Key points
- Board 3.3.06 in the headnote: "If a claim is unduly broadened with respect to the scope of the examples used to illustrate a technical effect, particularly when this broadening concerns the feature/s allegedly providing that effect, the burden of proof might shift back to the proprietor to prove that the effect observed in the examples would also be obtained throughout the entire scope of the claims. If no evidence is provided in this respect, a conclusion may have to be drawn on the basis of plausibility arguments"
- The Board in r.2.2.5: "In the absence of specific evidence to address this issue, conclusions might have to be drawn on the basis of plausibility arguments, in particular by assessing whether the effects in the examples can be plausibly extrapolated to other technically reasonable embodiments covered by the claims. In the board's view, this approach is in line with other decisions (e.g. T 2579/11, reason 2.5.1) in which the technical effect of the invention was also determined by a plausibility check of the evidence on file."
- It may be useful to refer to T939/92 AgrEvo which is the landmark case on the issue at hand. See in particular r.2.6.3 of T939/92.
- "Since the relative retention improvement provided by nanocellulose is already very low (1,7%) for dosage 1 of PAM and dosage 1 of nanocellulose/bentonite, the board considers that it is not technically plausible that an improvement in retention would also be observed at significantly lower concentrations of both nanocellulose and PAM. In view of the fact that such embodiments are covered by claim 1 at issue and are not technically unreasonable, it follows that the effect of improving retention would not be plausibly obtained throughout the entire scope of the claims."
- "The board thus concludes that the only effect which would be observed throughout the entire scope of the claims is that of providing a good retention performance (no better than that obtained with other alternatives such as bentonite), so the problem solved by the invention is to propose an alternative process that has a good retention performance."
EPO T 1265/17
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-126517-broad-claims-and-plausibility.html
