Very high burden of proof for insufficiency of disclosure for mechanical inventions | T0500/20
Catchwords
“Reasons 3.6. In claimed inventions that do not involve a range of parameter values or compositions but are directed at a concept expressed in terms of generic structural or functional features of an apparatus or of a method, it is not enough to demonstrate insufficiency to conceive of an example that falls within the terms of the claim that does not work because it does not achieve the claimed effect fully or at all so that therefore the invention would not be sufficiently disclosed across the entire breadth of the claim.”
Background of the invention
The patent is directed to a wind turbine comprising a yaw controlling system, and a method for controlling the yaw angle of a wind turbine. The control system and method are aimed at damping or eliminating undesirable edgewise oscillations of the rotor blades. The control system may detect the presence of undesirable edgewise oscillations, and in response alter the yaw angle of the nacelle to dampen or eliminate such oscillations.
Insufficiency of disclosure
The Opponent (“O”) argued insufficiency of disclosure of the invention. The Board rebutted all of the arguments by O and explained why in their view the skilled person would not have any difficulty in carrying out the invention. Specific emphasis was placed by the Board on the sufficiency of disclosure of the “detection means”, and the ability of these means to detect edgewise oscillations in one or more of the blades as required by the invention.
O had argued that the detection means would not be able to always accurately detect the edgewise oscillations. When the frequency of the edgewise oscillations is close to a resonance frequency of some other component of the turbine, a resonating component could distort the detection of the edgewise oscillation. The Board acknowledged that it might be, as a matter of speculation, possible that such a situation occurs. Hence for some frequencies, hypothetically speaking, the control method would not give satisfactory results.
However, the Board did not consider that this meant the invention was insufficiently disclosed. The Board remarked that:
“Isolated cases of non-working or not ideally working embodiments [are] of no import[ance] 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 Board further placed the general comment that it was unfortunate that an approach for assessing sufficiency of disclosure that is developed mainly in the field of chemistry was misapplied in the field of mechanics. According to the present Board, it was a pity to see this happen more and more often in mechanics.
In mechanics, it is not enough for demonstrating insufficiency to come up with 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.
The Board stated that, to successfully argue insufficiency in a case such as the present case, a very high burden of proof applied: “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
- 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.” (reasons 3.6)
As neither applied in this situation, the Board concluded that the invention was sufficiently disclosed.
Decision of the Board (of Appeal)
As all the claims were also considered to be novel and involve an inventive step, the appeal was dismissed and the patent maintained as granted.
This summary is written by the EPO Case Law team
