Tuesday, January 07, 2020 T 405/14 - Closest prior art does not need to be the closest

Which springboard(s) can be used?

In the present opposition appeal case, inventive step was challenged. A key element in the debate was whether the presence of a document D1 which would be closer to the claimed invention than a document D2 would require any inventive step objection to start from D1 as the closest prior art, or whether an attack starting from D2 as the closest prior art would also be admissible and allowable - as well as whether doing so would not only not be correct, but would -if applied by the Examining Division- account to  a substantial procedural violation. "Concerning inventive step, the appellant (applicant) argued that the skilled person would not consider D2 as closest prior art, since it did not disclose magneto-resistive speed-sensors or sensing elements relying on the Hall effect. This appeared all the more true under the present circumstances, considering that document D1 was available. D1 appeared to be a much more suitable starting point, since it addressed problems regarding the testing of speed sensors based on Hall effect or magneto resistive sensors, which was exactly the problem addressed by the claimed invention." The Board came to conclude, with reference to an earlier decision from this same Board, that "Experience teaches that a document which shares a common purpose with a claimed invention, as well as a large number of features, in order to solve the same or a similar problem, will not necessarily allow a convincing objection of obviousness to be raised against that invention, whereas said invention may indeed result, without hindsight, in an obvious manner from an apparently less promising item of prior art. In this respect, all items of prior art considered as starting points which allow the elaboration of a realistic attack under Article 56 EPC may be considered to qualify as "closest prior art", although this currently accepted terminology is somewhat misleading." One could understand this as that this Board seems to consider the term "closest" meaningless. The Board does, unfortunately, not discuss other case law that does give (or at least seems to give) a meaning to the term "closest", e.g., by using terminology such as "most promising" springboard (see e.g. Case Law Book (2019) I.D.3.1 "Determination of closest prior art in general",  3.2 "Same purpose or effect" and 3.4 "Most promising starting point"), nor does the Board comment on its deviations from the quite clear guidance in Guidelines G-VII, 5.1 (despite Article 20(2) RPBA 2007).

Tuesday, September 03, 2019 T 1503/12 - On technical and non-technical features, technical considerations, business methods and THE problem-solution approach

In this appeal against the examining division's decision to refuse a European patent application for lack of inventive step (Article 56 EPC), the appellant submitted that "there was a divergence in how computer-implemented inventions were examined at the EPO. If the application happened to be classified as a business method, the EPO would use the Comvik approach and dismiss features of the invention as non-technical. If, on the other hand, the application was classified in the field of telecommunications, it would be assessed using the "normal" problem-solution approach, and, irrespective of the underlying aim, features relating to data transmission would be treated as a technical telecommunications protocol. Applicants wanted consistency and certainty, especially in the field of computer-implemented inventions, which had become increasingly important." Applicants submitted that "The correct approach, in all fields, was the problem-solution approach." The appellants tried to argue that the claimed invention had a number of technical effects, which provided a basis for inventive step. The Board agreed that the correct approach, in all fields, was the problem-solution approach, but the Board did not agree that there is such divergence: "Comvik is rather a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features". The Board then applied the problem-solution approach, using Comvik, and concluded that the claimed invention was not inventive. 

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, June 26, 2018 T 2057/12 - Closest prior art selected from a remote technical field

It is generally accepted that the closest prior art normally discloses an item of prior art which shares a common purpose with the claimed subject-matter or aiming at the same objective (see below). As indicated in reason 3.2.2 of this decision, "this approach appears to rely on the assumption that the skilled person would only possibly arrive at the claimed invention when starting from a document which shares a common or similar purpose with the claimed invention. In other words, this approach seems to exclude from the group of possible candidates as closest prior art disclosures which belong to technical fields remote from the field of the invention. The jurisprudence of the Boards of Appeal puts also much emphasis on the similarity of the technical problem to be solved by the item of prior art to be selected." But is it possible that a correct inventive step attack can be formulated that uses a document from a remote technical field as the closest prior art document? If so, under what circumstances, under which conditions and what are the consequences of using such a starting point? This is maybe not such a very surprising decision, but it gives a nice review of making such a choice.

Friday, August 18, 2017 T 1921/12 - Who should sign a 'decision'

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.

The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   

In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Monday, June 19, 2017 T 519/12 Technical standard similar to common general knowledge?

Using common general knowledge as a secondary document in the problem-solution approach usually requires a bit less argumentation compared to using a normal publication, e.g. it needs hardly to be argued why such content would be consulted. In this decision, the Board seems to take a similar approach for a technical standard (in this case on credit cards). 

Catchwords: It is expected from the skilled person that he would exercise his skills in the framework of technical Standards in force in his field of activity. No inventive activity can thus be derived from a feature that simply reflects the content of such a technical prescription (cf. point 3.5).

Friday, February 26, 2016 T 1841/11 Would one use salami if one intends to make a salami sandwich?

Selecting the closest prior art selection in the problem solution approach is not always straight forward. In this appeal decision that starts from a decision of the Examination Division, the Board analyses under what circumstances a closest prior art having a similar purpose may be selected if also another prior art document is available that has the same purpose.
The Board introduced a nice metaphor for the invention of this appeal: Assume the invention is making a salami sandwich. And if there are two relatively close prior arts available, one relating to making a ham sandwich (similar purpose) and the other one making a salami sandwich (same purpose). Then the Board is of the opinion that the prior art relating to making a ham sandwich may be selected if the difference between the selected prior art and the invention is not inventive. Thus, for this metaphor: the difference between the selected prior art with the similar purpose is "introducing salami on the sandwich", and if this difference feature is not inventive, the prior art relating to the ham sandwich may also be selected as the closest prior art. In the metaphor of the ham and salami sandwich, it seems that, according to the board, introducing salami on the sandwich is not really inventive because the skilled person who starts from a ham sandwich and who tries to solve the problem of "making a salami sandwich", would put salami on the sandwich (...unless there are technical difficulties to do that...). The first half of the decision relates to the prior art selection and whether "the salami" is inventive.
After the selection of the closest prior art, four difference features are identified between the closest prior art and the claimed invention. Each feature is discussed separately and each individual features is considered not to be inventive. If you are interested in a discussion of features of a method of manufacturing a semiconductor substrate, one should also read the second half of the decision.

