T 1311/22 - Result to be achieved (vacuum cleaner quality factor)

Key points

•  Claim 1 of the patent as granted is directed to a vacuum cleaner and specifies, in translation, "a vacuum cleaner with an average power consumption of less than 1200 W and a filter bag with a separation efficiency of the filter bag material greater than 60%, the device for vacuuming having a quality factor for an unfilled filter bag Q(w)un defined by ... which is greater than 25"
• The Board, on sufficiency, in translation: "Claim 1 defines the device by functional characteristics, namely in relation to a result to be achieved, which in turn is expressed by values ​​of the newly defined parameter "quality factor""
• " The peculiarity of the functional definition of a technical feature is that it is defined by its effect. Such a definition refers quite abstractly to an indefinite number of possible alternatives and is permissible as long as all alternatives are available to the person skilled in the art and deliver the desired result; Therefore, it must be checked whether the patent discloses a generalizable technical teaching that makes the entire spectrum of variants that fall under the functional definition accessible to the person skilled in the art."
• " Claim 1 itself only contains minimum values ​​for the two quality factors, but no information as to which structural features of the vacuum cleaner and/or filter bag must be set and adjusted so that these minimum values ​​can be achieved in contrast to the comparative examples. In other words, the scope of protection of the granted claim 1 includes all vacuum-cleaning devices with filter bags and the claimed parameters, completely regardless of the way in which a vacuum loss is reduced in such a way that correspondingly high quality factors are achieved (the only thing excluded is their achievement via a low degree of separation, see above). As explained below, the person skilled in the art cannot deduce from the description how this can basically be accomplished without unreasonable effort, possibly based on a specific exemplary embodiment."
• "These very specific exemplary embodiments also do not give the person skilled in the art any clues as to which of the numerous features and measures - whether all or only certain of them - are crucial for achieving the claimed quality factors, so that he can also determine the subject matter of the claim through a targeted selection of other suitable pairings of filter bags and vacuum cleaner devices "
• "The scope of protection of claim 1 therefore includes any device of the generic type in terms of power consumption, negative pressure in the floor nozzle and degree of separation with an at least slightly better quality factor/efficiency than devices from the prior art, including those with as yet unknown, future components such as new filter bag materials. In contrast, only very specific exemplary embodiments are disclosed, which enable a rather limited improvement in the quality factors to values ​​of up to just over 30% or 25%."
• "the patent does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, Article 100(b) EPC."
• As a comment, T0595/90 permitted a claim to a steel sheet having an "iron loss of less than 0.90 W/kg" (i.e. down to 0.00 W/kg), low iron loss values being the desired feature (but not an unusual parameter as such).  Whether the cases can be distinguished from each other or whether the case law is developing remains to be seen. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/de/boards-of-appeal/decisions/t221311du1

3. Feasibility

3.1 Claim 1 defines the device by functional characteristics, namely in relation to a result to be achieved, which in turn is expressed by values ​​of the newly defined parameter "quality factor".

3.2 According to current case law, see RSdBK, 10th edition, 2022, II.A.3.4., functional features that define a technical result are permissible in the patent claim, i) if these features are not otherwise objective without restricting the inventive teaching can be described more precisely and ii) if the functional features reveal a sufficiently clear technical lesson to the person skilled in the art, which he can understand with a reasonable amount of thought? which also includes carrying out usual tests? can execute. Such features, defined by the result to be achieved, are permissible as long as the professional knows, within the scope of his normal professional knowledge, what to do to achieve the specified result. With regard to technical characteristics expressed in general functional information, the function must be demonstrable by tests or measures that are adequately set out in the description or known to the person skilled in the art.

In addition, according to the established case law of the Boards of Appeal, see RSdBK, II.C.5.4, the requirement of sufficient disclosure is fulfilled if the person skilled in the art can use the invention defined in the independent claims over the entire scope of protection of the claims based on his general specialist knowledge without unreasonable effort can execute. This principle applies to everyone? however defined? inventions; So it doesn't matter whether the invention is defined by its function or not. The peculiarity of the functional definition of a technical feature is that it is defined by its effect. Such a definition refers quite abstractly to an indefinite number of possible alternatives and is permissible as long as all alternatives are available to the person skilled in the art and deliver the desired result; Therefore, it must be checked whether the patent discloses a generalizable technical teaching that makes the entire spectrum of variants that fall under the functional definition accessible to the person skilled in the art.

