T1845/14 - Parameter and invention

Key points

• This opposition appeal decision deals with the question when an ambiguity in a claim becomes a matter of insufficient disclosure rather than only a clarity issue (clarity not being a ground of opposition).
• The Board is of the opinion that T0593/09 is incorrect where it proposes that the question is whether the skilled person is able to identify the technical measures necessary to solve the problem underlying the patent at issue" (this test of T0593/09 is now frequently applied).
•  "The present Board is, however, convinced that the ability of the skilled person to solve the problem underlying the patent in suit, when seeking to carry out the invention, is not an appropriate criterion for assessing sufficiency of disclosure where the problem is not part of the definition of the subject-matter claimed." 
• The Board notes that for inventive step, it is not required that the claimed subject-matter recites the features necessary to provide the advantages mentioned in the description. Even if a technical effect is to be denied, the claimed subject-matter can still be a non-obvious alternative.
• " In accordance with this approach for assessing inventive step consistently adopted by the boards of appeal, a claimed invention should not be precluded from patentability on the mere ground that the problem indicated in the patent as underlying the claimed invention in suit is subsequent to a necessary objective assessment not considered solved over the whole scope". 
• In other words, a subject-matter which does not solve the problem indicated in the patent in suit but is still considered inventive after the necessary reformulation of the problem can be considered to provide a contribution to the art justifying the extent of the patent monopoly."  
•  "The term "invention" corresponds, in accordance with Rule 43(1) EPC, to the specific combination of features in the claim, as was reminded in Opinion G 2/98" 
• " The Board does not see any reason to consider a different meaning of the term "invention" in relation to the issue of sufficiency of disclosure. There is no reason to define the invention on the basis of an effect alleged in the patent to be achieved by the claimed subject-matter or on the basis of specific conditions for measuring a parameter when the wording of the claim does not require this. This would amount to considering sufficiency of disclosure on the basis of a restricted reading of the claim. This is not done when assessing other patentability requirements, such as novelty and inventive step, and there is no apparent reason why sufficiency of disclosure should be assessed on a different basis." 
•  "There is, therefore, no reason to base the assessment of sufficiency of disclosure on the ability to find out which definition of a parameter in a claim or which conditions for its measurement are necessary or the patentee had in mind when drafting the patent in cases when this definition or these conditions are held to be necessary to ensure that the problem underlying the patent is effectively solved, but the problem itself or an effect derivable from it is not defined in the claims." 
• " The position of the Board is also supported by G 1/03 (OJ 2004, 413) in which, concerning non-working embodiments" 
• " The view expressed above could be perceived as a deviation from the above cited decisions or other decisions of the Boards of Appeal in which a criterion for assessing sufficiency of disclosure was whether the ambiguity of a parametric definition deprived the person skilled in the art of the promise of the invention. However, there is no need to refer a question to the Enlarged Board of Appeal as the diverging views arise from a different approach regarding the meaning of the term "invention" in relation to the issue of sufficiency of disclosure and the approach taken in the present decision is supported by [G2/98]." 
• The Board does not state a test in general, but rather denies inventive step based on argumentation which is restricted to the specific facts of the case. 

Headnote
In case of an unclear parameter defined in a claim whose values required in the claim are indicated in the specification to be essential to solving the problem underlying the patent at issue, the ability of the skilled person to solve that problem by reproducing what is claimed is not a suitable criterion for assessing sufficiency of disclosure when the problem or an effect derivable from it are not explicitly or implicitly part of the definition of the claimed subject-matter (point 9.8 of the Reasons).

EPO T1845/14 - link

Ability of the skilled person to solve the problem underlying the patent

7. The respondents had a separate line of argument in support of their objection of a lack of sufficiency of disclosure. They argued that the meanings of the SCDB and CDBI parameters were so ambiguous that the skilled person would have been unable to select the copolymers which allegedly provided the benefits of the invention described in paragraph [0011] of the specification, namely, a good dart drop impact strength.

8. The respondents relied in support of their case on decisions T 0593/09 of 20 December 2011, T 0815/07 of 15 July 2008 and T 0172/99 of 7 March 2002, the rationale of which needs first to be addressed.

