T 0708/21 - The technical problem of matching foundation and skin tone

Key points

•  "The invention is about recommending make-up foundations that match a person's skin tone, [0002] and [0003] of the published application."
• The issue is inventive step. 
• "Method for selecting a foundation intended for a person, comprising the steps of:

  - acquiring (100) an image of a complete view of a person's face in a controlled lighting environment,  ... [digitally processing data and] presenting (420) to the person the foundation(s) comprised in the personalized color matrix"

• The Board does not comment on whether the method is industrially applicable. The Board dismisses the appeal of the applicant against the refusal of the application for lack of inventive step. Therefore there was no need to comment on Art. 57. Perhaps it was not even an objection of the Examining Division. Still, I think that in 1973, or perhaps 20 - 30 years ago, a method of "recommending make-up foundations that match a person's skin tone" would perhaps not be treated as an industrial method. 

• Regarding inventive step: "Therefore, the Board considers that the differences may be assessed separately for inventive step, as the examining division did in the decision under appeal.

• 2.6.1 Concerning feature 1), lightness and hue define a 2D colour space that is simpler than the 3D colour spaces mentioned in D1 (HSV and RGB), yet still suitable for representing human skin tones and foundation shades (see also page 10, first paragraph of the published application). Therefore, the Board considers that the technical problem solved by this feature is to find a simpler colour space for representing skin tones and foundation shades."

• "Hence, the skilled person seeking a simpler colour space would apply the teaching of D5 to the method of D1, and thereby arrive at feature 1) in an obvious manner."

• "The appellant submitted that human skin appeared desaturated under illumination, while suitable foundations typically had higher saturation levels to create a more radiant effect. If saturation was taken into account in the matching process, the selected foundations would be less saturated, resulting in a duller appearance, which was undesirable. By ignoring the saturation from the colour matching, the invention eliminated unwanted noise and provided more relevant matches. During the oral proceedings, the appellant supported this argument with experimental data showing significant differences between the saturation levels of skin and foundation measurements, and the impact of saturation on the recommended products."
• "However, according to the jurisprudence of the Boards of Appeal, an alleged technical effect cannot be considered for inventive step unless it is at least hinted at in the original application, or can be deduced by the skilled person from the application as filed considered in relation to the nearest prior art (Case Law of the Boards of Appeal, I.D.4.4.3 b, second paragraph). This is not the case here since the application as filed does not suggest that saturation is a noise factor and that ignoring it leads to more accurate results. It merely states that lightness and hue are chosen for simplicity, and that saturation can be disregarded since it is less important for foundation colours (page 10, top). Simplifying a process by removing irrelevant data does not imply or suggest an improvement in accuracy."


• Is this an application of G 2/21, headnote 2?

EPO 

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

T 1140/21 - Hair processing and industrial applicability

Key points

• Art. 57 is not discussed in this opposition appeal.
• ""1. A method for processing hair, which comprises mixing while stirring a hair processing composition comprising [compound X and Y] and applying the composition to hair to allow a silanol compound [having formula Z], to penetrate into the hair.""
• Now, as a question to readers, how is this method susceptible of industrial application, as required by Art. 52?
• The same question can be asked about T1486/20, wherein claim 1 was about: "A process of treating the hair comprising the following consecutive steps..."
• The answer is T 144/83:  "   It is the view of the Board that the invention also complies with the requirements of Article 57 EPC. According to the article the invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry. That this is the case of the present invention is not in doubt since it can be used by enterprises whose object is to beautify the human or animal body. Such enterprises in the cosmetic field - such as cosmetic salons and beauty parlours - are part of industry in the sense of Article 57 EPC, since the notion of concept "industry" implies that an activity is carried out continuously, independently and for financial gain. The Board has already decided that "the professional use of such inventions in a cosmetic salon is an industrial application in the sense of Article 57 EPC" (cf. unreported decision in case T 36/83, of 6 May 1985)."
• T 36/83: "The applicants have chosen the phrase "use as a cosmetic product of thenoyl peroxide". The Board considers that this form of claim is acceptable in the case in suit. In the Board's opinion the question of industrial application does not arise, since professional use of the invention in a beauty parlour is an industrial application within the meaning of Article 57 EPC."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1232/15 - Not a diagnostic method (breast examination)