Tuesday, January 12, 2016 T 1649/10 - Closest prior art switching

The Opposition division denied patentability of the Main Request based on a document D10 as the closest prior art and then the teaching of D4 that suggested the use of the missing feature (a scatterer). The patent was maintained in amended form based on an auxiliary request. The opponent (appellant I) and the proprietor (appellant II) appealed. The Board Appeal decided that the appeal of appellant II was inadmissible because in the statements of grounds it was argued that there was inventive step when taking D4 as the closest prior art in view of D10. The Board decided that such simple 'turning around' of the closest prior art is not allowed. Importantly, appellant II did not provide arguments why D4 should be considered as the closest prior art in the statements of grounds, which would have made the appeal admissible. The end result was that appellant II was 'out of the game' and could not put forward any new arguments and new auxiliary requests. Even worse: the patent was revoked, while before the appeal procedure there was at least an auxiliary request that was held allowable. The lesson is: Even if you think that the earlier selected closest prior art is in your eyes not the closest prior art, at least argue WHY you think that is, not simply start from the closest prior art that you prefer.  

Summary of Facts and Submissions

I. The appeals lie from the interlocutory decision of the opposition division to maintain European patent No. 1 378 265 in an amended form. The decision was dispatched on 16 June 2010.

[...]

II. The opposition, which led to the decision appealed in the present case, was filed against the patent as a whole and based on the ground that the claimed subject-matter was not patentable (Article 100 (a) EPC 1973) because it was not new (Articles 52(1) and 54 EPC 1973) and did not involve an inventive step (Articles 52(1) and 56 EPC 1973).

III. In the "Reasons" for its decision to maintain the patent in amended form, the opposition division held that the subject-matter of claim 1 of the patent as granted did not involve an inventive step in the sense of Article 56 EPC 1973. In the analysis developed by the opposition division according to the problem/solution approach, the opposition division relied on the teaching of document D10 [...] as closet [sic] prior art. Since the sole difference between the claimed subject-matter and document D10 resided, in the opposition division's view, in the presence of a scatterer, the problem solved by the invention was to enlarge the irradiation beam and consequently to increase the speed of treatment. According to the opposition division, the skilled person would have found a solution to the problem of enlargement of the charged particle beam in document D4 [...].

The opposition division decided to maintain the patent as amended according to the first auxiliary request then pending. The objective problem of reducing the loss of particles at the edges of the treatment region, defined with regard to document D10 as closest prior art, was not addressed in D4.

Wednesday, May 13, 2015 T 995/10 - Purity isn't everything

A clear cut case, wherein the Board of Appeal overrules an earlier decision by the Opposition Division. The decision deals with an aspect in claim 1 that relates to the purity of a virus preparation that is used in cancer therapy. It was indicated in the application as filed and also not disputed by the parties, that a virus preparation should be 'clonal' or as clean as possible, which means that it should have low numbers of defective particles to reduce negative side effects (such as immune responses by the patient). The invention as claimed was directed to the word 'clonal' in the main claim, but unfortunately did not show (in the application as filed) that there was a difference in activity between a clonal preparation and a non-clonal preparation. Post-filed data did not help the proprietor to re-formulate the problem to be solved in the inventive step assessment. Yet another example that it is still wise to have the real data in there, when filing the application, and not simply rely on what might appear logical as the solution to the posed problem, or new formulated problem to be solved.

Summary of Facts and Submissions

I. The appeal of the opponent (hereafter "appellant") lies against the decision of the opposition division rejecting the opposition filed against

European patent No. 1 032 269.

II. The patent at issue has the title "Treatment of neoplasms with interferon-sensitive, clonal viruses".

Claim 1 as granted reads as follows:

"1. Use of an interferon-sensitive, replication-competent clonal RNA virus for the manufacture of a medicament for treating a neoplasm in a mammal." [...]

IV. The opposition division decided that the subject-matter of the claims as granted was novel and involved an inventive step.

V. The following documents are referred to in this decision:

D1 WO 94/25627

[...]

D14 Technical information, submitted by the respondent with letter dated 14 July 2005

[...]

VIII. The parties were summoned to oral proceedings to be held on 11 December 2014. The board expressed its preliminary view in a communication pursuant to Article 15(1) RPBA.

IX. By letter dated 22 October 2014 the respondent announced that it would not attend the oral proceedings.

[...]

XI. The appellant's arguments as submitted in writing and orally may be summarised as follows:

Main (sole) request

Inventive step (Article 56 EPC)

Document D1 represented the closest prior art. The subject-matter of claim 1 differed from the disclosure of document D1 only in the clonal character of the virus population. The technical effect of this difference was, according to paragraph [0079] of the opposed patent: "to ensure or increase the genetic homogeneity of a particular virus strain and to remove defective interfering particles". The objective technical problem was thus the provision of an improved virus-based therapy for the treatment of neoplasms in a mammal, where the improvement consisted in increased purity.

Defective virus particles could cause an unwanted stimulation of the patient's immune system. This was in particular disadvantegous in the treatment of cancer patients due to their usually weak constitution. A high genetic homogeneity of the administered virus particles was moreover desirable for safety reasons, as viruses with deviating sequences could show increased virulence and cause non-reproducible therapeutic effects. These aspects played a crucial role in market authorisation for viral preparations for therapeutic purposes. Hence, it was the constant aim of the person skilled in the field to improve virus-based therapies by reducing the number of defective particles in the virus preparation and by ensuring that the functional virus particles were genetically homogenous. The skilled person would thus be motivated to improve the purity and genetic homogeneity of the virus population disclosed in document D1 and to provide a clonal virus population. Therefore, the skilled person would combine the teaching of document D1 with the virus purification methods disclosed in either document D4 or D11 and arrive at the claimed subject-matter in an obvious manner.

A comparison between a parent virus and a clonal population derived therefrom had not been carried out in the patent in suit. The technical effect - high therapeutic index of the clonal population - allegedly shown in document D14 could not be relied on for the formulation of the technical problem because this effect was neither disclosed in nor derivable from the patent in suit.

Document D12 would not have deterred the skilled person from using a clonal virus population in the treatment of neoplasms in mammals.

XII. The respondent's arguments as submitted in writing may be summarised as follows:

Main (sole) request

Inventive step (Article 56 EPC)

Document D1 represented the closest prior art. In the light of document D1, the objective technical problem was to provide an improved virus-based therapy for treating neoplasms. This problem was solved by the use of an interferon-sensitive clonal virus as defined in the claims of the main request.

Since the examples of the patent demonstrated a credible anti-cancer activity for clonal viruses, the supplementary post-filed evidence provided by document D14 could be taken into consideration. This document, which compared clonal virus strain PV701 and the non-clonal parent strain MK701, showed that clonal viruses resulted in lower mortality of non-cancer cell types and a higher therapeutic index. The principal concept underlying the claimed invention was that clonal viruses demonstrated lower cytotoxicity to normal cells than non-clonal viruses.

