Abstract on EPC2000 Art 084 for the decision T0712/21 of 16.10.2023

In T 712/21 the applicant filed an appeal against the decision of the examining division to refuse the patent application for non-compliance among others with the requirements of Art. 84 EPC. The examining division had argued that the invention was defined in terms of a result to be achieved, namely hydrodeoxygenation (hereinafter "HDO") and hydrodewaxing (hereinafter "HDW") steps, for which no indication was given as to the extension of the desired reactions. According to the examining division, in order to meet the requirements of Art. 84 EPC, the claim should have defined all the essential features for carrying out the HDO and the HDW steps. The board, however, noted that HDO and HDW were well-known chemical processes in the field of petrochemistry. Thus, the features relating to these processes should be treated as allowable functional definitions rather than as results to be achieved. In this respect, the board stated that an objection of essential feature(s) missing should in principle be raised where a claim defines an effect or result which is technically challenging in the sense that a skilled person reading the claim and applying common knowledge would not know how to achieve it without the information provided by the omitted (essential) feature(s). In the current case, however, the claimed subject-matter defined the active metals in the catalysts and the operating ranges necessary to carry out the HDO and HDW reactions, and so the claim included all the essential features of the invention. In the board's view the features HDO and HDW also met the requirement of clarity under Art. 84 EPC. In this respect, the board emphasised the differences between lack of clarity and breadth of the claims. A feature may be considered to be unclear if its boundaries are diffuse, leaving the reader in doubt as to whether certain embodiments fall within or outside the scope of protection. This generally occurs when the feature is defined in confusing or incomplete terms (e.g. an ill-defined parameter) and/or when it is inherently unsuited for providing a well-defined scope (e.g. relative terms). On the contrary, features with generally accepted meanings should not be considered unclear just because they are broadly defined. The board stated that it was undisputed that the terms "HDO" and "HDW" had a generally accepted meaning in the underlying technical field. Therefore, although it could be argued that the scope of these features could overlap with that of similar processes (e.g. does a hydrotreating process fall within or outside the scope of HDO?, or does a hydroisomerisation step fall within or outside the scope of HDW?), such challenges did not arise due to a faulty or incomplete definition, but because language cannot comprehensively capture every detail of real-life objects or processes, an issue which becomes more pronounced when features are broadly defined. The board therefore considered that the basic question to be asked was whether the vagueness of the scope of protection was the result of an incorrect, incomplete or relative feature, or whether it was simply the result of the inherent ambiguity of technical terms. In the present case, the board concluded that the features HDO and HDW would be clear to a person skilled in the art and that any ambiguity in distinguishing them from other similar processes should be attributed to the inherent limitations of technical language. The board also noted that the above conclusions were consistent with, and to some extent explained, the well-established practice of giving technical terms their broadest reasonable technical meaning when assessing patentability. Therefore, the board decided that the requirements of Art. 84 EPC were met.