Key points

• Claim 1 is directed to the 'use of several adhesive and haptic strips for forming an aid for blind persons to enable the line-by-line palpation of skin areas including the breasts of a female human body when performing a clinical breast examination'.
• The Board finds that the claimed use is not excluded under Art. 53(c), in particular, that it is not a diagnostic method.
• " Die beanspruchten Schritte dienen lediglich der Vorbereitung eines von einem Blinden durchzuführenden Diagnostizierverfahrens mittels Palpation, z. B. zur Erkennung von Brustkrebs. Das Diagnostizierverfahren selbst wird jedoch nicht beansprucht. Insbesondere enthalten die Ansprüche des Hauptantrags keine Schritte, welche die Diagnose strictu sensu betreffen, z. B. die Diagnose einer Brustkrebserkrankung aufgrund von durch Palpation ertasteten Knoten. "
• The Board does not comment on the requirement of Article 57 EPC, that “an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.”

EPO T 1232/15 - link

IV. Der Wortlaut des unabhängigen Anspruchs 1 des Hauptantrags lautet wie folgt:

"1. Verwendung mehrerer Klebe- und Haptikstreifen (1a, 1b, 1c, 1d, 1e) zur Ausbildung eines Hilfsmittels für Blinde zur Ermöglichung der zeilenmäßigen Abtastung von die Brüste (7) eines weiblichen menschlichen Körpers umfassenden Hautbereichen bei Durchführung einer klinischen Brustuntersuchung, wobei fünf Klebe- und Haptik­streifen (1a, 1b, 1c, 1d, 1e),

die jeweils eine Oberfläche aufweisen, die aus einer Reihe aneinandergereihter Felder (2, 3, 4; 2', 3', 4'; 2'', 3'', 4'') besteht, wobei die Felder (2, 3, 4; 2', 3', 4'; 2'', 3'', 4'') ein mehrfach wiederkehrendes, gleichmäßiges Muster (5) ausbildend angeordnet sind, das sich aus mindestens drei taktil unterschiedlich wahrnehmbaren Feldtypen (2, 3, 4) zusammensetzt, wobei jeweils aneinander angrenzende Felder (2, 3, 4; 2', 3', 4'; 2'', 3'', 4'') eine mit den Fingern taktil wahrnehmbare, unterschiedliche Oberflächenhaptik oder Oberflächenstruktur aufweisen und wobei die den Feldern (2, 3, 4; 2', 3', 4'; 2'', 3'', 4'') gegenüberliegende, rückseitige Oberflächenseite der Klebe- und Haptikstreifen (1a, 1b, 1c, 1d, 1e) mit einem hautverträglichen Klebstoff versehen ist,

jeweils mit Abstand zueinander und senkrecht sowie parallel zueinander auf die Brüste (7) eines weiblichen menschlichen Körpers umfassende Hautbereiche und jeweils mit einer solchen Länge, dass sie jeweils länger als der Durchmesser der zu untersuchenden weiblichen Brüste (7) sind, aufgeklebt werden,

wobei die fünf Klebe- und Haptikstreifen (1a, 1b, 1c, 1d, 1e) längs verlaufend zumindest im Wesentlichen parallel zur Längsachse des weiblichen Körpers auf diesem aufgebracht und taktil gleichartig wahrnehmbare Felder (2, 3, 4; 2', 3', 4'; 2'', 3'', 4'') jeweils auf einer zumindest im Wesentlichen waagerecht verlaufenden Linie gleicher Höhe liegend einander koordiniert zeilenmäßig zugeordnet und zueinander ausgerichtet angeordnet und aufgeklebt werden,

wobei ein erster Klebe- und Haptikstreifen (1b) die Mamille der rechten Brust (7) überstreicht und ein zweiter Klebe-und Haptikstreifen (1d) die Mamille der linken Brust (7) überstreicht, wobei der erste und der zweite Haptik- und Klebestreifen (1b, 1d) jeweils direkt über die jeweilige Brustmitte gelegt und geklebt werden,

