T 0133/85 (Amendments) 25-08-1987

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Article 84 EPC requires inter alia that the claims be supported by the description. Objection can arise under this Article when a claim is so broad that it is not supported by the description of the invention. Such an objection can then be met either by narrowing the scope of the claim or, subject to Article 123(2) EPC, by amending the description. Such an objection under Article 84 arose in the present case in respect of original Claims 1 and 10. In the description as originally filed, the invention is described within a fairly narrow framework. After a general introduction in which various known copying systems are explained and defined, specific reference is made to a US patent (Adamek) as being concerned with a duplex copying system which is also a pre-collation copying system. It is then made clear at the top of page 3 that the present invention is an improvement over the Adamek patent, as follows: "The present invention is an improvement over said Adamek Patent No. 4 116 558 for automatically achieving copying and storage of even page numbered copies of simplex documents in the duplex buffer tray to avoid variable output inversion or copying of a blank page when an odd number of simplex documents are being duplex copied, as indicated in that patent to be desirable, and for achieving this feature under the further difficulty of copying the documents in reverse (descending) serial page order with a different type of document handling system." In other words, at a very early stage in the description, it is stated that the invention includes as an essential feature an arrangement in which, regardless of whether there are an even or an odd number of documents to be duplex copied, it is always the even numbered documents which are copied and temporarily stored in a buffer. By the use of this arrangement, it is stated that the inversion and copying of a blank page, when an odd number of documents is to be copied, is avoided. Following further pages of more specific description of the method and apparatus of the invention, at pages 11 onwards the nature of the invention is again described in a limited manner. Thus, particular passages on pages 12, 13, 16 and 17 all relate to the fact that under the "present system" an additional inversion and copying of blank sheets is avoided. It is therefore clear from a reading of the original description (on its proper interpretation) that it is an essential feature of the invention that the system is one in which only even-numbered sheets are sent to the buffer store. However, the wording of the original method Claim 10 (and indeed the original apparatus Claim 1) is such as to cover methods in which after determining that there is an odd number of documents in the set, the last (n) and subsequent alternate simplex documents would be copied. This would result in the odd-numbered sheets being copied and stored in the buffer store. In all the intermediate copying circulations of the set, this last (n) sheet would then be subjected to a copying run of its blank reverse side, and all sheets would require an additional inversion to produce properly-collated output duplex sets. This Claim 10, insofar as it is not restricted to sending only even-numbered sheets to the buffer store, is clearly therefore inconsistent with, and not supported by, the original description, and was therefore open to objection under Article 84 EPC in this respect. This was clearly recognised by the Examining Division in paragraph 4(a) of its first Communication dated 8 July 1982. Although there was no specific reference to Article 84 EPC in the Communication, nevertheless the point was clearly made, and in the Board's view Article 84 EPC was clearly the basis for the Examining Division's objection. Amendment to avoid this objection required the narrowing of the scope of Claim 10 (and also Claim 1). The original description of the invention nowhere contemplated a system in which odd numbered documents were copied and stored: on the contrary, the copying and storing of the even-numbered documents was described as being essential, in order to obtain the stated advantage of the invention. Thus, the alternative of amending the description to support such a broad claim was not available, since it would inevitably have resulted in the addition of subject-matter extending beyond the content of the application as filed. Such amendment of the description would have required the introduction of embodiments into the description in which odd-numbered sheets were sent to the buffer store. Such embodiments were clearly not disclosed in the original application read as a whole, and their introduction would therefore have been contrary to Article 123(2) EPC.

3. As set out in paragraph II above, in reply to the objection of the Examining Division in its first Communication, the Appellant filed a new set of claims, including independent Claims 1 and 3, which (with subsequent minor amendments) were Claims A which were rejected in the Decision dated 4January 1985, on the basis set out in paragraph II above. However, the Board notes that in a Communication dated 29 April 1983, which preceded the Decision, the objection to Claims 1 and 3 was phrased differently from the Decision itself: it was stated in the first sentence of the Communication that "Independent Claims 1 and 3 ... do not comply with Article 123(2) EPC, in that the scope of these claims is broader than the original main claims." While later in the Communication this sentence was qualified somewhat, it nevertheless seems to have led the Appellant into thinking that Claims A had been rejected primarily because the Examining Division considered that under Article 123(2) EPC claim broadening was not permissible. The first argument of the Appellant, both in his Statement of Grounds of Appeal, see paragraph III above, and initially in his oral argument, was therefore that Article 123(2) EPC does not necessarily prevent the broadening of claims during examination.