Starting from document D1, the skilled person would have found no suggestion to use a clonal virus for the treatment of neoplasms. Even if in view of document D1 a skilled person could have produced a clonal virus, the question was whether he would have done so in the expectation of some improvement. Also, there was a general acceptance in the art that viral therapies should use non-clonal viruses, see for example document D12, page 1, last paragraph, which confirmed that NDV vaccines should use uncloned NDV. Hence, the skilled person seeking to prepare an improved anti-cancer therapy would have been led towards the use of a non-clonal virus.

XIII. The appellant requested that the decision under appeal be set aside and the patent be revoked.

The respondent had requested in writing by letter dated 10 December 2010 that the appeal be rejected in its entirety, i.e. that the patent be maintained as granted.

Reasons for the Decision

[...]

Main (sole) request

Introduction

3. The patent in suit concerns the treatment of mammalian neoplasms with viruses that are able to cause the death of neoplastic cells which have a deficiency in the interferon-mediated anti-viral response while normal cells which possess an intact interferon-mediated anti-viral response limit the replication of the virus and are not killed. The viruses are RNA viruses, in particular paramyxoviruses such as Newcastle Disease Virus (NDV).

Inventive step (Article 56 EPC)

[...] 5. It is common ground between the parties that document D1 represents the closest prior art with respect to the claimed subject-matter. Document D1 (see paragraph bridging pages 3 and 4; page 10, lines 11 to 15; examples) discloses a method of treating cancer in mammals by administering to the mammal an effective amount of a paramyxovirus. In a preferred embodiment the virus is NDV. The document discloses that NDV has direct cytolytic activity on the cancer cells and is capable of specifically differentiating cancer cells from normal, healthy cells. It is reported that one dose of NDV, given intralesionally to athymic mice, causes complete and permanent eradication of a wide variety of human tumours. Document D1 thus relates to the same purpose as the patent in suit - the treatment of cancer using interferon-sensitive, replication-competent RNA viruses capable of selectively killing neoplastic cells - and discloses one of the preferred viruses of the patent in suit, namely NDV.

The technical problem to be solved

6. There was no dispute among the parties that the subject-matter of claim 1 differed from the disclosure of document D1 only in the feature relating to the clonal character of the virus population. [...]

9. The board notes that the patent in suit does not compare the efficacy of the parent non-clonal virus and a clonal population derived therefrom. Pursuant to paragraph [0074] of the patent in suit the viruses of the invention possess the following three characteristics: "(i) they infect neoplastic cells resulting in their death; (ii) they are replication-competent in the neoplastic cells; and (iii) they are limited in killing of normal cells by the antiviral effects of interferon". This passage refers to the specific cytotoxicity of the viruses of the invention towards neoplastic cells, but not to a possible advantage of cloned versus uncloned virus populations. Indeed, the mention of "limited killing of normal cells" in this paragraph applies to any interferon-sensitive virus regardless of its clonality because, unlike neoplastic cells which are deficient in an interferon-mediated anti-viral response, normal healthy cells possess an intact interferon-mediated anti-viral response which protects them from virus-induced cytolysis, see paragraph [0050] of the patent in suit.

10. Accordingly, document D14 can not be relied on for the formulation of the technical problem because the technical effect shown in document D14 is neither disclosed in nor derivable from the patent in suit (see Case Law of the Boards of Appeal of the EPO, 7th edition 2013, section I.D.4.4.1).

11. It follows from points 7 to 10 above that starting from document D1 the problem to be solved is the provision of an improved virus-based therapy for the treatment of neoplasms in a mammal. The board is satisfied that the solution provided by the subject-matter of claim 1 solves this problem.

Obviousness

12. It remains to be answered whether or not the skilled person, when faced with the technical problem defined in point 11 above, would have modified the teaching in the closest prior art document D1 so as to arrive at the claimed invention in an obvious manner.

13. The prior art describes the provision of clonal sub-populations of NDV strains by plaque purification, see document D4, page 435, third full paragraph, and document D11, page 116, lines 1 to 3.

14. Moreover, as submitted by the appellant, the skilled person would have known that the regulatory approval of any virus-based therapeutic composition would require detailed information indicating that the composition was safe and that the therapeutic effect was reproducible. For this it was necessary to provide a virus population which was devoid of defective particles which could cause an unwanted stimulation of the patient's immune system. A high genetic homogeneity of the administered virus particles was also desirable for safety reasons, as viruses with deviating sequences could show increased virulence and cause non-reproducible therapeutic effects. The respondent has not disputed this line of argument. [...]

16. The board is not convinced that document D12 would have deterred the skilled person from using a clonal virus population in the treatment of neoplasms in mammals. The paragraph relied on by the respondent states that "[w]e must be aware that the populations of Newcastle disease virus that spread in the field, or the populations that make up a vaccine stock [note by the board: the NDV vaccine for use in chickens] are not clonal". In the board's view this corresponds to what was known in the art at the priority date, namely that "both wild-type isolates and laboratory cultured strains of Newcastle disease virus contain several subpopulations", see document D11, page 113, first paragraph. A requirement that NDV should be uncloned when used in mammals, not in chickens, and for the treatment of neoplasms, and not as a vaccine, is not apparent from document D12.

17. Starting from the teaching of document D1 and faced with the problem of providing an improved virus-based therapy for the treatment of neoplasms in a mammal, the skilled person aware of the non-clonal character of NDV strains and of the regulatory requirements for obtaining marketing authorisation for viral preparations for therapeutic purposes would have readily considered providing a clonal virus population by plaque-purifying the NDV strain of document D1 pursuant to the teaching of document D4 or D11. He would thus have arrived at the subject-matter of claim 1 in an obvious manner. [...]

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T099510.20141211. The whole decision can be found here. The file wrapper can be found here. Picture by GH.

Tuesday, April 14, 2015 T 1724/10 - Contradictory conclusions not a reasoned statement

The present case concerns an appeal against the decision of the Opposition Division to revoke European patent no. 1 462 952.

The following citations from the decision show the Board dealing with an alleged substantial procedural violation. Namely, the patent proprietor argued that the Opposition Division failed to correctly apply the problem-solution approach, and had failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner. This, according to the patent proprietor, amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Background / Summary of Facts and Submissions

I. The patent proprietor (appellant) appealed against the decision of the Opposition Division to revoke European patent no. 1 462 952.

II. The opposition had been based on Article 100(a) (lack of novelty and inventive step), Article 100(b) and Article 100(c) EPC.

III. In the contested decision the Opposition Division found, inter alia, that claim 1 of the patent did not have a valid basis in the application as filed (Articles 100(c) and 123(2) EPC), and that the subject-matter of claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified. The same objections applied to claim 1 of the first and third auxiliary requests. The subject-matter of the second auxiliary request was found not to comply with Article 56 EPC and to extend the protection conferred by the patent.

(...)