wobei ein dritter Klebe- und Haptikstreifen (1c) zwischen den beiden Brüsten (7) längs der Sternummitte verlaufend angeordnet wird,

ein vierter Klebe- und Haptikstreifen (1a) lateral rechts in Höhe der mittleren Axillarfalte und

ein fünfter Klebe- und Haptikstreifen (1e) lateral links in Höhe der mittleren Axillarfalte angeordnet wird, und

wobei jeweils ein Feld (2) eines ersten Feldtyps (2) von erstem und zweitem Klebe- und Haptikstreifen (1b, 1d) auf zumindest im Wesentlichen gleicher Höhe auf dem Zentrum der jeweiligen Mamille angeordnet wird und jeweils ein Feld (2) des ersten Feldtyps (2) von drittem bis fünftem Klebe- und Haptikstreifen (1c, 1a, 1e) zumindest im Wesentlichen auf derselben Höhe angeordnet wird."

T 1430/15 - Perpetual motion devices and the GL

Key points

• This examination appeal is directed to an 'energy transducer' which is specified in claim 1 to be able to ‘generate useful work’. According to the Examiner (para. 1.1 of this Communication), it is a perpetual motion device. 
• “Claim 1 is directed to an energy transducer [...], which is able to generate useful work by lowering the internal energy of the material. Since the claimed transducer is limited to exhibiting this effect, the disclosure has to enable a skilled person to achieve it in order to meet the requirements of Article 83 EPC.”
• The Board then analyses the application as filed and the physics involved.
• “To summarise, the Board is not convinced that the model predictions [submitted by the applicant] are correct, there is no disclosure in the application as filed concerning the transduction of internal energy to useful work, merely a hypothesis to this effect, and there is no experimental evidence that the transduction from internal energy, as hypothesised in the application as filed, will necessarily occur when the claim prescriptions regarding the application of forces and choice of material are followed. For these reasons, the application in the version of the main request does not meet the requirements of Article 83 EPC.”
• This analysis is perhaps not very surprising. However, it's interesting to compare this case with the  - in my view rather cryptic - remark in the GL G-III.1 that “An objection could arise under Art. 57 only in so far as the claim specifies the intended function or purpose of the invention, but if, say, a perpetual motion machine is claimed merely as an article having a particular specified construction, then an objection is made under Art. 83”.
• I find this remark in the GL rather confusing. Say I have a claim directed to 'a stack of hexagonal copper plates and pentagonal gold plates' (i.e. merely as a device having this configuration) and the description says that it will generate net energy when exposed to some magnetic field. The skilled person can easily manufacture the stack of plates, still the rejection is under Art. 83 according to the cited GL passage. If on the other hand, the claim has additionally the functional feature ‘the stack is capable of generating net energy’, which is something the skilled person can not reduce to practice according to thermodynamics, the rejection is under Art.57, still according to the GL. The other way around would make much more sense to me (i.e. the impossible functional feature causes a problem under Article 83; merely specifying a structure of a device without plausible function give a problem under Art.57).
• T0541/96 explains that "An invention or an application for a patent for an alleged invention which would not comply with the generally accepted laws of physics would be incompatible with the requirements of Articles 57 and 83 because it cannot be used and therefore lacks industrial application. Also the description would be insufficient to the extent that the applicant would not be able to describe how it could be made to work." 
• GL F-III,3 state that: If the claims for such a machine are directed to its function, and not merely to its structure, an objection arises not only under Art. 83 but also under Art. 52(1) in that the invention is not "susceptible of industrial application". Implicitly, if the claims merely specify a structure, the objection is supposed to be under Art.83.
• In the auxiliary request, the functional feature was deleted. This is not accepted under Art.123(2), because “the application as filed consistently discloses that the transducer produces useful work by lowering the internal energy of a material”.

T 1430/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Main request

2.1 The patent application does not meet the requirements of Article 83 EPC because it does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person.

2.2 Claim 1 is directed to an energy transducer containing a material with unequal cross coupling coefficients between first and second forces and corresponding energy conjugate physical properties, such as for example strain and magnetisation, which is able to generate useful work by lowering the internal energy of the material. Since the claimed transducer is limited to exhibiting this effect, the disclosure has to enable a skilled person to achieve it in order to meet the requirements of Article 83 EPC.

