Monday, 5 April 2010

T 775/07 – Is It Essential ?

One of the must-know decisions for EQE candidates is T 331/87 wherein the Board defined the so-called “essentiality test”, which allows to check whether an amendment that comprises the deletion of features from a claim is allowable. The present decision shows how this test may be applied in real life.

Once again the EPO confirms its reputation of being extremely strict on “new matter”.

[2.1] In the present case, the feature that the hands-free towel dispenser comprises “a solar panel for energising said control circuitry” (feature f)) has been removed from claim 1 as originally filed.

An amendment that deletes a feature from an independent claim is only allowable if the skilled person would directly and unambiguously recognise that
i) the feature in question was not explained as essential to the invention,
ii) the feature is not indispensable for the function of the invention in the light of the technical problem it serves to solve, and
iii) replacement or removal requires no real modification of other features to compensate for the change (Guidelines C-VI, 5.3.10 and decision T 331/87). In the present case at least the third criterion is not fulfilled.

[2.2] As described in the application as filed […] the solar panel is utilised for energising the control circuitry […]. No other alternative power source for energising the control circuitry is disclosed in the application as filed.

The removal of feature f) i.e. the solar panel for energising the control circuitry from claim 1 as originally filed requires modification of the feature d) (an electric power source for powering said dispensing means) since in that case the electric power source should also be used in place of the solar panel for energising the control circuitry.

The [patent proprietor] argued that a battery is already provided for powering the dispensing means, i.e. the motor of the dispenser […] and that it would therefore be obvious for a skilled person that this battery could serve as an alternative power supply for the control circuitry. However, only what is directly and unambiguously derivable from the originally filed application, taking into account matter which is implicit (not merely obvious) to a skilled person can serve as a basis for an amendment.

In the case of a battery used to power the dispenser, it is not implicitly disclosed that the battery is also used to energise the control circuitry, since no other alternative power than the solar panel is disclosed in the application as originally filed. Nor would such an interpretation be unambiguously derivable for the person skilled in the art. […] 

[2.4] The [patent proprietor] argued that there was no functional or structural relationship between the control circuitry and the solar panel inasmuch as the jamming problem was concerned. He further referred to decision T 962/98 to illustrate that an intermediate generalisation (from solar panel to power supply) could be admissible under A 123(2).

The Board cannot agree with this point of view. In the present case, the subject-matter generated by the amendment from “solar panel” to the more general “power supply” involves added subject-matter, because no other power supply than the solar panel has been originally disclosed for energising the control circuitry. The fact that the control circuitry could be energised by an unspecified power supply is clearly new information which is not directly and unambiguously derivable from the originally filed application.

[2.5] Accordingly, the removal of the feature “solar panel” in claim 1 of the main request and of the fourth auxiliary request contravenes the requirements of A 123(2) (A 100(c)). 

To read the whole decision, click here.