tag:blogger.com,1999:blog-8990057754240336385.post5403266813645893147..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 1841/11 Would one use salami if one intends to make a salami sandwich?DeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-8990057754240336385.post-14181231319364364662016-03-07T16:45:02.422+01:002016-03-07T16:45:02.422+01:00It could be, a method for making a ham sandwich is...It could be, a method for making a ham sandwich is equally applicable to making a salami sandwich. In case a combination of documents discloses everything, except for the final sandwich to comprise salami, should that be considered inventive? In other words: a sandwich making method, tweaked in an obvious way, but applied to salami instead of ham. I guess it all depends on whether or not separate method steps depend on the type of meat that is used.<br /><br />Mr. KAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-50952848021362200762016-02-28T11:57:08.273+01:002016-02-28T11:57:08.273+01:00"no more persuasive than an argument that whe..."no more persuasive than an argument that where it is intended to make a salami sandwich, it would be inventive to choose salami as the filling."<br /><br />This is a fatuous metaphor. One of the first things you learn as an examiner is that, when defining the objective problem to be solved, you must avoid including pointers to the solution, because this would necessarily lead to an ex post facto assessment of inventive step, which is what the BoA is guilty of in this decision, I fear. Basic stuff. See the Guidelines G-VII 5.2, sixth paragraph.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-7934981691846158012016-02-27T15:53:06.203+01:002016-02-27T15:53:06.203+01:00As interesting as it looks, the present decision i...As interesting as it looks, the present decision is not without problems. On the one hand, it is not really convincing in an important aspect, and on the other it has a definitive smell of ex post facto analysis. I agree with Joeri on this point. In its last ยง, I think one should read D4 rather than D2, as D4 deals with Si and D2 with Ge.<br /><br />In Point 2.6 of the reasons it is explained that the choice of the closest prior art can be either a document having the same purpose or object than the application, or a document with a similar purpose or object, provided that it would be immediately apparent to the skilled person that what is disclosed in the document could be adapted to the purpose of the claimed invention in a straightforward manner, using no more than common general knowledge. It is this last part of the statement which is highly problematic.<br /><br />If you know what you are looking for, then it is easy to put the pieces of the puzzle together in order to arrive at the desired picture, i.e. lack of inventive step. If that is not an ex-post facto analysis, then I do not known what this concept could actually mean.<br /><br />Embarked on this path, the BA filled pages and pages to show, without actually saying so, that each difference boiled down to a partial problem, whereby all partial problems were solved in a non-inventive way.<br /><br />I know of opponents whose opposition was thrown out for less than that!<br /><br />Whilst I am willing to accept that the object of the application might not be patentable, the argumentation of the BA is somewhat disconcerting, especially with respect to the catchwords and Point 4 of the reasons dealing with difference a). <br /><br />The reasons why the other differences b), c) and d) are solved in a non-inventive way are more convincing. <br /><br />One cannot get read of the feeling that when the BA found the last three differences were not inventive, it had to find something to kill the first one. This lead then to highly problematic catchwords. <br /><br />May be an attack without trying desperately using the problem-solution-approach might have been better. After all the problem-solution-approach, did not always exist, and applications were refused or patents revoked for lack of inventive step. <br /><br />The present decision can certainly belong to the category of over-intellectualising the problem-solution-approach.<br /><br />The decision might be one which will be remembered, but certainly not for its logic and convincing power. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-25441516239446895982016-02-27T00:40:01.089+01:002016-02-27T00:40:01.089+01:00EPO staff sometimes over-intellectualize issues to...EPO staff sometimes over-intellectualize issues to the point of obfuscation. Sam Bergstromhttps://www.blogger.com/profile/04455443535067698767noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-52176877231579503942016-02-26T11:01:05.824+01:002016-02-26T11:01:05.824+01:00Reasons 4.1-4.3 smell like hindsight to me.
But ...Reasons 4.1-4.3 smell like hindsight to me. <br /><br />But what happened to T 570/91 (A person skilled in the art is completely free in choosing a starting point)? <br /><br />When I already have a ham sandwich but I'm in the mood for something different, I throw away the ham and add some salami. No problem. But when I'm in the mood for a salami sandwich and I can buy either a ham sandwich or a salami sandwich, I will of course buy the salami one. I would not buy the ham sandwich and start arguing that it's actually very similar to a salami sandwich. <br /><br />I don't understand why the Board uses this complex line of argumentation. It would not be too difficult to just start from D2 and argue that SiGe is an obvious alternative for Si. The patent itself even seems to suggests so. Joeri Beetzhttps://www.blogger.com/profile/12409253743595819144noreply@blogger.com