Tuesday, December 01, 2020 T 670/19 - Technical character of a scale for evaluating in a clinical setting

The subject of this examination decision was a scale for evaluating the lips and mouth region in a clinical setting. This type of scale could be utilized to assess the effectiveness of new lip enhancement techniques.

The claim in question, for example, features a "lip fullness scale" including images of human mouth areas.

Initially, objections were raised during examination that the claims lacked novelty. However, these objections were overcome, and the claims were then challenged for lacking technical character. The examining division argued that the claim related to purely abstract subject matter and thus did not meet the requirements of Article 52(2) and (3) of the European Patent Convention (EPC).

The Board of Appeal did not concur with this argument and found that the illustrations indicated a physical representation and thus had technical character. As a result, the case was remitted.

Friday, June 26, 2015 T 2255/10 - What's the purpose of it all?

This case involves an appeal against the decision of the Examining Division refusing European patent application No. 01 998 993 on the grounds that the claimed subject-matter of the main request and of the first and second auxiliary requests was not clear (Article 84 EPC) and did not involve an inventive step (Articles 52(1) and 56 EPC).

Catchwords

In accordance with the established case law of the Boards of Appeal the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose as the claimed invention and having the most relevant technical features in common. (Reasons, point 2.2.2, citing T 482/92, Reasons, point 4.1, third paragraph.)
In establishing the closest prior art, the determination of the purpose of the invention is not to be made on the basis of a subjective selection from among statements of purpose which may be set out in the description of the application, without any reference to the invention as defined in the claims. On the contrary, the question to be asked is, what, in the light of the application as a whole, would be achieved by the invention as claimed.
For this reason, statements of purpose must be read in conjunction with the claims. Merely inserting such a statement into the description does not entitle an applicant effectively to "veto" any inventive step objection based on a document which is unrelated to this purpose, if it is not plausible that the invention as claimed would actually achieve the stated purpose. (Reasons, point 2.2.4.)