T 1791/16 - Ambiguous feature and Art. 123(2)

 Key points

• In this case, the claim as granted contains an unclear feature. The feature is alleged to lack basis in the application as filed.
• The Board 3.5.06 in the headnote: “If a claim is ambiguous/unclear, all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present”
• “The Board finds the above claim construction to be a reasonable one, but does not exclude that the interpretation provided by the appellant may also be a reasonable one, in fact the Board is of the opinion that the amendments themselves are not clear and may be interpreted in different ways. This lack of clarity, while it cannot be invoked as a ground for opposition to the patent as granted, causes the subject-matter of the claim to be ambiguously defined. In such circumstances, in the interest of legal certainty, the Board must consider all technically reasonable claim interpretations. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that a breach of Article 100(c) EPC has occurred. This is the case here.”
• I will discuss in another post recent decision T 0195/20 wherein the same Board uses a completely different approach.

T 1791/16

https://www.epo.org/law-practice/case-law-appeals/recent/t161791eu1.html

11. The Board finds the above claim construction to be a reasonable one, but does not exclude that the interpretation provided by the appellant may also be a reasonable one, in fact the Board is of the opinion that the amendments themselves are not clear and may be interpreted in different ways. This lack of clarity, while it cannot be invoked as a ground for opposition to the patent as granted, causes the subject-matter of the claim to be ambiguously defined. In such circumstances, in the interest of legal certainty, the Board must consider all technically reasonable claim interpretations. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that a breach of Article 100(c) EPC has occurred. This is the case here.

source http://justpatentlaw.blogspot.com/2021/11/t-179116-ambiguous-feature-and-art-1232.html