T 1813/22 - The disappearing commercial device

Key points

• The preliminary opinion in G 1/23 proposes that commercially available products will be deemed to be enabled.
• The Board, on suficiency: "According to the last feature of claim 1 (M1.13), the formation value is to be determined according to a method set out in the description, notably in paragraph 43 of the patent. Accordingly, this method should make use of a specific apparatus ("Paper PerFect Formation Analyzer Code LPA07" manufactured by OPTEST Equipment Inc.) and of a specific test procedure outlined in section 10.0 of its operation manual ("LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20")."
• "As argued by the respondent, at the filing date of the patent this specific apparatus was seemingly available and so was presumably its manual of operation. The Board however cannot agree with the respondent's conclusion that for this reason the invention defined in claim 1 meets the requirement of sufficiency of disclosure (see point 8 of the respondent's reply to the appeal grounds). Such conclusion could only be confirmed if the apparatus mentioned in the cited paragraph as well as the manual were available over the entire lifespan of the patent (see for example Reasons 3.3 of T 1714/15)."
• "In the present case, the specific machine referred to in paragraph 43 of the patent as well as its operation manual containing the information necessary to perform the test according to its section 10.0, are undisputedly no longer available"
• The appeal decision was taken about 10 years after the filing date.
• Now, as a question, is this patent application enabling as prior art? Was it at the publication date of the patent application?
• How about the EP application as a prior right under Art.54(3) ? 
• "The Board therefore confirms its provisional opinion set out in its communication under Article 15(1) RPBA and concludes that the ground for opposition pursuant to Article 100(b) EPC prejudices maintenance of the patent."

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221813eu1

Main request - Article 100(b) EPC

1. The reasons given by the opposition division for rejecting in particular the appellant's objection concerning the ground for opposition pursuant to Article 100(b) EPC do not stand up to scrutiny by the Board.

The Board finds that the invention defined in claim 1 of the patent is not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person, for the reasons essentially set out in its communication pursuant to Article 15(1) RPBA and repeated here below in points 1.1 to 1.5.

1.1 It is undisputed that the parameter "formation value" in feature (M1.7) of the claimed invention, and thus a limiting feature thereof, is an uncommon parameter in the field of nonwovens (see e.g. the second complete paragraph on page 6 of the impugned decision, and the third sentence in the final paragraph on page 2 of the appellant's letter dated 16 February 2024).

1.2 According to the last feature of claim 1 (M1.13), the formation value is to be determined according to a method set out in the description, notably in paragraph 43 of the patent. Accordingly, this method should make use of a specific apparatus ("Paper PerFect Formation Analyzer Code LPA07" manufactured by OPTEST Equipment Inc.) and of a specific test procedure outlined in section 10.0 of its operation manual ("LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20").

1.3 As argued by the respondent, at the filing date of the patent this specific apparatus was seemingly available and so was presumably its manual of operation. The Board however cannot agree with the respondent's conclusion that for this reason the invention defined in claim 1 meets the requirement of sufficiency of disclosure (see point 8 of the respondent's reply to the appeal grounds). Such conclusion could only be confirmed if the apparatus mentioned in the cited paragraph as well as the manual were available over the entire lifespan of the patent (see for example Reasons 3.3 of T 1714/15).

1.4 Since, in the present case, the specific machine referred to in paragraph 43 of the patent as well as its operation manual containing the information necessary to perform the test according to its section 10.0, are undisputedly no longer available (see the first complete paragraph on page 2 of the appeal grounds and also the last three paragraphs on page 6 of the impugned decision), but only a successor model (D18, LPA17), the respondent's conclusion could only be followed if there was proof that both models (LPA07 and LPA17) indeed give the same results for the specific type of product defined by claim 1. As also argued by the appellant, no proof is available that this is the case. The statement in D18, referring to "the same paper" is insufficient in this regard (see also Reasons 1 of T 1293/13). There is no verifiable data or evidence available supporting this statement, let alone that it would apply also to a dispersible moist wipe comprising a tissue web having the features according to claim 1.