4. As the Board stated during the oral proceedings, in its view the wording of Article 123(2) EPC does not necessarily prohibit the broadening of a claim during examination so as to extend the protection conferred (in contrast to Article 123(3) EPC, which clearly does prohibit amendment of a claim in such a way as to extend the protection conferred, but which only applies during opposition proceedings). Thus, outside opposition proceedings, and in particular during examination of an application, it is possible without contravening Article 123(2) EPC to broaden a claim (i.e. to extend the protection conferred by it), provided that the subject-matter which is within the claims for the first time as a result of the amendment was already disclosed within the content of the original application as filed. In this connection, see paragraph 5 below. Nevertheless, the amended Claims A which were rejected in the Decision of the Examining Division in the present case not only extended the protection conferred by such claims, but also (and this was the ground for their rejection) resulted in the application containing subject-matter which extended beyond the content of the application as filed (see paragraph II above). As a result of the Board's views as expressed early on during the oral proceedings, the Appellant submitted a new Claim C as his main request, and no longer contended for the claims which were rejected by the Decision of the Examining Division. Main request

5. The claim filed during the oral proceedings and marked C is worded as set out in paragraph IV above. In considering the allowability of this amended claim, it is important to distinguish between a possible objection under Article 84 EPC and a possible objection under Article 123(2) EPC. Article 84 EPC requires so far as relevant that the claims of a European patent application shall be supported by the description. This requirement must clearly be satisfied by the specification of every patent application if a patent is to be granted, whether or not amendments to the description and claims have been proposed during the course of prosecution of an application. The requirement of Article 84 EPC in respect of the claims of an application should be clearly distinguished from the provision in Article 123(2) EPC. Article 123(2) EPC, in contrast to Article 84 EPC, is of course only concerned with determining the allowability of an amendment proposed during the course of prosecution of an application (or proposed during an opposition), and is not applicable if no amendment has been proposed. However, it follows from the above that if an amendment to an application (either the description or the claims) is proposed, the application must be examined to ensure that the requirements of both Article 123(2) EPC and Article 84 EPC are met. The requirement of Article 123(2) EPC is clearly different from the requirement of Article 84 EPC, both as a matter of wording and as a matter of substance. As background to Article 84 EPC, it is noted that the description and the claims of a patent application have different functions. The primary function of the description is to enable a person skilled in the art thereafter to be able to carry out the invention. The primary function of the claims is to define the matter for which protection is sought in terms of the technical features of the invention (see Rule 29 EPC); thereafter the actual protection (i.e. the monopoly) given by a granted patent in each designated State is determined in accordance with Article 69 EPC by reference to the claims, ultimately by the courts of such States. Thus, the requirement in Article 84 EPC that the claims shall be supported by the description is of importance in ensuring that the monopoly given by a granted patent generally corresponds to the invention which has been described in the application, and that the claims are not drafted so broadly that they dominate activities which are not dependent upon the invention which has been described in the application. On the other hand, Article 84 EPC clearly envisages (by the use of the word "supported") that the "matter for which protection is sought" can be defined in a generalised form, compared to the specific description of the invention. The permissible extent of generalisation from the description to the claims, having regard to the requirement of Article 84 EPC, is a question of degree and has to be determined, having particular regard to the nature of the invention which has been described, in each individual case. In contrast, Article 123(2) EPC only requires to be considered when an amendment is proposed, either to the claims or to the description. For an amendment to be allowable, the application after amendment must not "contain subject-matter which extends beyond the content of the application as filed". Clearly the function of this provision is to prevent the addition of subject-matter to a patent application after the date of filing. In contrast, the reformulation of the same subject-matter as was originally present in an application as originally filed would be permissible under Article 123(2) EPC. Outside opposition proceedings (in which Article 123(3) EPC applies), such mere reformulation could include the broadening of the scope of the claims from their formulation as originally filed. In this particular connection, the statement made in the decision T 190/83, dated 24 July 1984 (which was referred to by the Appellant), to the effect that the original application may be said to represent a reservoir upon which the applicant may draw to amend the application, appears apposite. However, in accordance with Article 123(2) EPC, the original application should be considered as a reservoir which cannot be expanded after the date of filing. Having regard to the function of Article 123(2) EPC to prevent the addition of information after the filing date, earlier decisions of the Boards of Appeal have referred to the test for compliance with Article 123(2) EPC as "basically a novelty test" - see in particular Decision T 201/83 "Lead alloys/SHELL" (OJ EPO 1984, 481), at paragraph 3. While the Board agrees that the provision of Article 123(2) EPC requires in relation to any proposed amendment considerations which are basically similar to those which are involved in relation to the question of novelty of a claim, nevertheless in the Board's view care is necessary when applying the law relating to novelty to questions which arise in relation to the test under Article 123(2) EPC - namely that it is not permissible to amend "in such a way that (an application or patent) contains subject-matter which extends beyond the content of the application as filed." It is these words which must ultimately always be considered in each particular case. In this connection the Appellant drew attention to and relied upon a statement in Decision T 52/82 "Winding apparatus/RIETER" (OJ EPO 1983, 416, at paragraph 2), to the effect that it is incumbent on the Board to examine only whether the claim "is supported by the original document". As pointed out above, this consideration is not what is actually required by Article 123(2) EPC. In the Board's view, it is not necessarily appropriate to use the word "supported" in relation to and as an analogy for the requirement of Article 123(2) EPC. The use of such analogy could in a particular case lead to the wrong result, because in the Board's view the requirement of Article 123(2) EPC is certainly closer to the requirement in relation to novelty than to the requirement of Article 84 EPC that the claims are "supported by" the description. It is possible to "support" something which is broad from a narrower base. The distinction between the requirement of Article 123(2) EPC and the requirement of "support" in Article 84 EPC is most easily illustrated by reference to a chemical example. If the description of an application as filed describes the preparation of a novel chemical compound having particular properties, a claim as filed which defines that compound together with certain higher homologues might well normally be considered to be supported by such a description and thus to satisfy Article 84 EPC, if the skilled man would have no reason to doubt the soundness of such a generalisation. However, if both the description and the claims of the application as filed are limited to the preparation of one particular compound having particular properties, then a proposed amendment to include higher homologues either in the claims or the description or both would contravene Article 123(2) EPC, because the subject- matter of the amended application (including the higher homologues) would extend beyond the content of the application as filed (limited to the single compound). In contrast, if the description as originally filed disclosed the preparation of both the compound and certain higher homologues, but the claim as originally filed was limited to the one particular compound, an amendment which broadened the claim to include the certain higher homologues would be allowable under Article 123(2) EPC because the subject-matter of the amended application would not extend beyond the content of the application as filed. (In opposition proceedings such a claim broadening amendment would not be allowable because of Article 123(3) EPC).