VIII. On 27 January 2015, oral proceedings were held as scheduled before the Board. At the end of the oral proceedings the Chairman announced the Board's decision.

(...)

XI. The appellant's arguments may be summarised as follows:

(Main substantive argumentation omitted)

In summary, the subject-matter of claim 1 was not made obvious by any of the cited documents D6, D11 and D23, or their combinations.

The opposition division stated for the first time during the oral proceedings that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The fact that the patent proprietor was taken by surprise by this objection and was not given the possibility to file amended claims in response to the Opposition Division's new and surprising argument constituted a substantial procedural violation. Furthermore, the Opposition Division failed to correctly apply the problem-solution approach and, in particular, failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner, as it had been suggested. This amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Reasons for the Decision

1. The appeal is admissible.

(...)

Reimbursement of the appeal fee

9. The appellant has essentially argued that during the oral proceedings the Opposition Division raised a new argument under Article 100(a) EPC and, in particular, stated for the first time that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The patent proprietor was allegedly taken by surprise. Furthermore, in the appellant's opinion, the right to be heard was violated because the patent proprietor was not given the possibility to file amended claims in response to the new argument.

9.1 The appellant has further submitted that the Opposition Division failed to correctly apply the problem-solution approach and to consider the patent proprietor's right to reformulate the objective technical problem in a "less ambitious" way.

9.2 In the first paragraph of the section of the contested decision relating to Article 56 EPC, the Opposition Division merely identified the aggregating step and hence also the indexing step based on the aggregating step as novel over an unspecified prior art. From the preceding section concerning Article 54 EPC, it can be assumed that either document D6 or D9 constituted the prior art the Opposition Division intended to refer to. In fact, the minutes (section 6.) of the oral proceedings show that the inventive step discussion had focused on D6.

9.2.1 According to paragraph 18 of the contested decision, the aggregating and indexing steps recited in claim 1 provided the technical effect of different aggregated documents and different search results. The Opposition Division appears to have acknowledged the presence of a technical effect in the form of "different aggregated documents" and "different search results".

9.2.2 Having identified the differences between the prior art and the claimed invention, the Opposition Division concluded that it was not possible to identify a technical problem solved by the method of the application, which could be the basis of an inventive step.

9.2.3 In paragraph 20 of the decision, the Opposition Division summarised the different attempts of the patent proprietor to define a technical problem starting from the closest prior art document and, in particular, the patent proprietor's view that if no other problem could be formulated, one had to define the problem as how to find an alternate solution to the prior art and ask whether the skilled person would arrive from there at the claimed invention.

9.2.4 In reply to the patent proprietor's arguments, the Opposition Division stated in paragraph 21 of the decision that these argumentations were not convincing because it was not possible to consider the proposed solution as an alternative solution to the one found in the prior art firstly because a technical problem could not be identified and secondly because the results provided by the method of the opposed patent and by the method of the prior art were different.

9.2.5 Finally, in paragraph 21 of the contested decision, the Opposition Division reiterated that claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified.

9.3 The Board notes that all the above conclusions of the Opposition Division relating to the lack of inventive step are presented in the contested decision without any prior analysis of the allegedly closest prior art document (D6), or of the problem it addresses. It is also not explained why the technical differences between the claimed subject-matter and the closest prior art identified by the Opposition Division did not allow the definition of a technical problem to be solved according to the problem-solution approach (see also point 6.2 above).

9.3.1 Similarly, the Board finds that the Opposition Division did not explain in the contested decision why, in its opinion, a synonymous use of the terms "link" and "reference" was not plausible and consequently the statement "by use of links such as Uniform Resource Locators" in claim 1 offended against Article 123(2) EPC (see point 16 of the contested decision). In particular, the Opposition Division did not provide any reasons for refuting the patent proprietor's arguments.

9.3.2 In the Board's opinion, the juxtaposition of seemingly contradictory conclusions (e.g. acknowledgement of technical differences but no possibility to define a technical problem), presented in the contested decision as apodictically evident and without any factual support, does not constitute a "reasoned decision" within the meaning of Rule 111(2) EPC.

9.4 In accordance with the case law of the boards of appeal (see Case Law of the Boards of Appeal, Seventh Edition, September 2013, IV.E.8), the Board considers that in the present case the failure to provide adequate reasoning in a decision is to be regarded as a substantial procedural violation justifying the reimbursement of the appeal fee.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

3. The appeal fee is to be reimbursed.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T172410.20150127. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Whatever you say ...". by James Jordan obtained via Flickr under CC BY 2.0 license (no changes made).

Thursday, November 20, 2014 T 1988/07 - Inventive alternative

The Examining Division considered the main request to lack novelty. The Board agreed with the applicant that the amended main request filed with the grounds of appeal was novel, and then continued to assess inventive step. As in the T 109/07, the problem to be solved is the provision of an alternative in view of lack of evidence supporting other alleged advantages (In T 109/07, due to lack of  evidence on file showing a particular improvement  between the examples of the invention and examples according to the prior art, "the problem to be solved was to be reformulated in less ambitious terms" [r.4.1.3] and had to be seen "in the provision of an alternative" [r.4.1.4]). In the current case, the Board considered the invention to be inventive after having carefully assessed not only the prior art teachings but in particular also whether the skilled person had an incentive to use a prior art solution. 

Summary of Facts and Submissions

[...]

III. In the decision under appeal the Examining Division held

- that the subject-matter of the main request filed with letter of 18 November 2002 and resubmitted with entry into the European phase on 29 April 2003 was not novel over document (2),

[...]

VI. In reply to the Board's communication, the Appellant filed with letter of 6 September 2010 an amended main request and an amended auxiliary request 1 replacing the main request and auxiliary request 1 previously on file. The Appellant also filed an amended auxiliary request 2 replacing the previous auxiliary request 4.

VII. At the beginning of the oral proceedings, being asked by the Board to clarify its requests, the Appellant confirmed the maintenance of the amended main request as well as the amended auxiliary requests 1 and 2 filed with letter of 6 September 2010; all other requests were withdrawn.

Claim 1 of the main request, being the only independent claim, reads as follows:

"1. A method of reducing a microbial population on poultry during processing comprising:

applying to the poultry during processing a mixed peroxycarboxylic acid antimicrobial composition in an amount and time sufficient to reduce the microbial population;

recovering the applied mixed peroxycarboxylic acid antimicrobial composition; and

adding to the recovered composition a sufficient amount of a mixture of peroxycarboxylic acids to yield a recycled mixed peroxycarboxylic acid antimicrobial composition,

the method further comprising applying the recycled composition to poultry during processing."

[...]