8.1 In T 0593/09, the criterion applied for assessing sufficiency of disclosure was whether the unclear parameter of the claim was so ill-defined that the skilled person would not have been able, on the basis of the disclosure as a whole and using their common general knowledge, to identify (without undue burden) the technical measures (e.g. selection of suitable compounds) necessary to solve the problem underlying the patent at issue (point 4.1.4 of the reasons, emphasis by the present Board). The subject-matter claimed was a polyethylene terephthalate resin covered metal sheet characterised inter alia by a polyethylene terephthalate having a low temperature crystallisation (LTC) temperature ranging from 130 to 165ºC. The LTC temperature was highly dependent on the conditions for its determination which were not specified in the patent. A LTC temperature in the range defined in the claim was crucial in order to solve the problem addressed in the description. That problem was not part of the definition of the subject-matter claimed. According to T 0593/09 (point 4.1.5 of the reasons), the rationale of this test underlay decisions T 0608/07 of 27 April 2009 (reference being made to point 2.5.2 of the reasons for the decision), T 0815/07 (reference being made to the headnote) and the decision in Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd [2004] UKHL 46 of the United Kingdom House of Lords, reference being made to paragraph 126 of the latter.

8.2 According to section 2.5.2 of the reasons for the decision of T 0608/07 "for an insufficiency arising out of ambiguity it is not enough to show that an ambiguity exists, eg at the edges of the claims. It will normally be necessary to show that the ambiguity deprives the person skilled in the art of the promise of the invention" (passage underlined by the present Board). The same section also indicates the necessity to investigate "the effect of this ambiguity over the whole scope of the claim, in particular as to whether it is only significant at the edges or permeates the whole claim", reference being made at the end of the section to the decision of the High Court of England and Wales, Zipher Ltd v. Markem Systems Ltd [2008] EWHC 1379 ("Zipher Ltd v. Markem Systems Ltd").

8.3 The concept of promise of the invention is not defined in T 0608/07 but appears in Zipher Ltd v. Markem Systems Ltd, in which three types of objection of sufficiency of disclosure are described.

8.3.1 The first type is the "so-called classical insufficiency, is where following the express teaching of the patent does not enable the skilled addressee to perform the invention. This type of insufficiency requires an assessment by the court of the steps which it would be necessary for the skilled reader or team to take in following the teaching of the specification and in order to arrive within the claim. Plainly the steps should not include inventive ones. But a patent can also be insufficient if the steps can be characterised as prolonged research, enquiry or experiment" (point 363 of the reasons). According to point 365, in reference to this type of objection, it is stated "Two points need to be emphasised in this case. The first is that it is the claimed invention which must be enabled. If the skilled team would not be able to make something within the claim, insufficiency will be established. But what if the skilled team would be able to make something falling within the claim, but which is not as good as the patent promises? In my judgment that will not be insufficiency, although it may help in some cases (for the purposes of the separate objection of lack of inventive step) in showing that the technical advance made by the claim is less great than contended for by the description."

Hence, although the expression "promise of the invention" in light of Zipher Ltd v. Markem Systems Ltd could be understood to correspond to the indication in the description of the patent of the technical benefits provided by the claimed subject-matter, this decision makes clear that not fulfilling the "promise of the invention" is rather an issue of inventive step.

8.3.2 The second type of objection, the "so-called Biogen insufficiency" dealt with in points 367 to 373 of Zipher Ltd v. Markem Systems Ltd, is not part of the established case law of the Boards of Appeal of the EPO as indicated in T 1727/12 of 1 February 2016 (point 1.2 for the reasons), and is not relevant to the present case.

8.3.3 The third type of objection of insufficiency mentioned in point 374 of Zipher Ltd v. Markem Systems Ltd is "that which arises through ambiguity. If the skilled person cannot tell whether he is working the invention or not, the specification is insufficient. It is not, however, enough to establish this type of insufficiency to show that there may be a puzzle at the edge of the claims. It will normally be necessary for the problem to permeate the whole claim. An example of an insufficiency of this type is the molecular weight test in Kirin Amgen at [121] which made it impossible to tell whether there was infringement or not". This type of objection is based on the same criterion as used in decision T 0608/07 (see point 8.2 above).

