T 600/07 – Working In The Forbidden Area

Once upon a time there was decision T 256/87 [17], which stated that “all that is necessary is that the skilled person reading the specification be put in the position of being able to carry out the invention in all its essential aspects and of knowing when he is working within the forbidden area of the claims”. As this decision was mentioned in the Case law book and as most attorneys devour the Case law book (at least) when preparing an appeal, this way of looking at sufficiency of disclosure became quite popular. Some decisions confirmed the approach (e.g. T 387/01, T 252/02, T 611/02), but in most cases the Boards did not follow this path and considered that the question of the forbidden area rather concerned clarity (e.g. T 960/98, T 619/00, T 943/00, T 452/04, T 466/05). T 608/07 [2.5.2] pointed out that “care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under A 84”. The present decision concurs.

[2.2.1] The [opponent] considered it to be problematic that there was neither a basis nor a measurement method for the claimed size of the carrier material. As different results are obtained depending on whether the indicated particle size is the modal value, the median value or the mean value, and a number-average or a weight average, respectively, and also depending on the measurement method used, the skilled person does not know when he is working within the forbidden area covered by the claims (im verbotenen Schutzbereich).

Therefore the invention could not be carried out over the whole claimed range and did not comply with A 83 and A 100(b).

[2.2.2] This argument is not persuasive because, in the opinion of the Board, the use of an undefined expression in the claims is a problem under A 84 (see also T 1886/06 (*)).

A 84 requires, among other things, that the claims define the matter for which protection is sought.

During opposition and appeal proceedings, this leads to the consequence that for the purpose of assessing novelty and inventive step one has to take into consideration prior art corresponding to all technically reasonable possibilities of interpretation of an undefined expression because this expression cannot delimit the area covered by the claims (Schutzbereich) of the claims. If such an expression has no concrete meaning at all, it completely loses its limitative effect with respect to the prior art that has to be taken into consideration.

However, A 83 does not deal with the scope of protection of the claims of the patent or the patent, respectively. This provision only requires that the patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The question of whether a competitor can know when it works within the forbidden area covered by the claims is at best [equivalent to] the question of whether the claims have the clarity required to satisfy A 84.

Therefore the Board has come to the conviction that the objection of lack of sufficiency of disclosure is not justified. The requirements of A 83 are considered to be satisfied.

(*) There is a post dedicated to this decision.

To read the whole decision (in German), please click here.