Key points
- The Board on inventive step: "Further, with no technical effect being attributable to the distinguishing feature, the further arguments of the respondent that D2 was silent about the bending properties of the materials used in the central portions and in the side portions and that there was no hint or motivation in D2 to work with the bending properties of the materials, are irrelevant. Features that do not provide a technical effect and which would be implemented as part of the normal design of such articles which are deemed suitable in the circumstances, are an obvious choice for a skilled person even if there is no specific hint or pointer towards exactly the claimed range. It is thus not necessary in the circumstances of the present case (where there is no proven technical effect and no technical problem solved across the scope of the claim by the distinguishing feature) to find a hint by way of common general knowledge or in the prior art, contrary to the reasoning of the opposition division in the impugned decision on page 4, third paragraph. In a case merely involving an arbitrary selection from obvious alternatives, the prior art does not need to contain an incentive for the skilled person to select the particular solution claimed, rather all possible and suitable solutions are considered to be suggested to the skilled person (T 1862/15, reasons 8)."
- "Auxiliary requests 1, 2 and 4 to 24 are not admitted into the appeal proceedings as they lack substantiation as to which objections might be overcome by the various amendments and how such amendments actually overcome them (Articles 12(3) and (5) RPBA)."
- "The subject-matter of claim 1 of auxiliary request 3 thus lacks an inventive step"
- The patent is revoked.
- Which so far is not unusual, except that the patent was granted in Feb 2014 and the Board's final decision was issued on 10 March 2025. Filing date in 2005 as a PCT application. The Board in the first appeal decision in T 0259/17 in 2021 found claim 1 to be sufficiently disclosed (contrary to the first OD decision).
- The Board in the first decision: " As [...] argued by the appellant [ proprietor], however, the problem to be solved is not defined in the claim, such that identifying the technical measures to solve any particular problem is limited in this case to carrying out what is defined in the claim itself, i.e. the relative flexural rigidities where the measurement of each is defined by the described test procedures. Whether the relative flexural rigidities measured in this way ultimately solve any particular problem is something which can be left for discussion of inventive step."
EPO
The link to the decision can be found after the jump.
Perhaps this case is of interest as a way to address under the EPO's problem-solution approach those hard-working advocates who argue that there must be a good reason why nobody in the art has ever before adopted the claimed combination of features, and that reason is surely that the combination was not obvious to the hypothetical skilled person.
ReplyDeleteThis argumentation can work quite nicely in jurisdictions where you get a patent if the PTO cannot prove that the claimed subject matter is obvious. It works less well at the EPO, where if you want a patent the burden is on you, to reveal the presence of inventiveness.
Somebody needs to remind EPO Examiners to be more sceptical of smooth-arguing advocates. Just because something is new does not make it unobvious. That ought to be obvious to everybody, right?
I didn't check why the OD found the claim to be inventive. I think the decision particularly illustrates that a remittal can easily cause a significant protraction of the procedure.
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