5.4. Invention to be performed over the whole scope claimed
The case law has already been assessed in other chapters, so this section provides additional case law examples.
In T 1064/15 the invention related to barbed suture-needle combinations useful for connecting body tissue in various surgical contexts. Claim 1's requirements could be implemented for circular cross-sections, but the question of sufficiency of disclosure arose for non-circular cross-sections. The respondent (patent proprietor) himself intended the teaching of the patent to be applicable to both circular and non-circular cross-sections and specifically sought protection for both types of embodiment. It would be insufficient and disproportionate if the sole disclosed possibility of carrying out the invention with circular cross-section elongated bodies were enough to satisfy the requirements of sufficiency of disclosure. Such an approach could not have been intended by the legislator, because in the board's view this would go against the general principle that the protection obtained with the patent had to be commensurate with the disclosed teaching. When it came to non-circular cross-sections, this was not the case for the patent in suit. On the basis of the patent disclosure as a whole, taking common general knowledge into account, the person skilled in the art was not able to determine which dimension was meant by the diameter (SD) for an essential part of the claim, or in other words, with a needle having a given diameter, he did not know how to select the cross-section dimension of a non-circular suture in order to improve the closure strength, which was supposed to be an essential part of the teaching of the patent in suit (T 1064/15, which is cited and summarised in T 1756/16).
In T 1128/22 the appellant (opponent) invoked T 1064/15 in support of its arguments against the patent. The board held that T 1064/15 did not reflect the circumstances in the case at issue since the appellant had not specified any parameter in the claim that would be unidentifiable in certain scenarios covered by that claim. The board also considered that the opponent's arguments merely showed that the scope of claim 1 was broad (see chapter II.C.6.3.).
In T 623/16 (OLEDs) the description proposed varying a plurality of parameters to achieve a white emitting device. There was no indication in the claims that several parameters, such as concentration and thickness on the one hand and the addition of a blocking layer (or other parameters) on the other, should be varied at the same time. If the skilled person were to make a first experiment and obtain a device which did not emit white, they would find no explicit guidance in the patent for deciding on what to start with to yield white emission. Thus, guidance had to be given in the claims as to which features were essential for carrying out the invention over the whole range in order to achieve a device emitting white light. Once the skilled person was aware that these features were crucial for carrying out the invention, changing only concentration and thicknesses was no longer an undue burden. The description provided enough details on carrying out the invention. Claim 1 of the main request did not comprise features that were essential to the invention and crucial to carry it out over the whole range claimed. Omitting these features led to a device that did not emit white light (Art. 83 EPC not complied with). With amendments introducing the essential features, it was no longer an undue burden for the skilled person (new first auxiliary request satisfied Art. 83 EPC).
In T 2728/16 the board held that even if it accepted that the skilled person would have been motivated to and could have optimised and selected adequate parameters to avoid (in practice) non-functional systems, the skilled person had no instructions as to how to readily implement a working system with two apertures where one aperture was unsealed. As for ten apertures, there was no guidance how to make it work with at least one of the apertures unsealed. Hence, claim 1 covered systems with two or ten apertures having a mean seal resistance of less than 30 Mohm, described to generally fail, which could by no means be optimized or improved to render them functional. The illustrative examples were just a few of many embodiments that were non-functional and fell under the scope of protection of claim 1. Thus, any system ranging between two and ten apertures per sample wells, in line with this rationale, fell as well. The board considered that the patent did not disclose a technical concept fit for generalisation, thus the majority of the systems encompassed by claim 1 were not available to the skilled person. A teaching how the non-functional embodiments could be made functional was not at the disposal of the person skilled in the art even after reading the patent.
In T 239/13 of 5 July 2017 date: 2017-07-05, claim 1 as granted did not require the "granules" to be acidic. The board considered that a solution of the claimed granules per se might have an alkaline pH despite the presence of some acidic component. As regards acidic granules, the description – which dealt exclusively with acidic granules – provided the skilled person with technical information and guidance sufficient to enable him to prepare, without undue burden, acidic granules having "improved storage properties" across the whole ambit of claim 1. As regards alkaline granules, in the absence of a concrete teaching the skilled person would have to start a research programme. The board concluded that the skilled person, following the teaching of the description, was not provided with technical information and guidance sufficient to enable him to prepare granules as claimed without undue burden and across the whole ambit of claim 1.
In T 2224/08, regarding the standards set for sufficiency of disclosure, the appellant (opponent) referred to decision T 10/86. However, this decision related to a situation where the only means disclosed for solving the technical problem was considered unsuitable, i.e. non-working, and alternative means were not available to the skilled person on the basis of their general knowledge. Contrary to this, the patent under appeal disclosed a working embodiment in example 4, it listed several alternative embodiments in examples 1 to 3, and it suggested a number of strains suitable for the claimed use. The appellant also referred to decision T 32/85, which related to a case where the skilled person, trying to achieve a functionally defined result, had to establish numerous parameters by trial and error. This was considered an undue burden. In the present case there was only one parameter which in the board's view could be readily assessed by several methods.
In T 1583/17 the invention concerned the use of coated films. The board stated that it was important to note that there was a difference between whether or not a product met a pre-set quality requirement (here: the absence of glossy spots) and whether or not it met the requirements set out in a claim. That the quality of the coatings obtained did not satisfy the intended quality standard did not mean that those coatings did not satisfy the requirements of claim 1, which was the only relevant point when discussing sufficiency of disclosure. The alleged lack of enablement over the entire range had not been shown.