5.4. Invention to be performed over whole range claimed

The disclosure of one way of performing an invention is only sufficient if it allows the invention to be performed in the whole range claimed rather than only in some members of the claimed class to be obtained (T 409/91, OJ 1994, 653; T 435/91, OJ 1995, 188; and T 172/99). This is considered a question of fact. Sufficiency of disclosure thus presupposes that the skilled person is able to obtain substantially all embodiments falling within the ambit of the claims. This view has been taken by the board in numerous decisions, for example T 19/90 (OJ 1990, 476), T 418/91, T 548/91, T 659/93, T 435/91 (OJ 1995, 188) and T 923/92 (OJ 1996, 564; more recently, issue discussed in detail in T 1727/12 ("Biogen Sufficiency")). This principle applies to any invention irrespective of the way in which it is defined, be it by way of a functional feature or not. The peculiarity of the functional definition of a technical feature resides in the fact that it is defined by means of its effect. That mode of definition comprises an indefinite and abstract host of possible alternatives, which is acceptable as long as all alternatives are available and achieve the desired result (T 1121/03 and T 369/05, see also T 2128/13). With respect to a claimed process defined in a functional manner, i.e. by its outcome, the board in T 1051/09 concluded that what was lacking was a generalisable teaching applicable within the scope of the claims, i.e. beyond the specific examples.

More technical details and more than one example may be necessary in order to support claims of a broad scope (T 612/92, T 694/92, OJ 1997, 408; T 187/93). This must be decided on a case-by-case basis. The board must also be satisfied firstly that the patent specification put the skilled person in possession of at least one way of putting the claimed invention into practice, and secondly that the skilled person could put the invention into practice over the whole scope of the claim. If the board was not satisfied on the first point that one way existed, the second point did not need to be considered (T 792/00).

In T 1064/15, the invention related to barbed suture-needle combinations useful for connecting body tissue in various surgical contexts. Claim 1's requirements could be implemented for circular cross-sections, but the question of sufficiency of disclosure arose for non-circular cross-sections. The respondent (patent proprietor) himself intended the teaching of the patent to be applicable to both circular and non-circular cross-sections and specifically sought protection for both types of embodiment. It would be insufficient and disproportionate if the sole disclosed possibility of carrying out the invention with circular cross-section elongated bodies were enough to satisfy the requirements of sufficiency of disclosure. Such an approach could not have been intended by the legislator, because in the board’s view this would go against the general principle that the protection obtained with the patent had to be commensurate with the disclosed teaching. When it came to non-circular cross-sections, this was not the case for the patent in suit. On the basis of the patent disclosure as a whole, taking common general knowledge into account, the person skilled in the art was not able to determine which dimension was meant by the diameter (SD) for an essential part of the claim, or in other words, with a needle having a given diameter, he did not know how to select the cross-section dimension of a non-circular suture in order to improve the closure strength, which was supposed to be an essential part of the teaching of the patent in suit.

In T 553/10, the board stated that the passages cited by the appellant disclosed a method for producing lithium nickel manganese cobalt oxides which fell either within or outside the ambit of claim 1. An additional process step required when seeking to prepare oxides falling within the ambit of claim 1 was missing. The application lacked guidance, and this could not be overcome by drawing on common general knowledge. A declaration written by an employee of the appellant was therefore of little probative value for establishing what was common general knowledge in the art.

In T 239/13 of 5 July 2017 date: 2017-07-05, claim 1 as granted did not require the "granules" to be acidic. The board considered that a solution of the claimed granules per se might have an alkaline pH despite the presence of some acidic component. As regards acidic granules, the description – which dealt exclusively with acidic granules – provided the skilled person with technical information and guidance sufficient to enable him to prepare, without undue burden, acidic granules having "improved storage properties" across the whole ambit of claim 1. As regards alkaline granules, in the absence of a concrete teaching the skilled person would have to start a research programme. The board concluded that the skilled person, following the teaching of the description, was not provided with technical information and guidance sufficient to enable him to prepare granules as claimed without undue burden and across the whole ambit of claim 1.

In T 1994/12 (rubber composition), as to the argument that the requirement for sufficiency of disclosure was not met because the skilled person in view of the ambiguity in respect of the nature of the asphalt would not be able to reproduce the examples of the patent, the board stated that sufficiency of disclosure was not concerned with the invention the applicant might have had in mind when drafting the application, but rather with the invention defined by the claims in terms of the technical features of the invention (see R. 43(1) EPC), as is done for assessing other criteria for patentability such as novelty and inventive step.

See also in this chapter II.C.7.1.2.