T 1886/12 - Broad does not equate insufficient disclosure

T 1886/12
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Key points

• In this opposition-appeal case, the board observes that "a sufficiency objection requires that there are serious doubts, based on technical considerations and/or substantiated by verifiable facts. The mere fact that a claim is broad (as in the present case by virtue of terms such a "active particulate" and "comprising") is usually not in itself a ground for considering that there is insufficiency of disclosure." 

Summary of Facts and Submissions

I. The appeal by opponent 2 lies from the decision of the opposition division to reject the two oppositions filed against European patent No. 0 865 314, granted on European patent application 96 941 491.1.

II. In the present case, a first appeal (case T 1164/01) had been filed against the refusal of the application by the examining division. The board entrusted with that case decided that the (amended) claims according to the then pending sole request met the requirements of Articles 123(2) and 84 EPC, and that their subject-matter was novel and inventive with regard to the prior art cited by the examining division, in particular the following documents []

The case was thus remitted to the examining division with the order to grant a patent.

Reasons for the Decision

Sufficiency of disclosure

6. The appellant raised several objections concerning the alleged insufficiency of disclosure, but did not discharge the burden of proof resting on it in this respect. For the board, the arguments presented by the appellant (infra) do not justify shifting the burden of proof to the respondent.

6.1 For the board, the appellant's assertion that the claimed invention could not be carried out over the entire range claimed is, in essence, based on the argument that the claimed structure could not be obtained using undefined components, of any size and shape, in any relative amounts.

6.2 The board observes that a sufficiency objection requires that there are serious doubts, based on technical considerations and/or substantiated by verifiable facts. The mere fact that a claim is broad (as in the present case by virtue of terms such a "active particulate" and "comprising" [)] is usually not in itself a ground for considering that there is insufficiency of disclosure.

However, despite the positive finding of the opposition division regarding sufficiency, the appellant did not submit any concrete evidence convincingly showing that the skilled person was not in a position to provide structures as claimed across the full ambit of the claims.

6.3 More particularly, the appellant did not dispute that the concrete examples contained in the patent in suit can be reproduced by the skilled person. Instead, it argued, but without providing supporting evidence, that skilled person would not be able to implement further embodiments of the invention, differing from those exemplified in the patent.

6.4 As regard the terms "permeable" and "flexible", the appellant did not dispute that they have a certain general meaning in the technical field of composite structures. This meaning may be rather broad, and the board accepts there may be situations where, for a given composite material, it may not be easy to decide whether or not said material clearly qualifies as being both "permeable" and "flexible", even taking into account its intended field of application. However, for the board, the use of these relative terms may at most result in some ambiguity (lack of clarity) as regards the boundaries of the claimed subject-matter, but this ambiguity certainly does not permeate the whole claim. The board is thus convinced that the skilled person is able to prepare, based on the indications and examples given in the patent in suit and without undue burden, further composite structures as defined in claim 1 at issue (for given purposes) which doubtlessly meet the criteria of permeability and flexibility.