EP 3 510 132 A1, originally filed as PCT application PCT/US2017/050478 and published under WO 2018/049029, relates to solid detergent compositions and methods of adjusting the dispense rate of solid detergents using solid anionic surfactants.
Brief outline of the case
The ED refused the application for a lack of clarity. The applicant appealed.
The board decided that claim 1 of the MR was lacking clarity. The same applied to AR1-6.
Claim 1 of AR7 infringed Art 123(2) and could not be considered as a mere correction under R 139.
Eventually the board confirmed the refusal.
Claim 1 of the MR
Claim 1 defines a solid detergent block composition comprising a first solid comprising a solid anionic surfactant, a second solid comprising an alkaline source, wherein the first solid and the second solid are mixed and pressed to produce a solid block…. wherein the dispense rate of the solid block is 20 to 120 g/per cycle, wherein the dispense rate is measured by a spray type dispenser using a 60 second dispense period and water with a pressure of from 1.378 bar (20 psi) to 3.445 bar (50 psi) and a temperature from 32.2 to 60°C (90 F to 140 F)”.
The proprietor’s point of view
In the statement of grounds of appeal, the applicant argued that the ED merely objected to the breadth of the claim, while broad claims were not necessarily unclear.
The applicant further argued that the skilled person would be capable of implementing the claimed dispense rate since it knew how it could be adjusted, namely by varying the necessary settings, such as the flow rate.
The applicant stated that, according to EPO practice and case law, a claim is sufficiently clear if the skilled person can carry out the invention and measure the claimed parameter without undue burden.
The board’s decision
The claim defines the solid block inter alia by its dispense rate and thus by a parameter.
It follows from established jurisprudence that, if claimed subject-matter is wholly or partially defined by a parameter, a method for measuring the parameter must be indicated, if possible in the claim itself, so as to allow the skilled person to unambiguously verify whether they are working inside or outside the scope of the claim, cf. CLBA, 11th edition, II.A.3.6.
The dispense rate depends on several factors not all of which are defined in the claim. In particular the flow rate, i.e. the amount of water sprayed per time unit onto the detergent block, remains undefined. This was even confirmed by the applicant.
It follows that with the dispense rate being dependent on the flow rate, a given block may thus have a dispense rate outside the claimed range if tested with a certain flow rate, but within the claimed range if tested with another, higher or lower, flow rate. Thus, the subject-matter for which protection is sought is not clearly defined.
This lack of clarity is further aggravated by the fact that the flow rate is not the only undefined factor having an impact on the dispense rate. According to the description, the quality of the water used and the shape and size of the block also play a role.
Since these factors are also not defined in the claim, the skilled person cannot be sure whether a tested block for which a dispense rate outside of the claimed range has been measured might nevertheless be covered by the claim should the testing conditions be varied based on parameters not specified in the claim.
For the board, it is not sufficient that a claimed parameter can be measured without undue burden. Rather, measuring the parameter must allow an unambiguous distinction between subject-matter covered or not covered by the claim.
In the present case, this condition is not met so that claim 1 lacks clarity, cf. Art 84.
Comments
The decision is interesting in that the board made clear that it is not sufficient that a claimed parameter can be measured without undue burden.
The parameter must be such that it allows to precisely define the matter for which protection is sought. This was manifestly not the case here.
The claim merely defined a result to be achieved, without disclosing the means allowing to achieve the aim. The claims boils down to somehow spray some water on a solid detergent block of a given composition, in order to obtain a given dispense rate.
An objection Art 83 could also have been possible.
The definition of flow rates, the quality of the water used and the shape and size of the block were missing in the original disclosure, although they influence the dispense rate of the solid block.
Those missing information could not be added without infringing Art 123(2). Missing information which cannot be added after filing is a typical example of a possible objection under Art 83.
The fact that the applicant argued that the skilled person would be capable of implementing the claimed dispense rate, implies that for the latter sufficiency was given. This was certainly not the case as essential features were missing in the original disclosure.
Comments
1 reply on “T 1054/24-Art 84-It is not enough that a parameter defined in the claims can be measured without undue burden”
First thought, Daniel, is that Applicant might have made more progress with a method claim. Even with a method claim, there ought to be some protection in Europe from unlicensed sales of blocks, no?
I see there is a divisional. Perhaps it claims the method. Perhaps that is Applicant’s fall-back position?