VIII. The arguments of the Appellant as provided in writing and during oral proceedings, to the extend that they are relevant for the present decision, can be summarized as follows:

The subject-matter of claim 1 of the main request is novel over the disclosure of document (2), as the claimed method is not clearly and unambiguously disclosed therein. There is no unambiguous disclosure for the skilled person that the term "recycling" as used in document (2) should be understood as being equivalent to the steps of recovering a substance and adding something to this substance to obtain a recycled substance, which can then be reused. Furthermore, when assessing novelty it is not permissible to piece together different parts of a prior art document, which are present in completely separate entities, in order to artificially create a particular embodiment, which would destroy novelty.

Document (3) should be considered as the closest state of the art. In view of this document, the technical problem to be solved was the provision of a process for the reduction of microbial population during poultry processing which is highly effective in reducing the microbial population in the product, is cost-effective and uses less critical compounds. The proposed solution, namely recycling the wash waters after treatment with peroxycarboxylic acid was not obvious for the skilled person from document (3) alone or in combination with either document (1) or (2). Document (1) is concerned with the sanitizing of meat products, mainly beef, using fresh water. Recycling is not mentioned and there is no indication that peroxycarboxylic acid would be a suitable replacement for the strong oxidants otherwise used in the prior art for the treatment of poultry wash waters. In fact, such an indication cannot be found in any of the available pieces of prior art. Document (2) is merely concerned with less contaminated chiller water and does not contain a clear indication for reapplying the water to the poultry.

IX. The Appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or auxiliary requests 1 and 2, filed with letter dated 6 September 2010, all previous requests being withdrawn.

X. At the end of the oral proceedings the decision under appeal was announced.

Reasons for the Decision

[...]

Main request

[...]

3. Novelty

3.1 Claim 1 of the main request is directed to a method of reducing microbial contamination on poultry during processing comprising the steps of applying a mixed peroxycarboxylic acid composition, recovering the applied composition, adding to the recovered composition a peroxycarboxylic acid mixture to yield a recycled antimicrobial composition and applying the recycled composition to poultry during processing.

3.2 Document (2), which the Examining Division considered as anticipating the subject-matter of claim 1 of the main request before it, discloses a method for preventing microbial growth in aqueous streams used for transport or processing food products comprising the step of applying a peroxycarboxylic acid or a mixture of peroxycarboxylic acids to the aqueous stream. In particular document (2) discloses an automated method of controlling microbial growth in such streams, whereby the amount of the peroxycarboxylic acid(s) in the stream is controlled by maintaining the aqueous stream at an oxidation-reduction-potential (ORP) between 280 to 460 mv with respect to an Ag/AgCl reference electrode (column 3, line 50 to column 4, line 48, claims). Document (2) is mostly concerned with the processing of vegetables. However, in example 8 of document (2) samples of chiller water (chilled aqueous process stream in which the poultry were placed for at least 30 minutes) from a poultry factory were obtained and treated for testing purposes with dosings of a) peracetic acid, b) a combination of peracetic acid and peroctanoic acid, c) sodium hypochlorite and d) chlorine dioxide. In the Board's understanding the testing in example 8 of document (2) aims at demonstrating the suitability of peroxycarboxylic acid(s) as an antimicrobial agent in aqueous poultry chiller streams and thus the suitability of the peroxycarboxylic acid(s) as an antimicrobial agent in the first step of the presently claimed method, namely the application of a mixed peroxycarboxylic acid composition to the poultry during processing in the chiller. This example does not describe the steps of recovering the applied mixed peroxycarboxylic acid antimicrobial composition, the addition of peroxycarboxylic acid to yield a recycled mixed peroxycarboxylic acid antimicrobial composition and the further step of applying the recycled composition to the poultry.

Thus, example 8 of document (2) alone does not anticipate the subject-matter of claim 1 of the main request. This has also been acknowledged by the Examining Division in the contested decision (page 4, second paragraph). In order to conclude lack of novelty the Examining Division combined example 8 of document (2) with other parts of the description, namely the disclosure in column 3, line 50 to column 4, line 48 and column 1 (erroneously called column 2 in the contested decision), line 54 to column 2, line 7.

3.3 In this context, it is to be remarked that according to the jurisprudence of the Boards of Appeal regarding the examination of novelty, the teaching of a document is indeed not limited to the detailed information given in the examples, but embraces the disclosure of that document as a whole. Nevertheless, it is a general and consistently applied principle of the Boards of Appeal that for deciding novelty there must be a direct and unambiguous disclosure in the state of the art which inevitably leads the skilled person to the subject-matter falling within the scope of the claims. Applying this principle, the Board is of the opinion that for the examination of novelty different passages in a document can only be combined if there is a clear teaching combining them. [emphasis by the Board]

3.4 The passage in columns 3 and 4 of document (2) referred to by the Examining Division discloses the prevention of microbial growth in aqueous streams used for transporting or processing food comprising the application of peroxycarboxylic acid(s) to the aqueous streams. In a more preferred embodiment the use of a dispensing and controlling system is disclosed which allows for a continuous addition of peroxycarboxylic acid controlled by maintaining a certain ORP (see also point 3.2 above). The purpose of such an automated system is to maintain a steady state of peroxycarboxylic acid during processing or transportation. This passage does not mention any recovery, recycling or reapplication step. Neither are such recovery, recycling and reapplication steps an inevitable part of the automated system as can be seen in fig. 6 of document (2) representing the basic set up of the automated system. The water can merely flow through the flume system (or a poultry chiller), while the level of peroxycarboxylic acid in the system is maintained within the required limits.

The paragraph bridging columns 1 and 2 of document (2) is part of the section "background of the invention" and explains in general the problems which might arise if process waters are reused. It mentions that process water resulting from cleaning, cooling, heating, cooking or other processing steps can be used once and discarded, or a major part can be reused in which case it is subject to contamination with organic matter and microbes. Vegetable washers, vegetable cooling baths, poultry chillers and meat washers are mentioned as examples of process waters.

There is, however, no clear teaching in document (2) to combine

(a) the method described in columns 3/4 of document (2)

using an automated dispensing system, which method does not necessarily include recovery, recycling or reapplication steps, with

(b) a general statement mentioned in the section "background of the invention" referring to the reuse as well as the discarding of process waters and

(c) example 8, demonstrating the suitability of peroxycarboxylic acid as antimicrobial agent in poultry chillers.

Such a combination is the result of an arbitrary "mosaicing" of features found in different parts of document (2), which has been made in the knowledge of the invention and with the purpose of reconstructing the claimed method.

3.5 Hence, the Board concludes that there is no clear and unambiguous disclosure in document (2), which inevitably leads the skilled person to the presently claimed method. Accordingly, claim 1 of the main request is novel within the meaning of Article 54 EPC.