It is further stated, see RSdBK, II.C.8.1 (on T 0409/91), that the scope of protection of a patent corresponds to the technical contribution that the disclosure of the invention described therein makes to the state of the art. Therefore, the monopoly conferred by the patent may not extend to items that are not yet available to the skilled person after reading the patent specification. The information available must enable the person skilled in the art to achieve the desired result throughout the scope of the claim containing the relevant functional definition without undue effort and the description must, with or without the relevant general technical knowledge, constitute a self-contained technical teaching explain how to achieve this result.

3.3 It is therefore clear from the case law that the definition of the claimed invention by means of functional features is possible if the overall disclosure enables the person skilled in the art to achieve the result defined by the functional features over the entire scope of protection without unreasonable effort.

3.4 An essential feature of independent claim 1 are the two “quality factor” parameters Q**(w)un and Q**(w)part for unfilled or partially filled filter bags with values ​​above 25 or 13. Such values ​​are in In contrast to the values ​​for the other claimed parameters power consumption, negative pressure in the floor nozzle and separation efficiency, these were not achieved in any of the comparative examples from Table I of the patent. Claim 1 itself only contains minimum values ​​for the two quality factors, but no information as to which structural features of the vacuum cleaner and/or filter bag must be set and adjusted so that these minimum values ​​can be achieved in contrast to the comparative examples. In other words, the scope of protection of the granted claim 1 includes all vacuum-cleaning devices with filter bags and the claimed parameters, completely regardless of the way in which a vacuum loss is reduced in such a way that correspondingly high quality factors are achieved (the only thing excluded is their achievement via a low degree of separation, see above). As explained below, the person skilled in the art cannot deduce from the description how this can basically be accomplished without unreasonable effort, possibly based on a specific exemplary embodiment. The Chamber considers a qualified engineer to be a qualified engineer with special knowledge of fluid mechanics, in particular its application in the technical field of vacuum cleaner devices.

3.4.1 From paragraph [0013] of the description it can be seen that the filter material, the effective filter area, the fit of the filter bag and the unfolding of the filter bag influence the flow resistance of the filter bag and thus the quality factor. However, this information is very general and so unspecific that it cannot be implemented without unreasonable effort due to the countless variants of vacuum cleaner devices and filter bags with different structures and materials.

3.4.2 In paragraphs [0017] to [0030] and FIGS. 1 - 3 of the patent specification, a number of known filter bags are defined and shown both in terms of their categories (flat bags, filter bags with surface folds, with diffusers), as well as in terms of their dimensions and material are described. The context shows that these are mentioned as examples of filter bags that are fundamentally suitable for carrying out the subject matter of the claim. In any case, according to paragraph [0051], lines 31-34 of the patent, the invention, which was defined "previously" - i.e. exclusively via the claimed parameters and a large number of known filter bags - can be used "particularly well" in the entire range of household vacuum cleaners. From this it can be concluded that, in order to implement the subject matter of the claim, all household vacuum cleaners whose power consumption is below 1200 W should be combined and measured with all of the filter bags described whose separation efficiency is greater than 60% in order to find out those which have a negative pressure above 1 kPa or 0.7 kPa in the floor nozzle and have quality factors greater than 25 or 13. In the Chamber's opinion, this approach to implementing the subject matter of the claim also involves unreasonable effort. Such an approach amounts to a (very broad and complex) measurement program intended to determine whether a measured combination of vacuum cleaner and filter bag falls within the scope of protection of claim 1. However, it still does not emerge from this, at least not without further, unreasonable effort or even knowledge based on inventive effort, which specific, concrete structural features or measures (in the sense of adjustments to the vacuum cleaner device and/or the filter bag) lead to values ​​for the quality factors in stressed area. The board also notes that the question of whether the skilled person is within the claimed area relates to the definition of the scope of protection sought (Article 84 EPC) and not to the sufficient disclosure of the invention, see RSdBK, II.6.6. 4 and II.C.8.2.

3.4.3 In the specific exemplary embodiments in Table II, the claimed parameters were essentially only reliably achieved with one of three specific filter bags over a series of 13 measuring stages (lines 2-14 of Table II), namely with a filter bag with dimensions of 290 x 290 mm, surface pleats made of CS50 and 22 strip diffusers 81 made of LT75 with 11 mm width and 290 mm length, as shown in Fig. 8, paragraphs [0063] and [0064]. A very specific motor/blower unit was used (Domel KA 467.3.601-4) and no exhaust filter was used (paragraph [0065] of the patent). It is not specified which vacuum cleaner model. In paragraphs [0054], [0055], [0058] - [0062], however, for the filter bag shown and used in FIG Grid described and partly shown in Fig. 6.