1.5 Since neither the apparatus LPA07 nor the test procedure set out in section 10.0 of its operation manual is available, examples 3 and 15 in the patent are of no help to the skilled person either since they can not be tested for the formation value which needs to be determined according to the procedure of paragraph 43 of the patent using an LPA07 and the test procedure in section 10.0 of its manual. Such test is a prerequisite for concluding that a test of this parameter for the same sample wipe based on a procedure using the successor model LPA17 would lead to the same value as obtained with LPA07.

1.6 For the above reasons in points 1.1 to 1.5 given in its communication pursuant to Article 15(1) RPBA, the Board provisionally concluded that the invention according to claim 1 of the patent was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person. Additionally, the further arguments submitted by the respondent in writing in reply to the Board's communication did not change this conclusion for the following reasons.

1.6.1 Even if the facts of the present case differ slightly from decisions T 1714/15 and T 1293/13 (see above points 1.3 and 1.4), in that in claim 1 of the contested patent the unavailable machine is not explicitly specified, the conclusions of the Board remain the same. In order to carry out the invention according to claim 1, the skilled person is directed to the description by the claim's explicit reference in feature M1.13 to the "formation value [is] determined using the methods set out herein". The skilled person is therefore faced with the same insufficient information as in the cited decisions. It was also not explained by the respondent why this difference should lead to a different conclusion on insufficiency of disclosure.

1.6.2 The Board is also not convinced by the respondent's argument that the general type of machine ("PerFect Formation Analyzer") rather than the specific machine identified by its product code ("LPA07") would be understood as the relevant aspect for the skilled person when considering suitability for carrying out the test. Moreover, this allegation is not supported by any evidence. Similarly, there is no evidence that the operating manuals of two machines with different product codes ("LPA07" and "LPA17") contain the same details with respect to the methods to be used, let alone that the LPA17 manual discloses the same method as specifically referred to on page 9, lines 2/3 of the description of the patent, namely "in section 10.0 of the Paper PerFect Code LPA07 Operation manual (LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20)".

1.6.3 Contrary to a further argument of the respondent, reproducing the two examples 3 and 15 of the patent, which should inherently have formation values within the claimed range, would also not allow the claimed invention to be carried out by the skilled person over the whole scope of the claim. Absent any evidence other than the unsupported statement in D18 that formation values measured by the successor model LPA17 would be the same "for the same paper" (rather than for a dispersible moist wipe made of a nonwoven tissue web as required by claim 1 - see also point 1.4 above), the skilled person is not provided with sufficient information to carry out the invention defined in claim 1 for any other wipes than the two examples.

1.6.4 The further decisions T 593/09 and T 61/14 referred to by the respondent also do not alter the Board's conclusion. Due to the unavailability of the machine "Paper PerFect Formation Analyzer Code LPA07" and consequently the impossibility of determining the formation value according to the method in paragraph 43 of the patent, the parameter "formation value" is indeed so ill-defined that the skilled person, taking into account common general knowledge and the description of the patent, is not able to carry out the invention of claim 1 over its whole scope.

1.6.5 Further, the Board also does not accept the respondent's argument that the use of a low consistency former as specified by feature M1.12 of claim 1 would be linked or necessarily lead to a dispersible moist wipe having a web with a high formation value within the claimed range, as specified by feature M1.7. The claim does not establish any link between features M1.7 and M1.12; both parameters are defined independently of each other. Although paragraphs 17 and 47 of the patent indeed disclose formation quality as being enhanced by the use of a low consistency former, there is no indication or evidence that low consistency in the range claimed by feature M1.12 necessarily leads to a formation value within the claimed range. At least the data provided for the fifteen examples (Table 2) shows a great lacuna in regard to the respective formation value and does not allow such a link to be established.

1.7 The Board therefore confirms its provisional opinion set out in its communication under Article 15(1) RPBA and concludes that the ground for opposition pursuant to Article 100(b) EPC prejudices maintenance of the patent.