Tuesday, 31 May 2016

T 2182/11 - Lack of clarity is no lack of sufficiency

Vague and broad, who can object to that?

In this opposition appeal, the opponent tried to raise insufficient disclosure objections (Art. 83 EPC) based on broad or vague terms in the granted patent claim. Below are the relevant portions of the main claim.

A sanitary napkin adapted to be worn in a crotch portion of an undergarment, said sanitary napkin having opposed longitudinally extending side edges and a longitudinal axis and comprising:
b) an absorbent system under said cover layer, said absorbent system having an absorbent width of at least 64 mm;
f) said absorbent system including at least a pair of preferential bending zones that extend along said longitudinal axis and are adjacent to respective side edges of the sanitary napkin, said preferential bending zones register with respective linear, longitudinally extending adhesive zones, this construction allowing said sanitary napkin to fold at said preferential bending zone in response to lateral compression applied to said napkin and permitting said napkin to acquire a three-dimensional deformation profile,

Arguing insufficiency without experimental data is always hard. This attempt also failed, as the board considered the potential problems in the claim to fall under clarity, which is not a ground for opposition.

Reasons for the Decision

Article 83 EPC

1. In its preliminary opinion, the Board stated, in regard to the first aspect of the appellant's objection under Article 83 EPC relating to an alleged lack of at least one way of carrying out the invention due to inconsistencies between the description and the Figures (due to missing reference numerals in the latter), that this was not considered convincing because it was based only on a rather general allegation.

Since no further arguments were received in reply to this preliminary opinion, the Board sees no reason to alter its provisional opinion, which is thus confirmed herewith. In particular, the appellant had not stated which specific inconsistency was meant, nor why such inconsistency would be of a nature such that the invention could not be carried out.

2. Concerning the second aspect of the appellant's objection relating to the alleged impossibility of carrying out the claimed invention over the whole range claimed because of the vague claim language, in particular of the expression "register with", the Board also had opined in its communication that, to the extent that this objection could be considered as an objection under Article 83 EPC, it was not prejudicial to the maintenance of the patent.

The Board had in particular stated in its preliminary opinion that the expression "register with" was very broad, as also admitted by the appellant. The breadth of an expression was really a matter concerning the clarity requirement of Article 84 EPC rather than a ground for opposition. In as far as the objection was to be considered under Article 83 EPC, the mere fact that a term is broad does not prevent a skilled person from carrying out the invention.

As to the appellant's argument based on the decision T 63/06, the Board was also not persuaded. The appellant referred in particular to the head note thereof, which reads:

"The burden of proof generally lies upon an opponent to establish insufficiency of disclosure.

When the patent does not give any information of how a feature of the invention can be put into practice, only a weak presumption exists that the invention is sufficiently disclosed (see Reasons 3.3). In such case, the opponent can discharge his burden by plausibly arguing that common general knowledge would not enable the skilled person to put this feature into practice.

The patent proprietor then has the burden of proof for contrary assertion that common general knowledge would indeed enable the skilled person to carry out the invention."

The Board nevertheless stated in its communication that in the present case a plausible argument according to which common general knowledge would not enable the skilled person to put the critical feature into practice, i.e. the feature based on the expression "register with", had not been provided by the appellant.

Absent any comments or counter-arguments also on this part of its preliminary opinion, the Board again sees no reason to come to a different conclusion and again confirms its preliminary opinion herewith.

3. In regard to the third argument submitted in support of its objection under Article 83 EPC, relating to the feature "absorbent width", the Board had questioned in its communication whether this expression was not readily understandable per se in a broad sense, or whether it referred to an uncommon or unknown parameter in the field of sanitary napkins and whether the skilled person is faced with particular difficulties when determining it. The Board stated further, that if the parameter and its determination would indeed be considered to be unknown to the skilled person, then the method described in paragraph 25 of the patent might need further consideration.

The Board accepts the argument submitted by the respondent during the oral proceedings that the skilled person understands the expression "an absorbent width" in a broad sense and that nothing in the claim puts a further requirement on this parameter. In particular, the skilled person is not faced with any particular difficulty as to how to measure a width of an absorbent system in order to determine whether this equals or exceeds the limit value of 64 mm defined in the claim. The method described in paragraph 25 is not definitive or limiting for the claimed subject-matter, and thus whether it might, in a certain case, yield a different result depending on, for example, the user's anatomy or how a particular sanitary napkin was worn, did not prevent a skilled person from carrying out the invention.

The appellant did not file any comments on the matters raised in this respect in the Board's communication.

Although the argument of the respondent accepted by the Board was submitted only during the oral proceedings and thus in the absence of the appellant and the two other parties as of right, the right to be heard according to Article 113(1) EPC is not infringed. Article 15(3) RPBA stipulates that the Board is not obliged to delay any step in the proceedings, including its decision, by reasons only of the absence at the oral proceedings of any party duly summoned. The parties were duly summoned in accordance with Rule 115 EPC (see point IV.IV. above) and the argument of the respondent was submitted specifically in reply to the issue raised by the Board in its communication, such that it cannot be considered to come as a surprise.

Thus, also for the third aspect of the appellant's objection, the Board concludes that the patent as amended discloses the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person.

4. The requirement of Article 83 EPC is thus met.

This decision T 2182/11 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T218211.20160512. The file wrapper can be found here. Photo "Reflections in the Mist" by john mcsporran obtained via Flickr under a CC-By 2.0 license (no changes made).

1 comment :

  1. This is a typical case of hidden clarity objection raised in opposition.
    If clarity would be attacked loud and clear, it would be dismissed immediately if it does not fall under the possibility given in G 3/14. It is thus very tempting to disguise the clarity objection under sufficiency which cannot be dismissed at once.
    See also T 1387/08 or T 1677/13 which are only two examples of similar decisions.