Key points
- The Board, on the admissibility of documents filed by the proprietor/appellant (namely, experimental reports): (untranslated) "Die diesbezüglichen Argumente der Beschwerdegegnerin betreffen eher die Frage, ob der Vortrag der Beschwerdeführerin überzeugend ist oder nicht, als die Frage der Zulassung. Die tatsächliche Offensichtlichkeit des angeblichen Fehlers und dessen Berichtigung sowie die wiederholten Fehler in den Angaben der Beschwerdeführerin im erstinstanzlichen Verfahren sind für die Frage der Zulassung der Eingabe der Beschwerdeführerin gemäß Artikel 13 (1) und 13 (2) VOBK 2020 nicht relevant."
- "Die Kammer ist daher der Auffassung, dass der Fachmann tatsächlich die Wasserangabe in D25 als einen offensichtlichen Fehler, dessen Berichtigung ebenfalls offensichtlich sei, betrachten würde."
- So, obvious errors in the experimental report D25 were no factor in the admissibility of the experimental report under Art. 13(1) RPBA.
- The patent is about a cosmetic formulation with cellulose particles having a certain size, wherein the particles are derived from vegetable cellulose.
- On the credibility of the technical effect: (in translation) "The respondent [opponent] also argued during the oral hearing that the granted claim 1 was broadly worded. In particular, particles of different sizes and cellulose from a very wide variety of sources are claimed. Any woody plant would actually be suitable as a source according to claim 1. In contrast to this variety of claimed particles, only one type of particle was tested in D25, namely "Ultrafine Cellulose Arbocel M8". A single example is therefore not sufficient to make the alleged effect credible for the entire breadth of claim 1".
- "[The proprietor] replied that bacterial, fermentatively produced celluloses such as those from Example 2 of D11 would have a fibrillar ... structure. The fibrils would then form MCC-like networks. In contrast, native celluloses obtained from plant fibers would have a cross-linked structure. Thus, the claimed celluloses would have a uniform structure that would distinguish them from bacterial celluloses and MCC."
- The Board considers the technical effect credible over the whole scope of the claim.
- The Board also considers the subject matter inventive. "The objective technical task based on D11 is accordingly to provide another cosmetic formulation containing glycerin and cellulose with improved sensory properties when distributed on the skin"
- "None of the documents D1, D3, D7, D14 or D19 cited by the respondent indicate replacing the cellulose component from D11 with native cellulose obtained from plant fibers in order to improve the sensory properties when distributed on the skin. The respondent did not raise any argument regarding evidence of such an improvement in the prior art. "
- The Board formulates the objective technical problem as: "Die objektive technische Aufgabe ausgehend von D11 besteht dementsprechend in der Bereitstellung einer weiteren Glycerin- und Cellulose-haltigen kosmetischen Formulierung mit verbesserter Sensorik beim Verteilen auf der Haut."
- I find this a bit curious because the provision of alternatives is usually used as the objective technical problem if there is no improvement. However, I've not studied the decision in great detail on this point.
- EPO
1. Admission of new evidence and arguments
1.1 Since the present reasons for the decision do not rely on documents D26 to D28 and D29, and the submission of June 29, 2023, insofar as it refers to D29, the question of the admission of these documents and the corresponding submissions is not relevant to the present decision relevant.
1.2 The remaining submission from June 29, 2023 relates to the weight percentages specified in D25 and the assessment of the comparative test in D25 (see written statement of June 29, 2023, page 1, last paragraph, and page 2, first and second paragraph). As mentioned by the complainant in its written submission dated June 29, 2023, this submission is a direct and appropriate response to the questions raised in the preliminary opinion (see points 3.2.5 to 3.2.7 a) of the preliminary opinion). The raising of some new questions in the preliminary opinion of the Board of Appeal (in particular point 3.2.7 of the preliminary opinion) constitutes exceptional circumstances within the meaning of Article 13 (2) RPBA. Furthermore, the submission does not contain any submissions that are considered complex can.
The respondent's arguments in this regard relate more to the question of whether the complainant's presentation is convincing or not than to the question of admission. The actual obviousness of the alleged error and its correction as well as the repeated errors in the complainant's statements in the first instance proceedings are not relevant to the question of whether the complainant's submission was admitted in accordance with Articles 13 (1) and 13 (2) RPBA 2020.