These very specific exemplary embodiments also do not give the person skilled in the art any clues as to which of the numerous features and measures - whether all or only certain of them - are crucial for achieving the claimed quality factors, so that he can also determine the subject matter of the claim through a targeted selection of other suitable pairings of filter bags and Vacuum cleaner devices and, if necessary, other suitable measures could be implemented without unreasonable effort. According to paragraph [0051] of the description, for example, filter bags with surface folds are not absolutely necessary to implement the subject matter of the claim, but are only a particularly preferred development. In this case, the bow-shaped ribs in the filter receiving space, which engage in the fold valleys of the surface folds, are just another option. A shape of the filter receiving space, which, as in FIG. 6, approximately corresponds to the shape of the envelope of the filled filter bag, is also only shown as another preferred development, but not as a concrete teaching for achieving the claimed quality factors.

3.5 In addition to covering a multitude of features and measures with which the claimed parameters can potentially be achieved, the scope of protection of claim 1 includes broad areas for the quality factors. Their lower limits of 25 and 13 seem to be based more on the maximum values ​​of the comparative examples (22, 3 and 11, 7, Table I) than on the results achieved with the specific exemplary embodiments described above. For Q**(w)un and Q**(w)teil, these range in relatively small windows between 30.1 and 32.1 and 18.0 and 25.1, respectively. Since the quality factors are efficiencies in nature, their theoretical maximum value is 100%. The expert is aware that efficiency never reaches 100% in practice and, in this case, will even remain significantly lower due to the inserted filter bag. But apart from the exclusion of unrealistic expectations, the claimed areas are not implicitly limited to certain assessable upper limits by linking them to other characteristics or information. The scope of protection of claim 1 therefore includes any device of the generic type in terms of power consumption, negative pressure in the floor nozzle and degree of separation with an at least slightly better quality factor/efficiency than devices from the prior art, including those with as yet unknown, future components such as new filter bag materials. In contrast, only very specific exemplary embodiments are disclosed, which enable a rather limited improvement in the quality factors to values ​​of up to just over 30% or 25%.

3.5.1 According to principles developed by the BGH in .3) such an obvious disproportion is unfair: "An executable disclosure of the invention can be denied if the protected subject matter in the patent claim is so far exceeded by open range specifications for physical properties that go beyond the solution provided to the person skilled in the art in the entirety of the documents It is generalized that patent protection goes beyond the contribution of the invention to the state of the art.

3.5.2 As explained above, the person skilled in the art cannot tell from the patent specification in which direction he should work best in order to reduce the flow resistance of a device to such an extent that higher quality factors are achieved than in the prior art and possibly in the exemplary embodiments . This distinguishes the present case from the underlying facts in T 398/19, in which open range specifications of parameter values ​​did not lead to any disclosure problems (see RSdBK, 10th edition, II.C.5.5.2). A specific process was disclosed there with which the expert could plausibly produce products with parameter values ​​that were above and below those of the specific exemplary embodiments (reasons for decision 1.5.1).

3.5.3 For these reasons, the Chamber is also convinced that the considerations set out above - contrary to the respondent's opinion - are in no way contradictory to the possibility of so-called parameter inventions, which is fundamentally recognized by case law.

3.6 The respondent does not deny that claim 1 includes embodiments that could be implemented using features and measures other than those specifically proposed in the exemplary embodiments. On the contrary, it does not consider their common structural features of the filter bag and the filter bag receiving space, as formulated more generally in the dependent claims 9 - 11, to be decisive for this. However, future inventions that provide quality factors in the claimed area in a different way are, as usual, dependent inventions and could themselves obtain patent protection. This is always the case with basic inventions. Because it was the first to provide devices with a quality factor beyond 25 or 13 in a reworkable manner, the scope of protection of claim 1 is appropriate.

3.6.1 On the one hand, the Chamber cannot recognize a basic invention either in the introduction of a new parameter for the efficiency of a vacuum cleaner-filter bag combination, nor in the reduction of flow resistance that leads to a certain efficiency, nor in other aspects of the disclosure. The problem lies precisely in the fact that it is not obvious or disclosed by which fundamental structural and/or functional features, which go beyond already known filter bags and motor-fan units and their usual technical effects, that the claimed quality factors are achieved.

On the other hand, a patent does not have to disclose a large number of paths to a claimed invention and cannot do so for paths that are not yet available at the time of priority. However, the prerequisite for claiming a scope of protection that includes such methods as the present one as dependent inventions is at least that the person skilled in the art can derive from the patent a way to implement or at least further develop the claimed invention over the entire scope of protection without having to engage in inventive activity themselves must. The Chamber does not consider this requirement to be met in the present case.

3.7 For the above reasons, the patent does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, Article 100b) EPC.

Decision formula



For these reasons it is decided:

1. The contested decision is annulled.

2. The patent is revoked.