Friday, May 12, 2017 T 1811/13 - Can lack clarity imply lack of sufficiency?

Where exactly are the boundaries of the forbidden  area?

Can a lack of clarity in a claim lead to insufficiency of disclosure? The opponent tries to convert a clarity objection into a lack of sufficiency. The argument is that, the impossibility for the skilled person to know whether he is working within the forbidden area entails the impossibility of carrying out the invention.

To support the point a number of T decisions are cited which side with this argument. The board trumps it though with even more T decisions that do not agree. At the end, the board does concede though that in other situations this argument might work. 

Reasons for the Decision

(...)

5. Sufficiency of disclosure

Apart from general references to first instance submissions - which are not part of the appeal proceedings within the meaning of Article 12 of the Rules of Procedure of the Boards of Appeal (RPBA) of the EPO (see OJ EPO 1/2016, Supplementary publication, page 41 et seq.)) - appellant II has raised two objections under Article 83 EPC 1973.

5.1 The first objection (paragraph bridging pages 7 and 8 of the statement of grounds of appeal of appellant II)

is based on the lack of clarity of a feature; appellant II argued that the impossibility for the skilled person to know whether he was working within the forbidden area entailed the impossibility of carrying out the invention.

This approach has its origin in decision T 256/87 of 26 July 1988. In this case, the board, having found the claim under consideration to be clear, declared:

"The further question then arises, however, of whether this information, although clear in itself, is sufficient to enable the skilled person to carry out the invention in the sense of his (a) being able to establish whether a composition containing an amount of EAC falling within the range claimed, and (b) being able reliably to prepare such a composition." (reasons, point 10)

This decision appears to have gone unnoticed until 2003. From that time on it has been cited in two ways.

First, there have been four decisions of board 3.2.06, issued between 2004 and 2007 (T 387/01, T 252/02, T 611/02, and T 464/05) in which the board found that the skilled person was not in a position to know whether he was working within the area covered by the claim, and, as a consequence, that the claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. These decisions appear not to have been followed since then; to the best knowledge of the present board, the only decision following the same logic (without referring to previous decisions) is decision T 18/08 (see reasons 4.2.4). Decision T 909/12 cited by appellant II does not make an explicit statement in this respect but can be read accordingly, in particular when the last paragraph of point 4.7.3 and point 4.8 of the reasons are combined.

Secondly, there are many decisions of various other boards, in particular chemical boards, that have qualified the approach of decision T 256/87 and have pointed out that the definition of the scope of a claim was related to Article 84 EPC rather than Article 83 EPC. Since 2003, more than twenty decisions reaching this conclusion have been issued, the most recent so far (of which the board is aware) being T 1948/10, T 608/12, T 2331/11 and T 1507/10.

It may, therefore, be said that today there is agreement or at least a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered as a matter related to Article 83 EPC. The present board shares this opinion.

It should be noted in this context that, as stated in decision T 608/07, reasons 2.5.2, "... care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under Article 84 EPC ...").

This is not to say that a lack of clarity cannot result in an insufficient disclosure of the invention. However, in such a case it is not sufficient to establish that a claim lacks clarity, but it is necessary to establish that the application or patent, as the case may be, does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. In other words, it is not sufficient to establish a lack of clarity of the claims for establishing lack of compliance with Article 83 EPC 1973; it is necessary to show that the lack of clarity affects the patent as a whole (i.e. not only the claims) and that it is such that the skilled person - who can avail himself of the description and his common general knowledge - is hindered from carrying out the invention (cf. T 1886/06, reasons 1.4.2; T 593/09, reasons 4.1.4). Appellant II has not shown that this is the case here.

5.2 The second objection (statement of grounds of appeal, page 8, second paragraph) is based on a particular interpretation of feature e2). The board has not adopted this interpretation (see point 3.3. ) and cannot, therefore, endorse this objection.

5.3 As a consequence, the board has reached the conclusion that the request complies with the requirements of Article 83 EPC 1973.

This decision T 1811/13  (pdf) has European Case Law Identifier ECLI:EP:BA:2016:T181113.20161108. The file wrapper can be found here. Photo by Jorge Guillen (Fotocitizen) obtained via Pixabay under a CC0  license (no changes made).