- In the present case, the opponent argued essentially that the achieved technical effect was a mere bonus effect of an otherwise obvious combination, and therefore could not contribute to inventive step.
- The Board does not agree. " It is established jurisprudence that the patent proprietor (...) can rely on a technical effect in formulating the objective technical problem, if it is proven to have been credibly obtained by the distinguishing feature(s). Only if this is not the case can the problem be reformulated in a less ambitious way as the provision of an alternative. Arguing the other way round, like the [opponent], and saying that the provision of an alternative is obvious and that therefore any effect has to be disregarded as being a mere bonus effect, would turn the problem-and-solution approach on its head, and thus is not permissible. The cited decision T 936/96 is not relevant; it concerns a different question, namely whether, starting from a technical problem defined in the patent, an additional problem invoked by the proprietor and based on new experimental evidence qualifies merely as a bonus effect."
- As a comment, the Guidelines state that : "However, if, having regard to the state of the art, it would already have been obvious for a skilled person to arrive at something falling within the terms of a claim, for example due to a lack of alternatives thereby creating a "one-way street" situation, the unexpected effect is merely a bonus effect which does not confer inventiveness on the claimed subject-matter (see T 231/97 and T 192/82). " (GL G-VII 10.2)
EPO T 0377/14 - link
As set out above, E2 does not disclose the feature of claim 1 of a multilayer polymeric material, produced as a blown film with no subsequent lamination step, in combination with the thickness required by this claim.
2.1.2 The respondent explained that the objective problem to be solved in view of E2 was the reduction of distortions created in the longitudinal weld or join during the welding process.
2.1.3 As a solution to this problem, the invention proposes the collapsible tube container of claim 1 with a side wall formed from a multilayer polymeric material, the side wall comprising a longitudinal weld or join and the multilayer polymeric material having a thickness of between 150 and 350 microns, characterised in that the multilayer polymeric material is produced as a blown film with no subsequent lamination step.
As explained by the respondent, in sheet coextrusion through a slot die the material to be extruded expands, and molecules are thereby oriented, exclusively in the direction in which the material is pushed through the slot die. Hence, there is orientation mainly only in one direction, namely the machine direction. Upon cooling, this orientation is locked. Upon subsequent reheating during welding of the sheet into a container, the molecular orientations relax and revert to their original shape. Thereby, on a macroscopic level, a stress in one direction is created that distorts the weld or join of the container.
In contrast to sheet coextrusion, in blown film coextrusion the material to be extruded is not only pushed through the die (in this case annular) and thus oriented in the machine direction but is additionally blown and thus expanded and oriented in directions perpendicular to the machine direction. Thereby, a high entropic state is created in which molecules are oriented in various different directions. When the sheet is reheated during welding, relaxation accordingly occurs in many different directions, thereby creating stresses that partly offset each other. On a macroscopic level, there will therefore be less stress and thus less distortion.
It is therefore credible that the problem of reducing distortions created in the longitudinal weld or join during the welding process is indeed solved. This thus constitutes the objective technical problem.
2.1.5 The appellant argued that this problem was not disclosed in the patent and thus could not be taken into account for inventive step.
The board does not agree. The patent (page 2, lines 49 to 53 and page 4, lines 48 to 54) explicitly refers to the processing of a multilayer material with different individualised molecular orientation profiles and stress patterns to form a collapsible tube container. It mentions the problem that some of these orientation profiles or stresses are relieved during processing, causing distortion which detrimentally affects the forming of the tube. The resulting tubes can suffer from ovality and other distortions, which can ultimately compromise the structural integrity of the tube. The same disclosure is present on page 3, lines 15 to 20 and page 9, lines 5 to 15 of the application as filed.
The present problem of reducing distortions created in the longitudinal weld or join during the welding process is thus at the very least derivable from the application as filed. In this connection, the problem does not have to be explicitly disclosed in the application as filed; it suffices if it is foreshadowed therein (T 344/89, point 5.3.1).
2.1.6 The appellant furthermore argued that the objective technical problem was just the provision of an alternative way of producing the multilayer polymeric material to be used to form the container. A skilled person having blown film coextrusion equipment at his disposal would aim to operate it at full capacity. When looking for an alternative method of production, he would therefore use his blown film coextrusion equipment and would thus arrive at the claimed subject-manner in an obvious way. The problem referred to by the respondent and the effect related thereto (reduction of distortions) was an additional problem that constituted a mere bonus effect. This problem should therefore not be taken into account. The appellant referred in this respect to T 936/96.
The board does not agree with the appellant's argument. It is established jurisprudence that the patent proprietor (in the present case the respondent) can rely on a technical effect in formulating the objective technical problem, if it is proven to have been credibly obtained by the distinguishing feature(s). Only if this is not the case can the problem be reformulated in a less ambitious way as the provision of an alternative. Arguing the other way round, like the appellant in the present case, and saying that the provision of an alternative is obvious and that therefore any effect has to be disregarded as being a mere bonus effect, would turn the problem-and-solution approach on its head, and thus is not permissible. The cited decision T 936/96 is not relevant; it concerns a different question, namely whether, starting from a technical problem defined in the patent, an additional problem invoked by the proprietor and based on new experimental evidence qualifies merely as a bonus effect.
2.1.7 Since the appellant's arguments are thus not convincing, the objective technical problem remains reducing distortions created in the longitudinal weld or join during the welding process.
The reasoning seems to be strange because on the one hand, the Guidelines are cited which exactly say that if a "one-way street"-situation is present, i.e. the skilled person must have "walked this way" in an obvious manner, any advantage connected to the result is to be disregarded because it is a "bonus" of a path having been obvious.
ReplyDeleteOn the other hand, the BoA says this approach would turn the problem-and-solution approach upside down and is thus inadmissible. I do not think that the approach is inadmissibe just because the problem-and-solution-approach has to be disregarded in this case. Moreover, if the reasoning of the BoA followed, the Guidelines would have to be amended because they are obviously wrong.
The decision of the BoA also seems to be a bit at odds with the 1. headnote of T 21/81.
Thanks for the very first comment on this weblog. The reference to the Guidelines in the third bullet of " key points" was my own addition. I have clarified this (and added a closing quotation mark). I agree that there is a tension between this decision and the Guidelines.
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