EP 3 356 068 B1 relates to a system and method for real-time statistical process control in additive manufacturing.
It relies on monitoring the “spark plume” created during sintering. An image of the spark plume is taken, image data is extracted from the image, and this data is fed to a statistical process control module. An alert is generated “if the image data exceeds pre-determined control limits”
Brief outline of the procedure
The opposition was rejected and the opponent appealed.
The board revoked the patent for lack of sufficiency.
The case is interesting as it defines two types of insufficiencies.
The opponent’s point of view
The opponent argued that the claimed invention was not sufficiently disclosed because:
(a) it did not disclose how to analyse the image of the spark plume so as to derive characteristics of the “spark plume”.
(b) it did not disclose how to derive meaningful control limits, since the patent neither established that characteristics of the plume spark are correlated with any malfunctions, anomalies or defects nor taught how to devise an experiment to determine the control limit in individual circumstances
The proprietor’s point of view
The proprietor stated that the opponent had not discharged its burden of proof according to which, following established case law of the boards of appeal, e.g. T 19/90, Reason 3.3, (the famous onco-mouse), according to which claims can only be objected to for lack of sufficiency if there are serious doubts substantiated by verifiable facts.
The skilled person knew how to set up a system to capture images of the spark plume and how to extract its extent and characteristics such as width and height.
The control limits could be determined by the skilled person through routine experimentation by analysing data on spark plumes under suitable manufacturing conditions, and deriving limits between normal and abnormal values.
The proprietor stated that the opponent had not discharged its burden of proof regarding insufficiency of disclosure, without much reasoning and without giving any specific legal basis for its objection.
The board’s decision
On the basis of the submitted evidence, the board accepted that the term “spark plume” is not defined in the art. The documents at hand consider different types of ejected particles that form visible plume-like shapes, and some use the term “plume” in this context, but none of them defines the term “spark plume“.
Since the patent does not define the term either, the board took the view that the term “spark plume” is to be taken to cover any combination of matter created by the sintering process, to the extent it “sparks” and its shape may be said to be “plume”-like.
For the board sufficiency means that the patent or application must teach what the skilled person is supposed to do in order to carry out the invention, which includes achieving any relevant technical effects, over the whole scope of the claims.
An objection to sufficiency, as any other objection, has to be reasoned. This burden is on the one raising the objection. It must explain in which way the disclosure is deficient.
Two ways to look at sufficiency
To justify an objection, one may contest factual allegations in the disclosure, e.g. that certain things can be done in a certain way or that a technical effect is effectively achieved, or one may point out to gaps in the disclosure, i.e. to information, which is missing from the disclosure but required for the skilled person to carry out the invention over the full scope of the claims.
For either argument to be convincing, it must raise “serious doubts” regarding sufficiency of disclosure. They cannot be limited to mere allegations of insufficiency, but must be reasoned in a way allowing the deciding body to evaluate, i.e. “verify” their merit.
To make an objection of the “first type“, contesting factual allegations in the disclosure, it may be appropriate to submit evidence showing that an alleged fact is actually incorrect.
It may be less straightforward to provide evidence to substantiate an objection of the “second type“, because establishing a “gap” in the disclosure is similar to “proving a negative“. For the same reason, it is unclear to what extent an objection of the latter type can be based on “verifiable facts”.
Application to the present case
In the present case, the opponent has pointed to specific information missing from the disclosure and the CGK in the art. The corresponding arguments explaining the breadth of the claim language and what would be required of the skilled person to carry out the claimed invention across its full breadth were in part verifiable, e.g. as regards the meaning of “spark plume” in the art, and otherwise sufficiently substantiated for the board to assess them.
In the board’s judgement, therefore, the opponent had provided sufficient reasons to substantiate its objection of insufficient disclosure.
The board agreed with the proprietor that the patent teaches that the spark plume may be an indicator for in-process quality factors and also that it provides a list of characteristics that may be useful as indicators, and that specifically given image characteristics could be extracted using common-place image processing tools. This is part of the CGK.
It was also clear that the success of the claimed method is predictable, e.g. absence of any plume, whatever its type, will normally signify a problem. But the claim is not restricted to such “extreme” cases. Rather, the patent is directed to “standard” cases in which one can measure e.g. width or height of the spark plume.
The patent does however not:
(a) define the intended meaning of the term “spark plume“, i.e. which incandescent matter (plasma, spatter, condensate) is to be monitored;
(b) disclose which characteristics of the so-defined spark plume are, not just may be, useful as indicators, and for which quality factors; or
(c) provide any evidence to that effect.
Based on the evidence on file, this missing information is not part of CGK.
Because the patent provides no working examples, the person skilled in the art has to make three choices without any guidance, namely which “plume” constituents to identify in the image, which characteristics to derive from that image, and in view of which quality factors to assess abnormality of the derived characteristics.
Comments
“Type” 1 insufficiency
When some of the facts alleged in the application as filed cannot be reproduced, we are in presence of insufficiency of the “first type”. To argue the first type of insufficiency verifiable facts are needed, e.g. experimental data.
“Type 2” insufficiency
When there are gaps in the information provided, which cannot be compensated by CGK, we are in presence of the “second type” of insufficiency. In such a situation it is difficult, not to say impossible, to bring verifiable facts.
Type 2 insufficiency occurs easily in the absence of working examples in the original disclosure.
Common aspects
What is common to both types of insufficiencies is that they can only be overcome by adding the missing information to the original disclosure, i.e. by adding matter and therewith infringing Art 123(2). This allows to prima facie distinguish an objection under Art 83 from an objection under Art 84.
If essential features are not in the claim, but in the original disclosure, then the claim can be amended without infringing Art 123(2).
Example
To me, the absence of a method for measuring a non-standard parameter is thus not a question of clarity, but a question of sufficiency.
What about G 1/23
It will be interesting to see whether the boards will consider those two types of insufficiencies when applying G 1/23.
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