T 0875/16 - Optical control of hair growth

 Key points

• This decision concerns an opposition appeal with claim 1 directed to “Use of a device (1) to reduce growth of hairs on human skin (12), which device comprises a pulsed source of [550 - 1200 nm light]”. The Board considers sufficiency of disclosure.
• The Board finds the embodiment with the flash lamp to be insufficiently disclosed due to claim specifying a short pulse duration. There is also an embodiment with laser light were the pulse duration is not really an issue. 
• The Board: “while the skilled person would have faced fewer difficulties when reproducing the invention with a laser source, it would still have to be determined, for the wavelengths actually generated, the parameters of efficacy required for the energy density and duration of pulsation”
• The patentee then essentially argues that every combination of energy density and duration within the specified range would give the effect of reduced hair growth to at least some degree.
• The Board: “This approach is, however, [...] not persuasive. It relies on an effect - a degree of reduction in growth - that is not specified and for which there is no indication, in the patent specification, as to how it is to be measured. It follows that any degree of reduction would be covered by the claim's wording. The lack of indication as to the criterion to apply when measuring said reduction in hair growth is particularly problematic, since it constitutes the technical contribution of the invention over known devices (see paragraphs [0002], [0012] of the patent specification). In the absence of any such indication as to the degree of reduction to be achieved and as to the means to compare said reduction in growth with known epilation techniques, the skilled person is not even in a position to verify whether an effect in the sense of the present invention is achieved in the first place. ”
• The Board: “The possibility of assessing whether the claimed effect is obtained is, however, a prerequisite under Article 83 EPC.”

T 0875/16 

https://www.epo.org/law-practice/case-law-appeals/recent/t160875eu1.html

34. The patentee submitted that the objection under Article 83 EPC could not apply, since the patent specification contained a further embodiment with a laser. The alleged shortcoming regarding the pulse duration did not affect this embodiment.

35. This submission is not persuasive. Firstly, the argument put forward by the patentee does not challenge the analysis made above with regard to the use of flash lamps. While it is established case law that non-working embodiments may be of no harm when the patent specification contains sufficient information for finding appropriate alternatives over the claimed range without unreasonable efforts (cf. G 1/03, OJ 2004, 413, point 2.5.2), this does not apply where only two embodiments were envisaged and where the problematic embodiment is presented as the preferred one.

36. Secondly, while the skilled person would have faced fewer difficulties when reproducing the invention with a laser source, it would still have to be determined, for the wavelengths actually generated, the parameters of efficacy required for the energy density and duration of pulsation.

37. It could, alternatively, be argued, that the claimed effect is achieved for any combination of values of the wavelength employed (or combination of wavelengths), energy density on the skin, and pulse duration, as long as the values are selected within the recited ranges. In view of the different efficacy across the range of wavelength(s) considered, this would imply an effect that varies depending on the source used and the type of skin of the person treated. This was confirmed by the patentee who underlined that the claimed effect of reducing hair growth on human skin was meant to encompass various degrees of reduction.

38. This approach is, however, also not persuasive. It relies on an effect - a degree of reduction in growth - that is not specified and for which there is no indication, in the patent specification, as to how it is to be measured. It follows that any degree of reduction would be covered by the claim's wording. The lack of indication as to the criterion to apply when measuring said reduction in hair growth is particularly problematic, since it constitutes the technical contribution of the invention over known devices (see paragraphs [0002], [0012] of the patent specification).

39. In the absence of any such indication as to the degree of reduction to be achieved and as to the means to compare said reduction in growth with known epilation techniques, the skilled person is not even in a position to verify whether an effect in the sense of the present invention is achieved in the first place. The possibility of assessing whether the claimed effect is obtained is, however, a prerequisite under Article 83 EPC.

40. In conclusion, the invention as defined in claim 1 of the main request is not disclosed in a manner sufficiently clear and complete to be carried out by the skilled person, contrary to Article 83 EPC.