Zusammenfassung von EPC2000 Art 084 für die Entscheidung T1726/22 vom 10.04.2024

In T 1726/22 the claimed subject-matter was defined by parameters; however, even though the claims related to an acetylated wood as such, the parameters, i.e. the shrinkage ratios, were defined in relation to the wood before acetylation. The application did not mention anything regarding how the shrinkage ratios, relative to the shrinkage before acetylation, could be determined on the basis of the acetylated wood. According to the appellant, the shrinkage ratios could be easily determined during the manufacture of the acetylated wood, during which the wood before acetylation was necessarily available and its shrinkage could thus be measured easily. The board found that this argument was not convincing. It noted that it was not enough for the requirement of clarity to be fulfilled that the parameter could be measured when manufacturing the wood, as the manufacturing method was not specified in the claim. The skilled person needs to be able to determine whether a given acetylated wood falls within the scope of the claim, the claim being directed to an acetylated wood as such. As outlined in T 849/11, an applicant who chooses to define the scope of the claim by parameters should ensure, inter alia, that a skilled person can easily and unambiguously verify whether they are working inside or outside the scope of the claim; however, in the present case, it was impossible for the skilled person faced with the acetylated wood to revert to the manufacturing process during which the shrinkage before acetylation could have been measured, or to the unacetylated wood. The appellant also argued that the skilled person could alternatively measure the shrinkage ratio by using "a reference non-acetylated wood sample of the same wood species having similar properties". In the appellant's view this meant the same wood species of the same geographic origin, and the same part of the tree, i.e. heartwood or sapwood. The appellant submitted that the skilled person could identify the wood species by isotope analysis. The board pointed out that using a reference wood was not suggested anywhere, let alone specified in the claim. Even if it was nevertheless assumed that the skilled person had the idea to turn to using a reference wood, they would not find any instructions on how to select a suitable reference wood. It thus could not be concluded that the skilled person would necessarily select a wood using the same criteria as identified by the appellant. Considering that the choice of the reference wood, and indeed the choice of the measuring method in general, was in no way limited, it could not be concluded that repeatable and reliable results for the shrinkage ratios would be obtained on this basis, irrespective of the question of whether such a reference wood could be reliably identified, and whether such a reference wood was at all representative of the (acetylated) wood under consideration. The board recalled that there are cases in which it is not necessary to specify the measuring method for a parameter in the claim, namely when it is ("convincingly") shown that the method to be employed belongs to the skilled person's common general knowledge, or all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy (T 849/11); however, it was a mere assertion by the appellant that the skilled person could and would use a reference wood, and that this would lead to reliable results. This assertion was not even supported by the application, nor was any other supporting information available. By contrast with the appellant's view, it thus could not be concluded that the present case would be such an exceptional case in which it would be unnecessary to specify the measuring method. The requirements of Art. 84 EPC were therefore not met.