the passages of the parent application as filed relied on by the respondent referred to embodiments all having this specific surface area. Hence, the board observed that the parent application as filed comprised no teaching that the specific surface area referred to in independent claim 19 of the parent application as filed was not an essential feature of the invention disclosed which could be omitted to characterise Form A of the freebase of palbociclib. The board concluded that the omission of the specific surface area in claim 1 of auxiliary request 5 added subject-matter beyond the content of the parent application as filed.

In turn, in UPC_CoA_382/2024 independent claim 1 of the patent related to an on-body glucose monitoring device comprising a sensor assembly and an enclosure with an electronics assembly. The point of dispute was whether the omission of an elastomeric sealing member for sealing the coupling between the sensor assembly and the electronics assembly in the wording of this independent claim added subject-matter. The CoA UPC found that even though a need for sealing was described in the application as filed, there was no described advantage or function of the use of the specific elastomeric material now omitted from the claim, other than that it provided sealing. Therefore, the skilled person understood from the application as filed that the exact method of sealing did not contribute to, and was thus not relevant for, the technical teaching of the invention as disclosed in the application as filed. The CoA UPC concluded that the omission of the use of an elastomeric sealing member from claim 1 of the patent did therefore not extend beyond the content of the application as filed.

The board explained that its conclusion in T 1535/23 was not in contradiction with the decision of the CoA UPC in UPC_CoA_382/2024. The fact that the CoA UPC acknowledged that the feature in question could be omitted without extending beyond the content of the application as filed while the board in T 1535/23 reached the opposite conclusion was based on different factual situations rather than on a difference in legal considerations. Both the CoA UPC and the board in T 1535/23, and the EPO in general, apply the same principle (the "gold standard") in judging whether an amendment extends beyond the content of the application as filed.