T 747/10 – Let’s Be Subjective

T 331/87 is a decision that any serious EQE candidate ought to know. It deals with the question of whether a feature can be deleted from a claim without there being a violation of A 123(2). Today’s decision applies this teaching to a concrete case.

Here the Examining Division had refused an application.

Claim 1 of the main request before the Board (as compared to claim 1 as filed) read (additions in blue, deleted parts in red colour):

The Board finds this amendment not to comply with A 123(2):

[2.1.1] Claim 1 of the main request differs from claim 1 as originally filed, inter alia, in that the feature according to which the computer interface permits to supply power to the light emitting assembly has been deleted. In the letter of 14 March 2011, the [applicant] submitted that the deletion of this feature fulfilled the three point test defined under section C-VI, 5.3.10 of the Guidelines for examination according to which the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:

(i) the feature was not explained as essential in the disclosure;

(ii) the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and

(iii) the replacement or removal requires no real modification of other features to compensate for the change.

The [applicant] elaborated further on this issue in his letter of 31 March 2011, providing arguments why, in his view, each of the three criteria defined in this passage of the Guidelines was fulfilled.

[2.1.2] It is acknowledged, as a preliminary remark, that the fact that the computer interface is consistently associated throughout the original disclosure to the function of supplying power to the light emitting assembly does not, as such, constitute an obstacle to its removal from the original claims. This view conforms to the approach developed in decision T 331/87, which constitutes the actual basis for the passage of the guidelines relied upon by the [applicant]. This passage in decision T 331/87 was indeed followed by the statement according to which

“The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the inventions” (cf. T 331/87 [6]).

The Board had thus to decide whether, under the present circumstances, the conditions set out in said passage of the Guidelines and construed in the light of decision T 331/87, allowed the removal of the feature relating to the ability of the computer interface to supply power to the light emitting assembly.

[2.1.3] A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.

While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources. This view is confirmed by the statement on page 2, lines 28, 29, introducing the definition of the invention, according to which “the above-mentioned and other objects are fulfilled by provision of a light therapy apparatus”, wherein the following definition of the apparatus does incorporate inter alia the feature of the computer interface for power supply of the light emitting assembly, which addresses the problem of limited portability.

Moreover, although particular emphasis has been put in the course of the examination proceedings and the ensuing appeal proceedings on the aspect related to the possibility for the user to perform deskwork during treatment, the Board observes that the original disclosure actually privileges the aspect of portability which appears to reflect the main concern of the [applicant] when filing the application. It is worth noting, in this respect, that original claim 1 reproduces the passage of the description on page 2, lines 29-35, but omits the indication concerning simultaneous deskwork. The passages on page 3, lines 1-7, confirm this view insofar as they underline the advantages conferred by the invention or some of its embodiments in terms of size and weight of the light emitting assembly.

Consequently, the main problem actually addressed by the invention as originally disclosed concerns the aspect of limited portability of conventional light therapy apparatuses.

[2.1.4] The feature as to the ability of the computer interface to supply power permits the use of light emitting assemblies which do not, therefore, require additional large cumbersome batteries. The deleted feature is thus directly involved in the solution of the technical problem identified above. The present case differs, hence, from the case underlying decision T 331/87, in which the deleted feature only represented an advantageous embodiment of the invention, not contributing to the solution of the problem. For these reasons, the board then concluded in T 331/87 that the deleted feature defined an inessential feature of the invention which could be deleted without introducing new subject-matter in the application.

An a contrario interpretation of this principle would imply that a feature contributing to the solution of the problem defines an essential feature of the invention and could accordingly not be deleted. Such an interpretation must, however, be rejected, since it would conflict with the established practise at the EPO according to which a structural limitation in a claim may well be replaced by an equivalent, insofar as a support for the alternative configuration may indeed be derived from the application as filed. In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.

Under the present circumstances, the description does not disclose any other substitute to the computer interface for supplying power to the light emitting assembly. The passage referred to by the [applicant] on page 2, lines 16-24, which evokes a built-in battery pack, refers to some drawbacks of the prior art. It does not constitute sufficient evidence that such battery packs have indeed been considered in the framework of the present invention. Moreover, battery packs would not provide full satisfaction in view of the subjective problem actually addressed by the invention since they would still contribute to the size and weight of the light assembly. The third paragraph on page 3 merely suggests that the computer interface may have taken the form of a USB interface, but does not establish that the actual capacity of the computer interface to supply power, as such, can be optional. Similarly, the passage on page 5, lines 3-6, which describes a “preferred embodiment” of the invention, is not sufficient to establish that other means for supplying power were considered. The use of the term “preferred” seems to refer, in this context, to the use of two light emitting assemblies, and does not imply, contrary to the [applicant’s] view, that the computer interface for power supply evoked in this paragraph is purely optional.

Consequently, since the deleted feature contributes to solve the subjective problem of limited portability associated to conventional light emitting diodes and since the skilled person would not be able to derive from the application as filed any other configuration as the one consistently disclosed throughout the description, the Board concludes that the feature of the computer interface being adapted to supply power constitutes an essential feature of the invention. Its deletion results in the skilled person being presented with information which is not directly and unambiguously derivable from that originally presented in the application contrary to the principle underlying A 123(2).

What I find interesting here is that the subjective problem is considered and not the objective problem (with respect to the closest prior art) that would be relevant for inventive step. A feature is essential in this particular context if the drafter of the application thought it to be essential for solving the subjective problem. This is indeed one of the rare cases where the subjective problem is relevant, even in a case where the objective technical problem is quite remote from it.

I think this approach is correct for condition (i) of T 331/87, which has indeed a subjective flavour. Things are less clear-cut for condition (ii), but I think the problem again has to be the subjective problem because the objective problem depends on something which, as a rule, is not contained in the application as filed. Making an A 123(2) assessment dependent on such an external element does not sound right, does it?

To download the whole decision, click here. The file wrapper can be found here.