T 1060/11 - No lower limit, not inventive

Key points

• The Board expresses as "generally accepted legal principle that everything falling within a valid claim has to be inventive". This was not the case, because the distinguishing feature of a layer with thickness of 5 nm or less, had no lower limit.
• " Finally, for completeness, the Board believes that the lack of any defined lower limit for the thickness of the carbon thin film also precludes the acknowledgement of an inventive step. The carbon thin film of the present invention may have any thickness which does not exceed 5 nm, and hence the claimed device may include carbon thin films having thicknesses lying between 0 and 1 nm. Far from being the solution to a problem, working in this range results, according to the application, in a deterioration of the electron emission characteristic []. Hence such embodiments cannot be considered inventive. As a result, the subject-matter of claim 1 as a whole does not involve an inventive step, as it does not conform to the generally accepted legal principle that everything falling within a valid claim has to be inventive" 

EPO T 1060/11 - link

The Board therefore judges that it has not been convincingly demonstrated that the feature of an upper limit of 5 nm represents anything more than an arbitrary selection between evident alternatives which does not involve an inventive step.

7.8 Finally, for completeness, the Board believes that the lack of any defined lower limit for the thickness of the carbon thin film also precludes the acknowledgement of an inventive step.

The carbon thin film of the present invention may have any thickness which does not exceed 5 nm, and hence the claimed device may include carbon thin films having thicknesses lying between 0 and 1 nm. Far from being the solution to a problem, working in this range results, according to the application, in a deterioration of the electron emission characteristic (page 30, lines 5-21). Hence such embodiments cannot be considered inventive.

As a result, the subject-matter of claim 1 as a whole does not involve an inventive step, as it does not conform to the generally accepted legal principle that everything falling within a valid claim has to be inventive (see "Case Law of the Boards of Appeal of the European Patent Office", 8th edition, 2016, I.D.1).

7.9 In the light of the foregoing, the Board judges that the subject-matter of claim 1 does not involve an inventive step within the meaning of Article 52(1) EPC and Article 56 EPC 1973.