T 0807/23 - Applying G 1/23

Key points

• Perhaps unsurprisingly, a case about polymers.
• "In the decision under appeal, the opposition division found that the data provided in D11 did not enable the skilled person to prepare the commercial product Borclear RB709CF disclosed in that document. Therefore, in view of G 0001/92 and T 1833/14, it was concluded that D11 was not state of the art within the meaning of Article 54(2) EPC (contested decision, page 12, first to fifth paragraph)."
• The decision of the OD was taken on 14.02.2023. The referral in case G 1/23 was in June 2023.
•   "In application of [G 1/23], it is clear to the present Board that the reproducibility requirement is no longer a valid criterion to assess whether a product put on the market before the date of filing of the opposed patent or technical information about such a product is state of the art within the meaning of Article 54(2) EPC. This was also not disputed by the parties during the oral proceedings.

  1.4 Accordingly, the product Borclear RB709CF and the corresponding data sheet D11 are state of the art within the meaning of Article 54(2) EPC."

• The proprietor/respondent raised the question of whether document D11 could be taken as the closest prior art. The Board does not make a decision on this question. 

•  Decision G 0001/23 sets out further considerations regarding the use of non-reproducible prior art in relation to inventive step (see in particular points 92, 93, 95 and 96 of the reasons). As these considerations were not available to the parties and the opposition division at the time of the decision under appeal, the case should also be remitted to the opposition division so that it can consider whether D11 is suitable to be taken as the closest prior art in light of G 0001/23 after giving both parties the possibility to take position on the application of the decision of the Enlarged Board to the present case."

• Point 96 of G 1/23: 96. "It follows from the above that disclosed but non-reproducible features of a product may, but need not, flow into the assessment of inventive step. Adding some lemon juice to a glass of Coca-Cola for a less sweet taste may not be inventive simply because the recipe for Coca-Cola is secret and therefore the original taste of Coca-Cola is considered as unattainable. On the other hand, achieving the original taste of Coca-Cola without sugar or caffeine is probably an unsolved problem at the time of writing. There are no formal and strict rules as to how a non-reproducible but publicly available product or any of its properties can be taken into account when inventive step is examined. The relevant technical teaching that a skilled person would take from such a product is always case specific - it depends on both the product in question and the invention under examination."
• As to the first example, would the claim under examination be: "a composition comprising Coca-Cola and lemon juice"? Would that claim be clear? If not, would the claim be " a composition comprising ... [ the secret ingredients of Coca Cola] + lemon juice"?   Is it correct that the EBA stipulates that such a claim would not be inventive, even if the recipe in square brackets was non-obvious? Would it make a difference if the claim were rewritten into a claim for the preparation method?

 

 

• It seems predictable that the Board will have to decide on the question in a second appeal. 

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EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t230807eu1