The remaining submission from June 29, 2023 (see written statement of June 29, 2023, page 1, last paragraph and page 2, first and second paragraphs) is therefore admitted into the procedure (Articles 13 (1) and 13 (2) RPBA 2020).
[...]
3. Inventive step
3.1 Closest state of the art
3.1.1 The patent concerns a cosmetic emulsion containing glycerin and solid particles of a certain particle size. These solid particles contain at least 95% by weight of cellulose obtained from plant fibers. This emulsion is said to be stable and to have improved sensory properties when applied to the skin (see paragraphs [0003], [0004], [0006] to [0008] of the patent).
3.1.2 Both parties considered D11, Example 2 to be the closest prior art. The Chamber sees no reason to deviate from this.
3.1.3 D11 refers to emulsions that contain fibrillar cellulose as stabilizing agents instead of emulsifiers. The description of the fibrillar cellulose particles used (see paragraphs [0014] to [0021]) generally includes the particles claimed in the patent in dispute. Example 2 describes a stable cosmetic emulsion which contains 5% by weight of glycerin, 10% by weight of apricot kernel oil and, as particles, 1.7% by weight of cellulose microfibrils and 0.3% by weight of carboxymethyl cellulose (CMC).
3.2 Difference and effect
3.2.1 It was undisputed that the patent formulation differs from the formulation from Example 2 of D11 in the type of cellulose particles. Instead of the microfibrillar cellulose particles (5-40 mym length and 0.002-1 mym diameter) mixed with CMC from D11, the claimed formulation contains solid particles with an average size of 3-15 mym containing at least 95% by weight of native plant fibers cellulose.
3.2.2 The parties did not agree on the resulting effect. According to the complainant, the patented formulations would have improved sensory properties when applied to the skin. This improved property is proven by the comparative test submitted as D25.
Consideration of the comparison test
3.2.3 The said attempted settlement (filed as D25 with the statement of grounds of appeal) was first filed in the opposition proceedings in February 2021, i.e. after the priority date of the patent. In the written procedure, the respondent mentioned the consideration of the subsequently published comparison attempt in connection with decision G 2/21.
3.2.4 The Chamber notes that achieving improved sensor technology was already disclosed as an objective in the original application (see pages 2 to 3). In addition, various sensory properties - including absorption, stickiness and oiliness - of claimed formulations were evaluated in comparison to formulations without cellulose or with MCC in the original examples (see Examples 1 to 4 of the original application). The effect reported in the subsequently published comparison test is therefore clearly covered by the technical teaching disclosed in the original application.
In the light of decision G 2/21, the board is therefore of the opinion that the subsequently published experiment (see D25) must be taken into account.
Meaning of the comparison test
3.2.5 The respondent argued that the comparison attempts submitted in the first instance proceedings (see comparison attempts in the complainant's letter of February 25, 2021 and February 26, 2021 and summary in D25) were not meaningful.
Comparative formulation 1 is not an accurate representation of the formulation disclosed in Example 2 of D11 because (i) the type of cellulose particles and (ii) the amount of water are different.
This difference between the Example 2 formulation of D11 and the comparison formulation (FU01/21-1) of D25 would be reflected in the different results reported in D11 and D25, respectively.
3.2.6 With regard to the type of cellulose particles used, the Board notes that the designation of the particles in Example 2 of D11 is not clear.
On the one hand, “cellulose microfibrils” are mentioned. The respondent seemed to view this as microfibrillar cellulose mechanically produced from plant cellulose fibers. On the other hand, the cellulose microfibrils in Example 2 of D11 are referred to as “Cellulon PC from Kelco” (emphasis added). Based on this designation, the complainant argued that the particles used were only the commercial product Cellulon**(TM) from CP Kelco (formerly a product of Weyerhaueser, see D24). This product consists of bacterial, fermentatively produced cellulose (see D19, D21 page 29 caption, D22 eg Introduction and D23 page 160, left column).
The board notes that there is no indication in D11 that the cellulose particles used (including the particles from Example 2) could not be bacterial particles (see in particular paragraph [0016]). In paragraph [0019] of D11, reference is only made to the product “Cellulon from Kelco” (instead of “Cellulon PC”) in connection with “cellulose fibrils” (and not “microfibrils”). Furthermore, there is no evidence that Kelco produces or has produced any cellulose other than the bacterial cellulose Cellulon**(TM). The Respondent further did not provide any evidence that "Cellulon PC" was actually a different product and how it could be obtained. Furthermore, according to D21 to D23, bacterial cellulose appears to have a fibrillar structure and merely have the same properties as microcrystalline cellulose (MCC) without having a true microcrystalline structure.