8.4 The Kirin Amgen decision underlying the third type of objection of insufficiency mentioned in point 374 of Zipher Ltd v. Markem Systems Ltd is Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd [2004] UKHL 46 of the United Kingdom House of Lords ("Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd"), of which paragraph 126 was also referred to in section 4.1.5 of T 0593/09 (see point 8.1 above). Points 103 to 109 of Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd, in particular, points 103, 104 and 109 quoted below, show that in the context of the third type of objection mentioned in point 374 of Zipher Ltd v. Markem Systems Ltd, the term "invention" does not refer to the combination of features defined by the terms of the claim under consideration but apparently rather to the inventive idea or concept the inventor had in mind that led the patentee to seek protection for what is claimed:

"Whether the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it" (point 103)

"It seems to me that a good deal of the argument in this case about sufficiency, like the argument about infringement, really turns on a dispute over exactly what the invention is: whether it is the discovery of the DNA sequence which codes for EPO, or a way of making EPO, or a new artificial form of EPO. And the confusion is compounded by the fact that claims 19 and 26 are both in essence product-by-process claims, even though, in the case of claim 19, the product is distinguished from prior art by an artificial condition about molecular weight. All this creates ambiguity about the nature of the invention. But in order to decide whether the invention has been fully enabled, you first have to decide what the invention is." (point 104)

"Before considering any of the four objections, it is, as I indicated earlier, necessary to decide the nature of the invention which the specification had to enable." (emphasis by the present Board)"In my opinion, it was a way of making EPO. For the reasons which I gave when discussing infringement, it was not and could not be the DNA sequence. It could only be a way (however broadly expressed) of making EPO by the use of that information. It could not be EPO itself because that was not new. Nor was it the discovery that a product had a useful quality. The useful qualities of EPO were well known. Even in the case of claims 19 and 26, although they are nominally product claims, the essence of the invention lies in the process. If one keeps in mind that the invention is a way of making EPO, a good deal of the difficulty about sufficiency resolves itself." (point 109)

In Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd claim 19 of the patent was directed to a recombinant EPO (rEPO) being characterised by, inter alia, a higher molecular weight by SDS-PAGE from erythropoietin isolated from urinary sources (uEPO), SDS-PAGE being a method for ascertaining the apparent molecular weight of a protein. Having regard to points 124, 126 and 129 of Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd, it appears that insufficiency of the rEPO defined in claim 19 was concluded not because the skilled person would not have been able to carry out the rEPO defined by the terms of that claim (it did not depend on the choice of the uEPO used for the molecular weight test) but rather because it was not clear which uEPO the patentee had in mind for the test when defining the claimed rEPO.

8.5 According to the headnote of T 0815/07 cited by the respondents and in T 0593/09 "The purpose of a parameter contained in a claim is to define an essential technical feature of the invention. Its significance is that the presence of this technical feature contributes to the solution of the technical problem underlying the invention. The method specified for determining the parameter should therefore be such as to produce consistent values, so that the skilled person will know when he carries out the invention whether what he produces will solve the problem or not". In T 0815/07, the problem indicated in the specification to be solved by the invention was not implied by the wording of the claims.

8.6 In decision T 0172/99, also cited by the respondents it was held that "In the case of claimed subject-matter relying on a newly formulated and, hence, unfamiliar parameter to define the solution of a technical problem by which a relevant effect is achieved, the applicant or patentee, who has the duty of making a full and fair disclosure of his invention to the public (Article 83 EPC), is under a particular obligation to disclose all the information necessary reliably to define the new parameter not only (i) in a formally correct and complete manner such that its values can be obtained by a person skilled in the art without undue burden, but also (ii) in a manner which reliably retains the validity of the parameter for the solution of the technical problem for the application or patent in suit as a whole in the sense that the values routinely obtained will not be such that the claimed subject-matter covers variants incapable of providing the relevant effect or, therefore, of solving the associated technical problem" (catchword). In T 0172/99, the relevant effect or problem solved was the achievement of "a good balance between impact strength and gloss" (see point 4.4 of the reasons for the decision), although such an effect was not part of the definition of the subject-matter claimed. It was held that the absence, from the disclosure of the patent in suit, of an essential piece of information regarding the conditions for measuring the parameter meant that the ranges routinely obtained for the latter would be such that the claimed subject-matter inevitably covered variants which would be incapable of providing the promised effect of combined gloss and high impact strength or, therefore, of solving the relevant technical problem (see point 4.5.8 of the reasons for the decision).

