T 1994/12 - Sufficiency of the claims

Key points

• " As to the argument that the requirement for sufficiency of disclosure is not met because the skilled person in view of the ambiguity in respect of the nature of the asphalt would not be able to reproduce the examples of the patent in suit, the following is to be said. Sufficiency of disclosure is not concerned with the invention the applicant might have had in mind when drafting the application, but rather with the invention which is defined by the claims in terms of the technical features of the invention (see Rule 43(1) EPC), as is done for assessing other criteria for patentability such as novelty and inventive step".

EPO T 1994/12 - link

4. Sufficiency of disclosure

4.1 It is the appellant's argument that, owing to the absence of any clear definition of the term "asphalt" and the absence of any indication of a method for measuring content of the asphaltene component in the asphalt that is an essential feature of the invention, the skilled person would not be able to reproduce the examples of the patent in suit and perform the invention. The appellant further considers that lack of sufficiency also arises because the skilled person could not distinguish the amount of asphaltene components originating from the asphalt from the amount originating from the oil.

4.2 As for novelty and inventive step, assessment of sufficiency of disclosure of the invention is made for the invention for which protection is sought, i.e. as defined by the claims in terms of the technical features of the invention (see Rule 43(1) EPC). Thus, the question to be answered is whether the patent in suit provides sufficient information which enables the skilled person to perform the invention as defined in the claims in terms of the technical features of the invention, throughout the whole area claimed, taking into account common general knowledge. This means in the present case examining whether the patent in suit makes available to a person skilled in the art the combination of features defining the rubber composition of claim 1.

4.3 It is not disputed that asphalts are conventional ingredients used in the preparation of rubber compositions. It is also not contested that at the date of filing of the application conventional methods existed to measure the content of asphaltene components in asphalt and that those methods by gravimetry (D32) or spectrophotometry (D49) might provide different results. Nor is it disputed that the skilled person would be able, by applying any of the methods described in D32 or D49, to find an asphalt comprising up to 5% by weight of an asphaltene component. Finally, it is not disputed that methods for introducing those compounds into a rubber of the type defined in claim 1 were also known to the skilled practitioner.

4.4 The point made by the appellant with regard to its central argument for demonstrating a lack of sufficiency of disclosure that the skilled person would not be able to reproduce the examples of the patent in suit, because the definition of the asphalt to be used, including its content of asphaltene, is ambiguous does not relate to the ability to prepare rubber compositions in accordance with the terms of the claims. It rather boils down to the argument that the boundaries of the claims of which asphalt with up to 5% by weight of an asphaltene component is a feature are not clearly defined. Such an alleged ambiguity regarding the limits of a claim is however a matter of Article 84 EPC, not sufficiency of disclosure. Such an objection under Article 84 EPC cannot be successful as it would not arise out of any amendment made in opposition or appeal proceedings (G 3/14).

4.5 As to the argument that the requirement for sufficiency of disclosure is not met because the skilled person in view of the ambiguity in respect of the nature of the asphalt would not be able to reproduce the examples of the patent in suit, the following is to be said. Sufficiency of disclosure is not concerned with the invention the applicant might have had in mind when drafting the application, but rather with the invention which is defined by the claims in terms of the technical features of the invention (see Rule 43(1) EPC), as is done for assessing other criteria for patentability such as novelty and inventive step (cf section 4.2, above). 

In other words, the issue of sufficiency of disclosure does not solely (emphasis added by the Board) depend on whether or not it can be established exactly which asphalt component the applicant had in mind when drafting the application, in particular when providing a description of the examples. To do this would require clarifying which asphalt component had been meant or intended, which in turn would possibly require the specification of the method to determine the amount of asphaltene and a more specific definition of the term "asphalt". What is required by Article 83 EPC, however, is that the invention as defined by the claims (see section 4.2 above), i.e. in the present case with the definition of the asphalt component as it stands is sufficiently disclosed on the basis of the information provided in the patent as a whole, taking into account common general knowledge. Such a - less restrictive - reading of the feature "asphalt" (compared to what kind of asphalt the applicant might have meant but did not describe) resulting in a larger number of rubber compositions possibly meeting the definition of claim 1 would appear on the one hand to result in less difficulty for a skilled person to obtain the rubber compositions as defined by the claims, i.e. less stringent requirements when it comes to assessing sufficiency of disclosure of the claimed combination of features. On the other hand, it requires stronger arguments in favour of novelty and inventive step, if these - now more broadly defined - asphalt components are to be held to distinguish the claimed subject-matter from the prior art and should then be considered essential for providing a technical effect vis-à-vis the prior art.

4.6 As to the additional argument of the appellant in support of the objection of lack of sufficiency of disclosure, it is noted that claim 1 does not require that the skilled person starting from a given rubber composition be able to distinguish the amount of asphaltene components originating from the asphalt from that originating from the oil. This might be at most a question relating to infringement, but as far as patentability and sufficiency of disclosure is concerned, it is only required that the skilled person is able to prepare the compositions defined in the present claims.

4.7 Consequently, it is concluded from the above that the requirements for sufficiency of disclosure are met.