After weighing up the probabilities, the board is of the opinion that the product “Cellulon CP Kelco” used in the comparative test corresponds to the cellulose particles described in Example 2 of D11.
3.2.7 With regard to the different amounts of water, 73.7% by weight of water was used in the formulations of the comparative test (FU01/21-1 and FU01/21-2), while 76.7% by weight of water was used in the formulation of Example 2 of D11. water were used. Furthermore, due to these different amounts of water, the specified amounts of the various components of both formulations of the comparison test only add up to 97% by weight instead of 100% by weight. In this regard, the complainant stated that the water quantities were an obvious error. The amounts of water used would correspond to the amounts required to reach a total of 100% by weight.
The Board notes that the reference in D25 to "the formulation of Example 2 of D11 FU01/21-1" (emphasis added) establishes a direct identity link between the formulation FU01/21-1 in D25 and the formulation of Example 2 of D1 . The Board is therefore of the opinion that the skilled person would in fact regard the water information in D25 as an obvious error, which would also be obvious to correct.
Regardless of this, the formulation according to the invention (FU01/21-2) in the comparison test contains the same amount of water as the comparison formulation (FU01/21-1), so that both formulations differ exclusively in the distinguishing feature, ie the type of cellulose particles.
3.2.8 The respondent's argument regarding a different homogeneity of the formulations described in Example 2 of D11 and in the comparative test is not convincing. The comparison formulation of D25 is described as "white, homogeneous", which actually corresponds to the homogeneity of the formulation from Example 2 of D11 as claimed by the respondent. As the complainant explained during the oral hearing, phase separation of the comparison formulation only occurs when it is applied to the skin. This property was not evaluated in Example 2 of D11.
Furthermore, contrary to the respondent's opinion, the results obtained in Example 2 of D11 and in the comparative test (see D25) do not contradict each other. D11 simply states that the cream is well tolerated even by sensitive skin. The sensory properties of distributing the cream on the skin are not described. In the comparison test, however, the slipperiness during distribution, the feel on the skin and the absorption are assessed. Even if D11 describes the general objective of avoiding known disadvantages such as stickiness or residual film (see paragraphs [0005] to [0007]), this does not mean that the specific cream produced in Example 2 necessarily fulfills these properties.
3.2.9 The board is therefore of the opinion that the comparative example of D25 convincingly demonstrates an effect of the differentiating feature, namely improved sensory properties, for the tested formulation.
3.2.10 In the written procedure, the respondent also claimed that the viscosity of both formulations in the comparison test (see D25) is similar. Consequently, the claimed cellulose particles would not have any particular effect.
This argument is not convincing. The fact that both emulsions have a similar viscosity does not prevent both emulsions from behaving differently when spread on the skin.
Credibility of the effect across the entire breadth of claim 1
3.2.11 The respondent also argued during the oral hearing that the granted claim 1 was broadly worded. In particular, particles of different sizes and cellulose from a very wide variety of sources are claimed. Any woody plant would actually be suitable as a source according to claim 1. In contrast to this variety of claimed particles, only one type of particle was tested in D25, namely "Ultrafine Cellulose Arbocel M8". A single example is therefore not sufficient to make the alleged effect credible for the entire breadth of claim 1.
3.2.12 During the oral hearing, the complainant replied that bacterial, fermentatively produced celluloses such as those from Example 2 of D11 would have a fibrillar "growing on a strand" structure. The fibrils would then form MCC-like networks. In contrast, native celluloses obtained from plant fibers would have a cross-linked structure. Thus, the claimed celluloses would have a uniform structure that would distinguish them from bacterial celluloses and MCC.
3.2.13 As submitted by the complainant, it is therefore credible that the effect proven in D25 for the claimed particles is independent of the type of plant from which the cellulose is obtained and thus across the entire breadth of the granted claim 1 compared to the bacterial, fermentatively produced cellulose from Example 2 of D11 will occur.
3.2.14 The counter-argument put forward by the respondent based on the high number of different cellulose-containing plants is not sufficient to cast doubt on this structural explanation. In this context, the question of the claimed particle size range is also not relevant, since this does not represent the distinguishing feature from the closest prior art and the said uniform structure of the claimed celluloses does not appear to be dependent on the particle size.