4. Inventive step

4.1 The patent in suit is directed to a method of reducing microbial growth on poultry during processing whereby a mixed peroxycarboxylic acid composition is applied to the poultry during processing, the applied composition is recovered, treated with a mixture of peroxycarboxylic acid and the so obtained recycled composition is reapplied to the poultry.

4.2 A similar method already belongs to the state of the art. Document (3), which has been introduced into the procedure during the appeal proceedings, describes a method of processing poultry with minimal microbial growth (document (3), column 1, lines 5-11). In this method ozone is applied to poultry as antimicrobial agent during processing. The process water of the different process steps is collected, treated with ozone and, after further treatment with a biofilter, UV-light and chlorine, recycled into the process and reapplied to the poultry (document (3), claims; figure 5; column 15, lines 9-16).

4.3 Document (2), which had been considered as the closest prior art by the Examining Division, is concerned with the inhibition of microbial growth, for example in poultry chillers, by keeping the antimicrobial agent at a constant level during processing or transportation of the food product. It does however not disclose the steps of recovering the applied composition, treating the recovered composition with peroxycarboxylic acid and reapplying it to the poultry. Thus, although both documents (2) and (3) aim at the same objective as the claimed invention, namely the reduction of microbial growth in food processing, document (2) has less relevant technical features in common with the claimed invention than document (3).

Thus, the Board, in accordance with the Appellant, considers that document (3) represents the closest prior art and hence takes it as the starting point for assessing inventive step.

4.4 In view of this state of the art, the problem to be solved by the present invention was the provision of an alternative method for reducing microbial population on poultry during processing.

4.5 The Appellant argued during oral proceedings that the claimed method was more effective against microbial growth and avoided cross contamination. It was also more economic in that wash waters are reused and the recycling step is simpler, thereby lowering the production costs. Finally it was less critical for the outward appearance and later consumption of the treated poultry. However, in the absence of any evidence in support of its assertions, the Appellant's arguments are not considered convincing.

4.5.1 Concerning the alleged improved efficacy, the data in column 9, lines 60-65 of document (3) cannot be directly compared with the data according to the test report provided by the Appellant as the details in the recovering, recycling and reapplication steps were not exactly the same. For example, according to document (3) additional cooling during poultry processing is provided to further reduce microbial growth. Furthermore, it is not apparent whether or not the amount of antimicrobial agent is the same. Concerning the issue of cross-contamination, it is to be remarked that the method of document (3) also aims at avoiding cross contamination (column 7, lines 51-56, column 14, lines 3-6 and 45-49) and the Appellant has not provided any evidence that the presently claimed method has any advantages over the prior art in this respect.

4.5.2 With regard to lowering the production costs by reusing the wash water there can be no difference between the claimed method and the prior art method, since document (3) also reuses and reapplies the wash waters thereby lowering the production costs (document (3) column 15, lines 13-16).

4.5.3 Neither is it apparent that the recycling method according to claim 1 of the main request is simplified compared to the recycling method according to document (3). In the latter the water to be reapplied is first treated with ozone, which is an antimicrobial agent, and after filtration is further treated by exposure to ultraviolet light and addition of chlorine, which according to the Appellant represents a critical component. The presently claimed method by using the expression "comprising" does not exclude further treatment steps. This is also apparent in view of claims 18 or 19 of the main request referring to a further treatment step with UV light. Furthermore, in the absence of directly comparable data between peroxycarboxylic acid and ozone as antimicrobial agent, there is no evidence that the claimed method achieves a similar antimicrobial effect with fewer "treatment" steps and therefore simplifies the method according to document (3). [emphasis by the Board]

4.5.4 Evidence in support of the alleged advantages of the claimed method over document (3) with regard to the appearance or later consumption of the processed poultry has not been provided.

4.6 As the solution to the underlying technical problem as defined in point 4.4 above the patent application according to the main request proposes the use of a mixed peroxycarboxylic acid composition as antimicrobial agent during poultry processing and in the recycling step.

4.7 In view of the test report (document (6)) the Board is satisfied that the problem is solved.

4.8 It then remains to be decided whether or not the proposed solution is obvious in view of the cited prior art.

4.8.1 The highly industrialised processing of poultry from the initial washing of the birds via scalding, dress rinsing, inside-outside bird washing after evisceration, sanitizing rinsing, chilling to packaging requires large quantities of water. Recycling these process waters in order to reduce cost has therefore become a necessity for the poultry processing industry. However, since the process waters inevitably become contaminated with organic matter, like blood, tissue, grease etc., which provide an ideal ground for the growth of bacteria, the poultry processing industry in order to avoid the shut-down of production due to cross contamination and in order to guarantee that the poultry can be safely consumed is forced to make sure that the recycled water is safe to use. Thus, the process waters, before they can be recycled, are usually purified by treatment with strong oxidants, like ozone, as taught in the closest prior art, document (3). Other strong oxidants like chlorine, potassium permanganate or chlorine dioxide, optionally in the presence of strong acids, were also described as suitable antimicrobials in the treatment of process waters resulting from poultry processing plants before their reuse (document (4), column 3, lines 26-31). Neither document (3) nor document (4) mention peroxycarboxylic acid as being suitable for this purpose.

Thus, document (3) can neither alone nor in combination with document (4) render the claimed subject-matter obvious.

4.8.2 Document (1), which describes the use of antimicrobial compositions comprising peroxycarboxylic acids for the treatment of meat products, including poultry, is not concerned with the recycling and reuse of process waters. This fact has also been acknowledged in the contested decision and the document has not been further considered. Thus, document (1) cannot provide the skilled person with an incentive to replace ozone as the antimicrobial agent in the treatment of contaminated process waters by peroxycarboxylic acid mixtures.

4.8.3 The same conclusion can be drawn for document (2). As explained in point 3.2 above, example 8 of document (2) is merely a test example to demonstrate the suitability of peroxycarboxylic acid(s) as antimicrobial agent during poultry chilling. In fact, this disclosure is considered to be equivalent to the teaching of document (1). Accordingly, it can no more than document (1) provide the skilled person with an incentive to use peroxycarboxylic acid(s) instead of ozone as antimicrobial agent in the treatment of contaminated process waters.

4.9 For the reasons set out above the Board concludes that the subject-matter of the claims of the main request involves an inventive step within the meaning of Article 56 EPC.

4.10 In view of the outcome of the decision there is no need to consider the auxiliary requests 1 and 2.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Department of first instance with the order to grant a patent on the basis of the Main request submitted with letter dated 6 September 2010 and the description yet to be adapted.

This decision has European Case Law Identifier:  ECLI:EP:BA:2010:T198807.20101008. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Alternative Route (apparently)" by Mark Sykes obtained via Flickr.

