Tuesday, March 27, 2018 T1833/14 - A tough composition

This case concerns an appeal by an opponent against a decision of the opposition division rejecting an opposition filed by the opponent/appellant.

The patent in suit relates to a tougher polymer composition used for making moulded articles with injection moulding. The appellant lodged the appeal on the grounds of an alleged public prior use anticipating granted claim 1 and inventive step.

The appellant argued that a skilled person could have easily reproduced the claimed composition starting from a product which was publicly sold before the filing date of the patent in suit.

However, the BoA stated that mere public disposal of a product does not give the skilled person sufficient information on how to make that product. In summary, the criteria of sufficiency of disclosure for a polymer (or composition) which demand also the disclosure of the method of preparation of such polymer (or composition) in the patent application, must also apply to the reproducibility without undue burden of a product in the market. The appellant did not show that any information in that respect was available before the filing date, thus the BoA could not consider a sample of the publicly available product as being part of the state of the art according to Art. 54(2).

It is also interesting to note that the BoA contested an inventive step reasoning of the respondent (patent proprietor): the comparative examples disclosed in the application as filed did not relate to compositions differing from the claimed composition only in the distinguishing features of the granted claim with the closest prior art(s), thus the effect of the distinguishing feature over the closest prior art(s) could not have been demonstrated based on those examples, and the technical problem originally formulated by the respondent needed reformulation.