3.3 Objective technical task
The objective technical task based on D11 is accordingly to provide another cosmetic formulation containing glycerin and cellulose with improved sensory properties when distributed on the skin.
3.4 Obviousness of the proposed solution
None of the documents D1, D3, D7, D14 or D19 cited by the respondent indicate replacing the cellulose component from D11 with native cellulose obtained from plant fibers in order to improve the sensory properties when distributed on the skin. The respondent did not raise any argument regarding evidence of such an improvement in the prior art. The documents cited describe different objectives. D1 refers to the release of an active ingredient contained in cellulose fibers, D3 refers to products that are not irritating to the respiratory tract, D7 discloses compositions that absorb excess sebum, and D14 and D19 are merely fact sheets for commercial cellulose particles that do not contain any of the present sensory properties Describe properties.
3.5 Consequently, the subject-matter of the granted claims meets the requirements of Article 56 EPC and the ground for opposition under Article 100(a) EPC in conjunction with Article 56 EPC does not preclude the maintenance of the granted patent.
When the objective technical problem is defined as « finding an alternative », it is a hollow definition of the problem. The term « alternative » is so vague that it is technically meaningless. What is an alternative ? what is its level of differenciation vs the prior art ? and how can inventive step of the solution be assessed, esp. applying the « would vs could » test, when the skilled person has no idea of what the technical problem is, except that the solution must be different from the prior art ?
ReplyDeleteIn my view, the reliance on such a vague notion as an alternative under the PSA is is a clear sign that the PSA is not valid in such a case. The PSA is a very effective tool, but as for any tool, its field of validity has limits. This is difficult to acknowledge, the PSA is a signature dogma for the EPO.
It had not occurred to me before, Francis Hagel, that formulation of the OTP as "find an alternative" invalidates EPO-PSA. I mean, for competitors seeking to compete in the marketplace with a rival's successful product, protected by a patent, is not their exact technical problem also the very real one of finding an alternative, any alternative? Technically meaningless, you say. I'm not yet persuaded. Care to say more?
ReplyDeleteDear MaxDrei,
ReplyDeleteFor a competitor, « finding an alternative » to the claimed product is a perfectly legitimate commercial objective. But I find it disputable that this it is sufficient to make it « technical » in the ordinary meaning of the word, which refers to some level of concreteness or specificity, whereas « finding an alternative » is but a negative definition. This is an overstretched interpretation of « technical ». In addition, the « find an alternative » objective has a legal dimension, it requires a freedom-to-operate analysis.
The PSA relies on the use of words which are quite general (technical problem, closest prior art). This is inevitable. If the words have to be given an overstretched interpretation for the application of the PSA to be possible, it means there is something wrong. This signals that as a tool, the PSA is inadequate in such a case. This is a bit like squaring a circle.
Also, how can you sensibly apply the could vs would test when the objective to be fulfilled is so vague ?
I think there are two types of 'providing an alternative' OTPs: providing an alternative good product/process (with good to be particularized) and providing mere alternatives. In the first case, the distinguishing feature provides a technical effect (that is procedurally accepted) but it is not shown that the feature provides an improvement over the cited prior art. In the case at hand, "good sensory properties when distributed on the skin" but not "better sensory properties than D11". On the other hand, if it would be unclear if the "bacterial, fermentatively produced celluloses" has any function at all in the composition, it adding it would be a mere variation and the general rule in the case law is that such features never provide for inventive step. However, I admit that technical effect and improvement are commonly treated as synonyms in the context of the CPA but I think they are not.
ReplyDeleteMy thought is that the question whether EPO-PSA is intellectually rigorous is secondary to the question whether it is fit for the purpose of adjudicating obviousness enquiries fairly. I suspect that those cases that fall into the "mere alternative" category are those in which the claimed subject matter has already been assessed as prima facie obvious. By designating the OTP as "find an alternative", the Board is effectively flipping the burden of proof, inviting Applicant to come up with something persuasive enough to halt the otherwise inevitable progress towards finding the claim lacks patentability under Art 56, EPC.
ReplyDeleteTo save the claim, the burden is on Applicant to show that its subject matter is inventive. If memory serves, there is at least one case where Applicant succeeded in satisfying the TBA that solving the "find an alternative" problem was indeed inventive.
But mostly, claims that are prima facie obvious fail. As they should, right?
