Key points
- Board 3.5.02, in machine translation: "Based on decision T 1989/18, Reasons No. 5, the appellant argues that if the claims do not have a problem of clarity, the description cannot give rise to an ambiguity of the claimed subject-matter."
- "The board does not agree"
- "According to the settled case law of the Boards of Appeal, the description must therefore be adapted to the amended claims, as has apparently already been requested in the present case by the opposition division with regard to the request on which the decision under appeal is based. This means, among other things, that embodiments no longer covered by the amended wording of the claim are to be identified as such in the description. This is not the case for the description submitted with auxiliary request IIIbis. ... Therefore, all embodiments that only have a two-part structure at the end area no longer fall under claim 1 and are to be marked accordingly. In the present case, as can already be gathered from the version on which the contested decision is based, only the embodiment according to FIG. 5 has a three-part structure at the end area."
- "Since the description submitted with auxiliary request IIIbis does not clarify that the claimed invention concerns only the embodiment corresponding to the subject-matter of the claims, there is a contradiction between the claims and the description, as a result of which the claims, contrary to the requirement of Article 84, second sentence, EPC, are not supported by the description."
- "The weighting of the criteria specified in Article 84, second sentence, EPC in favor of the clarity of the claims, which was the basis in decision T 1989/18, cannot be inferred from Article 84 EPC. Rather, the board follows the established case law of the boards of appeal in this regard, as recently found in decisions T 1516/20, reasons for decision no. 5, T 1024/18, reasons for decision no. 3.1, and T 2293/18, reasons for decision no. 3.3 has been confirmed. In the decisions mentioned, it has been shown very clearly and convincingly that the criterion for the claims being supported by the description in Article 84, second sentence, EPC is an independent criterion which is not subordinate to the clarity of the claims."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/03/t-268519-on-need-to-adapt-description.html
