3. Clarity of claims
3.3. Clarity of broad claims
It was established in T 238/88 (OJ 1992, 709) that the clarity of a claim is not diminished by the mere breadth of a term of art (e.g. "alkyl") contained in it, if the meaning of such term – either per se or in the light of the description – is unambiguous for a person skilled in the art (see also T 950/97, T 103/00, T 1173/03, T 2068/10, T 745/11; see also in this chapter II.A.6.).
However, in T 935/14 the board also pointed out that broad features could only be considered clear under the proviso that the borders of the – broad – scope of protection could be clearly inferred by the skilled person. This made the distinction between broad but clear and broad and vague.
In T 523/91 the board held that the wording "plastics in combination with inserts" and "this insert is combined with the plastics granules in a wound or folded manner" did not cause the subject-matter of the claim to be unclear within the meaning of Art. 84 EPC 1973. Although the nature of the combination covered many possibilities, the resulting subject-matter of the claim was broad rather than unclear. The broadness of a claim could not be contested on its own but only in conjunction with other criteria such as novelty, inventive step or reproducibility.
Likewise in T 688/91 the board stated that a broad claim was not to be equated with one lacking clarity. The claim was worded as follows: "Integrated microprogrammed apparatus [...] with apparatus to generate [...] T-states [...] characterised in that [...] the generation [...] of the [...] T-states [...] is in each case effected as a function of preceding T-states and of state parameters such as the instantaneous values of state and/or mode signals [...]". The board held that, even if the words "such as" were understood to mean "for example", with the result that the subsequent information was not to be interpreted in a restrictive sense, the words "state parameters" were clear in as much as they conveyed the fact that T-state generation was to be effected as a function of any parameters representing one of the states of the apparatus. Although the claim was to be regarded as broad, since the terms used were open to general interpretation, breadth was not to be equated with an absence of clarity.
In T 630/93 the board noted that Art. 84, first sentence, EPC 1973 implied that it was not always necessary for a claim to identify technical features or steps in full detail. The function of the essential features, although normally expressed in technical terms, was often to define the borders of an invention rather than details of the invention within those borders. Thus, essential features could often be of a very general character and in extreme cases indicate only principles or a new idea (see also chapter II.C. "Sufficiency of disclosure").
In T 29/05 it was held that the existence of unrelated subject-matter in the claims at issue was merely hypothetical, and no evidence had been provided by the examining division to support its possible presence in the prior art. In the absence of such evidence, each and every nucleic acid molecule (as specified) had to be assumed to be related to the subject-matter disclosed in the application. The fact that a large number of possible nucleic acid sequences might fall within the scope of the claim was not a reason for raising a lack of clarity objection.
In T 2154/11 the board held that the objections of the examining division that the expressions "metadata describing an event", "taking", "connecting" were broad and embraced well-known activities were not considered per se a valid reason for a lack of clarity. The fact that some of these method steps might be understood to refer to "mental acts" or "normal human actions" was also no valid reason for a finding of lack of clarity as long as these steps did not give rise to ambiguity, as in the case in hand. If a method step could be interpreted to refer to a normal human activity, then this assessment should be taken into account for novelty and inventive step.
The principle whereby a broad claim is not unclear per se has been applied in e.g. T 456/91, T 393/91, T 530/94, T 950/97, T 1345/08, T 2220/09, T 125/15, T 2676/16, T 901/16.
- T 147/22
Abstract
In T 147/22 the respondent (opponent) raised several clarity objections, which were mainly directed to the expression "consisting essentially of" and to the fact that the ingredients cited in claim 1 were associated with a function.
On the first aspect, the board noted that the expression "consisting essentially of" limited the ingredients in the composition of claim 1 to those defined in components (a) to (d), although further non-active ingredients could be present provided they did not materially affect the chemical stability of TAS-102. The respondent had argued that the expression "consisting essentially of" rendered claim 1 unclear because the skilled person would not know which were the compounds that did not impair the stability of TAS-102 in the composition, and the patent did not contain any information in that respect. According to the board, however, the nature and amount of those additional ingredients was strongly limited by the condition that they must not impair TAS-102 stability. Furthermore, the skilled person confronted with a composition containing components (a) to (d) and additional ingredients could easily determine whether or not the additional ingredients impair TAS-102 stability. Testing the chemical stability of active compounds in a composition was standard practice in the field of pharmaceutical formulations. Such tests were illustrated in Test Examples 1 to 5 of the patent for the particular case of TAS-102. Therefore, the skilled person could easily determine by standard comparative tests whether or not a given composition consisted essentially of components (a) to (d).
