5. Clarity and completeness of disclosure

Case T 1845/14 concerned the question whether the undisputed ambiguities in respect of two parametric features (SCBD and CDBI) in claim 1 resulted in a lack of sufficiency, as alleged by the opponents (respondents). The board, from its detailed analysis of the two parameters, first concluded that the skilled person would have needed suitable measuring methods for determining the SCBD and CDBI to reproduce the invention. Such methods were available to the skilled person at the priority date of the patent in suit (the ambiguity concerning the definition of CDBI notwithstanding). A separate line of argument advanced by the respondents concerned the ability of the skilled person to solve the problem underlying the patent. The board analysed the contribution of decisions T 593/09, T 815/07 and T 172/99, with further reference to Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd [2004] UKHL 46 of the United Kingdom House of Lords (paragraph 126), to T 608/07 and, in connection with it, to Zipher Ltd v. Markem Systems Ltd [2008] EWHC 1379 of the High Court of England and Wales (in which three types of objections were described: "classical insufficiency"; "Biogen insufficiency" (cf. T 1727/12); "insufficiency which arises through ambiguity"). The board concluded that all these decisions relating to a parameter mentioned in a claim whose definition was ambiguous were based on a definition of the term "invention" which did not refer to the combination of features defined by the terms of the claim under consideration, but rather to the inventive idea or concept that the inventor had in mind and that led the patentee to seek protection for what was claimed. Decisions T 593/09, T 815/07 and T 172/99 in particular used the same criterion for assessing sufficiency: the ability of the skilled person, seeking to reproduce what was claimed, to solve the problem underlying the patent at issue which was mentioned in the specification but was not part of the definition of the subject-matter claimed. The board in T 1845/14, however, was convinced that the ability of the skilled person to solve the problem underlying the patent in suit, when seeking to carry out the invention, was not an appropriate criterion for assessing sufficiency where the problem was not part of the definition of the subject-matter claimed. Indeed, the board did not see any reason to consider a different meaning of the term "invention" in relation to sufficiency. There was no reason to define the invention on the basis of an effect alleged in the patent to be achieved by the claimed subject-matter or on the basis of specific conditions for measuring a parameter when the wording of the claim did not require this. This would amount to considering sufficiency on the basis of a restricted reading of the claim. This was not done when other patentability requirements, such as novelty and inventive step, were assessed and there was no apparent reason why sufficiency should be assessed on a different basis. There was, therefore, no reason to base the assessment of sufficiency on the ability to find out which definition of a parameter in a claim or which conditions for its measurement were necessary or the patentee had in mind when drafting the patent in cases when this definition or these conditions were held to be necessary to ensure that the problem underlying the patent was effectively solved, but the problem itself or an effect derivable from it was not defined in the claims. The invention was defined by the terms of the claims, which should be given their broadest technical sensible meaning in the context they appeared. This position is also supported by G 1/03 (OJ EPO 2004, 413) (non-working embodiments). Since the meaning of the term "invention" was supported by G 2/98 (OJ EPO 2001, 413) and G 1/03, there was no need for a referral. The board concluded that in the case of an unclear parameter defined in a claim whose values required in the claim were indicated in the specification to be essential to solving the problem underlying the patent at issue, the ability of the skilled person to solve that problem by reproducing what was claimed was not a suitable criterion for assessing sufficiency of disclosure when the problem or an effect derivable from it were not explicitly or implicitly part of the definition of the claimed subject-matter. This conclusion did not necessarily mean that the ambiguity of CDBI was merely an issue of clarity.

The board in T 54/17 cited the settled case law that two requirements had to be met for the purposes of Art. 100(b) EPC: the skilled person had to be able, firstly, to derive from the patent specification at least one way of carrying out the claimed invention and, secondly, to carry out the invention over the whole range claimed. As to the first requirement, the board agreed with the respondent (opponent) that the description did not give any example of how to carry out the idea, described by the appellant as "central", of detecting operational parameters of individual components at the same time as environmental parameters and then inferring operational events from the values measured. Even if the skilled person could imagine an embodiment, that would not be enough to meet the second requirement that it be possible to carry out the invention over the whole range claimed. The description was worded very generally, referring to switching off a heavily overheated component without saying how it was to be decided not to switch off the other, neighbouring component too. The board held that this (second) requirement was particularly important, especially where a claim contained unusual parameters. Referring to the conditions listed in T 172/99, it observed that where a newly formulated and hence unfamiliar parameter was relied on to define the solution to a technical problem, the patentee was under a particular obligation to disclose all the information necessary. The board took the view that the "operational event" and the "reaction pattern" claimed in the case in hand had to be regarded as precisely such unfamiliar parameters. They had a certain meaning in German but were not readily understood as having a technical meaning for the purposes of controlling a processor system. In the board's view, the invention's contribution amounted merely to the very general idea of taking account of environmental parameters in a monitoring and controlling process. The description did not set out any embodiment explaining and illustrating this idea. Nor could it be envisaged how this idea would work in relation to the parameters "operational result" and "reaction pattern" on the basis of what was disclosed in the description. The board therefore concluded that the skilled person was unable to carry out the invention (see also, on the interruption of proceedings, Chapter III.D.2.).