Amendments based solely on the original and correctly back-referred dependent claims can result in added matter

Decision T 1137/21 lies from an appeal against the Opposition Division’s [OD] revocation of patent EP2909144 . The OD revoked the patent on the grounds of lack of novelty and/or of inventive step in different claim requests as submitted by the proprietor. Notably, all of these requests were found by the OD to meet the requirements of Art. 123(2) EPC. 

Claim 1 of the main request was directed to a process for post-treatment of a zeolitic material and was based on the original claim 1 limited with features from dependent claims 4, 9, 11, 13 and 17 as originally filed and dependent on claim 1. In addition to this, the appellant-proprietor (AP) argued that the combination of these limitations was justified because the examples of the application as originally filed were also a pointer to the claimed combination of features, because all of them fell under the wording of the limited claim 1. 

Requirements not met

Surprisingly, and in contrast to the OD’s initial evaluation, the Board disagreed with the above and decided that, in the end, in this particular specific case, the requirements of Art. 123(2) EPC were not met. The skilled person would not have derived the specific combination as now captured in amended claim 1 directly and unambiguously, using common general knowledge, and as seen objectively and relative to the date of filing, from the whole of these documents as filed. 

The Board in particular considered that claim 1 as originally filed in combination with the dependent claims and the general part of the description covered “a large number of possibilities” relating to:

• the nature of the zeolitic material
• numerous steps of the post-treatment process and sequences of those steps, and
• numerous operating parameters to be respected during the process steps

What seemed to have influenced the above evaluation was the fact that, according to the Board, many features of claim 1 of the main request were claimed in varying degrees of preference in the dependent claims and/or in the general part of the description. In view of these apparent “varying degrees of preference” expressed in relation to different features as combined in the amended claim, the Board decided that a systematic approach to deciding whether Art. 123(2) EPC was compiled with could no longer be followed.

Specific combination of features

As a consequence of the above, the Board, viewed the amended claim 1 as a result of a multiple selection from different dependent claims as originally filed. According to the Board, these selections led to a very specific combination of features that were cherry-picked from among numerous possibilities as listed in different dependent claims and indicated therein with different degrees of preference. 

To support this view, the Board then analysed in detail the different degrees of preference as originally indicated for each feature introduced into amended claim 1 from its dependent claims 4, 9, 11, 13 and 17 and concluded that there was no consistency between them. To corroborate the latter finding, the Board also remarked that: “by contrast, none of the options of dependent claims 2, 3, 5 to 8, 10, 12, 14 to 16 and 18 as originally filed have been inserted into claim 1” (sic!). Based on the above analysis, the Board concluded that: “In view of the sheer number of possibilities, the subject-matter of claim 1 at issue is not directly and unambiguously derivable from the dependent claims, even when the general part of the description is taken into account.”

Although the Board in principle agreed with the AP that it was “true that the inventive examples (fell) under claim 1 of the main request”, they took the position that the “examples (were) not sufficient as a pointer to the specific selection defined in claim 1 since they (fell) under the most preferred options of the various parameters and ranges.”

Conclusion of the Board

In sum, the Board concluded (point 1.6):

Claim 1 thus corresponds to a multiple selection from a large number of lists and possibilities without a specific pointer. Contrary to the AP's view, the skilled person is presented with new information. While the core of the invention (e.g. as illustrated by the inventive examples) may have remained the same, the boundaries of the subject-matter to be protected have changed in a way that is not directly and unambiguously derivable from the application as originally filed, in particular in view of the large number of selections made.

The Board additionally discussed why other decisions of the Technical Boards of Appeal did not apply to the case at hand. While doing so, the Board admitted that when assessing added matter “the number of selections and the number of alternatives within each selection definitely play a role. Similarly, (as) the length of a number of lists is a criterion when assessing novelty over a piece of the prior art.” (point 1.8.3). The Board later also clarified that “contrary to the appellant's opinion, the Board's conclusion would remain the same if the various parameters with different levels of preference were drafted as a sequence of dependent claims and not with alternatives nested within the same claim.”

As a consequence, claim 1 was found not to meet the requirements of Art. 123(2) EPC, the patent remained revoked, and the appeal was dismissed.