8.7 Thus, all the decisions cited above (i.e. the decisions cited by the respondents and the decisions cited in those decisions) relating to a parameter mentioned in a claim whose definition is ambiguous are based on a definition of the term "invention" which does not refer to the combination of features defined by the terms of the claim under consideration but rather to the inventive idea or concept the inventor had in mind that led the patentee to seek protection for what is claimed.

Decisions T 0593/09, T 0815/07 and T 0172/99 in particular use the same criterion for assessing sufficiency of disclosure: the ability of the skilled person, seeking to reproduce what is claimed, to solve the problem underlying the patent at issue which was mentioned in the specification but was not part of the definition of the subject-matter claimed.

9. For the reasons given below, the present Board is, however, convinced that the ability of the skilled person to solve the problem underlying the patent in suit, when seeking to carry out the invention, is not an appropriate criterion for assessing sufficiency of disclosure where the problem is not part of the definition of the subject-matter claimed.

9.1 In landmark decision T 435/91 (OJ EPO 1995, 188), the Board, in the context of a functional definition of a component included in a claim, based its decision on the general legal principle "that the protection conferred by a patent should correspond to the technical contribution to the art made by the disclosure of the invention described therein, which excludes the patent monopoly from being extended to subject-matter which, after reading the patent specification, would still not be at the disposal of the skilled person". The Board added that "the available information must enable the skilled person to achieve the envisaged result within the whole ambit of the claim containing the respective "functional" definition without undue difficulty, and that therefore the description with or without the relevant common general knowledge must provide a fully self-sufficient technical concept as to how this result is to be achieved" (point 2.2.1 of the reasons, fourth and fifth paragraphs). It is also settled case law that the same principle applies when the claim contains a parametric definition because the subject-matter cannot be expressed only in terms of structural features. What is relevant here is that the enablement of the claimed subject-matter including the functional or parametric definition present in the claim is required, not the ability to solve a problem underlying the patent in issue not present in the claim.

9.2 In accordance with another landmark decision, T 939/92 (OJ EPO 1996, 309), the same general legal principle (i.e. that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art) also governs the decision that must be made under Article 56 EPC because everything falling within a valid claim (i.e. all embodiments claimed) has to be inventive (point 2.4.2 of the reasons). If this is not the case, the claim must be amended to exclude obvious subject-matter to justify the monopoly. As further explained in point 2.4.3 of T 939/92: "For this reason, the boards of appeal consistently decide the issue of obviousness on the basis of an objective assessment of the technical results achieved by the claimed subject-matter, compared with the results obtained according to the state of the art. It is then assumed that the inventor did in fact seek to achieve these results and, therefore, these results are taken to be the basis for defining the technical problem (or, in other words, the objective) of the claimed invention (which problem may, as already stated above, be to provide a further - or alternative - process or physical entity, here a group of chemical compounds)."

9.3 In accordance with this approach for assessing inventive step consistently adopted by the boards of appeal, a claimed invention should not be precluded from patentability on the mere ground that the problem indicated in the patent as underlying the claimed invention in suit is subsequent to a necessary objective assessment not considered solved over the whole scope, for example, because evidence or arguments submitted in this respect were not found to be convincing or because the closest prior art determined when assessing inventive step was not the starting point for the invention indicated in the patent in suit. A reformulation of the problem, even in terms of providing a further process or product, does not prevent the acknowledgement of an inventive step if the solution defined in the claim under consideration was not obvious in view of the state of the art. In other words, a subject-matter which does not solve the problem indicated in the patent in suit but is still considered inventive after the necessary reformulation of the problem can be considered to provide a contribution to the art justifying the extent of the patent monopoly.