With regard to the functional definition of the ingredients in claim 1, the board held that the criterion for assessing whether a compound had the function assigned to it was the function (or functions) that the skilled person would assign to that compound in the context of a given formulation. Contrary to the respondent's view, the formulator's intention was irrelevant in that respect. It was undisputed that the functional features "excipient", "disintegrating agent", "binder", "lubricant", "flavouring agent", "colourant" and "taste-masking agent" were standard in the technical field of pharmaceutical formulations. The skilled person would have no difficulty in determining whether a given formulation ingredient fulfils one or more of these functions on the basis of common general knowledge. These were functional features which were generally allowed if the invention could not be defined more precisely without unduly restricting the scope of the invention. Furthermore, in the present case, the main ingredients were not solely defined by functional features. They were further limited by structural features: for instance, the excipient according to component (b) was selected from lactose, sucrose, mannitol and erythritol. In view of common general knowledge and the structural limitations of the functional features, the board considered that the definition of the ingredients in claim 1 was not unclear.
The respondent's objection was based on the possibility that an ingredient fulfilled more than one function and, depending on its function, the amount of the compound in the composition could vary. For instance, polyvinyl alcohol was generally known to be a binder and a lubricant. If it was considered a binder, it could be present in an amount of 0.001 to 5% by mass while it could not be present if it was considered a lubricant.
The board disagreed. The fact that polyvinyl alcohol was known to be a binder and a lubricant did not render the claim unclear. If polyvinyl alcohol was present in the composition, it necessarily played the role of a binder, even if it also fulfilled the function of a lubricant. Therefore, it should be counted as a binder that may be present in an amount of 0.001 to 5% by mass in the composition. Considering arbitrarily that polyvinyl alcohol could function exclusively as a lubricant and that therefore its presence would render the composition different from the one in claim 1 would be unrealistic. Certainly this was not how the skilled person would read the claim.
Moreover, the board stated that the fact that "excipient" was a very broad term did not mean that it was unclear. "Excipient" was a standard term in pharmaceutical formulations.
- T 1526/22
Abstract
In T 1526/22 the application related to a method (and a corresponding apparatus) for estimating a "state" of an ego vehicle, for use in a motor vehicle driver assistance system for the ego vehicle. The examining division had objected that claims 1 and 12 failed to meet the requirements of Art. 84 EPC for two reasons:
(1) the wording "the first state and the second state each include at least one local object attribute describing a local object located in the vicinity of the ego vehicle, wherein the local object is a local vehicle" did not allow to unambiguously derive the meaning of an attribute describing a local object, for example whether it was limited or not to a colour of said local vehicle; and
(2) the wording "for a motor vehicle driver assistance for an ego vehicle" suggested that an effect supporting motor vehicle assistance was to be produced, which was however not apparent from the wording of the claim.
In both cases, it was said that claims 1 and 12 had to be limited in order for the claimed subject-matter to be in agreement with the effect and problem argued by the appellant. Reference was made in that respect to the Guidelines F-IV, 4.5.1.
As regards (1) the board considered the recited feature to be broad but not unclear: "at least one local object attribute" could be any attribute of the local vehicle that was suitable for use by a driver assistance system. It could be, for instance, the local vehicle's position or velocity or even its colour (e.g. as it could be relevant for a classification of that vehicle).
As regards (2) the board interpreted the wording of claim 1 "an apparatus for a motor vehicle driver assistance system for an ego vehicle" as meaning an apparatus suitable for a motor vehicle driver assistance system for an ego vehicle, as is usual for a purpose feature in an apparatus claim in the form "apparatus for ...". Claim 1 did not require the claimed apparatus to be configured to provide the output of the state estimator as input to a driver assistance system.
Claim 12 was directed to "a method for estimating a state of an ego vehicle, the method being implemented on a compute module, the state being for use in a motor vehicle driver assistance system for the ego vehicle". The board noted that last statement appeared to define an intended use of the calculated state obtained by the claimed method. This was not a purpose feature of the kind "method for...", which could in certain circumstances be considered to imply a corresponding method step, but rather of the kind "data for...". The claim did not specify any method step in which the calculated state would be actually used for that purpose, nor did the claim comprise any other feature that would establish that said use was part of the claimed method, be it explicitly or implicitly. The board understood this feature as merely requiring the calculated state to be suitable for use in a motor vehicle driver assistance system for the ego vehicle, in which case there would be no clarity problem. However, in view of the other objections, this issue was left open.
Moreover, the board observed that the examining division had not referred to any specific passage of the description in support of its objections. Hence, the passage of the Guidelines F-IV, 4.5.1 "Objections arising from missing essential features", cited by the examining division, did not support the raised objections.
However, the board raised further objections and concluded that claims 1 and 12 lacked clarity under Art. 84 EPC. In particular, the board noted that according to the third and fourth embodiments, reflected in dependent claim 5, the prediction model and the update model were "combined into a combined ANN". In these embodiments, the combined ANN carried out an estimation of the second state taking as input the first state and the measurements of the second state but without necessarily performing separate prediction and update calculations, as suggested by claim 1. This cast doubt as to how the features of claim 1 related to the prediction and update elements were to be interpreted, rendering claim 1 unclear. Similar considerations applied to claim 12.