tag:blogger.com,1999:blog-2352189175211648260.post2730282213888758516..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1744/08 – Wrong Baseorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger2125tag:blogger.com,1999:blog-2352189175211648260.post-52374660270018960522011-04-26T22:11:44.776+02:002011-04-26T22:11:44.776+02:00The analysis is confirmed by the Enlarged Board in...The analysis is confirmed by the Enlarged Board in G 1/03, point 2.5.2:<br />"If a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances.<br /><br />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. (...)<br /><br />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. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)."<br /><br />Maybe the wording of the EBA is slightly inaccurate. If the effect is expressed in the claim, the scope of the claim does not comprise (non-working) embodiments not achieving this effect.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-2037672038767021462011-04-26T09:11:04.313+02:002011-04-26T09:11:04.313+02:00I agree with your analysis of the case. It seems t...I agree with your analysis of the case. It seems that the approach followed is something like this:<br /><br />A perpetual motion machine claimed as such in the claims would be insufficiently disclosed (apart form possibly not being able of industrial applicability).<br /><br />On the other hand, claiming a machine that is disclosed to be a perpetual motion machine in the description would lack inventiveness, as an arbitrary collection of parts.pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.com