T 0149/21 - Sufficiency in the mechanical arts

Key points

• The Board in machine translation in this case about a method of operating a rolling mill, regarding Art. 83:
• "During the proceedings before the board, the respondent [proprietor] argued that, according to the case law of the boards of appeal, it was sufficient that at least one way of carrying out the invention was indicated in the original application in order to meet the requirement of Article 83 EPC.  Whether other "exotic" scenarios also fall under the subject matter of protection is irrelevant in this context.
• "The board agrees that the patent in suit specifies at least one way of carrying out the claimed invention in detail (see point 1.4 above) and thus at least complies with Rule 42(1)(e) EPC. According to the settled case law of the boards of appeal, however, the claimed invention must be capable of being carried out over the entire claimed area (see e.g. T 409/91, reasons 2; T 435/91, reasons 2.2.3; T 862/11, reasons 5.2 (b); T 941/16, reasons 9; all in the field of chemistry). Accordingly, the indication of at least one way of carrying out the claimed invention, while necessary, is not sufficient to meet the requirement of Article 83 EPC.  
• This jurisprudence is usually not limited in any way to the respective subject area:

- Electrical engineering (see e.g. T 1542/12, reasons 2.1.1; T 2210/16, reasons 3.2; T 1306/17, reasons 4.2),- Physics (see e.g. T 2305/14, reasons 3.2; T 222/17, reasons 12; T 1921/19, reasons 1.1.3), and- mechanics (see e.g. T 1905/10, reasons 1.3.3 and T 2431/11, reasons 4.2 and 4.10)

• " However, recent decisions in the field of mechanics (see T 2773/18, reasons 3.2; T 500/20, reasons 3.6 [post] and T 1983/19, reasons 2.1.3) have suggested that this is in the field of chemistry criterion "in the entire claimed area" is not necessarily applicable to other technical fields such as mechanics. In particular, z. B. in T 1983/19 (reasons 2.1.3) emphasized that the case law developed primarily in the context of chemistry, according to which the invention must be capable of being carried out "over the entire claimed range", cannot be transferred to mechanics without making compromises, since any number of exemplary embodiments that would not be executable could be devised for almost any mechanical requirement. However, this does not lead to that the "invention as such" could not be carried out. Rather, it is sufficient that the patent only shows the person skilled in the art a way of carrying out the invention (cf. point 3.2 above)."
• "the board is of the view that while the indication of a way of carrying out the claimed invention may be sufficient to satisfy the description requirement under Rule 42(1)(e) EPC, it is not necessarily sufficient to satisfy Article 83 EPC . Rather, according to the case law, the person skilled in the art named in this article should be able to use the patent in suit and his general specialist knowledge across all technical areas, across all technical areas, to use the claimed invention across the entire area, i.e. according to all technically possible interpretation variants which the expert reader can objectively understand would use criteria based on his common knowledge. In other words, in the Board's view, all "technically reasonable" claim interpretations should be taken into account when examining under Article 83 EPC, and not only those claim interpretations which are deemed to meet the requirements of the EPC can be considered "technically reasonable" (cf. T 2210/16, reasons 3.12). The requirement that the disclosure must enable the claimed invention to be carried out "in its entire scope" is also in line with the fundamental legal and political concern that, in principle, the exclusive right conferred by a patent with regard to its scope of protection is to be limited by the actual contribution of the patent to the state of the art should be justified (see T 435/91, Reasons 2.2.1, fourth paragraph).
• Turning to the patent in suit, after a detailed analysis, the Board concludes that: " In summary, the patent in suit does not disclose how the person skilled in the art can actually carry out an "automatic identification" for the method claimed in claim 1 and also determine the probable "duration of the rolling pause" for unknown faults."
  
  
• "2. Main request: Claim 1 - Interpretation
2.1 In the Board's view, the skilled reader would readily understand that feature d) not only involves manual identification (ie performed by the "roller operator") covered by paragraphs [0008] and [0025] of the patent in suit, but also automatic identification the nature of the disorder. ... With regard to feature e), the determination of a probable duration of the rolling break based on a disruption matrix, as set out in paragraph [0025] of the patent in suit, can, according to the Chamber's assessment, only be made for disruptions that are already known. However, the subject-matter of claim 1 is not limited to only such disturbances. Namely, the features d) and e) could also relate to previously unknown disturbances. Also, the disorder mentioned in claim 1 is in no way limited to a "frequent" or "typical" disorder."


• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

https://new.epo.org/de/boards-of-appeal/decisions/t210149du1.html

Machine translation