T 0014/17 - The CPA for product claims

 Key points

• How to select the closest prior art, in particular for product claims?
• “A central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the invention. If this purpose is not explicitly set out or cannot be inferred from the claims, the question to be answered is what, in the light of the application or patent as a whole, is to be achieved by the claimed invention.”
• Claim 2 is directed to “A water soluble package comprising a polymeric film, the polymeric film comprising a polymeric backbone derived from a polymer which is ...”
• The opponent argued that for the selection of the CPA, it was important that “Claim 2 did not require the package to contain a composition, such as a rinsing composition. Nor did it specify that the package had to be used in a specific manner, for example exposing it to anionic/non-ionic surfactants. D1, disclosing a package having a composition more similar to the claimed one [than D2], and more likely to have similar dissolution properties, should have been selected as the closest prior art.”
• The Board: “As decided by the opposition division, D2 is the closest prior art. It is the only document addressing, in the same way as the patent in suit, the problem of providing a package which delays the release of its content during a wash cycle and in particular which releases a fabric softener during the rinse phase of a washing process”

T 0014/17
https://www.epo.org/law-practice/case-law-appeals/recent/t170014eu1.html

3. Inventive step

3.1 As decided by the opposition division, D2 is the closest prior art. It is the only document addressing, in the same way as the patent in suit, the problem of providing a package which delays the release of its content during a wash cycle and in particular which releases a fabric softener during the rinse phase of a washing process: see page 2, lines 19 to 24 and 47 to 51, and page 3, lines 3 to 8.

3.2 The respondent [opponent] argued that the choice of D2 as the closest prior art was wrong, because the selection took into account "the problem allegedly solved by the opposed patent as a whole" rather than the product of claim 2 as such. Claim 2 did not require the package to contain a composition, such as a rinsing composition. Nor did it specify that the package had to be used in a specific manner, for example exposing it to anionic/non-ionic surfactants. D1, disclosing a package having a composition more similar to the claimed one, and more likely to have similar dissolution properties, should have been selected as the closest prior art.

3.3 This argument is not convincing. A central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the invention. If this purpose is not explicitly set out or cannot be inferred from the claims, the question to be answered is what, in the light of the application or patent as a whole, is to be achieved by the claimed invention.

3.4 Reading the patent in suit, it is immediately apparent that the purpose of the invention is to provide a package suitable to deliver a fabric softener during a washing process: see paragraphs [0002] to [0004] and [0035] to [0036]. Furthermore, the fabric softener is to be delivered only during the rinse cycle of the washing process: see paragraphs [0038] to [0041] and [0048]. This concept is reiterated consistently in other parts of the patent. It is also reflected in the idea of using a film dissolving more easily in water, which is used for rinsing, than in solutions of anionic/non-ionic surfactants, which are used for washing. The fact that the claimed package could dissolve in water before the addition of a surfactant is irrelevant. This is because the washing process can be carried out in a manner that prevents this from happening, e.g. in a washing machine programmed so that the package is added during the washing cycle, when detergent is present.

3.5 D1 does not aim at this purpose. It discloses a dispenser comprising a pouch containing a powder detergent: see column 1, lines 11 to 19, and claim 1. The dispenser is intended to release the detergent during the washing cycle rather than to delay its release until a rinse cycle. Thus, D1 is not the closest prior art. Similar considerations apply to D3. Insofar as the films of D3 are used in washing methods, they are intended to deliver detergents: see page 3, lines 1 to 3.