Key points
- This decision has already been discussed on various other blogs.
- "The Board adds that the general argument, made in this case and unfortunately heard ever more often not only in the present field [i.e. wind turbines] but more widely in mechanics, that the invention would not be sufficiently disclosed across the entire breadth of the claim misapplies an approach developed mainly in the field of chemistry for inventions where a central aspect of the claimed invention is a range of compositions or of parameter values"
- The Board is probably referring to T 939/92 regarding inventive step ( "The question as to whether or not such a technical effect is achieved by all the chemical compounds covered by such a claim may properly arise under Article 56 EPC, if this technical effect turns out to be the sole reason for the alleged inventiveness of these compounds")
- "In claimed inventions that do not involve a range of parameter values or compositions basing an argument of insufficiency on this approach is inappropriate and can be rejected offhand for that reason. This is especially so where, as in the present case, an invention is directed at a broadly defined concept expressed in terms of generic structural or functional features of an apparatus or of a method. There it normally suffices to provide a single detailed example or embodiment to illustrate how this concept can be put into practice, cf. CLBA, II.5.2., in such a way that the underlying principles can be understood by the relevant skilled person and they can reproduce the claimed invention using their common general knowledge without undue burden, CLBA, II.4.1. "
- " It is thus not enough to demonstrate insufficiency to conceive of an example falling within the terms of the claim that does not work because it does not achieve the claimed effect fully or at all. Such an example does not prove that the claimed concept does not work; rather it reflects the limitations that are inherent in any technological endeavour and which may provide the scope for future (inventive) development. "
- " To successively argue insufficiency in a case such as this a very high burden of proof applies: the party must demonstrate through cogent argument based on the underlying principles, if necessary supported by evidence, that the claimed concept does not work, because it does not achieve the desired effect in any measure or indeed is counter to the laws of nature. Or they must demonstrate that the disclosure lacks information on an important aspect of the claimed invention, without which the skilled person cannot realize the claimed invention without undue burden. The appellant [opponent] has failed to present any such arguments in the present case."
- "The invention relates to a wind turbine and a method for controlling a wind turbine in an idling power producing situation, see specification paragraphs [0001], [0007] and [0011]. The wind turbine control and method is aimed at damping or eliminating undesirable edgewise oscillations of the rotor blades that may appear in an idling power producing situation, see paragraphs [0003], [0007]. The control of the wind turbine alters the nacelle yaw angle if it detects the presence of blade edgewise oscillations. Changing the yaw angle changes the conditions that influence the presence of edgewise oscillations to dampen or eliminate them"
- The claim at issue recites: "said yaw controlling system is adapted for changing the yaw position of the wind turbine nacelle (3) when ...said detection means (21) detects edgewise oscillations in one or more of said rotor blades (5), [t]hereby damping or eliminating said edge-wise oscillations". Hence, the desired result is specified in the claim.
- " Nor does the Board have any difficulty whatsoever in understanding how the invention works when it considers the description and figures. In their view the exact workings of the claimed invention are amply clear to a skilled reader if they genuinely approach the patent and its disclosure constructively, with a sincere willingness to understand. Paragraphs [0074]-[0078] of the patent indicate sufficiently clearly to the skilled person how to carry out damping or eliminating of edgewise oscillations by changing the yaw position (claims 1 and 11) and also how to so reach an oscillation minimum (claim 8)."
- "as variously stated in case law, these isolated cases of non-working or not ideally working embodiments is of no import for the issue of sufficiency in the light of the large number of conceivable and realisable alternatives (see above) indicated in the description, cf. in this respect G 1/03 reasons 2.5.2, T 0857/16 reasons 35."
- The present Board: " in the field of chemistry for inventions where a central aspect of the claimed invention is a range of compositions or of parameter values, ... it is important that an effect associated in the patent with the range is plausible or plausibly demonstrated across the whole breadth of the claimed range (leaving aside issues of proof of plausibility, the subject of current referral G2/21). Otherwise the claimed invention would be insufficiently disclosed, because the effect is not plausible across the whole breadth of the range."
- Plausibility in the sense of G 2/21 refers to inventive step, of course. The technical effect is also a concept associated with inventive step unless it is recited in the claims. The Board's summary of the perceived case law in the field of chemistry seems somewhat inaccurate.
EPO
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/2023/04/t-050020-argument-unfortunately-heard.html
