5.4. Invention to be performed over the whole scope claimed
According to G 1/03 (OJ 2004, 413, point 2.5.2 of the Reasons), if a claim comprises non-working embodiments, this may have different consequences depending on the circumstances. Either there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. If this is the case, the inclusion of non-working embodiments is of no harm (T 238/88, OJ 1992, 709; T 292/85, OJ 1989, 275; T 301/87, OJ 1990, 335). If this is not the case and there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. This passage of G 1/03 is analysed in T 2210/16; see also T 875/16 (points 7 and 35 of the Reasons) and T 1128/22 (in relation to a claim with a broad scope).
In T 1994/12 (rubber composition), as to the argument that the requirement for sufficiency of disclosure was not met because the skilled person in view of the ambiguity in respect of the nature of the asphalt would not be able to reproduce the examples of the patent, the board stated that sufficiency of disclosure was not concerned with the invention the applicant might have had in mind when drafting the application, but rather with the invention defined by the claims in terms of the technical features of the invention (see R. 43(1) EPC), as is done for assessing other criteria for patentability such as novelty and inventive step.
In decision T 2824/19 (electrical equipment, insulating layer), the appellant (opponent) argued that the skilled person could not carry out the subject-matter of claim 1 over the whole claimed scope because the expression "variable thickness" had two meanings: a variation in space and a variation in time. According to the appellant, the patent in suit was silent on a variation in time. The board reiterated the principle that the skilled person, when considering a claim, should rule out interpretations which are illogical or do not make technical sense (see chapter II.A.6.1.). Interpreting "variable thickness" to mean a variation in time would not make technical sense. The skilled person understood that the role of the insulating layer was to prevent electrical arcs. The claims are there to clearly and concisely define the subject-matter for which protection is sought; they are aimed at the skilled person. Owing to the requirement for conciseness, interpretations that do not make technical sense in the field covered by a claim are excluded, regardless of the legal provisions to be considered. In support of its interpretation of a variation in time, the appellant made reference to a general dictionary. The board pointed out that the claim had to be interpreted in the context of the technical field, not in purely semantic terms. By the same token, invoking T 133/15 was unsuitable for demonstrating that the expression "variable thickness" could have a meaning in terms of time in the field in question because that decision related to a different technical field. It should be noted that the opponent listed various principles applicable to sufficiency of disclosure, referring in particular to claim interpretation and the requirement of Art. 83 EPC; the board agreed with the principles set forth.
In T 1716/21, with respect to the argument that a plurality of "previous readings" allegedly existed for which the invention could not be put into practice, the board noted that as long as the skilled person upon consideration of the entire disclosure and of the common general knowledge could infer which embodiment would work and which would not, a claimed invention was sufficiently disclosed even if a broad construction of the claim might also encompassed embodiments which did not work (see in particular T 2773/18, and similarly G 1/03, point 2.5.2 of the Reasons, second sentence).
In ex parte decision T 748/19, the application related to identifying events in scenes under surveillance. The board agreed that it might sometimes be the case that "technically unreasonable" instances of the claimed subject-matter should not be detrimental to sufficiency under Art. 83 EPC. When the "technically unreasonable" instance was a contrived one, i.e. one which the skilled person would, in view of the provided teaching and of the claimed generalisation, not consider the claim to cover, this instance should not be covered. However, non-contrived instances where it was clear that the claim intended to cover them, should be taken into account for assessing sufficiency of disclosure (even if "technically unreasonable" – a claim to a teleporting machine). The requirements of Art. 83 EPC were not met in the case in hand.
In T 174/21, in the respondent's (patent proprietor's) view, the common patent-law practice of drafting claims as a generalisation of the description's disclosure inherently meant that some "non-working embodiments" could not be explicitly ruled out. The board noted, however, that the issue at hand was not whether certain embodiments "worked" or not. Instead, it concerned whether the skilled person could carry out the claimed method over the "whole scope claimed". To establish whether that was the case, the "whole scope claimed" had to indeed be determined through the eyes of the skilled reader, i.e. based on objective criteria and closely following the wording of a claim. This practice avoided taking into account embodiments which were theoretically possible but not "technically meaningful". However, this did not mean that only those claim interpretations could be considered "technically meaningful" where the requirements of the EPC were met (see T 2210/16). The respondent contested that the skilled reader would consider a "microphone characteristic" to be a "frequency-dependent ear-independent characteristic" within the meaning of feature (c). The board considered it as a technically meaningful interpretation of claim 1. The board also dealt with the respondent's objection that the board had raised the issue applicability over the whole range ex officio (see point 2.2.2 of the Reasons). In conclusion the ground for opposition under Art. 100(b) EPC prejudiced the maintenance of the opposed patent in its granted form.