T 1285/13 - Article 57

Key points 

• "The examining division decided that the requests before it not only lacked an inventive step but also industrial applicability. The examining division decided that the indication of achievable objectives given in the application did not go beyond speculation and vague general statements. Therefore, no defined industrial application was considered to be disclosed. 
• The Board states that " the issue of Article 57 EPC is closely related to the question whether or not the technical problem underlying the invention has been credibly solved. As shown in points 13 to 23 above, the board is convinced that the priority application plausibly discloses a role for miR-1 in the regulation of physiological processes." . The Board therefore finds that the claim meets the requirement of Article 57 EPC.

T 1285/13 -  link

V. Claim 1 of the main request reads as follows:

"1. An isolated nucleic acid molecule having a length of from 18 to 25 nucleotides comprising a nucleotide sequence which has an identity of at least 90% to a sequence shown in SEQ ID NO 58 (miR-1) or a complement thereof."

Reasons for the Decision

Article 57 EPC
30. The examining division decided that the requests before it not only lacked an inventive step but also industrial applicability. The examining division decided that the indication of achievable objectives given in the application did not go beyond speculation and vague general statements. Therefore, no defined industrial application was considered to be disclosed.

T 2044/11 - Industrially applicable

Key points

• The Board "Accordingly, there is no difficulty in carrying out the invention, which, as a consequence, is also industrially applicable." 
• I seriously doubt if the requirement of sufficient disclosure under Article 83 EPC is or should be the same as the requirement of industrial application under Article 57 EPC.

T 2044/11 - link

Summary of Facts and Submissions

I. By its decision posted on 7 July 2011 the opposition division revoked European patent No. 9 282 34.

The opposition division found that the claimed invention was sufficiently disclosed and industrially applicable but that the subject-matter of claim 1 lacked an inventive step in view of the combination of E1 and E3.

II. The appellant (patent proprietor) lodged an appeal against that decision in the prescribed form and within the prescribed time limit. [...]

T 1977/10 - Perpetuum mobile

EPO T 1977/10

For the decision, click here

Key points

• The appeal is against the refusal of an application for, essentially, a kind of perpetual motion machine using permanent magnets
• The board refuses under Article 83 (rather than Article 57 EPC).
• The Board cites Wikipedia for "conservation of energy".
• Although the claim is directed to a "rotor for magnetic motor", the Board interprets the claim as if it specifies not just a rotor for a magnetic motor, but a magnetic motor comprising a rotor and a stator. The Board then notes that a motor is defined as a " device that creates motion", and finds that the claimed device can not create motion and hence could not act as a motor. The Board then concludes that the claim, therefore, does not meet Article 83 EPC. 
• If the claim would not have recited "for magnetic motor", but only the structural arrangement of the magnets, Article 57 EPC would have been appropriate as a ground for refusal, in my view.

Summary of Facts and Submissions

I. Contested decision

The applicant's appeal contests the examining division's decision to refuse Euro-PCT application [....]

Claim 1 reads as follows:

"1. Rotor for magnetic motor, formed by magnets (2) and material (4) that orientates the magnetic field, both elements forming groups arranged around a shaft (5), in the radius of the external circumference of the rotor (1) body, separated by a distance; the immobile stator (3) is close to the external circumference of the rotor (1) body, with the axis of the stator being orthogonal to the rotor radius and parallel to the rotation plane of the rotor; the rotor magnets (2) have an only magnetic pole on the flat faces with the largest surface area; characterized because each group of the rotor (1) is formed of at least one magnet (2), which has one face with the two magnetic poles facing the stator (3), and a group of the rotor with several magnets (2) has its magnets arranged one after the other with the magnetic poles of the flat faces with the largest surface area in attraction, on a circular, spiral, staggered or oblique line; the material (4) that orientates the magnetic field is placed on the side of the face of the magnet (2) at the end of the group closest to the stator (3), and the material (4) is placed on the side of an only magnetic pole."  [...]

Reasons for the Decision