EP 3 168 466 A1 relates to a solar ray concentration system.
Brief outline of the case
The application was refused for failure to meet the requirement of R 43(1).
The ED found that D1 represented the CPA to the claimed invention and that the subject-matter of claim 1 was both novel and involved an inventive step over the cited art.
It nonetheless found that the requirements of R 43(1) were not fulfilled since claim 1 was not drafted in the two-part form, despite this being appropriate.
The applicant appealed.
The board confirmed the refusal.
The applicant’s point of view
The applicant argued that the ED had omitted to explain or bring any evidence in support of its allegation that page 1 of the description failed to clearly identify which features of claim 1 were known from D1.
The ED pointed to the acknowledgement of D1 in the description and stated that this acknowledgement failed to explicitly indicate which features of claim 1 were known therefrom.
The applicant alleged that claim 1 cannot properly be formulated in the two-part form as it is an innovative combination of features.
The applicant contented that drafting the claim in the two part form was inappropriate as it made it unclear and lacking in conciseness.
The applicant also considered that acknowledging the prior art as suggested by the ED would infringe Art 123(2).
The appellant referred to T0181/95, Reasons 5, in support of its ‘innovative combination of features’ argument.
The applicant also referred to T0723/93 and considered that the two-part form was not expedient.
The board’s decision
The board concurred with the ED and saw the suggestion as to how the two-part form of claim could be drafted based on D1 as the CPA.
It is noted that the purpose of the two-part form of claim is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art.
It is established practice before EDs not to insist on the two-part form if it is sufficiently clear from the indication of prior art made in the description which features of the claim under examination are known therefrom.See also Guidelines for Examination, F-IV, 2.3.2.
However, this proviso regarding the features known from the prior art, as found by the ED in its decision, has not been satisfied in the present application.
D1 is indeed acknowledged on page 1 of the description yet this acknowledgement fails to identify which specific features of the claim 1 under examination are known from D1.
Fundamentally, therefore, in view of the two-part form not having been used in the independent claim, a resultant requirement for the content of the description to include an indication of which features of claim 1 were known from the prior art was not fulfilled.
An ‘innovative combination of features’ in a claim is understood by the board to mean that the subject-matter of that claim is novel i.e. that the features of the claim considered in combination are not known from a single piece of prior art.
It does not dictate whether a claim can be formulated in the two-part form or not. Should the appellant wish to somehow convey through the expression ‘an innovative combination of features’ that no features of claim 1 were to be found in D1, this is simply incorrect, as shown on page 6 of the impugned decision where those features of claim 1 known from D1 are cited in the first, pre-characterising, part of the claim.
As far as the relevance of T 0181/95 can be understood with respect to the present case, it states that “if there is no document or other evidence of prior art describing the device according to the preamble of claim 1, the two-part formulation of this claim is not justified because it gives a false picture of the prior art”.
However, in the present case, as concluded by the ED claim 1 can reasonably be formulated in the two-part form with features known from D1 placed in the preamble, features not known therefrom being placed in the characterising portion.
The present case is also different from T 0723/93 (see Reasons 3) in which the applicant in that case argued that the two-part form was not expedient and the board accepted a clearly drafted claim in a one-part form. In the present case, however, the two-part form is indeed expedient as it clearly and concisely identifies which features of claim 1 are known from D1 allowing a more immediate understanding by the reader of which features go beyond D1 and contribute to the invention.
The applicant’s contention that drafting the claim in the two part form was inappropriate as it made it unclear and lacking in conciseness was not accepted.
Having the reference sign (1.2) used both for ‘a set of various mirrors’ in the preamble and for ‘Plano concave mirrors’ in the characterising portion of claim 1 would not be seen as presenting a lack of clarity for the skilled reader. Not least on consulting the description and drawings of the application, see the order of G 0001/24, would it become perfectly clear that solely Plano concave mirrors are comprised in the system of the application.
As for a lack of conciseness in claim 1 as a consequence of drafting in the two-part form, this is of minimal extent and was not seen to adversely affect the clarity of claim 1.
Comments
From a strict legal point of view the refusal is justified.
The ED amended the description in the R 71(3) communication. This amendment was not admitted by the applicant.
In its disapproval of the form in which the ED intended to grant the patent, the applicant claimed that the amendment in the description was infringing Art 123(2).
This is not correct, see for instance T 0267/06, Reasons 1.2.
Saving the costs for a professional representative has proved fatal to the applicant.
Comments
2 replies on “T 1471/24-Two-part form of the claim”
On point.
It seems that there is a sad back-story to this. The inventor/applicant died and his parents took over the application, without representation. Now, although the examiner was prepared to allow the application, the son’s invention is lost to them.