Friday, May 29, 2020 T 1900/16 - strict formulation of objective problem leads to inventiveness

Printer with blank pages 

When printing a document, it sometimes happens that inadvertently a blank pages ends up between the printed pages. While this is annoying in any print-job it can become a real problem if one is doing print jobs of 100,000 pages. The solution to this problem comprises better synchronization of read and write commands in the printer spool file. 

The Examining division argued for lack of inventive step by solving the general problem how to 'ensure correct printing results are generated'. A skilled person would then try to apply known techniques that avoid incorrect data and arrive at the solution defined in claim 1. 

The board found this line or arguing incorrect. Without generalizing the problem set out in the application, the skilled person would not have combined with the secondary document. 

Friday, March 15, 2019 T 1680/17 - Basic research does not give expectation of success for clinical application

This opposition appeal provides a very interesting application of the problem-solution approach to a pharmaceutical formulation. Claim 1 according to the main request was as follows:

1. A pharmaceutical formulation for use in the treatment of breast cancer by intra-muscular injection, wherein the pharmaceutical formulation comprises fulvestrant, a pharmaceutically-acceptable alcohol being a mixture of 10 % weight of ethanol per volume of formulation and 10 % weight of benzyl alcohol per volume of formulation, and the formulation contains 15 % weight of benzyl benzoate per volume of formulation and a sufficient amount of a ricinoleate vehicle so as to prepare a formulation of at least 45 mgml**(-l)of fulvestrant, wherein the ricinoleate vehicle is castor oil, and wherein the total volume of the formulation is 6 ml or less.

Interestingly, the highlighted features were known from a document 4. The unusual formulation using a combination of castor oil, ethanol, benzyl benzoate and benzyl alcohol is disclosed for fulvestrant in document 1. Indeed, the patent was revoked in first instance opposition proceedings. Nevertheless, after a careful analysis of the cited documents, the board comes to the conclusion that claim the claim is inventive. 

One of the problems found by the board is that the skilled person would not have an expectation of success that the formulation of document 1 would allow for treatment of breast cancer by intramuscular injection. Since document 1 is a scientific paper dealing with basic research, the skilled person would not expect it to provide a formulation for administration in a clinical situation.

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.

Friday, June 09, 2017 T 688/13 - Bonus effect or main effect to be achieved?

One way street to obviousness?

This opposition appeal concerns an invention which provides an emulsion for coloring foodstuff, which is said to be more transparent and provide a more vibrant coloring ("stärkere Leuchtkraft").

This advantageous effect appears to be achieved by a reduced droplet size, which is also the sole distinguishing feature over D7 as closest prior art.

The opponent as appellant argues that the objective technical problem is to be formulated as how to obtain an emulsion which is more transparent and provides a more vibrant coloring.

According to the appellant, it is known from D5 and common general knowledge that a reduced droplet size improves the transparency of an emulsion, and that the more vibrant coloring would be obtained inherently, and thereby as a bonus-effect, when the skilled person reduces the droplet size of D7 to obtain the desired improvement in transparency.

The patent proprietor of course disagrees, and argues that the actual objective technical problem solved by the invention is how to obtain this more vibrant coloring and not the improved transparency. However, as a seemingly precautionary measure, the patent proprietor decides to 'eliminate' the technical effect of improved transparency by submitting an auxiliary request in which the emulsion is limited to application in Yogurt (which is non-transparent).

Does the latter strategy work? Yes. Although the Board concurs with the appellant with respect to the main request, the Board agrees that the 'transparency' effect is not achieved anymore by the auxiliary request. Accordingly, the improved vibrancy is now the sole technical effect of the distinguishing feature, by which the distinguishing feature is not rendered obvious anymore by the cited prior art.

Tuesday, March 14, 2017 T 0625/11 - How technical is determining a threshold value?

In this appeal from the Examining Division the main question is whether the claimed method of determining a threshold value of an operational parameter of a nuclear reactor, based upon a simulation of the functioning of the reactor, is technical. The Examining Division recognised that the use of a computer made the claimed invention technical in the sense of Art. 52 EPC, but denied inventive step. Discussing the case law, including T 0641/00 (Comvik) and T 1227/05 (Infineon), the Board distinguishes two different approaches. The first approach requires including the functioning of the nuclear reactor to state the technical effect in the claim. The second approach, which is in line with T 1227/05, does not require stating the technical problem in the claim. The Board chooses the second approach and concludes that determining the value of a parameter gives the claim a technical character going beyond the simple interaction between the numerical interaction algorithm and the computer.

Wednesday, August 26, 2015 T 1580/13 - Catch-up growth without risk of obesity

Here, the Board sets aside the decision of the opposition division by indicating that no inventive step could be recognized because the prior art that showed that 'catch-up growth' could be achieved using the compounds of the claimed invention. The term 'catch-up growth' was well defined in the specification and could therefore not be taken from other documents. Catch-up growth was in fact defined as a sudden spurt of growth that would result in catching up with subjects having a normal growth, although it may be that the subject would never attain the physical state that it would have reached had the stress not been suffered. Despite the arguments from the proprietor, the Board held that the problem of catch-up growth without an increase in caloric intake, with equilibrated lean and fat body mass and without promoting obesity had not been solved, because such could not be derived from the data in the specification.

Summary of Facts and Submissions

I. This decision concerns the appeal filed by opponent 1 (The IAMS Company), opponent 2 (Abbott Laboratories) and opponent 3 (N.V. Nutricia) against the interlocutory decision of the opposition division that European patent No. 1 940 248 as amended meets the requirements of the EPC.

II. The opponents had requested revocation of the patent in its entirety on the grounds under Article 100(a) EPC (lack of novelty and inventive step), Article 100(b) EPC and Article 100(c) EPC. [...]

Friday, July 10, 2015 T 698/10: Problem not mentioned in closest prior art

The closest prior art and the objective technical problem were disputed because the closest prior art does not mention the problem of the claimed invention. This appeal lies from a decision of the Examining Division to refuse a patent for an invention that relates to the Audio Video Coding Standard of China (AVS). The Board of Appeal clearly discusses the inventive step of the invention. In this discussion the above mentioned objections of the Appellant (Applicant) are discussed extensively. The Applicant also considered his right to be heard violated. The Board also provides a clear discussion of this subject at the end of the decision.