On the basis of the contested patent and their common general knowledge, the skilled person specified in Art. 83 EPC should be able, across all technical fields, to carry out the claimed invention over the whole scope, i.e. in accordance with all technically feasible interpretations that a skilled reader would consider using objective criteria on the basis of their common general knowledge. The examination under Art. 83 EPC should thus take account of all "technically sensible" claim interpretations (T 149/21). Aspect of this decision applied in T 124/22 (cloud-modeling of an industrial automation system).
In T 867/21 the invention related to an antenna device for a hearing instrument. The board first dealt extensively with the interpretation of claim 1, which was a relevant issue in this case. The board then moved onto reproducibility, finding that the patent in suit disclosed at least one way of performing the claimed invention. The board considered that under Art. 83 and 100(b) EPC, the "invention" was that disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The "invention" was to be regarded as "the invention defined in the claims", in line with the concept of an invention used in Art. 52, 54 and 56 EPC. By extension, the "invention" –and accordingly the issue of whether it was reproducible– turned on the entirety of the claimed features. The application or patent thus always had to disclose all possible embodiments that were technically sensible for the skilled person and covered by the features of the claim, in a manner sufficiently clear and complete for them to be carried out by a person skilled in the art. With this in mind, the requirement of reproducibility could be deemed satisfied only if the skilled person was able to rework the invention defined in the claims over the whole claimed scope using the information in the application or patent and the relevant common general knowledge. However, this requirement did not mean that the application or patent had to disclose separate, specific ways of performing each and every technically sensible embodiment covered by the claim. Rather, for embodiments covered by the claim but not expressly disclosed in the description, reproducibility could also be derived from the common general knowledge, in some cases together with the one way explicitly disclosed in the description. In this respect, disclosing one way of performing the invention might be sufficient as long as this one way also covered the whole claimed scope when combined with the common general knowledge. Reproducibility therefore presupposed that the application or patent clearly and completely disclosed at least one way for the person skilled in the art to put the claimed invention into practice over the whole claimed scope (see Catchword).
Ex parte case T 553/23 related to determining the location of objects in a loading compartment of a delivery vehicle using optical position recognition. The examining division rejected the application essentially because none of the requests met the reproducibility requirements. In relation to the assessment of the main request (not allowable), the board first recalled that Art. 83 EPC was only satisfied if an effect set out in the claim could be reproduced. The examining division had rightly questioned the reproducibility of the claimed teaching on the grounds that part of the field of vision could be hidden from the optical position determination system. The auxiliary request (allowable) related to objects arranged side by side, i.e. no longer to the transportation of just one object or to the problematic multi-layer arrangement. Unlike with the multi-layer arrangement with objects stacked one on top of the other, it could generally be accepted that the claimed teaching was reproducible. The case law of the boards of appeal does not require the invention to be reproducible in every conceivable theoretical configuration. According to the board (see Catchword): "When a claim is drafted, the aim is generally to define a device under optimal conditions. If the skilled person can deduce what works and what does not in consideration of the disclosure and the common general knowledge, then a claimed invention is sufficiently disclosed even if a broad interpretation includes subject-matter that does not work. In the case in hand, the skilled person can immediately identify and rule out situations that do not achieve the desired effect (for instance due to a concealed line of view) and can react with an adapted position determination device. The board has no reason to doubt that the skilled person, using their common general knowledge, would adapt the functional feature of an optical position determination device to the proportions of the objects being transported." (See also point 3.5 of the Reasons.)
Generally speaking, and in accordance with Art. 84 EPC in combination with R. 43(1) and 43(3) EPC, claims only define the essential features of the invention. For every claim worded in this way, it would be very easy to find embodiments that are covered by the claim but cannot be put into practice for various reasons. This is not prejudicial as long as the skilled person is aware of this and knows how to arrive at workable embodiments according to the invention (see G 1/03, point 2.5.2 of the Reasons). There is no reason to require that the wording of a claim explicitly rules out any conceivable embodiment covered by that wording but which a person skilled in the art would immediately take to be unworkable (T 1857/20, point 9.3 of the Reasons).
In T 2374/13 the board stated that contrary to the statements in T 292/85 (point 3.1.5 of the Reasons) and T 435/91 (point 2.2.2 of the Reasons), no suitable variants were known to the skilled person through the disclosure of the application or common general knowledge. Moreover, in the absence of any criteria on how to determine resemblance to a receptor site or how to select appropriate functionalised monomers, the skilled person was unable to distinguish between workable and non-workable embodiments (see T 731/00, point 3 of the Reasons) or to transform occasional failure into success within reasonable bounds (T 931/91, point 3.2 of the Reasons and T 14/83, point 6 of the Reasons).