FH: do you think that EPO-PSA leads to cases being decided wrongly? Or is it your point that EPO-PSA suffers from vagueness which is detrimental to the clarity and efficiency of arguing obviousness at the EPO?
Frankly, I suspect that, when it comes to arguing obviousness, there is far less hand-waving and hot air at the EPO than there is at any of the other ones of the world's Patent Offices, and that this is largely thanks to EPO-PSA.
@MaxDrei
ReplyDeleteReply
I generally agree with your positive opinion about the PSA. The EPO is to be credited for acknowledging that hindsight is inevitable in the search exercise since it is based on knowledge of the invention and for its efforts to minimize the effects of hindsight esp. when combining pieces of prior art. The PSA is certainly an effective tool to address this concern. Here, the comparison with the USPTO is clearly in favour of the EPO.
Keeping in mind that the search is guided by hindsight, I find it amusing that the technical problem defined with reference to the “closest prior art” has been called “objective” by the EPO, when if fact that prior art was most often found by a search guided by hindsight. Of course it would have been strange to call it the “hindsight-guided technical problem.”
In my view, the presentation of the PSA as a three-step process lacks the preliminary step of defining the “art” of the skilled person. First, such definition is required by the explicit language of Art 56. The CGK which is a component of the IS assessment is related to the “art” of the skilled person. The definition of the closest prior art is primarily dependent on the art of the skilled person. And the “technical problem” can only be defined with reference to the art of the skilled person.
A further thought is that the PSA raises a specific issue in oppositions, because of the ability of an opponent to mount several IS challenges starting from different items of prior art. This seems contrary to the notion of a “closest prior art”, the superlative “closest” implies uniqueness. But an opponent may argue there are not bound by a particular method of IS assessment such as the PSA and must be free to base their attack on any sequence of reasoning steps provided it is convincing. It is of note here that in decision T 405/14, the opponent appealed on the ground of the right to be heard, arguing that one of his lines of attack had improperly been denied consideration by the OD. I am not sure whether there is a consensus of the BOAs on this subject.
Thanks, Francis Hagel, for those thoughts. Just enough time today to make a quick answer.
ReplyDeleteThe imagined addressee is not a real person. For the sake of objectivity, the skilled person is deemed to know all the prior art (in these days of AI and ever-better searching) that legal fiction is less and less fictional.
The "art" of the skilled person is within the power of the patent drafter to define. The drafter decrees what is the technical field and what is the inventor's contribution to that art. The EPO and the courts ought to give full faith and credit to that fixing of the prior art field on which the inventor chooses to be judged. Under EPO-PSA, that's how it works, isn't it?
Of course a party arguing invalidity ought to be allowed to run more than one line of obviousness attack. Trouble is, that is counter-productive. If the opponent can't see what is the best line of attack, that suggests that no one line of attack is convincing, even for the opponent.
There. Done. Your thoughts?
Max Drei13 December 2023 at 10:38
Delete@MaxDrei
Thanks for your questions. My answers after each question :
The imagined addressee is not a real person. For the sake of objectivity, the skilled person is deemed to know all the prior art (in these days of AI and ever-better searching) that legal fiction is less and less fictional.
FH - I do not think the skilled person of Art 56 must be deemed to know all the prior art. The skills of the skilled person are restricted under Art 56 by the reference to “the art”. All the prior art is “available”, but is not actively “known” by the skilled person, since it is seen through the restrictive lens defined by the skills of the skilled person.
The "art" of the skilled person is within the power of the patent drafter to define. The drafter decrees what is the technical field and what is the inventor's contribution to that art.
The EPO and the courts ought to give full faith and credit to that fixing of the prior art field on which the inventor chooses to be judged. Under EPO-PSA, that's how it works, isn't it?
FH - I agree. Some time ago, I published a piece on the strategic drafting of applications in which the first sentence was : “In the drafting of a patent application, a practitioner starts from a blank page.” The drafter enjoys considerable latitude in shaping the content of the application to meet the applicant’s objectives, which may be quite diverse, esp. as to the breadth of the initial claims, the purpose or field of use, the technical effects, the cited prior art, the coverage of the supply chain, the jurisdiction of prime interest. And you can combine several types.
But this is just the beginning. If you must specify in the claims a field of use to overcome the prior art found by the search, you shift the « art » to that field of use. If the scope of the initial search did not include this field of use, there may be a need for a supplementary search.
