T 2114/16 - Comparative example no CPA

Key points

• The opponent's assert that comparative example 2 of E22 is the closest prior art. The Board does not agree.
• “Thus, comparative example 2 [of E22] is disclosed to illustrate the poor bond strength obtained in the absence of the filler-NFC-CP mixture flocculation step, which is proposed in document E22 as the solution to improve paper strength despite the presence of fillers.
  It is not apparent for the Board why the skilled person would select the most disadvantageous starting point (having the lowest internal bond strength) for the purpose of solving the technical problem of increasing the mechanical strength of paper. ”
• “As correctly pointed out by the respondent, an inventive step objection based on selecting such a clearly disadvantageous starting point would necessarily be contaminated by hindsight, since this choice could only be motivated by the previous knowledge of the claimed invention”

EPO T 2114/16 -  link

Comparative example 2 of E22 discloses a method wherein filler, NFC and CP are sequentially added in this order to a fibre pulp slurry. As argued by the respondent [patentee] , the results presented in table 1 on page 12 of E22 indicate that this method gives rise to the worst outcome among all of the tested alternatives in terms of internal bond strength. Thus, comparative example 2 is disclosed to illustrate the poor bond strength obtained in the absence of the filler-NFC-CP mixture flocculation step, which is proposed in document E22 as the solution to improve paper strength despite the presence of fillers. It is not apparent for the Board why the skilled person would select the most disadvantageous starting point (having the lowest internal bond strength) for the purpose of solving the technical problem of increasing the mechanical strength of paper. As correctly pointed out by the respondent, an inventive step objection based on selecting such a clearly disadvantageous starting point would necessarily be contaminated by hindsight, since this choice could only be motivated by the previous knowledge of the claimed invention (in line with e.g. reasons 3.1 of T 1307/12).