Tuesday, November 18, 2014 T 0109/07 - Using the Problme-solution approach

The patent seems to cover an obvious embodiment according to the Problem-solution approach. The proprietor finds this unfair, since the prior art does not teach his broad idea and finds it inappropriate to use the problem-solution approach. The Board does not agree.

Summary of Facts and Submissions

I. European patent EP-B-1 104 493 was granted with 12 claims. The independent claims 1, 9 and 12 thereof read as follows :

"1. An electrodeposition bath, said electrodeposition bath comprising a resinous phase dispersed in an aqueous medium, said resinous phase comprising:

(a) an active hydrogen group-containing ionic electrodepositable resin, and

(b) a curing agent having functional groups reactive with the active hydrogen groups of (a),

comprising a lead-free electrodeposition bath containing at least one calcium compound selected from calcium acetate, calcium chloride, calcium formate, calcium nitrate, calcium oxalate, calcium molybdate, calcium titanate, calcium fluorosilicate and calcium carbonate present in an amount from about 10 parts per million to about 10,000 parts per million of total calcium and not more than about 200 parts per million soluble calcium, based on electrodeposition bath weight."

[…]

III. The opposition division relied inter alia on the following documents: […]

IV. The opposition division rejected the patentee's main request for amendments to the description because they did not meet the requirements of Rule 88 EPC and Article 123(2) EPC. However, the claims of the auxiliary request, which were identical with the claims as granted, were found to meet the requirements of sufficiency of disclosure, novelty and inventive step. In particular, the disclosure of the zinc/calcium/molybdate compound Moly-White 212 in E1 was not considered to be an unambiguous disclosure of calcium molybdate and/or calcium carbonate as required by the claim language. The opposition division also held that, starting from either document E6 or document E1 as closest prior art, there was no incentive in the prior art to use calcium compounds in the specified amounts in order to obtain electrodeposition baths having the balanced improved properties demonstrated by the opposed patent.

V. The appeal was filed with letter dated 11 January 2007; the statement of grounds of appeal was filed under

VI. The patentee's (respondent's) observations were received under cover of a letter dated 5 September 2007. Also submitted were claims 1 to 12 as a first auxiliary request.

Further submissions of the appellant were received with letters dated 4 July 2008 and 28 November 2008.

VII. Under cover of letter dated 22 April 2009, the respondent filed an amended set of claims as a first auxiliary request.

Claim 1 of the said auxiliary request differs from claim 1 of the main request in that the term "calcium molybdate" is deleted from the claim.

VIII. The following new documents were submitted during the appeal proceedings: […]

IX. The arguments of the appellant may be summarised as follows:

[…]

X. The arguments of the respondent may be summarised as follows:

[…]

Inventive step

The invention related to the effect of insoluble and soluble calcium on corrosion inhibition and appearance. The problem consisted in providing an electrodeposition bath that resulted in an improved balance of appearance and corrosion resistance. The prior art exclusively dealt with the effect of the anion, for example molybdate and chromate, on corrosion inhibition. Calcium was only disclosed in the prior art as a suitable counter-ion. It was not suggested that calcium in itself had a corrosion-inhibiting effect. Furthermore, the claimed limits of total and soluble calcium required for obtaining a balance of corrosion-inhibiting effect and appearance were not derivable from the prior art.

XI. Requests

The appellant requested that the decision under appeal be set aside and that the European patent be revoked.

The respondent requested that the appeal be dismissed, or, in the alternative, that the decision under appeal be set aside and the patent be maintained on the basis of the claims 1 to 12 filed with letter dated 22 April 2009 as a first auxiliary request.

Reasons for the Decision

1. Amendments (auxiliary request) […]

2. Objections under Article 100(b) EPC

[…]

3. Novelty (main request, auxiliary request)

3.1 The appellant cited document E1, in particular example 3 thereof, as novelty destroying for the subject matter of the respective claims 1 of the main request and the auxiliary request.

[…]

The board, having examined the remaining prior art documents, concludes that claim 1 of the main request satisfies the requirements of Article 54 EPC.

The same applies to process claim 9 and product-by-process claim 12, which refer directly or indirectly back to claim 1, and to the dependent claims 2 to 9, 10 and 11.

3.3 Claims 1 to 12 of the (first) auxiliary request are narrower in scope than the respective claims of the main request and are therefore novel for the same reasons as those given in respect of the main request.

4. Inventive step

4.1 Main request

4.1.1 The opposed patent concerns electrodeposition baths for the coating of metallic substrates.

The baths comprise a resinous phase, which consists of an electrodepositable resin and a curing agent, the resinous phase being dispersed in an aqueous medium, and a corrosion inhibitor selected from at least one calcium compound selected from calcium acetate, calcium chloride, calcium formate, calcium nitrate, calcium oxalate, calcium titanate, calcium fluorosilicate and calcium carbonate, present in amounts as stated in the claim.

4.1.2 The board considers that the most relevant prior art is to be found in documents dealing with electrophoretic coating compositions containing similar corrosion inhibitors, for instance E6.

Document E6 discloses an electrophoretic coating composition comprising an aqueous medium having dispersed therein a polycarboxylic acid binder resin and a sparingly soluble alkaline earth metal molybdate, preferably calcium molybdate. E6 reports that the alkaline earth metal molybdate has a rust-inhibiting effect equally excellent as chromic acid salts. According to example 3, calcium molybdate is employed in an amount of 1.2 parts per 100 parts of aqueous dispersion. See E6, abstract, column 1, lines 8 to 11; column 2, lines 2 to 6; column 2, lines 26 to 43; example 3; columns 5 and 6, Table 1; and claim 1.

The resin component according to E6 is self-hardening.

4.1.3 The next step in assessing inventive step is to define the problem underlying the patent in suit in the light of E6.

According to the patent in suit an objective of the invention was to provide lead-free electrodeposition baths which provide improved corrosion resistance of the electrocoated metal substrates, especially untreated steel (page 2, paragraph [0006]). However, since there is no evidence on file showing an improvement in corrosion resistance between the examples of the invention and examples according to E6, the problem to be solved has to be reformulated in less ambitious terms.

4.1.4 The technical problem underlying the patent in suit in the light of E6 may thus be seen in the provision of an alternative electrodeposition bath.

4.1.5 As a solution to this problem, the patent in suit proposes an electrodeposition bath according to claim 1 of the main request, characterised in that it comprises a resinous phase which contains

(a) an active hydrogen group-containing ionic electrodepositable resin, and

(b) a separate curing agent having functional groups reactive with the active hydrogen groups of (a).