Of course a party arguing invalidity ought to be allowed to run more than one line of obviousness attack. Trouble is, that is counter-productive. If the opponent can't see what is the best line of attack, that suggests that no one line of attack is convincing, even for the opponent.
FH - I agree. But an opponent may be lured into such strategy because they do not want to put all their eggs in the same basket. Have you personal experiences ?
FH, I'm glad we agree on so much. I smiled though, when I read your words distinguishing between "available to" and "known by" because they instantly reminded me of the "No true Scotsman" fallacy (which is well-explained in Wikipedia).
DeleteUnder EPO-PSA, as I understand it, any debate about whether something is or is not "actively" known to the notional addressee (who is deemed to enjoy access to everything already "made available" to the public and to be actively searching for solutions to the precisely-determined "objective technical problem" that are already suggested by something within the prior art universe) is superfluous, being irrelevant for settling the obviousness question fairly, objectively and justly.
As to luring an Opponent, no I have no experience. As to "all your eggs in one basket" I agree that as an opponent one can't be sure that your favourite line of attack will convince the Tribunal so that, if you have another equally promising line of attack, one would want to run that one too. When one is convinced of the force of one's favourite line of attack though, it is quite difficult to foresee the reasoning of a Tribunal which is going to find it unpersuasive.
As to the third point, multiple inventive step attacks in parallel, opponents can have good reasons for doing so, e.g. if the claim can be interpreted in multiple ways, or if the distinguishing features of the claim are different vis-a-vis the starting point document such that the inventive step reasoning is also quite different (orthogonal attacks). Finally, an attack starting from non-patent prior art (where the publication date can be disputed) can be combined with attacks starting from patent literature.
Delete@Max Drei
ReplyDeleteSorry for this tardy reply, I had missed your comment.
Thank you for introducing the « No true Scotsman » fallacy. I am also pleased that you smiled when reading my comment.
This is certainly an extremely common argument in every area. I do not understand though how it applies to the distinction between the prior art available to the public and the prior art « actively known » to the skilled person. The former is relevant to novelty, the latter to inventive step. The legal requirements are different, which requires different definitions of the relevant (legally effective) prior art.
In the context of the PSA, the "would vs could" test integrates this distinction. One should not be able to show obviousness by relying on a prior art a skilled person would have no reason to consider for solving the technical problem.
Dear Max Drei,
ReplyDeleteSorry for this tardy reply, I had missed your comment.
Thank you for introducing the « No true Scotsman » fallacy. I am pleased that you smiled when reading my comment.
This is certainly an extremely common argument in every area. I do not understand though how it applies to the distinction between the prior art available to the public and the prior art « actively known » to the skilled person. The former is relevant to novelty, the latter to inventive step. The legal requirements are different, which requires different definitions of the relevant (legally effective) prior art.
In the context of the PSA, the "would vs could" test integrates this distinction. One should not be able to show obviousness by relying on a prior art a skilled person would have no reason to consider for solving the technical problem.
Francis, I still cannot follow your thinking. But I think that, at root, we agree. Perhaps Peter can mediate between us.
ReplyDeleteThe state of the art for Art 56 EPC is identical to that for Art 54 EPC (except for Art 54(3) documents). So I don't understand what you mean by "the legal requirements are different" or by "different definitions". You can't fight what the governing statutory provisions decree, can you?
That said, I have no quarrel with EPO-PSA or with the could/would distinction. The difficulty with obviousness is that, with hindsight, much seems obvious that was not obvious to a skilled person who doesn't know what the invention is. How to stop judges getting it wrong, when they are presented with items of prior art that have been, with the benefit of hindsight, carefully selected and plucked out of the prior art universe for the purpose of suggesting that the invention was obvious all along? The only way I know is a TSM (teaching/suggestion/motivation) test, optimally EPO-PSA, and the "could/would" enquiry.
Thanks Max Drei and Francis Hagel for the discussion. Inventive step is a topic that never dries up but I will close comments for this post. As to whether all prior art is "available" or "known" under inventive step, for an inventive step attack the opponent must show that the skilled person would consult the secondary document (D2) when trying to solve the objective technical problem. On the other hand, the proprietor can not rebut this part of the attack by pointing out that D2 is in Japanese/no longer in print/in an expensive journal, etc; but can validly point out that D2 is in a remote technical field (as I understand it).
ReplyDelete