In this case the applicant made an interesting attempt to overcome an A 123(2) objection by referring to an alleged lack of clarity.
The claims were directed, inter alia, at a communication device. The decision deals in detail with the feature “whereby the data … are transmitted with identical timing”, which the Examining Division (ED) had found to lack clarity. The Board found the feature to be clear but rejected the third and fourth auxiliary requests for lack of inventive step. The applicant also filed a fifth auxiliary request where the expression “with identical timing” had been removed.
[5.1] In the board’s judgment, claims 1 and 8 do not comply with the provision of A 123(2).
[5.1.1] The board agrees with the finding of the ED that transmitting identical data on any or all carriers without “identical timing” is not directly and unambiguously disclosed in the original disclosure of both the original parent application and the present divisional application […]. Rather, the original description exclusively discloses sending “identical data with identical timing” and therefore the deletion of only “with identical timing” results in an intermediate generalisation of the original subject-matter.
Consequently, claims 1 and 8 contravene A 123(2).
[5.1.2] The appellant argued that the omission of “and are transmitted with identical timing” while maintaining the feature of transmitting and receiving identical data on each modulated carrier did not violate A 123(2) citing T 461/05 and T 802/92 according to which originally disclosed features of an embodiment may be omitted if such features are not necessary to carry out the particular embodiment of the invention or do not provide a technical contribution to the claimed subject-matter. In addition, the appellant assumed that, if the term “identical timing” was indeed unclear, as held by the ED, this feature could thus not contribute to the technical teaching of the application and therefore would not add subject-matter.
[5.1.3] From the single and isolated basis for the related feature of transmitting identical data with identical timing […], no useful information can be derived as to whether the feature “with identical timing” is in fact essential or provides a technical contribution to the subject-matter or not. Even if, for the sake of argument, this feature were to be considered as unclear, that would not necessarily mean that it was not essential. Rather, it would merely indicate that it could not be established whether it was technically relevant or not.
[5.2] In conclusion, this request is not allowable under A 123(2).
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