T1474/12 Clear clarity

This is an opposition appeal case, where the Board had to decide on a (in my view) creative way of alleged lack of clarity. The Board did not accept the argument by the opponent:

R4.1 Claim 1 differs from claim 1 as granted in that the expression "sample of bodily fluid" is replaced by the expression "sample of urine, plasma or serum".

R4.2 Respondent 4 submitted that the expression "sample of urine, plasma or serum" could be interpreted as either "sample of urine or plasma or serum" or as "sample of urine and (plasma or serum)", and was thus unclear, contrary to Article 84 EPC. Moreover, according to respondent 4, the claimed subject-matter when relating to a "sample of urine and (plasma or serum)" was not disclosed in the application as filed, contrary to Article 123(2) EPC.

R4.3 The skilled person would read the expression "sample of urine, plasma or serum" in the context of the patent in suit as meaning "sample of urine or plasma or serum"; there is no teaching in the patent in suit to use a mixture of a urine sample with a plasma/serum sample when determining the concentration of NGAL in the context of the claimed method, nor would the skilled person be inclined to use such sample mixtures in view of his/her common general knowledge. Therefore, the amendment in question does not give rise to a lack of clarity under Article 84 EPC. Furthermore, the amendment [..]complies with Article 123(2) EPC.

For those of you working in the field of (medical) diagnostic methods this decision further contains an interesting part on a lack of sufficient disclosure.

Read the decision here.