Friday, 26 February 2016

T 1841/11 Would one use salami if one intends to make a salami sandwich?

Selecting the closest prior art selection in the problem solution approach is not always straight forward. In this appeal decision that starts from a decision of the Examination Division, the Board analyses under what circumstances a closest prior art having a similar purpose may be selected if also another prior art document is available that has the same purpose.
The Board introduced a nice metaphor for the invention of this appeal: Assume the invention is making a salami sandwich. And if there are two relatively close prior arts available, one relating to making a ham sandwich (similar purpose) and the other one making a salami sandwich (same purpose). Then the Board is of the opinion that the prior art relating to making a ham sandwich may be selected if the difference between the selected prior art and the invention is not inventive. Thus, for this metaphor: the difference between the selected prior art with the similar purpose is "introducing salami on the sandwich", and if this difference feature is not inventive, the prior art relating to the ham sandwich may also be selected as the closest prior art. In the metaphor of the ham and salami sandwich, it seems that, according to the board, introducing salami on the sandwich is not really inventive because the skilled person who starts from a ham sandwich and who tries to solve the problem of "making a salami sandwich", would put salami on the sandwich (...unless there are technical difficulties to do that...). The first half of the decision relates to the prior art selection and whether "the salami" is inventive.
After the selection of the closest prior art, four difference features are identified between the closest prior art and the claimed invention. Each feature is discussed separately and each individual features is considered not to be inventive. If you are interested in a discussion of features of a method of manufacturing a semiconductor substrate, one should also read the second half of the decision.

Monday, 22 February 2016

T 1533/13 - Expectation or speculation? An explanation needed to make the difference!

After the opposition division revoked the patent in its entirety, the patent proprietor (the appellant) filed an appeal and submitted with the statement setting out the grounds of appeal a main and ten auxiliary requests, and gave reasons why the impugned decision should be set aside. The respondent requested that the appeal be rejected as inadmissible, because of an alleged lack of substantive reasoning as to why the impugned decision was wrong, or that it be dismissed. The Board had to decide on the admissibility of late-filed claim requests based on claim requests already filed without explanation with the statement of grounds of appeal.

Friday, 19 February 2016

T 475/12 - Medical examination may be a treatment

Camera unsuitable for in-vivo use
Can a method or examination become a treatment just because some of its steps may have a therapeutic effect? Claim 1 of the main request is a medical examination method that comprises administering a laxative to a subject, before the subjects swallows an in-vivo imaging device.

According to the applicant the laxative enables a better collection of data through the in-vivo imaging device. Administering the laxative should not be seen as a therapeutic step.

The board has a different opinion. If the subject happens to have constipation, the examination method might be therapeutic. Moreover, the laxative may prevent complications.

The applicant tries to save the claims by inserting the word non-therapeutic, but the Board does not accept this either (see the end of the decision).

Wednesday, 17 February 2016

T 915/10 Hebicide tolerant soy beans

Following the Enlarged Board of Appeal decisions G 2/07 and G l/08, the Examining division refused some of the method claims as being drafted to incorporate a crossing and selection step leading to refusal as being essentially biological [Art.53(b) EPC]. In appeal, amended claims were filed. The Board ruled that the 'product-by-process' claim was allowable - although the process is essentially biological, the claimed plant was not limited to a single plant variety. The method claim is seen as a claim to genetic engineering of plants. The Board extensively discusses why patenability of such claims is not affected by the above mentioned decisions.

Friday, 12 February 2016

R 0018/14 - Different understanding of issue

"The poetry of logic"

In this petition for review, the petitioner argued that its right to be heard has been fundamentally violated in that the debate which took place during oral proceedings lacked essential aspects in respect of novelty of independent claim 1; these only appeared in the reasoning of the written decision and were said to be entirely new for the petitioner.

During oral proceedings before the Enlarged Board, the petitioner explained that when a Board of Appeal intends, as in the present case, to depart from a common logical reasoning, it should inform the parties in advance so that they have an opportunity to react in an appropriate manner.

Tuesday, 9 February 2016

T 615/14 - Oops, mistake! Sheer force of habit...but repairable.

In G1/12 it was decided that Rule 139 could be used to correct the appellant's name. The Board of Appeal in the present case decided that such is also applicable to a correction of the opponent's name, although the situation in appeal proceedings is different from that in opposition proceedings because the identity of an appellant is limited to one or only a few options, namely the party or parties involved in first-instance proceedings, while in the case of an opposition the identity of the opponent was completely unknown and in fact could be any party whatsoever. The Board disagreed with this because there was only a choice between two options and not an endless number, which makes that there was no difference between this case and an appeal. The Board further sets out the reasons why a correction under Rule 139, following G1/12, is also applicable to opposition proceedings, and uses the (in the Board's view allowable) post-9 months filed evidence, to come to its final decision that a correction under Rule 139 was allowable here.
Summary of Facts and Submissions
I. This decision concerns the appeal filed by the opponent against the decision of the opposition division to reject the opposition against European patent No. 1 605 772 as inadmissible.
II. On 26 March 2008, professional representative Mr ... for Andries van Westerbrugge et al. / N.V. Nederlands Octrooibureau had filed a notice of opposition against the above-identified patent. Form 2300.1 mentioned N.V. Nutricia as opponent (section III), with the box in section VII ("Facts and arguments ... are submitted herewith on a separate sheet") being ticked. Attached was a document "Facts and Arguments" signed by the same attorney. In the first paragraph of page 1 of this document, it was stated: "On behalf of Campina Nederland Holding BV, the Netherlands, I hereby file opposition to European Patent No. 1 605 772 B1 ...". This document contained a reference to "the enclosed EPO form 2300" (second paragraph of page 1).
III. By letter of 12 June 2008, another representative from the same law firm informed the EPO that the name N.V. Nutricia given in form 2300.1 was erroneous and should actually read Campina Nederland Holding B.V. The representative requested that the name of the opponent be accordingly corrected to Campina Nederland Holding B.V under Rule 139 EPC.

Friday, 5 February 2016

T 339/13 A technical effect of interaction with a virtual pet

The patent application of the appellant (applicant) relates to a virtual pet. One can consider a virtual pet as a sort of game. Can this invention involve a technical effect? In this decision the Board of Appeal analyzed whether a feature of the main request and of the auxiliary request is technical. The feature relates to providing haptic feedback to the user. In the main request the haptic feedback is generated on basis of a simulated "biological state" or "health state" of the virtual pet. In the auxiliary request the haptic feedback was generated as a (direct) response to input provided by the user. The feature of the auxiliary request is a sort of simulation of the real behavior of a pet that is happy at the moment in time that the owner interacts with the pet. This case shows that in certain cases providing haptic feedback to the user of a virtual pet may be technical and that the technicality of the feature strongly depends on the parameters that determine the haptic feedback.

Tuesday, 2 February 2016

T 809/12 - Wish, result-to-be-achieved of functional claim?

Can an  independent claim that contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application comply with Article 84 EPC? That was one of the core items of the decision below.