T 1582/17 - The vagueness has to be lived with

Key points

• In this opposition appeal, sufficiency of disclosure is the issue. 
• " the limitation expressed in the characterising portion of the claim is vague [...] and extremely broad. The vagueness and the breadth of this definition are a matter of clarity and possibly of support by the description (Article 84 EPC), and affect the assessment of novelty. " 
• " Since claim 1 of the main request is the claim as granted, its clarity cannot be examined in opposition/appeal proceedings, but could only have been considered in the examination proceedings. 
• For the examination of the ground of opposition under Article 100(b) EPC the vagueness has to be lived with and the claim has to be interpreted. " 
• Repost - first posted on the wrong date (25 June instead of 26 July)

EPO T 1582/17 - link

3. Main request - sufficiency of disclosure

3.1 The invention of claim 1 does not concern a method but an apparatus. Therefore, in order to carry out the invention it is not necessary to actually "orient a relative position of the prosthetic femoral head to the acetabulum such that the indicia signifies proper relative position of the prosthetic femoral head in the acetabulum". What is necessary instead is to produce a device according to the claim.

[...]

The contentious issue is whether, on the basis of the information in the patent in suit and his common general knowledge, the person skilled in the art would be able to produce a device wherein the indicia "is configured to orient a relative position of the prosthetic femoral head to the acetabulum such that the indicia signifies proper relative position of the prosthetic femoral head in the acetabulum". To answer this question it is necessary to consider which product limitation, if any, is defined by this wording.

[...]

Therefore, the limitation expressed in the characterising portion of the claim is vague (due to the reference to an acetabulum of unspecified anatomy and to an undefined "proper relative position") and extremely broad. The vagueness and the breadth of this definition are a matter of clarity and possibly of support by the description (Article 84 EPC), and affect the assessment of novelty. Since claim 1 of the main request is the claim as granted, its clarity cannot be examined in opposition/appeal proceedings, but could only have been considered in the examination proceedings.

For the examination of the ground of opposition under Article 100(b) EPC the vagueness has to be lived with and the claim has to be interpreted. For the reasons given above, the only possible limitation which can be seen in the characterising portion of the claim is that the indicia must be visible in a position which may be regarded as a proper position relative to an acetabulum for at least one patient. In other words, the only indicia excluded by the claim are those visible only in positions which no surgeon could possibly consider as a proper position for any possible anatomy of an acetabulum.

There is no evidence that, also in the absence of detailed instructions in the patent, it would be problematic for the person skilled in the art to realise indicia of that type. Indeed, Figure 2, showing a femoral head with indicia which undisputedly can be produced by the person skilled in the art without problems, relates, according to the first sentence of paragraph [0047], to a femoral head in agreement with the claimed invention.

The patent comprises only one independent claim, which corresponds to the sole independent product claim of the application as filed. Hence, there is no reason to assume, as submitted by the respondents, that the statement in paragraph [0047], and with it the embodiment shown in Figure 2, does not relate to the presently claimed invention.

The fact that other components, such as the femoral stem, have to be acted upon in order to orientate the femoral head does not lead to a different conclusion, because an action on these other components is not excluded by the claim. Hence, at least on the basis of Figure 2 the person skilled in the art would be able to carry out the claimed invention.

Therefore, the patent discloses the invention of claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

4. Remittal to the opposition division

In the decision which is the subject of the present appeal the opposition division considered only the ground of opposition under Article 100(b) EPC. The other grounds of opposition raised in the opposition proceedings (Articles 100(c) and 100(a) EPC) were not decided upon.

It is true that the interpretation of the claim (which is made available to the parties and the opposition division with the present decision) may play a role also for the assessment of novelty and inventive step. However, a decision in respect of Articles 100(c) and 100(a) EPC is not limited to the interpretation of the claim but involves also assessing the disclosure of the application as filed and the prior art, which in the present case comprises seventeen allegedly novelty-destroying documents. None of this has been considered in the decision of the opposition division.

As to the efficiency of the whole proceedings, the Board points out that the present appeal proceedings (for which no acceleration was requested) have been dealt with in a timely manner (the statement of grounds of appeal having been filed on 22 September 2017), so that no unusual delay is caused by a remittal.

Under these circumstances the Board considers it appropriate, in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, to remit the case to the opposition division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.