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Case Law of the Boards of Appeal

 
 
4.4. Invention to be performed over whole range claimed

The disclosure of one way of performing an invention is only sufficient if it allows the invention to be performed in the whole range claimed rather than only in some members of the claimed class to be obtained (T 409/91, OJ 1994, 653; T 435/91, OJ 1995, 188; and T 172/99). This was considered a question of fact. Sufficiency of disclosure thus presupposes that the skilled person is able to obtain substantially all embodiments falling within the ambit of the claims. This view has been taken by the board in numerous decisions, for example, T 19/90 (OJ 1990, 476), T 418/91, T 548/91, T 659/93, T 435/91 (OJ 1995, 188) and T 923/92 (OJ 1996, 564). This principle applies to any invention irrespective of the way in which it is defined, be it by way of a functional feature or not. The peculiarity of the functional definition of a technical feature resides in the fact that it is defined by means of its effect. That mode of definition comprises an indefinite and abstract host of possible alternatives, which is acceptable as long as all alternatives are available and achieve the desired result (T 1121/03 and T 369/05).

More technical details and more than one example may be necessary in order to support claims of a broad scope (T 612/92, T 694/92, OJ 1997, 408; T 187/93). This must be decided on a case-by-case basis. The board must also be satisfied firstly that the patent specification put the skilled person in possession of at least one way of putting the claimed invention into practice, and secondly that the skilled person could put the invention into practice over the whole scope of the claim. If the board was not satisfied on the first point that one way existed, the second point did not need to be considered (T 792/00).

See also 6.1.2 below.