T 2773/18 - Sufficiency in the mechanical field

Key points

• [The opponent's insufficiency argument] fails to convince the Board, not least because it misapplies case law developed in the field of chemistry, where a claimed invention resides in a compositional range or other range of values but the associated effect may not be proven or plausible for large parts of that range, to a claimed invention in the mechanical field, even if it claims no ranges.
• “By its very nature a claim in this field, which - often in functional or other generic terms - attempts to capture the essence of some concrete machine or mechanical structure (or its operation), is schematic allowing for some breadth of interpretation. It may be that on clever construction subject-matter can be found to be covered within that breadth that may not solve the problem or achieve the desired effect. However, this is normally not an issue of lack of disclosure, but rather of claim construction.”

T 2773/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182773eu1.html

3. Sufficiency of disclosure - Article 100(b) EPC

3.1 The contention of lack of sufficiency of disclosure concerns the expression "upper part of the tower" that according to paragraph 022 of the patent is defined as the part of the tower located above the sea spray zone. The appellant argues that the claim is neither limited to an offshore wind turbine nor is the dimension of the lower and upper parts limited to a minimum size or height. The scope of claim 1 thus covers embodiments where the inlet is located quite low above sea level and therefore unable to achieve the technical effect of drawing outside air with a low water and salt content as explained in paragraphs 008 to 010 of the patent.

3.2 This argument fails to convince the Board, not least because it misapplies case law developed in the field of chemistry, where a claimed invention resides in a compositional range or other range of values but the associated effect may not be proven or plausible for large parts of that range, to a claimed invention in the mechanical field, even if it claims no ranges.

 By its very nature a claim in this field, which - often in functional or other generic terms - attempts to capture the essence of some concrete machine or mechanical structure (or its operation), is schematic allowing for some breadth of interpretation. It may be that on clever construction subject-matter can be found to be covered within that breadth that may not solve the problem or achieve the desired effect. However, this is normally not an issue of lack of disclosure, but rather of claim construction. Whether claims, description and figures provide the skilled person with sufficient information to carry out an invention, is a purely technical question, that is separate from that of what reasonably falls within the ambit of claim wording. In the Board's view if the skilled person upon consideration of the entire disclosure possibly using common general knowledge can infer what will and what will not work, a claimed invention is sufficiently disclosed, even if a broad construction might also encompass what doesn't work. Indeed that inference from the whole disclosure might lead to a more limited construction of the claim.

3.3 In the present cases the Board has no doubt whatsoever, that the skilled person, intent on making technical sense of the claim in the broader context of the whole disclosure, easily infers from it the basic, simple idea of the invention, which is to raise the air inlet in the tower above an already raised position of the heat generating equipment. Insofar as the skilled person when putting the claimed invention needs any further practical guidance the patent description and figures provide them with ample detail. In figure 2 for example, read in conjunction with paragraph 0019, the inlet is provided above the spray zone Z which is of the order of 30 m above sea level. This is an exemplary value on the basis of which a person skilled in wind turbine design can find other workable heights depending on the known local climatic conditions of the installation, using routine measures. Using the content of the disclosure of the patent, in particular paragraph 0022 as submitted, the skilled person is able to directly recognise lower locations of the inlet that do not permit air intake with a low enough salt content. They would exclude such embodiments as they obviously would not achieve the sought effect. In particular they would disregard upper part that are placed much lower than 30 meters above sea lever where sea spray can be expected, or where the salt content of outside air is expected to be in excess.

3.4 The Board thus confirms the Opposition Division's positive assessment of sufficiency, Article 100(b) EPC.