T 0516/18 23-09-2020

Article 100(c) in combination with Article 123(2) EPC

Claim 1 and 11 of the main request

1. In order to asses compliance with Article 123(2) EPC of an amendment to a European patent application or to a European patent, it must be determined whether the skilled person, using common general knowledge, would directly and unambiguously derive this amendment from the originally filed application (so called "gold standard"). In the case at stake it is thus firstly necessary to determine the effective subject-matter resulting from the amendments introduced in the original claims 1 and 11 in order to be able to compare the claimed subject-matter with the disclosure provided by the application as filed.

1.1 According to Article 84 EPC the claims define the subject-matter for which protection is sought. For the purpose of determining the protection afforded, the claim must be read and constructed by a person skilled in the art with a mind willing to understand, thereby giving the words the meaning and the scope that they have in the technical field relevant for the invention also in view of the technical content of the claim. However, according to established Case Law of the Boards of Appeal, using the description and the drawings to interpret the claims is considered admissible and even necessary if the person skilled in the art, in an attempt to construct the claim with a mind willing to understand, is confronted with obscure and/or inconsistent features.

1.2 In the appealed decision the opposition division shared the view of the respondent that independent claim 1 as a whole and in particular its feature (E2) did not contain any obscure subject-matter, so that the claim can be constructed and understood by the person skilled in the art simply by giving the words their ordinary meaning without requiring an interpretation in view of the drawings and the description. This led the opposition division to interpret the features (E2) of claim 1 and the corresponding feature (e2) of independent method claim 11 as meaning that the area A1 is not located on the flank face of the cutting insert. As this teaching was not considered to be explicitly disclosed in, or unambiguously derivable from, the originally filed application, the opposition division concluded that the main request was not allowable because it was not compliant with the requirements of Article 123(2) EPC.

1.3 The Board follows the arguments of the appellant and cannot agree with the conclusion of the opposition division for the following reasons:

It is undisputed that features (A) to (D) of claim 1 do not give rise to any unclear subject-matter. In the Board's view the fact that the wording of feature (D) leaves open whether the the indicating layer is formed only on the flank face or not, does not result in any lack of clarity, but rather in a broad formulation. Having regard to feature (E1), the Board observes that the expression "..region (A1) extending from said cutting edge in a vertical direction.." is unclear because the claim fails to define a horizontal direction to be taken as reference. The definition of the horizontal is in fact required in order to unambiguously identify the vertical direction and thus the direction along which the region (A1) extends. The respondent interprets the expression above as meaning that the region (A1) extends in a direction perpendicular to the cutting edge, thereby admittedly leaving open whether the surface (A1) is located on the flank face or on the rake face. In an attempt to clarify this ambiguity, the person skilled in the art would look at the further feature (E2) which however, in the Board's view, contains an obscure and unclear wording.

1.4 The Board notes that whilst on the one hand the expression "excluding from" as such is linguistically consistent and clear in itself, on the other hand the appellant is correct in objecting that it cannot be figured out how a region could perform the "action" of excluding another region from something or somewhere. The view of the respondent that feature (E2) implies that the region A1 is not on the flank face is not convincing because it is based on a subjective interpretation of the unusual and obscure formulation of this feature of claim 1.

1.5 It follows that the Board shares the view of the appellant that the limitations implied by the wording of features (E1) and (E2) of claim 1 read in combination are unclear to such an extent as to prevent the skilled person from determining the effective subject-matter for which protection is sought. Under these circumstances, the Board considers it to be fully justified that the person skilled in the art turns to the description and the drawings in a meaningful attempt to unambiguously determine the effective subject-matter defined in the claim. With this purpose in mind, the person skilled in the art would realize that the embodiments described in paragraphs [0072] and [0074] in combination with Figures 2 and 5 of the published application are the only indicating a range for the extent of the regions (A1) in the sense of feature (E1) and , for this reason, are the ones better reflecting subject-matter intended to be covered by claim 1 as amended during the opposition procedure. In this respect, the Board agrees with the argument of the appellant, which has not been contested by the respondent, that the other embodiments present in the original disclosure clearly do not fall within the scope of claim 1 (see for example embodiment in figure 6) and that, for this reason, they would be disregarded by the person skilled in the art attempting to interpret claim 1 in the light of the description and the drawings.