4.1.6 The next step is to verify whether the problem has actually been solved.

Invention examples 1 to 5 of the patent in suit illustrate electrodeposition bath compositions containing soluble calcium compounds, whereas those of invention examples 9 and 10 to 15 contain insoluble calcium compounds. According to the invention, certain calcium compounds selected from the list recited in claim 1 and present in an amount indicated in the claim calculated as total calcium and soluble calcium and contained in an electrodeposition bath composition exhibit a corrosion-inhibiting effect. The opposed patent contains undisputed experimental evidence that the calcium compounds effectively reduce corrosion of untreated cold rolled steel panels coated with the claimed electrodeposition bath composition, measured as a reduced "scribe creep" after a salt spray test carried out in accordance with ASTM B117. At the same time, the visual appearance of the coated panels according to the invention, evaluated in terms of surface roughness and pinholing, was rated from the upper range of from 7 to 10 (10 = no defects; 0 = rough and pinholed). It was thus comparable to results obtainable with conventional electrodeposition bath compositions containing for instance the conventional corrosion inhibitor calcium molybdate (see Tables 1, 2 and 3).

In view of this evidence, the board is satisfied that the technical problem is successfully solved over the whole range claimed.

4.1.7 It remains to be decided whether the proposed technical solution is obvious in view of the prior art.

The electrophoretic resins according to E6 comprise a resin component which is self-hardening. The question arises whether it was obvious to replace a self-hardening resin by a resin hardening with a curing agent (b).

Electrodeposition resins comprising a separate curing agent, as opposed to self-hardening resins, are per se known in the pertinent art (see E1, E8). The respondent has admitted during oral proceedings that it is not per se inventive to replace a self-hardening resin by a resin hardening by addition of a curing agent. Further, the use of calcium molybdate as corrosion inhibitor with a polycarboxylic acid binder was known from E6 (example 3, claim 1). There is no evidence in the patent in suit that the calcium molybdate corrosion inhibitor interacts in some specific and surprising way with electrophoretic resins which contain a separate curing agent, as opposed to self-hardening resins.

4.1.8 The respondent argued that the invention resided in the teaching that calcium (rather than calcium molybdate) was corrosion-inhibiting. This teaching was not suggested by the prior art. Therefore, the well-known problem-solution approach for assessing inventive step had reached its limits and should not be applied in this particular case, or should at least be applied differently, in order to do justice to the achievements of the invention.

The board cannot accept this argument. The respondent's reasoning implies that following the problem-solution approach one would disregard a positive aspect of the invention counting in favour of the presence of an inventive step. However, neither the determining of the closest prior art nor the definition of the problem underlying the patent in suit in the light of E6 eliminate any aspects of the invention regarding soluble and insoluble calcium compounds or calcium pigments. When assessing inventive step, document E6 cannot be ignored, as it discloses the same calcium molybdate corrosion inhibitor as the patent in suit.

Even if the gist of the invention was in the discovery of the corrosion-protective activity of calcium in electrodeposition baths, the claims of the main request encompass the embodiment of an electrodeposition bath which comprises a conventional resin composition and the well-known corrosion inhibitor "calcium molybdate" in a conventional amount of from 10 to 10 000 ppm. It is this particular embodiment which renders the claimed subject matter obvious, for the reasons discussed under point 4.1.7.

The board also sees no peculiarity in the present case to justify not relying on the well-tried and proven problem-solution approach for assessing inventive step.

4.1.9 Therefore, the subject matter of claim 1 of the main request lacks an inventive step and the main request must be rejected.

4.2 Auxiliary request

4.2.1 Claim 1 of the auxiliary request differs from claim 1 of the main request in that calcium molybdate no longer appears in the list of calcium compounds.

4.2.2 The reasoning under points 4.1.1. to 4.1.5 (closest prior art, technical problem, technical solution) applies mutatis mutandis to the subject matter of claim 1 of the auxiliary request.

4.2.3 Hence, as a solution to the technical problem (4.1.4), the patent in suit proposes an electrodeposition bath according to claim 1 of the auxiliary request, characterised in that it comprises a resinous phase which contains (a) an active hydrogen group-containing ionic electrodepositable resin, and (b) a separate curing agent having functional groups reactive with the active hydrogen groups of (a), and a calcium compound selected from the list of claim 1.

4.2.4 It remains to be decided whether the proposed solution is obvious having regard to the prior art.

The corrosion-protective effect of calcium molybdate, known from documents E6 and E1 and exploited in the commercial product Moly-White 212, has generally been attributed in the prior art to the molybdate (MO3) - moiety, not to the calcium counter-ion. This may be immediately seen from the facts that document E6 advocates the use of any sparingly soluble alkaline earth molybdate, in particular of strontium and calcium molybdate, and that no particular preference is given to calcium over strontium as a counter-ion.

Document E9 discloses poly(arylenesulfide) (PAS) resin compositions showing little tendency to cause metal corrosion and comprising a corrosion inhibitor selected from molybdenum, oxoacids of Mo, sodium, potassium and strontium salts of ortho- and isopolymolybdic acid, basic calcium molybdates and others (see claim 1). Preferred corrosion inhibitors are basic zinc molybdate, basic zinc calcium molybdate and basic zinc molybdate phosphate (claim 3; example 6, Table 7). The skilled person derives from E9 that apparently the passivating activity is borne by the molybdenum containing moiety and not by the calcium counter-ion.

There is also no indication in the art that any other calcium compound not containing the molybdate moiety could be useful as a corrosion-inhibitor in an electrodeposition bath. Document E7, page 10, line 23 to page 11, line 30, discloses, as examples of passivators in anticorrosive paint compositions, molybdates, vanadates, chromates, stannates, manganates, titanates, phosphomolybdates and phosphovanadates, preferably in the form of salts of a divalent metal, such as zinc, calcium, manganese, magnesium, barium and strontium. Here, too, the passivating activity is attributed to the anion, not to the cation or in particular to the calcium ion.

[…]

In summary, there is no suggestion in the prior art that the calcium compounds listed in claim 1 of the auxiliary request exhibit a corrosion-protective effect in an electrodeposition bath.

[…]

4.2.6 For these reasons, the subject matter of claim 1 of the auxiliary request involves an inventive step.

The same applies to independent method claim 9 which refers back to claim 1 and to independent claim 12, referring back to claim 9.

Dependent claims 2 to 8, 10 and 11 define particular embodiments of the inventive compositions and methods and are therefore also patentable.

The requirements of Article 56 EPC are thus met for the claims of the auxiliary request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent in amended form on the basis of claims 1 to 12 filed with letter dated 22 April 2009 as a first auxiliary request, and a description to be adapted.

This decision has European Case Law Identifier ECLI:EP:BA:2010:T010907.20100715.The decision can be found here The file wrapper can be found here. Photo by David Hayward obtained via Flickr (unchanged).