Brief outline of the case
The application was refused for added matter, lack of clarity and lack of inventive step.
The applicants appealed the refusal decision.
Claim 1 of the MR and AR 1 and 6 were considered infringing Art 123(2).
Claim 1 of each of AR 2 to 5 lacked clarity since the claims defined at least 2 mutually exclusive requirements.
AR 7 was not admitted in the procedure.
The case was remitted to the ED for further prosecution on the basis of AR 8.
Multiplicity of AND/OR connectors in dependent claims
The board noted during OP that the objection under Art 84 against the use of multiple “and/or” connectors in several claims of various claim requests had already been raised in the board’s communication under Art 15(1) RPBA20. This objection is to be found in points 16, 28 and 31 of the communication of the board.
In reply to this preliminary opinion of the board, the appellants filed 8 AR, none of which addressed this objection.
During OP, the Chair referred to the board’s objection concerning the “and/or” connectors and gave one concrete example of incompatible technical features, merely for illustration. The applicants thus knew the specific feature objected to and the newly filed sets of claims could have been checked in this regard.
The board reminded that applicants are responsible for defining the subject-matter claimed. They cannot expect to be assisted in doing so or to have each individual claim of every claim request examined in detail. It is sufficient for applicants to be made aware of an objection and be able to react to it.
Applicants should not wait for detailed reasoning to examine an objection that has been drafted in more general terms. Rather, applicants are duty-bound to react within the reasonable time, by either presenting their arguments or filing amended claims, or to check with the board if they do not understand the objection.
The illustration of the board’s objection cannot be considered to be a new issue raised by the board during OP which could qualify as exceptional circumstances.
Therefore, AR 7, filed during OP, was not admitted into the proceedings under Art 13(2) RPBA20.
In AR 7, Claim 2/1 had 3 “and/or” and claim 3/1 or 2 had another 2 “and/or” connectors; claim 5/4 had 1 “and/or” and claim 6/4 and 5 had 8 “and/or”; claim 8/7 had 3 “and/or”.
AR 2-5 had similar numbers of “and/or” connectors in the dependent claims.
When looking at AR3 with annotations as an example, the use of “and/or” combinations allowed to reduce the number of claims from 54 as filed to 5, taking into account that 14 claims as filed related to subject-matter not patentable under Art 53(c).
It is to be noted that claim 2/1 of AR 8 still comprises 2 “and/or” connectors; 3/1 or 2 of AR 8 still comprises 2 “and/or” connectors; 5/4 of AR 8 still comprises 3 “and/or” connectors.
Comments
The use of “and/or” connectors in dependent claims is not prohibited as such, but their number has to remain reasonable.
In the present case, the use of “and/or” connectors apparently led to contradictory statements in the claims at stake.
Even without leading to contradictory statements, the clarity of such claims comprising in each dependent claim a multiplicity of “and/or” connectors is very much doubtful.
At least it cannot be considered that the use of a series of “and/or” connectors in dependent claims can be used as a means to save claims fees, although this is manifestly the case.
The board remitted to the ED and specified that its decision was limited to assessing the amendments made to independent claims 1 and 4 of AR 8 and the clarity of those claims.
As the dependent claims still contain a series of “and/or” connectors it appears surprising that the board did not say anything about the clarity of those dependent claims as it had said in the annex to the summons.
At least the ED will have to check that the various series of “and/or” connectors do not lead to contradictory statements.
I experienced once claim 2/1 with 13 “and/or” connectors and claim 3/1 or 2 with another series of 18 “and/or” connectors.
Whilst claim 1 was very clear, the subject-matter of dependent claims was anything but clear.
https://www.epo.org/law-practice/case-law-appeals/recent/t200308eu1.html
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