http://ipkitten.blogspot.com/2020/08/shining-light-on-insufficiency-t-128515.html
One of the arguments heard again and again during opposition is that an Opponent’s insufficiency objection is merely a dressed-up clarity objection. The distinction is crucial, given that insufficiency is ground for opposing a patent whilst clarity is not (unless the clarity issues results from a post-grant amendment). In a recent case from the Boards of Appeal (T 1285/15), the Opponent attempted to circumvent the issue by arguing that a collection of clarity issues amounted to insufficiency when taken in combination. The Board of Appeal was not convinced by these arguments, reasoning that the only way to deal with a series of separate issues with the claim language was in a step-by-step fashion.
| Pink or purple? |
The patent in question related to a security device (EP 1567358) owned by De La Rue, a Basingstoke (UK) based manufacturer of security documents. The patent related to a security feature for documents such as bank notes and passports. Claim 1 of the Main Request considered by the Board of Appeal specified a security device, comprising 2 or more regions printed with luminescent material. Each of the regions exhibits different visible colours under different viewing conditions. Under visible light, the regions look the same. Under UV light (235-380nm), the regions are different visible colours.
The Opponent argued that the claims lacked sufficiency of disclosure (Article 83 EPC) for a list of reasons relating to how the colours were defined. The Opponent argued that two different observers do not see colours in the same way. Therefore, the Opponent submitted, a skilled person would have difficulty in differentiating the different colours. What appear to be different colours to one observer may be appear to be the same colour to another observer. Furthermore, the Opponent argued that the feature “viewing under visible light” did not exclude other forms of illumination being present (in the presence of which different colours may or may not become apparent). Additionally, the Opponent argued that the time frame for the colour change was not defined.
Each of the arguments do appear, on first glance, to be clarity objections. However, the Opponent argued that these separate problems with the claims should be considered in combination, and not one by one. The issues with how the colours were defined, the Opponent submitted, meant that the claims covered an infinite number of colours and colour combinations without offering the skilled person enough guidance: “it is always easy to dismiss sufficiency objections as clarity objections but in the present case, the skilled person lacks information on many issues”.
| Green or yellow? |
The Patentee argued on the contrary that when dealing with sufficiency, it is necessary to break down the sum of potential problems and look at the different aspects: “when doing so, most objections are found to be based on clarity issues rather than on insufficiency of disclosure”.
The Board of Appeal agreed with the Patentee. In particular, the Board of Appeal “could not endorse” the Opponent’s objection that the insufficiency attack should be treated holistically as opposed to atomistically. The Board of Appeal’s reasoning was quite simply that anything other than an atomisitc approach would be impractical: “there is no other way for the board to tackle the multiple objections than by breaking the sum of objections into distinct aspects” (r. 12.2.10). Furthermore, the Board of Appeal reasoned, the step-by-step approach is also the way in which the skilled person would tackle the problem: “A more holistic approach would have to be based on some overall impression and would therefore lack objectivity”.
The Board of Appeal thus tackled each of the Opponent’s objections in turn and (perhaps unsurprisingly) found that the majority fell under the category of a clarity as opposed to a sufficiency objection.
| Blue or grey? |
Visible light, the Board of Appeal reasoned, is a well-understood term. Particularly, it is well-known that a typical human eye can detect light in wavelengths from about 390 to 700 nm. Furthermore, the Board of Appeal considered that the fact that different eyes may see colours differently was irrelevant. The Board of Appeal accepted that “each eye and each brain is unique”, but concluded that it is possible to define an average eye and an average colour perception. Furthermore, the Board of Appeal reasoned that it was possible to objectively measure the colour exhibited by a region, “regardless of what a colour-blind or culturally biased person might see or believe to see”. The Board of Appeal also considered it to be within the ability of the skilled person to look at a security document and determine whether two regions were of different colours. The Board of Appeal thus concluded that the sufficiency objections were really hidden clarity objections.
The Board of Appeals view on the interaction between multiple clarity objections and insufficiency was, in this case, unequivocal. The test as always was whether the legal fiction of the skilled person would have difficulty working the invention, not whether everyone who wanted to work the invention would be able to do so. Furthermore, the Board of Appeal considered insufficiency to be an objective characteristic and something that should be assessed by considering each issue raised with the claims separately as opposed to in combination.
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