T 0175/84 (Combination claim) of 22.9.1987

Summary of Facts and Submissions

I. European patent No. 8 603 containing one independent claim relating to a line coupler and four dependent claims was granted in response to patent application No. 79 100 790.9, received on 15 March 1979 and claiming priority of 12 August 1978. Mention of the grant was published on 26 May 1982.

Two admissible notices of opposition were filed on 24 and 25 February 1983.

On the basis of these, the Opposition Division revoked the patent by decision dated 30 May 1984 on the grounds that the combination of features claimed in Claim 1 as granted was not based on inventive step and also that the other claims did not contain anything inventive. ...

II. That is the decision contested by the patentees, who appealed on 21 July 1984 and paid the relevant fee. ...

VII. The grounds given by the respondents for their dissenting view were essentially as follows:

Features (a) to (c) and (e), and the essence of (d), were each themselves known and, since they all solved different parts of the problem independently of each other, combining them to solve a wider problem was obvious. What was new about feature (d) was not material to the invention, or at any rate was not presented as such in the documents. And even if it were held to be disclosed, the respondents, for their part, nevertheless felt that this new subsidiary feature did not convey anything inventive and therefore did not make the subject-matter as a whole patentable.

The respondents also alleged that Claim 1 contained certain formal deficiencies. They furthermore expressed concern that if the patent were maintained the patentees would give Claim 1 a border interpretation unsupported by its formulation as a combination claim. ...

IX. The respondents submit that the appeal should be dismissed. Respondent I also requests in the alternative that it should be made clear in the Order or in the Reasons for the Decision that the patent protection extends only to the sum of all the features specified in Claim 1 and that the claim as granted may not be broadened by omitting the adhesion promoter specified in feature (e) or one of the other features.

Regarding the alternative request, the appellants have put on record that protection should be confined to all the features of the claims; omitting or altering any of them would mean abandoning the protected terrain. ...

Reasons for the Decision

... (Admissibility of the appeal; amendment of the claims)

5. Having considered the appeal with reference to the ground advanced in support of the opposition that the subject-matter of Claim 1 was not based on inventive step, the Board concluded that the said ground was no longer tenable now that Claim 1 had been amended. Its reasons were essentially as follows:

5.1 In the absence of any indication to the contrary in the wording of a claim, it must be assumed, when examining its subject-matter for inventive step, that the claim is directed solely to the simultaneous application of all its features. Omission or alteration of one of its features, say to accommodate an unnamed equivalent, cannot be considered by the examining department, especially if the wording of the claim itself specifies a "combination". The claim granted was expressly a combination claim. The omission of a feature would therefore contravene Article 123(3) EPC, for example, and would hence be inadmissible in opposition or appeal proceedings.

The amendment of a feature to accommodate an equivalent not named in the original documents would also contravene Article 123(2) EPC.

The Board, together with all the parties to the proceedings, accordingly considers that Claim 1 may not be construed other than as determined by its wording.

5.2 On the other hand, when the wording of a claim has been established, further determination of how this claim is to be interpreted with regard to definition of the extent of protection conferred in accordance with Article 69 EPC and the relevant Protocol is not a matter for the examining, opposition and appeal bodies of the European Patent Office.

The Board of Appeal can therefore only place on record and note respondent I's alternative request in this connection and the appellants' statement in response and for its part find, without prejudice to Article 69 and the Protocol on its interpretation, that the sole subject-matter to be considered in these opposition/appeal proceedings is the combination of all the features of Claim 1, without omissions and without amendments. ...

5.8 In view of all the foregoing, the subject-matter of Claim 1 is not obvious from the state of the art and is therefore based on inventive step.

This claim therefore stands, as do Claims 2 to 5 which are dependent on it.

6. For these reasons the contested decision based on Article 102(1) EPC is to be set aside and a decision taken to maintain the patent in amended form in accordance with Article 102(3) EPC.

The prior issue of a communication and invitation under Rule 58(4) may be omitted in the light of case law (cf. for example T 219/83, OJ EPO 1986, 211), particularly since the parties have waived this requirement.

ORDER

For these reasons, it is decided that:

1. The contested decision is set aside.

2. The matter is referred back to the department of first instance with the order to maintain the contested patent in amended form with the following documents: ...