EP 3 086 872 B1 relates to an inorganic composite oxide, its preparation and use in an exhaust gas purifying catalyst.
The originally filed application was published as WO 2015/100313.
Brief outline of the case
The patent was revoked for lack of sufficiency and added matter.
The proprietor appealed.
The bord held that sufficiency was given and there was no added matter.
The board remitted to the OD for further prosecution.
We will concentrate here on sufficiency of disclosure in case of open ended ranges.
The claimed features at stake
“Exhibiting a BET specific surface area:
· of greater than 150 m2/g after calcining at 900°C for 2 hours; or
· of greater than 85 m2/g after calcining at 1000°C for 4 hours; or
· of greater than 40 m2/g after calcining at 1100°C for 5 hours.”
The opponent’s point of view on sufficiency
The opponent, as well as the OD considered that open-ended ranges inherently encompass non-working embodiments and as such, cannot be enabled over their whole scope, irrespective of the teachings provided in the patent.
The opponent argued that the patent lacked sufficient information on how to achieve certain parametric values encompassed by the open-ended ranges defining the specific surface area of the composite material after the various calcination tests defined in claim 1 at issue.
Since the open-ended ranges extended to any possible value in the upward direction and were not indirectly limited by other features of the claim, they covered embodiments that were irreproducible or represented inventions yet to be discovered, and so the requirement of sufficiency of disclosure of the invention was not satisfied.
General considerations of the board about sufficiency in open ended ranges
The board held that, where a claimed invention includes an open-ended range physical parameter that could not be reproduced using common general knowledge, the range may be considered to meet the requirement of reproducibility over the whole scope when it can be, at least implicitly, derived from the teachings in the specification that by operating within the scope of certain essential structural and/or process features, the skilled person would be able to adjust the parameter to achieve different values within the open-ended range without undue effort, and the claimed subject-matter defines these essential features.
To arrive at this conclusion, had a three-pronged approach.
Reproducibility over the whole scope claimed
Firstly, the board examined the general criteria for assessing reproducibility of an invention over the whole claimed scope, as derived from the landmark decisions which developed the relevant case law in this respect, i.e. T 435/91(Reasons 2.2.1), T 292/85 (Reasons 3.1), T 226/85 (Reasons 4 and 5), T 409/91 (Reasons 3.3-3.4), and G 1/03 (Reasons 2.5.2).
The board concluded that, that where an invention is defined as a combination of process and/or structural features (A+B) to achieve a certain result or desideratum (X), the skilled person should be enabled to achieve the result (X) over the whole scope of the claim, which is intended to ensure that the breadth of the claimed invention is commensurate with the teachings of the patent.
This assessment should be based on balanced criteria, avoiding unrealistic requirements, such as excluding all non-working embodiments or providing instructions to identify every possible working embodiment, while still ensuring that the claim includes all features essential to achieving the defined desideratum.
Open end ranges and sufficiency of disclosure
The board then reviewed case law dealing with open-ended ranges and sufficiency of disclosure.
In this respect, the board reviewed the following decisions: T 487/89 (Reasons 3.5), T 129/88 (Reasons 2.1.4), T 1008/02 (Reasons 3.5), T 624/08 (Reasons 3.2.2 and Reasons 6.2-6.3), T 1697/12 (Reasons 5.5.1-5.5.5), T 2344/12 (Reasons 1.1.2), T 113/19 (Reasons 2.1) and T 1942/21 (Reasons 1), T 398/19 (Reasons 1.5.1-1.5.4)
Where a claim seeks to embrace values as high as can be achieved with a particular combination of features, i.e. “given the other parameters in the claim”, the open-ended range should in principle be considered to be unobjectionable under sufficiency of disclosure.
In case of a “speculative claim“, i.e. a claim covering yet-to-be-discovered inventions, it could be objectionable under sufficiency of disclosure, but this could be avoided by defining other interrelated parameters which, in practice, would implicitly impose an upper boundary on the open-ended range.
Should the patent provide information on how to reproduce different variants with parametric values falling within the open-ended range, and not merely disclose two isolated products having parametric values slightly above the lower end-value of the range, thus could appear sufficient.
Reproducibility over the whole scope of open-ended ranges
The board noted that, although it is apparent that the inclusion of non-working embodiments is at the root of the problem of sufficiency of disclosure, the argument that the claim covers non-working embodiments is not in itself sufficient to conclude that the invention would not be reproducible over the whole scope.
Rather, the key criterion is whether the teachings in the specification and/or from common knowledge would enable the skilled person to identify multiple working variants over the scope of the claim with reasonable effort, or from a different perspective, whether the information at hand is commensurate with or justifies the breadth of the claim.
No literal interpretation of the open range
On the one hand, the board was of the opinion that reproducing the open-ended range over the whole scope should not be interpreted literally as requiring teachings enabling the skilled person to achieve any parametric value in the upward direction.
