T 1438/21 - Two meanings of the term invention

Key points

• "The heart of the invention defined in claim 1 consists in the finding that the generation of wrinkles remains acceptable as long as the liner thickness is equal to or greater than the "minimum liner thickness" t that can be computed from the outer pipe diameter DH and wall thickness tH, the reel radius R, and the [radial insertion gap] RIG g, using formula II (see point VIII. above)."
• According to the opponent, the RIG is an unclear parameter, and the claim is, therefore, insufficiently disclosed.
• "The considerations that led the opposition division to conclude that the claimed method is insufficiently disclosed for it to be carried out by a person skilled in the art are based on the definition of the RIG, which is needed for computing the minimum liner thickness using formula II. It is therefore necessary to examine whether this alleged deficiency hinders the skilled person from carrying out the claimed method."
• "It is important to understand that, in accordance with the established case law of the boards of appeal, the "invention" mentioned in Article 100(b) EPC is defined by the subject-matter of the claims of the patent. Although an invention is commonly understood to be a technical solution to a problem, the problem allegedly solved by the subject-matter of the claim is not part of the "invention" within the meaning of Article 100(b) EPC if it does not find any expression in the claim."
• I understand the phrase "a technical solution to a problem" to mean that an invention is provided by the combination of subject matter and the teaching that this subject matter solves a technical problem. 
• Cf. G 2/21, which requires that the technical effect is: "... embodied by the same originally disclosed invention" (r.94). I'm not entirely sure in which sense the Enlarged Board used the term 'invention' here.
• As an exercise for the reader: what does " invention " mean in Art. 54 and in Art. 56? 
• The Board refers to G2/03, r.2.5.2, about non-working embodiments.
• The Board considers the "invention" to be sufficiently disclosed. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t211438eu1

3.2 Assessment by the board

3.2.1 Fundamental aspects

The ground for opposition under Article 100(b) EPC relates to patents whose invention is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. When the invention consists in a method, it is necessary to examine whether the patent enables the skilled person to carry out that method.

The considerations that led the opposition division to conclude that the claimed method is insufficiently disclosed for it to be carried out by a person skilled in the art are based on the definition of the RIG, which is needed for computing the minimum liner thickness using formula II.

It is therefore necessary to examine whether this alleged deficiency hinders the skilled person from carrying out the claimed method.

In this context, it is important to ensure that an insufficiency objection arising out of an ambiguity is not merely a "hidden objection under Article 84 EPC", as noted in decision T 608/07 (see point 2.5.2 of the Reasons for the decision). This board (in a different composition) set out its view on this in detail in decision T 1811/13 (see point 5.1 of the Reasons for the decision). The fact that those skilled in the art would not know whether or not they are working within the scope of the patent is a finding related to the definition of the invention and thus a question of clarity (Article 84 EPC). However, the clarity of granted claims is not subject to examination by the board, as explained in decision G 3/14 of the Enlarged Board of Appeal. Therefore, arguments based on the skilled person's alleged inability to determine whether or not they are working within the scope of the patent are excluded from the board's scrutiny and must be ignored.

It is important to understand that, in accordance with the established case law of the boards of appeal, the "invention" mentioned in Article 100(b) EPC is defined by the subject-matter of the claims of the patent. Although an invention is commonly understood to be a technical solution to a problem, the problem allegedly solved by the subject-matter of the claim is not part of the "invention" within the meaning of Article 100(b) EPC if it does not find any expression in the claim.

This follows, in particular, from point 2.5.2 of the Reasons for the decision given by the Enlarged Board of Appeal in case G 1/03. In the context of its discussion of whether non-working embodiments could be excluded by means of disclaimers, the Enlarged Board first considered the case where the specification contains sufficient information for finding appropriate alternatives over the claimed range with reasonable effort. The Enlarged Board then went on to say:

"If this is not the case and there is a lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is a lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step..."

This means that unless a claim expresses the problem that is allegedly solved (or the effect that is allegedly achieved) by the claimed product or method, the question of whether this problem is actually solved (or this effect is actually achieved) might need to be addressed in the framework of inventive step, however it is not relevant to the examination of whether the invention is sufficiently disclosed within the meaning of Article 100(b) EPC (see also "Case Law of the Boards of Appeal of the EPO", 10**(th) edition, 2022, II.C.3.2).

3.2.2 Application to the present case