T 0564/23 - A non-obvious alternative (fermentation of fruit juice)

Key points

• "The patent is directed to a process for the preparation of a concentrated liquid foodstuff having a low alcohol content"
• "Claim 1 of the patent is directed to a process in which a mixture of a juice concentrate and a carbohydrate with a yeast is subjected to fermentation to obtain a concentrated liquid foodstuff with an alcohol content lower than 15 g/kg of concentrated liquid foodstuff."
• "the parties agreed that the total acidity of at least 25 g/L is not disclosed in D1. Therefore, the total acidity is the distinguishing feature of claim 1." 
• "The parties disagreed as to whether this difference causes a technical effect. The [proprietor] referred to the patent, in particular paragraphs [0068] to [0076] and Figures 1 to 3, which allegedly all showed that an improvement in flavour occurred."
• The Board:  "there is no credible evidence demonstrating that the distinguishing feature causes an improvement in terms of flavour or desired aromatic components"
• I wonder if 'better taste' would be a technical effect (in general), but that is not relevant for the present case.
• "Accordingly, as the opposition division correctly assessed, the problem to be solved is to provide an alternative process of preparing a concentrated liquid foodstuff."
• The Board finds the claim to be non-obvious: "The skilled person starting from the examples of D1 would have realised that the grape sweet musts used in these examples already have the required, preferred pH. As the respondent explained, these compositions have a pH value of about 2.9. Therefore, the skilled person would have had no incentive to adjust the pH value. They would not have added further acid, such as citric acid, to the compositions of the examples."
•   It follows from this that in view of the closest prior art D1 alone, the solution provided by the subject-matter of claim 1 constitutes a non-obvious alternative."
• " the examples of D1 provide a consistent teaching involving several process steps to obtain beverages having an alcohol content that is lower than 15 g/kg of beverage. In view of this, the skilled person would have had no motivation to inhibit the fermentation process by adding an acid, let alone to prematurely stop the fermentation process. The reason for this is that D1 already provides teaching that would lead them to the desired product. It would not have been obvious to the skilled person to depart from the teaching of D1 and ferment a juice with high total acidity under the conditions specified in D1."
• " The board fails to see the relevance of the cited decision [T 641/00, Comvik]  for the invention under scrutiny. Total acidity is not a non-technical feature. It is a technical feature that typically defines and characterises fruit juices, as can be seen from the prior art cited in these proceedings. In the case in hand, the total acidity qualifies and restricts the fruit juices used in the process of the patent in suit. Consequently, it contributes to the technical character of the fermented mixture." 
  
  
• There are some interesting further comments on inventive step.

EPO 

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

T 2697/16 - Inventive alternative

 Key points:

• The Board: “Although the case law defines the skilled person as being cautious and having a conservative attitude, it also acknowledges that furthering the state of the art belongs to the normal tasks of the skilled person and that routine adaptations as well as the use of known alternatives do not go beyond what may be normally expected from a skilled person (cf. [T 1715/15 and T 688/14).”

T 2697/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t162697eu1.html

24.5 Thus, the board agrees with the findings of the opposition division and considers that the objective technical problem needs to be formulated in the terms used by the opposition division and the appellant, namely the provision of an alternative method for the production of IgG1 antibodies.

25. It remains to be assessed whether, starting from the closest prior art document (2) and the above formulated less ambitious technical problem, a skilled person would have arrived at the claimed subject-matter in an obvious manner. For carrying out this assessment, the so-called "could-would approach" followed by the opposition division is appropriate (cf. "Case Law", supra, I.D.5, 197). In this context, the appellant referred to documents (20) and (1) as leading the skilled person, when starting from document (2), to the claimed subject-matter in an obvious manner.

T 0028/20 - (I) The established decisive principle

 Key points

• The Board, on inventive step: "the established decisive principle governing the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain (T 939/92, OJ EPO 1996, 309: point 2.5.3 of the reasons).”
• “In the case in hand, it must therefore be considered that the skilled person is deemed to be merely seeking to provide further impact-modified compositions in alternative to the ones of D9 but is not wishing to necessarily keep all properties obtained with the compositions of the examples of D9 at the same level.”