Interpreting the concept of “over the whole scope” literally would impose a technically unsurmountable burden, as no amount of teachings would ever be sufficient to identify all possible working embodiments in the upward direction of the range.
The criteria proposed in the landmark decisions are based on a more balanced interpretation of the requirement to reproduce the invention over the whole scope.
Disclosure of isolated embodiments is not enough
On the other hand, the board did not believe that the burden to reproduce the open-ended range over the whole scope would be overcome by the disclosure of isolated embodiment/s or product/s with parametric values falling within the open-ended range.
If such a standard were to be adopted, the burden of reproducing an open-ended range would be similar to, or even lower than, if it had been defined as a closed range, which would be inequitable, as an open-ended definition clearly covers a wider range of embodiments.
How to interpret open-ended ranges
The board concluded that, based on the discussion in the landmark decisions and the relevant case law, open-ended ranges should be interpreted as equivalent to a directional requirement to adjust and increase the parameter to obtain values as high as achievable, beyond the lower end value, with the structural and/or process features defined in the claim.
From this perspective, the burden to enable the open-ended range primarily depends on how the invention is defined in the claim.
The primary argument in the landmark decisions is based on the recognition that claims defining a desideratum often encompass “an unlimited number of possibilities” or at least “a large number of conceivable alternatives” so that under a literal interpretation, the requirement of reproducibility over the entire scope would almost invariably be impossible to satisfy.
Without any restriction by structural and/or process features
Where the element defined in terms of an open-ended range desideratum is not restricted by any structural and/or process features, the situation will be analogous to that found in the landmark decisions, since such subject-matter represents an attempt to protect any solution for maximising the parameter,
With some restriction by structural and/or process features
Where the claim or the element defined in terms of an open-ended range desideratum is further restricted by structural and/or process features, the burden to enable it would involve identifying teachings, in the specification and/or from common knowledge, that, at least implicitly, indicate that the skilled person would be in a position to achieve different parametric values within the claimed range by making trivial adjustments within the scope of these features, i.e. without undue effort.
Conclusion
The board considered that the approach it proposes avoids setting unrealistic goals, the applied standards align with those proposed in the landmark decisions, and the burden is higher than would be the case if the desideratum had been defined with a closed range.
The proposed approach also explains or at least is consistent with the different outcomes in the above cited case law decisions concerning open-ended ranges and sufficiency of disclosure.
The board’s decision on sufficiency in the actual case
The opponent has not discharged his burden of proof in matters of sufficiency.
For the board, the point of contention lies in the criteria used to determine the burden required to enable the reproduction of the open-ended range desideratum over the whole scope of the claim.
The opponent’s argument is thus clearly predicated on a literal interpretation of the open-ended range, whereby the open side is construed as requiring the reproduction of every conceivable value in the upward direction.
The board has concluded that the key criterion for determining whether the open-ended range is enabled over the whole scope of the claim is the availability of teachings showing that, by operating within the scope of certain essential structural and/or process features, the skilled person would be able to achieve different variants of the invention over the scope of the claim, i.e. different parametric values within the open-ended range, without undue effort.
If that is the case and the claim defines these essential structural and/or process features, the open-ended range desideratum may in principle be considered to be reproducible over the whole scope of the claim.
The evidence in the patent thus indicates that the components and concentrations of the metal oxides forming the composite oxide constitute the essential parameters for adjusting and enhancing the specific surface area after calcination to achieve values within the defined range.
Moreover, in view of the results in the two examples, the board was convinced that by making trivial adjustments to the components and their concentrations, the skilled person would be able to achieve different parametric values over the open-ended range.
Since the composite oxide in claim 1 at issue does not only define the open-ended range desiderata but also structural features, i.e. the metal oxide components and their amounts, considered to be essential for achieving parametric values within the claimed range, the board concluded that the open-ended ranges desiderata defined in claim 1 as granted are enabled by the teachings in the patent and that the invention is reproducible over the whole scope of the claim.
Comments
The present decision is remarkably well argued and the conclusions reached are based on a thorough analysis of case law.
There also exists a long list of case law making clear that an unreasonable or incorrect interpretation of the claims cannot be used for disputing sufficiency of the disclosure. Hypothetical embodiments are also not encompassed by claims. See for instance T 2166/17 or T 875/11.
As far as open-ranges are concerned, it can be concluded from the present decision, that it is not enough to disclose some isolated examples in the description.
It has to be explained how a given desiderata can be achieved in case of an open range. The burden is in any case higher than would be the case if the desideratum had been defined with a closed range.
In the absence of any restrictions represented by structural and/or process features, the situation is very similar to the classical approach for sufficiency in closed ranges.
In the presence of restrictions represented by structural and/or process features, it is sufficient to show that different parametric values can be achieved by making trivial adjustments.
As far as opponents are concerned, it is not sufficient to claim that, due to an open range, the disclosure is per se insufficient. At least some tangible experimental data are required in order to show a lack of sufficiency. This corresponds to existing case law.
The present blog entry is very long, but the decision warrants it.
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