T 2463/22 - (III) Public prior use as CPA

Key points

• "The appellants [opponents] argued that product 5 was a suitable starting point for assessing inventive step of the subject-matter of claim 1 and referred to case law in which prior uses constituted the closest prior art, for instance, T 1464/05 (Reasons 5.2) and T 1054/18 (Reasons 4.2)."
• Product 5 is: "The prior uses referred to by appellant 1, in particular the prior use of product 5 (Pektin Classic CM 203, lot number 0 05 11 114, sold to Condio GmbH in January 2006) "
• "Product 5 concerns a sample from a lot of a powder mix of pectin and dextrose produced and marketed under the name "Pektin Classic CM 203" by appellant 1, Herbstreith & Fox GmbH & Co. KG (in the following, Herbstreith & Fox or the manufacturer). The lot number in question is 0 05 11 114."
• The Board: " There is sometimes reluctance in the case law of the EPO to treat an object of a prior use as the closest prior art in an assessment of obviousness. Often, neither the technical context of such an object nor how it was produced is disclosed. In such a situation, there is neither information on what the object does and what properties it has in the technical environment in which it is applied nor on how the process for its manufacture could be modified. These considerations indeed speak against regarding a prior use as a suitable starting point for assessing inventive step."
• As a comment, I think the remark about "neither the technical context of such an object nor how it was produced is disclosed" is mostly applicable to chemical substances, which could be seen as e.g. just a white powder on their own. It seems less relevant to a public prior use of an apparatus, e.g. of a bike or chair.
• The Board: "However, in the case in hand, the skilled person would face a different situation. They would know the property that the powder mix of product 5 is soluble in cold water and would also consider processing the powder mix further. The product specification of Pektin Classic CM 203 (D80) discloses that the product is used as a protein protective colloid in thermally treated sour milk drinks. Such a product is used during the manufacturing of drinks and is added while the drink is still cold. The pectin is used to protect the milk protein during the heating step that follows."
• Indeed, the powder was sold with a label, "Pektin Classic CM 203", and that provides additional information. 
• "The parties agree that there is no information in product 5 on the particle size of the pectin. Thus, the subject-matter of claim 1 differs from product 5 in the particle size of the pectin."
• Well, we don't know if the particle size in product 5 is outside the range (150 mym or less) defined in claim 1, i.e. if it "differs". On the other hand, the objective technical problem is not "reducing to practice" the teaching of a document which leaves the particle size open, either. 
• The Board finds the choice of the particle size to be obvious. The Board carefully establishes that "solubility in cold water is a known, observed property of product 5. In other words, the skilled person would be aware of what the powder mix does when put in the technical environment of its intended purpose: the powder is soluble in cold water."
• The Board finds that using a particle size in the claimed range was obvious to solve the objective technical problem of "to provide a powder mix comprising pectin that easily dissolves in cold water".

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222463eu1