T 0552/23 - (In)sufficiency of disclosure in the mechanical field

Background

The invention related to the localization of objects in a cargo space of a transport vehicle using optical position detection. The position of an object is determined when it is loaded, and tracked during the journey of the delivery van using optical positioning means, so that changes in position (e.g. due to slipping) are known. It is thereafter determined by a computer which door (of multiple doors) can be used to access the object in the cargo space most efficiently.

Applicant/appellant (A) appealed a decision of the Examining Division (ED) to refuse a patent application. According to the ED, none of the requests met the requirements of Art. 83 EPC (sufficiency of disclosure) and Art. 56 EPC (inventive step). In addition, auxiliary request 2 was found to add subject matter (Art. 123 EPC). 

In particular, the ED questioned the feasibility of the claimed teaching on the basis of the possibility that the view on a specific object in the cargo space would be partially concealed by another object that was stored in the cargo space. This could specifically be the case when (i) a multi-layer load of objects was used or (ii) when particularly large objects would be being transported that could block the view of smaller objects. Claim 1 of the main request did not exclude such embodiments. 

Consequently, the ED considered that the invention was insufficiently disclosed (Art. 83 EPC). 

A appealed the decision and requested that the decision under appeal to be set aside and that the patent be granted in accordance with the main request or one of auxiliary requests 1 to 3, or alternatively, that the case be remitted to the Examining Division because of substantial deficiencies of the decision. 

Sufficiency of disclosure of the main request

In the grounds of appeal, A argued that claim 1 was directed to “at least one object” and that therefore also the specific case of exactly one object being transported was covered by claim 1. The problem that the ED indicated would not occur for one object only, and consequently, the teaching of claim 1 would be reproducible. 

Although the Board agreed with this reasoning, they also stipulated that according to established case law, the teaching should be reproducible in its entirety. That means, it should be reproducible also for the actual application of the invention in which a plurality of objects are transported side by side and in several layers. The Board agreed with the ED that for multi-layered arrangements of objects, not all objects can be reliably located optically and therefore the effect of claim 1 would not be reliably achieved. 

The Board therefore decided that the subject-matter of claim 1 does not meet the requirements of reproducibility under Art. 83 EPC for the encompassed multilayer case of objects stacked on top of each other.

Sufficiency of disclosure of the auxiliary requests

In auxiliary requests 1 to 3, claim 1 was amended with the feature “a plurality of objects arranged side by side”, thereby excluding the problematic multi-layer arrangement but still leaving the situation wherein larger objects could possibly conceal the view on smaller objects. Claim 1 further required that a camera was arranged on the ceiling of the cargo hold. 

The Board discussed that in certain arrangements a single camera somewhere on the ceiling of the cargo hold is not sufficient to keep track of all objects. Nevertheless, arrangements (e.g. a laser scanner with mirrors or several cameras distributed over the ceiling) are conceivable in which all objects are recognizable, regardless of their size. Thus, it cannot be assumed (in contrast to the multi-layer case with objects stacked on top of each other) that the claimed teaching is not reproducible. 

According to established case law of the Boards of Appeal, it is not necessary that a reproduction succeeds in every conceivable theoretical arrangement. The Board explained that with a clever interpretation of the claim, possibly an embodiment could be found within the scope of the claim, which would not solve the problem of the invention or achieve the desired effect. This, however, is usually not a matter of insufficiency of disclosure but of claim interpretation. If, taking into account the disclosure as a whole and possibly common general knowledge, the skilled person can deduce what works and what does not, a claimed invention is sufficiently disclosed, even if a broad interpretation includes subject-matter which does not function. As this would be the case here, Auxiliary Requests 1-3 were considered to be sufficiently disclosed and meet the requirements of Art. 83 EPC.

Inventive step

The ED further argued a lack of inventive step of claim 1 on the basis of D1. 

As a defence, A argued in the grounds of appeal that D1 was not suitable as the closest prior art for examination of inventive step. D1 disclosed a loading space of a container, which had a single door at the back. Therefore, the problem according to the invention of deciding which door should be opened did not arise in D1. Instead D3, which concerned a van with a localisation device and multiple doors, was found to be a much better starting point for the assessment of inventive step than D1. 

The Board agreed with A.  However, since inventive step was not assessed in respect of D3 before the first instance, there was also no appealable decision in this regard. The Board referred to Art. 111(1) EPC and argued that this constituted special reasons justifying the remittal of the case for further examination. The Board remitted the case back to the ED for further prosecution. 

Summary written by the NLO EPO Case Law Team.