T 3097/19 (Key word detection/OMRON) of 16.11.2022

Decision not to admit new main request insufficiently reasoned
Non-admittance decision, therefore, not confirmed
Inventive step - main request, first and second auxiliary requests (no)
Inventive step - third and fourth auxiliary requests (yes, claims on their own)
Consistency between claims and description of third and fourth auxiliary requests - no
Scope of protection sought defined precisely - no

1. If a request is not admitted because earlier objections are not overcome, Rule 111(2) EPC requires that these earlier objections be made explicit in the decision (see reasons 3).
2. Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case (see reasons 4).
3. The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (see reasons 27 to 34).
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