9.4 Accordingly, to acknowledge a contribution to the art justifying the patent monopoly, it is required by the case law that the information brought to the knowledge of the public through the filing of the patent is sufficient to allow the skilled person, if necessary using common general knowledge, to carry out the invention as claimed in its whole extent with reasonable effort, which claimed invention must correspond to an unobvious solution of a particular technical problem, which is not necessarily that indicated in the application as filed or the patent in suit, but might have been reformulated in the course of the proceedings before the EPO, provided that the conditions required by case law are met (Case Law, see above, I.D.4.4.1). Accordingly, provided that the problem indicated in the patent in suit is not implied by the wording of the claims in terms of, for example, an effect or a functional definition, there is no apparent justification to deny a contribution to the art justifying a patent monopoly for the mere fact that the claimed subject-matter cannot be considered to solve a problem initially indicated in the specification.

9.5 Furthermore, as highlighted in T 0409/91 (OJ 1994, 653, point 3.3 of the reasons), the extent of the patent monopoly which should correspond to the technical contribution to the art for it to be justified is defined by the claims. This is in accordance with Article 84 EPC, which inter alia stipulates that the claims shall define the matter for which protection is sought and Rule 43(1) EPC stipulating that the claims shall define the matter for which protection is sought in terms of the technical features of the invention.

9.6 The term "invention" corresponds, in accordance with Rule 43(1) EPC, to the specific combination of features in the claim, as was reminded in Opinion G 2/98 of the Enlarged Board of Appeal (OJ 2001, 413; point 2 of the Reasons), whose definition is used when issues of priority ("in respect of the same invention" (Article 87(4) EPC), novelty ("An invention shall be considered to be new if" (Article 54(1) EPC) and inventive step ("An invention shall be considered as involving an inventive step if" (Article 56 EPC)) are considered.

The Board does not see any reason to consider a different meaning of the term "invention" in relation to the issue of sufficiency of disclosure. There is no reason to define the invention on the basis of an effect alleged in the patent to be achieved by the claimed subject-matter or on the basis of specific conditions for measuring a parameter when the wording of the claim does not require this. This would amount to considering sufficiency of disclosure on the basis of a restricted reading of the claim. This is not done when assessing other patentability requirements, such as novelty and inventive step, and there is no apparent reason why sufficiency of disclosure should be assessed on a different basis.

There is, therefore, no reason to base the assessment of sufficiency of disclosure on the ability to find out which definition of a parameter in a claim or which conditions for its measurement are necessary or the patentee had in mind when drafting the patent in cases when this definition or these conditions are held to be necessary to ensure that the problem underlying the patent is effectively solved, but the problem itself or an effect derivable from it is not defined in the claims. The invention is defined by the terms of the claims, which should be given their broadest technical sensible meaning in the context they appear.

9.7 The position of the Board is also supported by G 1/03 (OJ 2004, 413) in which, concerning non-working embodiments (point 2.5.2, third paragraph of the reasons), it was pointed out that if "there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)".

9.8 Therefore, in view of the reasons given above in points 9.1 to 9.7, it is concluded that in case of an unclear parameter defined in a claim whose values required in the claim are indicated in the specification to be essential to solving the problem underlying the patent at issue, the ability of the skilled person to solve that problem by reproducing what is claimed is not a suitable criterion for assessing sufficiency of disclosure when the problem or an effect derivable from it are not explicitly or implicitly part of the definition of the claimed subject-matter.

9.9 The view expressed above could be perceived as a deviation from the above cited decisions or other decisions of the Boards of Appeal in which a criterion for assessing sufficiency of disclosure was whether the ambiguity of a parametric definition deprived the person skilled in the art of the promise of the invention. However, there is no need to refer a question to the Enlarged Board of Appeal as the diverging views arise from a different approach regarding the meaning of the term "invention" in relation to the issue of sufficiency of disclosure and the approach taken in the present decision is supported by the decisions of the Enlarged Board of Appeal G 2/98 (see above) and G 1/03 (see above).

10. Consequently, the respondents' argument that the skilled person would not have understood how to determine the CDBI and SCBD parameters to be able to select the correct polymers for obtaining the alleged advantage of good dart drop impact strength indicated in paragraph [0011] of the specification cannot in itself lead to the conclusion that the invention lacks sufficiency of disclosure.