30 April 2020

T 1171/16 - Weak presumption

Key points

  • The Boards clarifies that for a weak presumption of sufficiency of disclosure of a patent, it is not a necessary requirement that the patent does not give any information whatsoever on how a feature of the invention can be put into practice.
  • The Board finds that in the present case, the “single embodiment and a list of possible materials for various parts of the article"  in the patent “gives a skilled person little guidance”. The Board  then remarks that “even any such "weak", presumption that might exist has, in the Board's view, already been rebutted by the [opponent's] arguments"  regarding the lack of information.



T 1171/16  - link


Reasons for the Decision


1. Article 83 EPC

1.1 In its preliminary opinion (see items 2.1 to 2.6 of the Board's communication) the Board stated that the invention according to claim 1 of the main request seemed not to be sufficiently clearly and completely disclosed in a manner such that the skilled person can perform the invention over the whole range claimed.

1.2 Since no further arguments were received in reply to its preliminary opinion, the Board sees no reason to alter its provisional opinion, which is thus confirmed herewith.

1.3 The disclosure of the patent contains a single workable embodiment (Inventive Sample 1) for putting the invention into practice and, as pointed out by the respondent, paragraph [0052] discloses that the flexibility of the material may be improved by chemically treating or mechanically working (tenderizing) the material. However, the Board finds that this alone is not sufficient to guide the skilled person to reliably obtain further embodiments falling within the whole range claimed.

1.4 The respondent argued that paragraphs [0043]-[0055], [0064]-[0066], [0084] and [0086] disclosed several possibilities of adapting an absorbent system that would allow the skilled person to modify the ratio BW/MCB and the parameters Rewet or FPT without undue burden. However, the Board does not concur.
[...]

1.8 In regard to the respondent's citation of T 63/06 and its argument that this decision would only be applicable when the patent did not provide any information, it is noted that this decision states (see Reasons 3.3.1 to 3.3.4) that only a weak presumption of validity would be present when (as explained above) "the patent specification does not contain detailed information of how to put the invention into practice". A single embodiment and a list of possible materials for various parts of the article gives a skilled person little guidance. The cited decision however, contrary to the passage cited from the Case Law Book and the respondent's argument in this regard, does not conclude that, for the burden of proof to be shifted, it is necessary for the patent not to give any information whatsoever on how a feature of the invention can be put into practice.

In the present case, even any such "weak", presumption that might exist has, in the Board's view, already been rebutted by the appellant's [opponent's] arguments regarding the lack of information as to how the parameters BW, MCB, Rewet and FTP should be modified and how these would affect each other in respect of arriving at combinations of materials falling within the whole range claimed. As a consequence, the Board finds that the respondent [patentee] indeed had the burden of proof for its contrary assertion that the disclosure in the patent and/or trial and error attempts would indeed be sufficient to enable the skilled person to obtain embodiments falling within the whole range claimed.

1.9 For the reasons above, the invention of claim 1 of the main request fails to meet the requirements of Article 83 EPC. The main request is therefore not allowable.

1.10 Claim 1 of auxiliary requests 1 to 3 has the same wording as claim 1 of the main request and thus does not meet the requirements of Article 83 EPC for the same reasons as claim 1 of the main request. Correspondingly, auxiliary requests 1 to 3 are also not allowable.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

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