T 0017/86 (Refrigeration plant) 26-10-1987

Reasons for the Decision

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

2. As required by Article 97(1) the Examining Division considered whether the main claim filed in response to its first communication conformed to Article 123(2).

2.1 The new claim under the main request contains all the features of the original Claim 1 plus one new feature in the form of an adjustable desuperheating valve.

2.2 The Examining Division considered that the addition of this isolated technical feature, which in the application had been described solely in association with a supercooler, while representing a limitation nonetheless constituted an extension of the subject-matter beyond the content of the application as filed and was thus in breach of Article 123(2) EPC.

2.3 The Board agrees with the Examining Division that an extension of the subject-matter can result from the addition of limitations not contained in the application as filed (see Decision T 201/83, OJ EPO 1984, 481, Reasons point 2). Accordingly, the test for compliance with Article 123(2) EPC is basically a novelty test, i.e. no new subject-matter must be generated by the amendment (Decision T 201/83, Reasons point 3). That does not mean that the technical features of the amended claim need to have been described separately, in a specific example, say. The only requirement is that all these technical features should have been clearly described in the original application. A further stipulation in the case of a feature claimed separately but described only in combination with others is that it should be evident beyond any doubt to a skilled person reading the original description that this isolated technical feature on its own enables the object in view to be achieved.

3. In order therefore to establish whether the device according to the new Claim 1 conforms to Article 123(2) EPC it needs to be ascertained whether the application as filed indisputably disclosed all the technical features of the device covered by the amended claim and whether it is clear beyond any doubt to a skilled person that the device can function independently of any other added element to achieve the object of the invention as now claimed.

4. With this in mind the novelty test must be applied to make sure that a claim filed after the existing Claim 1 and having exactly the same subject-matter could be regarded as not being new by comparison with the application as filed, including the drawings, taking into account not only the technical features present in the later claim but also those omitted. This is because, as indicated under 2.3 above, novelty could consist in the absence of one of the elements of a device.

5. In the present case the Examining Division objected that the requirements of Article 123(2) had not been fulfilled on two counts:

- The technical feature consisting in the supercooler was not included, whereas in the Examining Division's view it cannot be dissociated from the desuperheater.

- The technical feature which "desuperheats to a selected level", which characterised the valve, did not appear in the application as filed.

5.1 With regard to the first of these reasons, in the embodiments described the desuperheater is in fact always connected to a supercooler, as the Examining Division rightly stated. It now needs to be established whether it was recognised on the date of filing that a unit such as that generally covered by the new Claim 1 could work without the said supercooler and attain the desired result, namely an increase in energy output.

5.2 Although the two elements (desuperheating and supercooling) are associated without distinction at numerous points in the description, the following conclusion is drawn on page 5, lines 17 to 29, following a comparison between an imaginary unit based on the state of the art and a unit according to the application: "As a result of controlled desuperheating of the expanded gas arriving from the high-pressure stage's utilisation points and of the gas discharged from the low-pressure stage of the unit an appreciable saving of energy is achieved in the cooling process at these utilisation points at evaporation temperatures of - 38°C and - 10°C."

5.3 When the technical features of the new claim are compared with the original description, therefore, the use of a desuperheater on its own (without a supercooler) would not be new. Accordingly, the device described in the application as filed can function without supercooling and at the same time produce the improvement in energy output which it is intended to achieve. The addition of desuperheating alone (without supercooling) to the original Claim 1 does not therefore contravene Article 123(2) EPC.

5.4 With regard to the valve the appellants claim in their notice of appeal that all valves are adjustable, which is usually the case. Furthermore in Figures 2 and 3 of the application the "valve" 31 is represented by a symbol normally used in cooling technology to represent a manual pressure-reducing valve. This symbol moreover represents a valve of that type in some of the citations, for example US-A-4 151 724 (Figure 1, "expansion valve 86", column 3, line 17) or DE-A-1 501 115 (Figures 1 and 2, "expansion valve 16", page 16, line 11).

5.5 EPO Boards of Appeal have always allowed features of the drawings to be incorporated in the claims provided that those features are clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art and so corroborated by the content of the description as a whole as to be manifestly part of the invention (Decision T 169/83, OJ EPO 1985, 193).

The Board accordingly considers that, since Figures 1 and 2 clearly and unmistakably represent an adjustable valve, the use of such a valve was disclosed in the application documents in association with desuperheating to a selected temperature of the gas currents in question (description, page 5, lines 10 to 14 and 23 to 29). Any such claim would therefore no longer be new vis-à- vis the application as filed.

5.6 Consequently, the incorporation in the main claim of the corresponding technical features does not constitute an amendment which can be refused under Article 123(2) EPC. ...