Tuesday, October 27, 2020 T 560/20 - Change from novelty objection to inventive step in decision to refuse

Does membrane thickness have a technical effect? Does it matter?

During prosecution the claim was objected to on the basis of novelty. In its decision to refuse, it was acknowledged that the thickness of a membrane was not disclosed in the prior art document. As said thickness had no technical effect, the Examining division turned the novelty objection into an inventive step objection. The appropriate thickness could be found from the common general knowledge. 

The board does not like this, and in fact, considers it to be a substantial procedural violation 

Tuesday, October 20, 2020 T 294/16 - The Board shall not remit, unless

It is not always so easy to turn around and go back.

Article 11 of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) reads as follows:

Article 11

Remittal

The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.

In this decision the Board found that such special reasons were present. The application was rejected for lack of novelty, but the Board did not agree with that finding. As inventive step or clarity was not examined, the case is remitted. 

Thursday, October 15, 2020 T 421/14 - Sufficiency for a composition with non-responders

No response for a subpopulation

How credible should evidence for a composition be? In this case, the opponent argued that the initial analysis of therapeutic efficacy lacked statistical significance. Only a post hoc analysis revealed a  significantly better response for a treatment group compared to a placebo group. Moreover, the effect only occurred in a subpopulation of responders, not for the general population. Is one allowed to claim a composition for a general group even if the majority are non-responders, or should one disclaim the non-responders?  

Another issue, was the public availability of two documents C30 and C31.  C30 was poster and C31 a slide show, both allegedly displayed at a public conference by the proprietor. Both were also included in the IDS statement for a corresponding US patent. Who should prove the public availability in this situation, and what is the appropriate standard?

A related case T 799/16 sharing some of its reasons with the present decision has also been decided. 

Tuesday, October 06, 2020 T 1188/16 - Request filed in appeal is too late

 

Another case showing that filing new requests with the appeal can be a perilous undertaking. In first instance proceedings, the proprietor amended claims by including a 'fluid delivery interface' disclosed in paragraph 44 of the description. The opposition division objected that this was added matter since the amendment failed to include a 'reduced pressure interface' which was shown together with the former interface. In appeal, an auxiliary request is filed that addresses this objection, but the board will not allow it. 

The proprietor considered that the request  should be admitted, since it is responsive to objections first raised during oral proceedings. However, the board finds that the problem was unambiguously indicated at the oral proceedings, so that the appellant could have filed a request including the omitted feature then.

The appeal was dismissed.