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.