Number of citations: 54
This is the first decision on our list of the 100 most cited Board of Appeal decisions of the EPO. It just made it to the list. Appeal T 266/85 was filed against the decision of the opposition division upholding European patent No. 9942 unamended.
The independent claim at issue related to a "pourable scouring cleanser composition", which was defined in terms of certain structural features (viz. structure and relative amounts of its essential components), but also by the following functional feature:
"... the composition showing a loss of no more than half the initial available chlorine in a storage period of 30 hours at 50°C and being capable of suspending abrasive without allowing a layer of unsuspended material to settle for 1 month at 37°C."The opponent filed experimental evidence showing that the functional features were difficult to meet, e.g., when the composition does not contain perfume, a component which was present in all examples disclosed in the patent, while perfume was not included as a an essential feature of the invention in claim 1.
The Board firstly found that, for sufficiency of disclosure to be given,
"substantially any embodiment of the invention, as defined in the broadest claim, must be capable of being realised on the basis of the disclosure" (point 2 of the reasons).With respect to the difficulties of obtaing stable suspensions, when no perfume component was present in the composition, the Board remarked:
"5. If the presence of perfume is, as suggested, not an essential feature of the invention but only a circumstance which may influence the effect of the essential features and thereby their proper adjustment, the skilled person must be in the position to readjust the composition in case he wishes to exclude the perfume from the same. In view of the fact that he could rely on his common general knowledge even to rectify errors or fill gaps in the instructions (cf. T 171/84, "Redox Catalyst" OJ 4/1986, 95), his knowledge in this respect is also assumed to be applicable when he tries to repeat specific examples or to prepare other embodiments falling within the scope of the claim. It appears that there is no advice available from the such sources, or from the instructions of the patent to enable the skilled person to steer the formulation towards success in such situations. For instance, no trend is recognisable for other components when examples with or without the perfume component are compared." (point 5 of the reasons)
The Board stated that
"a reasonable amount of trial and error is permissible when it comes to the sufficiency of disclosure in an unexplored field or, - as it is in this case -, where there are many technical difficulties" (point 8 of the reasons).However, since there was no guidance in the description of how to obtain compositions meeting the structural requirements of claim 1, which compositions also met the stability criteria expressed as functional features, the Board concluded that the invention was insufficiently disclosed.
As a result, the positive decision of the opposition division was set aside and the opposed patent was revoked.
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Headword:
Even though a reasonable amount of trial and error is permissible when it comes to the sufficiency of disclosure, e.g. in an unexplored field or, - as it is in this case - , where there are many technical difficulties, there must then be available adequate instructions in the specification or on the basis of common general knowledge which would lead the skilled person necessarily and directly towards the success through the evaluation of initial failures or through an acceptable statistical expectation rate in case of random experiments (following decision T 14/83, "Vinylchloride resins", OJ EPO 1984,105).The full text of the decison can be accessed here.
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