6. With the above considerations in mind, clearly in the circumstances of this case the allowability of the application on the basis of the proposed amended Claim C - the main request of the Appellant - must be considered both under Article 123(2) and under Article 84 EPC. Insofar as Claim C requires a particular order of copying, which is in accordance with the original description, an objection under Article 123(2) EPC such as was taken against Claims A in the Decision dated 4 January 1985 is not applicable to Claim C. However, Claim C is not restricted to a system in which only even-numbered documents are copied and stored in a buffer. It was the lack of such a restriction in the claims as originally filed which led to the original objection of the Examining Division under Article 84 EPC (see paragraph 2 above). In the Board's judgement, this objection was rightly taken by the Examining Division to the claims as originally filed, and for this same reason Claim C is not allowable because it contravenes Article 84 EPC. Furthermore, in the Board's view it is clear that any amendment to the description so as to provide support for Claim C would not be allowable under Article 123(2) EPC, because such an amendment would necessarily contain subject-matter which would extend the content beyond that as originally filed, insofar as it would refer to systems in which odd-numbered sheets were copied and stored as being within the scope of the invention. This would be information which is contrary to the description as originally filed, which made it clear that it was the even numbered sheets which were copied and stored - see paragraph 2 above. On this basis, the main request is refused. Subsidiary request

7. Having regard to Claim 1 of the conditional submission B, it is observed that it corresponds essentially to the originally filed Claim 10 modified along the lines suggested by the Examiner, and could possibly, therefore, lead to the grant of a patent. However, since the Examining Division has not considered this claim in detail, it is in the Board's view proper procedure in respect of the rights of the Applicant that the question of patentability of the claim be considered by the first instance. Under these circumstances the Board deems it inappropriate to decide the issue but makes use of its power under Article 111(1) EPC to remit the case to the Examining Division for further prosecution.