EP 3 062 672 B1 relates to dispersible moist wipes, i.e. flushable down a drain.
Brief outline of the case
The opposition was rejected by the OD. The OD rejected in particular the ground of opposition under Art 100(b).
The opponent appealed.
The board held that the OD’s decision did not stand up to scrutiny by the board and revoked the patent since not only claim 1 as granted, but also all AR suffered a lack of sufficiency.
What was at stake
Two aspects were at stake, a uncommon parameter and the device for measuring said parameter.
The parameter “formation value” in claim 1, and thus a limiting feature thereof, is an uncommon parameter in the field of nonwovens.
According to the last feature of claim 1, the formation value is to be determined according to a method set out in the description, notably in paragraph 43 of the patent.
Accordingly, this method should make use of a specific apparatus, the “Paper PerFect Formation Analyzer Code LPA07” manufactured by OPTEST Equipment Inc., and of a specific test procedure outlined in section 10.0 of its operation manual , cf.”LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20″.
The proprietor’s point of view
For the proprietor, at the filing date of the patent the specific apparatus was seemingly available and so was presumably its manual of operation.
The proprietor considered thus that the invention was sufficiently disclosed.
The proprietor added that the specific product code LPA07 was superseded by a later model, LPA17, whereby the manufacturer confirmed that the two models gave the same results.
The opponent’s point of view
The opponent argued that there is no proof is available that both apparatuses delivered the same result.
The board’s decision
The board found that the invention defined in claim 1 was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person.
The board did not agree with the proprietor’s conclusion that, since the apparatus was available at the filing date, sufficiency was given.
Such conclusion could only be confirmed if the apparatus mentioned in the cited paragraph as well as the manual were available over the entire lifespan of the patent. The board referred to T 1714/15, Reasons 3.3.
The proprietor’s contention that a following apparatus was available could only be followed if there was proof that both models, LPA07 and LPA17, gave the same results for the specific type of product defined by claim 1.
For the board, the statement of the manufacturer was not sufficient as there is no verifiable data or evidence available supporting this statement, let alone that it would apply also to a dispersible moist wipe comprising a tissue web having the features according to claim 1. The board referred to T 1293/13, Reasons 1.
Since neither the apparatus LPA07 nor the test procedure set out in section 10.0 of its operation manual are available, examples 3 and 15 in the patent are of no help to the skilled person either since they cannot be tested for the formation value which needs to be determined according to the procedure of paragraph 43 of the patent using an LPA07 and the test procedure in section 10.0 of its manual.
Such test is a prerequisite for concluding that a test of this parameter for the same sample wipe based on a procedure using the successor model LPA17 would lead to the same value as obtained with LPA07.
Even if the facts of the present case differ slightly from decisions T 1714/15 and T 1293/13, in that
in claim 1 of the contested patent the unavailable machine is not explicitly specified, the conclusions of the Board remain the same.
In order to carry out the invention according to claim 1, the skilled person is directed to the description by the claim’s explicit reference to the “formation value [being] determined using the methods set out herein”.
The skilled person is therefore faced with the same insufficient information as in the cited decisions.
There is no evidence that the operating manuals of two machines with different product codes, “LPA07” and “LPA17”, contain the same details with respect to the methods to be used, let alone that the LPA17 manual discloses the same method as specifically referred to “in section 10.0 of the Paper PerFect Code LPA07 Operation manual.
Comments
It is always quite dangerous to define an uncommon parameter in a claim.
That a method for measuring the parameter has to be disclosed in the original application is manifest. Actually such a method should be incorporated into the claim
Even if an apparatus is available, it is not enough to give some indications about it, the whole conditions and necessary implements of the apparatus have to be originally disclosed.
The apparatus has to be available for the whole life span of the patent, and not just at the filing date.
Applicant’s and proprietor’s should be well aware of this problem.
Other decisions on sufficiency
In T 149/15, the board considered viscosity could be measured as the patent specifies four parameters, the viscosimeter model (Brookfield RV DVII+), the spindle (RV6), the test speed (10 rpm) and the temperature (20°C).
Although the further necessary implements, i.e. sample container size, sample volume, whether or not to attach the guard leg, length of time or number of spindle revolutions to record viscosity, and how the sample is prepared and/or loaded into the container, the board nevertheless accepted that it was not an undue burden for third parties.
In T 869/20, the board considered that the absence of the temperature at which viscosity is measured was a problem of clarity. Although the objection was late filed, it was admitted by the board, and the patent was revoked. The examples in the description mentioned 23, 26, 31 and 32°C as temperature for measuring the viscosity. The clarity objection was thus justified.
However, in general, it is difficult to consider that the absence of the temperature when measuring viscosity is merely a problem of clarity. If the temperature was absent in the original disclosure, it cannot be added afterwards without infringing Art 123(2).
If there is the corresponding information in the original disclosure, there is no problem in clarifying the claim. In T 869/20, the board held that there was no reason to interpret the subject-matter of claim 1 narrowly on the basis of the description, let alone to conclude that the viscosity should be measured within a range defined by the lowest and the highest temperatures in these examples, i.e. 23 to 32°C.
Differentiating between Art 83 and Art 84
In T 149/15, the proprietor was quite lucky, as the missing information could not have been added in the description without adding matter.
Although it is not the topic here, it is to be noted that when it comes to a parameter which is not properly defined, some boards prefer to use G 3/14 in opposition to deal swiftly with the case.
If the objection is such that further information would need to be added to the specification so as to be able to measure the unclear parameter, it should lead to an objection under Art 83, and cannot be disposed of by stating in opposition that it is a mere objection under Art 84.
In first approximation, checking whether the missing information could result in added-matter is thus a good way to discriminate between Art 83 and Art 84.
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