In a recent decision issued by a Technical Board of Appeal at the European Patent Office (EPO), the strict approach the EPO applies to analysis of added matter was re-confirmed. This decision follows amendment to the Guidelines for Examination which gave applicants hope that the EPO was relaxing its assessment of added matter.

The Appellant, Samsung Electronics Co. Ltd., submitted amended claims in the form of a main request and an auxiliary request. The Examining Division issued an intention to grant (Communication pursuant to Rule 71(3) EPC) in relation to the auxiliary request and stated the claims of the main request contravened Article 123(2) EPC for adding matter beyond the contents of the application as originally filed. The appellant disagreed with the version intended for grant and maintained its main request. The Examining Division subsequently refused the application.

Samsung filed an appeal against the Examining Division’s decision, filing a single request based on the claims of the previously submitted main request. In response to the Summons to attend oral proceedings, Samsung maintained its previous request, submitted a new auxiliary request and a second auxiliary request based on the claims on which the 71(3) communication had previously issued.

The claimed invention related to a washing machine comprising inter alia a cabinet having an opening in an upper portion, a top plate to cover the opening, a rotary tub located in a water tub below the opening, a control panel mounted on a front wall of the cabinet, and an electric wire extending from the control panel. The main request claim 1 included a characterising portion which introduced a reinforcement extending across the opening to reinforce the cabinet, to couple the front and rear walls of the cabinet and to support and space the electric wire from the water tub.

The first auxiliary request claim 1 further defined the reinforcement as comprising a support plate mounted to the cabinet and extending across the opening and a wire holder on the reinforcement to hold the electric wire. The second auxiliary request claim 1 further defined a plurality of electric wires and wherein the reinforcement further comprises the support plate, side plates extending upwardly from each of both sides of the support plate to support the top plate, and the wire holder.

Samsung’s key arguments may be summarised as: a) the revised Guidelines for Examination, at the time of oral proceedings before the Board, constituted an interpretation of how to apply the decision of G2/10 of the Enlarged Board of Appeal in relation to Article 123(2) EPC; and b) the features of the ‘reinforcement’ and ‘electrical wires extending from a control panel’ objected to by the Board had clear basis in the description as filed.

The Technical Board of Appeal confirmed that they are not bound by the Guidelines for Examination and that any changes made to the Guidelines shall not influence their assessment of Article 123(2) EPC, i.e. that the appellant was wrong in this regard. Furthermore, the Board confirmed the decision of G2/10 and, referring to G3/89 and G11/91, considered the following definition as the ‘gold standard’ for assessing an amendment for adding matter:

“….any amendment to a European patent application or granted European patent…can only be made within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed…”.

In reaching its decision, the Board further stated that the features of the reinforcement, recited in claim 1 of the main request, were not directly and unambiguously derivable from the application as filed. The original wording of the application as filed defined the purpose of the reinforcement as being to ‘support and reinforce the top plate’, whilst the purpose of the reinforcement in claim 1 of the main request was quite different and covered embodiments in which the reinforcement is spaced from the top plate to couple the front and rear wall of the cabinet whilst not supporting and reinforcing the top plate. The Board was of the opinion that these embodiments are not disclosed in the application as filed and the main request thus contravened Article 123(2) EPC.

In relation to the first auxiliary request, the additional feature of a support plate does not provide the supporting and reinforcing function of the reinforcement. The Board thus ruled that the amendments of the first auxiliary request therefore do not overcome the objection raised against the main request.

In relation to the second auxiliary request, although the amendments introduced the missing features that strengthen the top plate, there was no disclosure in the application as filed that the plurality of electrical wires supported by the reinforcement could connect to something other than water supply valves and a water level sensor which are mounted at an upper, rear portion of the cabinet. It is precisely because the valves and sensor are mounted at the specific position at the upper portion on the cabinet’s rear wall that the plurality of electric wires connecting them to the control panel, which is also mounted at an upper portion of the cabinet at its front wall, have to cross the cabinet and be supported by the reinforcement to avoid contact with, and damaged induced by, the vibrating water tub. Therefore, since the features of the reinforcement (which are functionally and inextricably linked to the valves and sensor and their position in the cabinet, and thus to the plurality of wires) were missing from the amended claims, the requirement of Article 123(2) EPC was not met.

The appeal was dismissed.

The Decision can be found here: http://www.epo.org/law-practice/case-law-appeals/pdf/t121363eu1.pdf

Practical advice – when amending a claim of a pending European patent application or a granted European patent, remember to carefully consider the ‘gold standard’ for assessing added matter!