Key points
- " According to the case law (Case Law, supra, I.D.3.2) ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving. The aim thereof is that the assessment process should start from a situation as close as possible in reality to that encountered by the inventor, avoiding ex post facto considerations."
- " The Board's position is that the skilled person with a prospect of achieving the goals addressed in the patent in suit would need a valid reason to return to the teaching of D11 [published in 1977] and disregard the evolution in technology in the present field over the past twenty seven years, i.e. since the publication of D11, which evolution of technology is illustrated by the teaching of D7 and the background art depicted in both that document and the patent in suit.
- Although as a matter of principle there is no prohibition to disregard evolution in technology and come back to an older state of the art when selecting the starting point for assessing inventive step, a decision concerning which starting point is appropriate to analyse inventive step requires in such a case to carefully consider both the goals addressed in the patent under examination and the disclosure of said older state of the art, in the present case D11."
" For a realistic and objective approach, inventive step has be considered from the skilled person's perspective at the date of filing of the patent in suit taking into account realistic goals to be achieved for the subject-matter claimed as they appear from the application documents as a whole. Faced with said goals, the notional skilled person would have the natural tendency to consider recent development in the technology of concern, unless said goals or some of them had already been addressed in a more ancient prior art, in which case said older prior art has also to be considered for an assessment of inventive step, since a claimed invention must be shown to be inventive in the light of the prior art as a whole."
" For a realistic and objective approach, inventive step has be considered from the skilled person's perspective at the date of filing of the patent in suit taking into account realistic goals to be achieved for the subject-matter claimed as they appear from the application documents as a whole. Faced with said goals, the notional skilled person would have the natural tendency to consider recent development in the technology of concern, unless said goals or some of them had already been addressed in a more ancient prior art, in which case said older prior art has also to be considered for an assessment of inventive step, since a claimed invention must be shown to be inventive in the light of the prior art as a whole."
" Under these circumstances Example 5 of D11, whose choice as closest prior art mainly relies on the similarity of structural features of that example with operative claim 1 as far as features (a) and (b) are concerned, does not constitute a realistic starting point for the present invention. On that basis, the reasoning on inventive step starting from Example 5 of D11 as the closest prior art which led to the revocation of the patent in suit and which was pursued by respondent 2 cannot convince as it lacks the required objectivity. The same reasoning also applies to Example 3 of D11 which is also proposed as possible closest prior art by respondent 2."
The Board remits the case.
"The various issues necessitated for an analysis of inventive step starting from D7 as the closest prior art, among others the assessment of the objective problem solved in the light of experimental report D15 and the obviousness of the solution, in particular in the light of D16, D17 and D18 (see pages 6 to 8 of letter of 29 March 2018 of respondent 2, to which it is expressly referred to in point 2.3 of respondent 2's rejoinder), were however not dealt with in the contested decision, nor were those issues discussed during the oral proceedings. This is confirmed by the fact that, since inventive step starting from D7 was not part of the decision, documents D16 to D18 were not admitted for the single reason that they were not relevant to the decision (point 3 of the reasons, last sentence). This situation is seen by the Board to constitute "special reasons" within the meaning of Article 11 RPBA 2020 to remit the case for further prosecution to the department whose decision was appealed."
The decision seems remarkable to me. There is some case law saying that a claim should be obvious having regard to any prior art. As I understand it, Example 5 of D11 teaches a composition having features A and B of claim 1, feature C is optional (0 to 60 wt.% inorganic filler) and feature D (0.5 -8 wt.% of at least one synergist selected from a group including boehmite) was found to be obvious by the OD because D7 teaches the addition of boehmite. After reading the Board's decision, I can't find any reasoning why feature D was not an obvious modification of D11. However, that's possible not the same as a lack of inventive step, because an important consideration for composition claims is that in a way every chemical composition is non-functional outside its intended field of use. Inventive step of composition claims is to be acknowledged on the basis of the technical effect(s) achieved when the composition is put to its intended use (cf. BGH 27.02.1969 X ZB 11/98 Disiloxan; link to open access full text at Kluwer).
On the other hand, we should always strive for a "realistic and objective approach" to the inventive step rather than a mechanical one.
Application filed in 2004, grant in 2016, opposition procedure finished just in the 18th patent year.
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