T 0416/14 - No working embodiment

Key point

• In this examination appeal, the Board finds that the invention is insufficiently disclosed. Claim 1 specifies, as one of the features, that in the micro-electromechanical device, the contact structure and the conductive element are " configured to support an electric field therebetween with a magnitude [field strenght] of greater than 320 Vmym**(-1) without moving to the contacting position". 
• " The entire original application suggests that the inventors have, by suitably dimensioning the MEMS switch parts, found a way to avoid breakdown at and above the recited field strength" 
• " The application documents contain neither experimental data which allowed to verify the claims made, nor did the appellant submit any such data as evidence. The appellant is correct in that Article 83 EPC does not per se require experimental data for a sufficient disclosure. In light of the evidence to the contrary [journal articles D1 and D2 cited by the Board], the Board is, however, not convinced that the appellants were actually able to fabricate a switch that can withstand the claimed field strength without breakdown without any evidence for such claim." 
• "If the claim is directed to a result, as in the present case, then the disclosure of at least one embodiment successfully realising the result is needed. The mere mentioning of factors which should be taken into account when attempting to find a working embodiment, such as the surface asperities referred to by the appellant, cannot be considered to be adequate in this respect." 
• ' If, as in the present case, the claims are directed to a broad, open-ended range of parameters, even more embodiments might be necessary in order to sufficiently disclose the invention across the whole range claimed. " 

EPO T 0416/14 -  link

V. Claim 1 of the main request reads as follows

"A micro-electromechanical systems (MEMS) device comprising:
at least one switch having a contact (102), and a conductive element (104);
[...]
such that when said conductive element is disposed in the non-contacting position, said contact (102) and said conductive element (104) are configured to support an electric field therebetween with a magnitude of greater than 320 Vmym**(-1) without moving to the contacting position."

Claim 1 according to the first auxiliary request has the features of claim 1 of the main request and the additional feature: 

"wherein, when said conductive element (104) is disposed in the non-contacting position, said contact and said conductive element are configured to be separated by a distance that is less than or about equal to 4 mym."
[...]

Reasons for the Decision

2.5 The further arguments of the appellant also did not convince the Board. While there might not be a complete understanding of when breakdown occurs, this would mean that it is all the more important to include in the original application a detailed description of at least one working embodiment. The level of disclosure needed if the results found by inventors go against a common understanding is significantly higher than in a field which is already well understood. If the claim is directed to a result, as in the present case, then the disclosure of at least one embodiment successfully realising the result is needed. The mere mentioning of factors which should be taken into account when attempting to find a working embodiment, such as the surface asperities referred to by the appellant, cannot be considered to be adequate in this respect. If, as in the present case, the claims are directed to a broad, open-ended range of parameters, even more embodiments might be necessary in order to sufficiently disclose the invention across the whole range claimed. The argument that a patent on an invention which cannot be carried out would be of no harm, can also not be accepted. Article 83 EPC is a requirement of the Convention that has to be fulfilled, irrespective of what potential effects on competitors a patent might or might not have.

2.6 In conclusion, the application does not disclose the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. This applies to all requests, which thus do not meet the requirement of Article 83 EPC. Therefore none of the appellant's requests is allowable, so that the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.