T 2279/22 - Misapplied case law developed in the field of chemistry

Key points

• The OD found the patent to be insufficiently disclosed: "The opposition division's view was essentially motivated by its observation that the ambit of the combined claims 1 and 4 covered an embodiment that was nowhere described in the patent. The embodiment in question related to a security booklet where the "another page" and the "further part" formed separate elements (cf. point 2.4.7 of the decision under appeal). The board acknowledges that such an embodiment would indeed be difficult, if not impossible, to realise. Nevertheless, it is the board's view that the assessment whether the patent provides 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 (T 2773/18, Reasons 3.2)."
• "When assessing sufficiency of disclosure, the skilled person may rely on common general knowledge to supplement the information contained in the patent. In the present case, the above analysis of the embodiment of Figure 4 is proof that a potentially unworkable embodiment does not necessarily impair the skilled person to carry out the invention."
• "In the board's view, by citing a passage from section II.C.5.4 of the book "Case Law of the Boards of Appeal of the European Patent Office" (in its edition of July 2019), the opposition division misapplied case law developed in the field of chemistry for inventions that typically concern a composition having a compound or a parameter associated with a certain range of values (T 2773/18, Reasons 3.2; T 500/20, Reasons 3.6; T 447/22, Reasons 44).
• " Incidentally, the board notes that this passage has its origin in Reasons 3.5 of decision T 409/91 where it is immediately followed by the cautionary statement "However, the question whether the disclosure of one way of performing the invention is sufficient to enable a person skilled in the art to carry out the invention in the whole claimed range is a question of fact that must be answered on the basis of the available evidence, and on the balance of probabilities in each individual case".
• " Apart from being situated in the field of mechanics, the facts of the present case are certainly very different from those of T 409/91. Instead, the present board concurs with T 500/20 [blog post] that, in the field of mechanics, if claimed inventions do not involve ranges or compositions, basing an argument of insufficiency on the "in the whole claimed range"-approach is often inappropriate and can be rejected offhand. In such a case it normally suffices to provide a single detailed example or embodiment to illustrate how the invention can be put into practice, in such a way that the underlying principles can be understood by the relevant skilled person and they can reproduce the claimed invention using their common general knowledge without undue burden (T 500/20, Reasons 3.6)."
• As a comment, the Enlarged Board considered non-working embodiments in G 1/03, r.2.5 (for all technical fields) and said that " If a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances.

  Either there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. If this is the case, the inclusion of non-working embodiments is of no harm. ... If this is not the case and there is 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 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 ".

• " The opponent argued that, even when applying the principles established by the case law in the field of mechanics, its conclusion of lack of sufficient disclosure would not change considering that none of the embodiments of the contested patent disclosed all features of the combined subject-matter of claims 1 and 4. 
• "The board disagrees. As set out above, the embodiment of Figure 4 of the patent illustrates how the security booklet of claims 1 and 4 of the main request can be put into practice. The fact that certain terms ("another page", "further part") are not used in a consistent manner in the claims may be a matter of clarity. Similarly, a contradiction between the claims and the embodiments of the description or the drawings of the patent based on a specific reading of the claims would typically result in a lack of support by the description. Such objections need to be considered under Article 84 EPC, which in view of decision G 3/14 is not open for objection in opposition proceedings if, as in the present case, the contested claims are identical to claims of the patent as granted. This is not to say that a lack of clarity or support cannot result in an insufficient disclosure of the invention. However, in such a case it is necessary to show that the lack of clarity (or the lack of support by the description) affects the patent as a whole and that it is such that the skilled person - who can avail themselves of the description and common general knowledge - is hindered from carrying out the invention (T 2290/12, Reasons 3.1). This is not the case here."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222279eu1