The patent relates to a “Method for obtaining improved mechanical properties in recycled aluminium castings free of platelet-shaped beta-phases”.
Brief outline of the case
In an earlier decision T 1051/17, the board remitted the case to the OD with the order to maintain the patent in amended form on the basis of the sole request filed as auxiliary request III on 15.10.2019 and a description to be adapted.
Opponent 1 appealed the OD’s subsequent interlocutory decision that the patent could be maintained on the basis of the above-mentioned request and the description and figures of the patent as granted, except for paragraphs , , , , ,  and  which were filed on 10.12.2020.
In reply to the appeal, the proprietor filed a MR corresponding to the form as maintained by the OD, and a AR with a description further amended.
The board dismissed the MR but considered the AR allowable.
The board thus ordered maintenance according to the AR with a very specific set of amendments to the description.
The opponent’s point of view
In its statement of grounds of appeal, the opponent raised two objections under Art 84.
In his first objection, the opponent considered that the claims were not supported by the description as amended. During the first opposition appeal procedure, the claims were limited to a casting and did not any longer relate to an alloy (as granted). This change was not reflected in the amended description accepted by the OD.
The opponent’s second objection concerned paragraph . In its opinion, the amendment including “as defined in claim 1” did not remove the doubt as to whether additional elements may be added, outside the closed composition in claim 1. There was thus a further contradiction.
The proprietor’s point of view
The proprietors defended the patent as maintained by the OD and, as an AR, filed a description in which paragraphs ,  and  had also been amended.
The board’s decision
The board held that it follows from the requirements of Art 84 that the claims define the matter for which protection is sought and that they are supported by the description. In addition, the description should be consistent with the claims and should not cast doubt on the intended scope of protection.
Claim 1 was amended during the opposition appeal proceedings to specifically relate to a process for the preparation of an iron containing aluminium alloy casting.
The independent claims thus relate to a process for producing the iron containing aluminium alloy casting, an aluminium alloy casting, the use of the aluminium alloy casting and a component made from the aluminium alloy casting.
The description in paragraphs  and , however, refers to “the iron-containing aluminium alloy of the invention” and “the process for the preparation of the aluminium alloy of the invention“, respectively, suggesting that the invention is an alloy as such and the preparation of an alloy as such.
An alloy as such is a broader technical concept than an aluminium alloy casting. The indicated parts of the description are therefore inconsistent with the claims.
Furthermore, there is no reason why the term “casting” was inserted in paragraphs  and  but not , and why it was inserted in paragraph  but not .
For the board, the requirements of Art 84 were not met.
Paragraphs  and  now refer to “castings“, thus removing the inconsistency present in the MR.
For the board the second objection was dismissed, as no contradiction was present.
Paragraph  states that “besides the additions of Mn, Cr and V other elements as defined in claim 1 may be added for other purposes”. It is thus clear that it refers to those elements which are specified in claim 1.
The wording that elements are “added” does not lead to a different conclusion, but parallels the use of the word “additions” for Mn, Cr and V, which are also specified in claim 1.
T 438/22 related to the adaptation of the description after amendment of the claims during examination and before grant.
The present decision, T 1997/22, relates to the adaptation of the description after amendment of the claims during opposition and before maintenance in amended form.
Art 84 comprises two different aspects, clarity as such and support by the description.
In order for a patent to be granted, or to be maintained in amended form, both requirements have to be fulfilled.
The present decision comforts the long line of case law exemplified in T 438/22.
In view of the comments about T 438/22 in my blog, I doubt that the discussion on adaptaton of the description will end with the present one.
Should a referral on the adaptation of the description ever reach the EBA, I take bets that the EBA will endorse the long lasting line case law. What will be interesting will be the argumentation.
I do however maintain that a referral on the application or not of Art 69(1) and the Protocol in all procedures before the EPO and not only in opposition when it comes to the requirement of Art 123(3), would be more useful.