Assessment of sufficiency of disclosure in claims

Examination Matters 2019 – webinar seriesAssessment of sufficiency of disclosure in claimscontaining parameters

Roberto Menchaca 4 December 2019Examiner, Sector Healthcare, Biotechnology and Chemistry

European Patent Office

Ph.D. in organic chemistry

Examiner @ EPO in The Hague (14 y)

EQE (2009)

CEIPI tutor, preparation course EQE (since 2011)

2

Presenting today

Roberto Menchaca

European Patent Office 3

Assessment of sufficiency of disclosure in claims containing parameters

Agenda

§ General considerations

§ Practical cases

• Methods of measurement

• Scope of the claims

§ Conclusions


General considerations

Article 83 EPC / Rule 43(1) EPC

Article 83 EPC

The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Rule 43(1) EPC

The claims shall define the matter for which protection is sought in terms of the technical features of the invention.

§§



Article 83 EPC Article 84 EPC

§ Article 83 EPC is a ground for opposition(Article 100(b) EPC)

§ Compliance with Article 84 EPC in opposition proceedings only in limited situations (G3/14)

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Guidelines Part F, Chapter III

§ The application must contain sufficient information to allow the person skilled in the art, using his common general knowledge, to perform the invention over the whole area claimed without undue burden and without needing inventive skill (T727/95, T435/91)

§ An objection of lack of sufficiency of disclosure presupposes that there are serious doubts, substantiated by verifiable facts (T409/91, T694/92)

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Agenda


§ Practical cases



§ Conclusions


Practical cases – Methods of measurement

Do you think the opponent's objection under Article 100(b) EPC will be successful?

þ yes ý no

Case I

Opponent:

§ three documents showing that the values obtained for the alkali metal content depended on the method used for determination

§ variations among values obtained for same sample

Claim 1

A process for preparing a silicone polyether A comprising the step of reacting a polyether A having an alkali metal content of less than 50 ppm with an organohydrogensiloxane ......



ý no

See T174/12and T1768/15

Case I

The fact that the parameter may be measured by different known methods, possibly leading to somewhat different results, does not necessarily amount to an insufficiency of disclosure. As long as these methods are readily available to the person skilled in the art and their application does notpose any technical difficulty.

The subject-matter of claim 1 fulfils the requirements ofArticle 100(b) EPC.



Do you think an opponent's objection under Article 100(b) EPC will be successful?

þ yes ý no

Case II

Description:

§ no test method specified

§ several methods known in the art

Claim 1 An absorbent article having ... (product features) ..., characterized in that it has a thickness equal to or smaller than 3 mm.



þ yes

See T626/04and T2096/12

Case II

The claim contains a common parameter in the relevant field (i.e. thickness). However, crucial information necessary to measure the parameter is missing. Even though some degree of variability within the claimed range will not per se affect the sufficiency of disclosure, the complete lack of information as to what pressure is to be applied leads to a degree of uncertainty in measuring the thickness of the claimed article that is unacceptable.

The subject-matter of claim 1 does not meet the requirements of Article 100(b) EPC.



Do you think an objection under Article 100(b) EPCwill be successful?

þ yes ý no

Case III

Test method A (Description):

Involves the selection of 100 panellists based on weight within the intended size ranges of articles being tested and a further random selection of 30 panellists therefrom

Claim 1

An absorbent article selected from diapers comprising an absorbent core ..., characterized in that the crotch region has an absorbent capacity of not more than 40% of the absorbent core's total absorbent capacity determined by Test Method A



þ yes

See T815/07

Case III

The claim contains a rather unusual parameter. Test Method A does not to provide with sufficiently reliable measurements for the skilled person to know whether he is actually carrying out the invention. In fact, the method is so unreliable that it application results in totally arbitrary values, depending on several decisions which have to be made by the skilled person when trying to put it into practice, for which no information is available, neither in the patent nor by using his common general knowledge.

The subject-matter of claim 1 does not meet the requirements of Article 100(b) EPC.



Claims containing parameters

What is decisive for establishing insufficiency is whether an ambiguous parameter is so ill-defined that the skilled person is not able, on the basis of the disclosure as a whole and using his common general knowledge, to identify, without undue burden, the technical measures necessary to solve the problem underlying the patent (T593/09, T2403/11)



Agenda


§ Practical cases



§ Conclusions


Practical cases – Scope of the claims


þ yes ý no

Case IV

Description (also common general knowledge):

§ examples of preparation of Me granules having bulk densities between 0,6 and 1,5 g/cm3

§ technically not possible to prepare Me granules >2 g/cm3

Claim 1

A process for the preparation of granules of methionine comprising ... (process features) ..., being further characterized in that the granules of methionine have a bulk density of at least0,6 g/cm3



ý no

See T1979/11, T624/08and T2213/08

Case IV

Claims including an open-ended range for a parameter where it is clear for a skilled person that the open-ended range is limited in practice by another feature present in the claim,must be seen as seeking to embrace all values of the parameter as high as can be attained above the specified minimum level.





þ yes ý no

Case V

Claim 1

A fluorinated chromium oxide catalyst offormula Cr2O3-xF2x, where X is lower than 3, characterised in that the fluorine content ofthe catalyst is not less than 30% by weight.

Opponent:

§ no teaching in patent on how to obtain these catalysts with a fluorinated content of 60 wt% or higher.

§ not possible when attempting to follow the method of the invention



ý no

See T2213/08

Case V

Even though the product claim has been drafted containingan open-ended parametric range, the latter is in practice implicitly limited by other features present in the claim(i.e. the chemical formula of the catalyst).




Case Law book 8th edition 2016, II.C.7.1

§ The skilled person would immediately exclude those variants falling under the literal wording of the claim which are clearly outside the scope of practical application of the claimed subject-matter

§ Values of the parameter not obtainable in practice would not be regarded by the skilled person as being covered by the claims and thus could not justify an objection of insufficiency of disclosure (also T1018/05)

§§



Article 84 EPC

Whether the person skilled in the art knows if he workswithin or outside the claimed scope is primarily a matter of Article 84 EPC (T593/09, T1507/10, T1811/13)

§§



Agenda


§ Practical cases



§ Conclusions



Conclusions

§ Definition of the parameter

• unusual parameters

• "in-house" parameters

§ Methods of measurement

• references to prior art methods

• [industrial] standards

§ Experimental evidence

§ Third party observations (Article 115 EPC) !!!!


Questions

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Questions

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Assessment of sufficiency of disclosure in claims