1.6 From these embodiments the person skilled in the art would directly and unambiguously derive that the correct interpretation of feature (E2) of claim 1, read in combination with feature E1, is that: the region (A1) defined by feature (E1) is on the flank face.

1.7 Therefore, in view of the necessary interpretation of the wording of claim 1 in the light of the description and the drawings, it can be concluded that the feature (E2) of claim 1 as amended does not result in any new information with respect to the originally filed application. The same arguments and conclusions apply to the subject-matter of claim 11 and in particular to feature (e2) which corresponds to feature (E2) of claim 1.

Further objections under Article 123(2) EPC

1.8 The objection of the respondent that the range for the extension of the region (A1) suggested in independent claims 1 and 11 (see features (E1) and (e1) respectively) has no support in the originally filed application cannot be followed either:

As convincingly pointed out by the appellant, paragraph [0073] of the published application, lines 27 to 32, discloses two alternative values for each one of the upper and lower limits of the range at stake. Contrary to the respondent's opinion, no arbitrary combination of separate ranges is defined in claims 1 and 11, but rather a lower limit and an upper limit have been selected among 2 disclosed alternative values. In this respect the Board considers that the person skilled in the art is directly and unambiguously provided with the information that any one of the upper and lower limits proposed can be combined in order to select a suitable range, irrespective of the fact that they are presented as "preferable" or "more preferable" values. Furthermore, the preferred and more preferable lower limit and the preferred and more preferable upper limit are disclosed in paragraph [0073] in combination with the same range suggested for the thickness of the cutting insert, namely 2mm to 8mm, as defined in claims 1 and 11. For completeness the Board notes that, in line with established Case Law of the Boards of Appeal (see for example T0925/98, point 2.), when a disclosure of a general and a preferred, narrower range is provided in the originally filed application, a combination of the narrower range with one of the partial ranges lying within the disclosed general range and located on either side of the narrower range shall be considered directly and unambiguously derivable from the originally disclosed ranges. This is exactly the case of the range defined in claims 1 and 11.

1.9 The respondent further argues that there is no support in the originally filed application for the feature (d) in claim 11 (this feature has been erroneously labelled (e3) in the contested decision and (e2) in the respondent's reply). However, the Board concurs with the view of the appellant that the step defined therein of "removing said indicating layer from the rake face" is directly and unambiguously derivable from paragraph [0089] of the published application and that, contrary to the view of the respondent, no essential features disclosed in this paragraph have been omitted in claim 11. The alleged unallowable intermediate generalisation thus does not take place.

1.10 In conclusion and for the reasons given above, the Board cannot follow the decision of the opposition division that the subject-matter of claims 1 and 11 of the main request does not meet the requirements of Article 123(2) EPC.

The appealed decision is thus incorrect in this respect and must be set aside.

Remittal of the Case to the first-instance department

2. Lack of support in the originally filed application under Article 100(c) EPC was the only ground of opposition discussed at the oral proceedings before the opposition division and it was the only ground of opposition upon which a decision in respect of the main request was taken. In the event that the decision be set aside by the Board, the appellant has requested the remittal of the case to the opposition division for consideration of the further grounds of opposition that had been raised by the opponent in the notice of opposition (Article 100(b) in combination with Article 83 EPC and Article 100(a) in combination with Articles 54 and 56 EPC).

2.1 Although the EPC does not guarantee the parties an absolute right to have all the issues in a case considered by two instances, it is well recognised that any party may be given the opportunity of two readings of the important elements of a case. The Board observes that the essential function of an appeal is to consider whether the decision issued by the first-instance department is correct. Hence, a case is normally to be referred back if essential questions regarding the patentability of the claimed subject-matter have not yet been examined and decided by the department of first instance (Article 111(1) EPC) as is the case in the decision under appeal.

2.2 In addition, at the oral proceedings, the respondent raised no objection to a remittal of the case to the department of the first instance should the main request be found to comply with the requirements of Article 123(2) EPC and the appealed decision set aside.

2.3 In the Board's view the circumstances above represent "special reasons", in the meaning of Article 11 RPBA 2020, justifying a remittal of the case to the department of first instance for further prosecution.