Claim 1 as maintained by the Opposition Division (OD) read:
1. A safety razor comprising a blade unit (2) having at least one blade (4) with a sharp cutting edge, a handle (1) on which the blade unit is carried, an electrical device (24,26), and a control device (16) for controlling operation of the electrical device, [characterized in that] the control device (16) [is] being responsive to a water detecting arrangement whereby the electrical device is actuated for cleaning the blade unit when a person using the razor immerses the blade unit (2) into a body of water [for cleaning the blade unit], the water detecting arrangement comprising a pair of electrodes, at least one of which is provided on the blade unit, characterized in that the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving.
The Board raised a clarity objection, much to the dismay of the patent proprietor:
 Claim 1 of the main request (i.e. claim 1 of the patent as maintained by the OD […]) comprises the functional definition of the spacing of the pair of electrodes: “the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving”. This defines a result to be achieved.
[1.1] In its communication annexed to the summons to oral proceedings (OPs) the Board remarked that, since this feature, which had been introduced during the opposition proceedings into claim 1, was taken from the description of the patent in suit, the issue of clarity of the wording of claim 1 as maintained has to be examined […].
[1.2] The [patent proprietor] argued at the OPs that the Board, particularly in the light of G 9/91 , would not be entitled to examine ex-officio this amendment since the [opponent] did not raise any corresponding clarity objection in the entire proceedings, let alone in its statement of grounds of appeal.
These arguments cannot hold for the following reasons.
[1.3] First of all, the quoted decision G 9/91 concerns the extent and power of examination in opposition cases by the OD and the Boards of Appeal and the principle of examination by the EPO of its own motion as laid down in A 114(1) with respect to grounds of opposition. This is clear from the quoted point 18 of its reasons which states “Although A 114(1) formally covers also the appeal procedure; it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage” (emphasis added by the Board).
[1.3.1] As admitted by the [patent proprietor] at the OPs clarity does not represent a ground of opposition as specified in A 100(a) to 100(c). Nonetheless as soon as amendments are made in the claims or the specification during the opposition and/or appeal proceedings the verification that all requirements of the EPC are met has to be carried out.
This view is supported by G 9/91  wherein it is further stated that “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3))” (emphasis added by the Board).
This conclusion is fully in line with the longstanding case law (see Case Law, 6th edition 2010, section VII.D.4.2; see e.g. T 227/88; T 472/88 and T 922/94). Where the OD, in the impugned decision, has not even discussed the issue of clarity, it is up to the Board to do so.
[1.3.2] The [patent proprietor] argued also on the basis of the statement of the EBA in G 9/91 that the appeal procedure is more a judicial procedure for principally reviewing the decisions of the first instance and by its nature less investigative on the part of the Board. As the opponent had not objected to the clarity of this claim in the opposition proceedings, nor in the statement of grounds of appeal, the Board overstepped its competence in itself raising the issue.
However, in the present case the [opponent] raised objections under A 83 in its statement of grounds of appeal […] in that the patent did not define what is meant by the term “normal use of the razor” (one of the amended features objected to by the Board) nor what is “the amount of shaving foam collected on the blade unit in the course of shaving” (the other amended feature objected to by the Board). These objections had already been raised during the opposition proceedings […] and have been discussed at the OPs.
Since the issue is in the proceedings and is related to amended features in the claim, the Board considers it perfectly in order for it to address it on its own motion as an issue of clarity of claim 1 of the patent as maintained, even on the premise advanced by the [patent proprietor]. In this respect it does not matter whether the issue was raised under A 83 or A 84.
[1.4] As far as the amendments are concerned, the Board remains of the opinion that claim 1 as maintained does not comply with A 84, for defining a result to be achieved “… the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged …”. This result is influenced by the unspecified shaving foam, its amount, the hardness of the water used for shaving, etc. Further, it includes the vague and unspecified term “in normal use of the razor”; it is not clear what that feature means in practice and what limitations are implied by “a normal use”.
[1.5] The [patent proprietor’s] arguments to the contrary cannot hold for the following reasons.
In the present case, as convincingly argued by the [opponent], it is actually possible to more precisely define the subject-matter claimed (see e.g. claim 1 of the first auxiliary request) without unduly restricting the claim. Further, it is considered to be impossible to determine the distance between the pair of electrodes by experimentation without undue burden for the person skilled in the art. This is due to the fact that the result of such experiments, i.e. whether or not the electrodes are bridged when varying the distance between them, is primarily dependent on the electrical conductivity of the used, but unspecified shaving foam and its unspecified components as well as the amount thereof and the hardness of the water used. The patent in suit is absolutely silent in this respect and gives no guidance at all. Hence the quoted conditions for allowing this functional definition are considered not to be met in the present case.
[1.6] The Board therefore considers that claim 1 of the main request contravenes A 84. The main request is therefore not allowable.
NB: This decision has more to offer. If you are interested in how G 1/99 (defining exceptions to the principle prohibiting reformatio in peius) is to be applied, you might want to have a look at point [2.2] et seq. of the reasons (and in particular point [2.3.2]).
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