Key points
- "The heart of the invention defined in claim 1 consists in the finding that the generation of wrinkles remains acceptable as long as the liner thickness is equal to or greater than the "minimum liner thickness" t that can be computed from the outer pipe diameter DH and wall thickness tH, the reel radius R, and the [radial insertion gap] RIG g, using formula II (see point VIII. above)."
- According to the opponent, the RIG is an unclear parameter, and the claim is, therefore, insufficiently disclosed.
- "The considerations that led the opposition division to conclude that the claimed method is insufficiently disclosed for it to be carried out by a person skilled in the art are based on the definition of the RIG, which is needed for computing the minimum liner thickness using formula II. It is therefore necessary to examine whether this alleged deficiency hinders the skilled person from carrying out the claimed method."
- "It is important to understand that, in accordance with the established case law of the boards of appeal, the "invention" mentioned in Article 100(b) EPC is defined by the subject-matter of the claims of the patent. Although an invention is commonly understood to be a technical solution to a problem, the problem allegedly solved by the subject-matter of the claim is not part of the "invention" within the meaning of Article 100(b) EPC if it does not find any expression in the claim."
- I understand the phrase "a technical solution to a problem" to mean that an invention is provided by the combination of subject matter and the teaching that this subject matter solves a technical problem.
- Cf. G 2/21, which requires that the technical effect is: "... embodied by the same originally disclosed invention" (r.94). I'm not entirely sure in which sense the Enlarged Board used the term 'invention' here.
- As an exercise for the reader: what does " invention " mean in Art. 54 and in Art. 56?
- The Board refers to G2/03, r.2.5.2, about non-working embodiments.
- The Board considers the "invention" to be sufficiently disclosed.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2023/12/t-143821-two-meanings-of-term-invention.html