However, the established decisive principle governing the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain (T 939/92, OJ EPO 1996, 309: point 2.5.3 of the reasons). In the case in hand, it must therefore be considered that the skilled person is deemed to be merely seeking to provide further impact-modified compositions in alternative to the ones of D9 but is not wishing to necessarily keep all properties obtained with the compositions of the examples of D9 at the same level. Thus, the skilled person would consider an increase in the amount of impact-modifier even in amounts higher than the ones taught in D9 as a useful and obvious measure, in particular to further increase the impact resistance of the compositions so prepared. In doing so, the skilled person would be merely accepting possible disadvantages (which were not demonstrated in the present case but only alleged, both by the opposition division and the respondent) related to the use of higher amounts of impact modifiers. In that respect, it is further noted that it is not credible to the Board that increasing the amount of impact-modifier from a maximum of 29.4 wt.% as taught in D9 to a slightly higher amount of 30 wt.% as defined in claim 1 of the main request may be expected to lead to so dramatic changes in the properties of the composition that the skilled person would be deterred from using such an amount of impact modifier.

https://www.epo.org/law-practice/case-law-appeals/recent/t200028eu1.html

T 1193/18 - Does not distinguish yet makes inventive

 Key points

• A little puzzle: in this case the Board considers the claims of AR-12 to lack inventive step over D3 as the closest prior art. The patentee then adds a feature to claim 1 that is (undisputed) also disclosed in D3. The Board finds the claim to be inventive with this added feature.
  
  
• The reasons are as follows. In AR-12, the Board found the technical effect claimed in the description to be not plausibel over the entire range claimed. The opponent had submitted examples of products falling under the broad claim but not having the improved storage stability. Therefore, the claimed subject-matter was an obvious alternative in view of D3. 
• The added feature is that the composition comprises 40-80 w/v% glycerol. This feature “does not further distinguish the claimed subject-matter from D3” but the examples prepared by the opponent are outside this range (they have a lower glycerol concentration). 
• “In view of all the experimental data provided by the parties, the Board considers that this effect can furthermore be extrapolated to the entire claimed scope, given that all the examples on file which fall under the present scope exhibit good stability data.”
• “even if there is no evidence of an improvement over D3, the achievement of a good storage stability remains a property of the present process which cannot be ignored”
• “the objective technical problem to be solved by the process of claim 1 of auxiliary request 18 lies in the provision of an alternative process for the preparation of oral levothyroxine compositions having good storage stability.”
• The solution (other features of the claim) is non-obvious. 

T 1193/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181193eu1.html

decision text omitted.

T 2210/19 - Obvious alternative

 Key points

• In this opposition appeal, “the [objective technical] problem can only be defined as the provision of a further process for producing a chromium catalysed ethylene copolymer powder”
• The Board: “ The skilled person, looking for a further process, would consider variations of the process already known from the closest prior art, taking into account the common general knowledge in the field and the knowledge made available in the prior art. That includes variations of any of the parameters of the process that can be expected to be suitable to carry out alternative processes without exercising any inventive activity. As the problem is simply the provision of a further process, no further motivation is needed by the skilled person to perform the modified process.”
• “The choice of a fluidisation gas velocity in the range of 1.5-10 cm/s at an activation temperature of 600°C, would therefore be in view of the teachings of D7 or D8, a common measure that a skilled person could take to merely provide a further activation process that ultimately would provide a further process for producing a chromium catalysed ethylene copolymer powder.”
• The claims are found to lack an inventive step.

EPO T 2210/19

https://www.epo.org/law-practice/case-law-appeals/recent/t192210eu1.html

decision text omitted.

T 0115/18 - Obvious and non-obvious alternatives

 Key points

• This opposition appeal decision deals with various interesting points.
• Oral proceedings took place on 30.07.2020, physically, despite a request for postponement. “The respondent requested postponement of the oral proceedings. The reasons indicated were a very general reference to the ongoing COVID-19 pandemic and expected travel restrictions. However, the board was not presented with information on travel restrictions between The Netherlands, where the representative for the respondent was located, and Munich or Munich and The Netherlands in force at the time the request was filed or up to the date of the oral proceedings. Therefore the request was not allowed and the oral proceedings were not postponed.”
• About inventive step of alternatives: “It is established case law of the boards of appeal of the EPO that, when the objective technical problem addressed is the provision of an alternative, as in the case at hand, an arbitrary selection from amongst a number of known possible solutions cannot be considered to involve an inventive step (see for example decision T 939/92, reasons 2.5.3).”
• For inventive step of the auxiliary request: “Thus the [] objective technical problem that can be derived from the [amended distinguishing feature remains the provision of an alternative method for purifying [a compound].”
• The inventive step attack was based on D4 as the closest prior art, adding a 'virus inactivation step' as taught by D8 (which was obvious, as decided for the main request) and further changing the compound Tween 80 used in D8 into Tween 20 (as now specified in the claim) based on e.g. D24.
• “In the board's view, in the absence of any identified pointer to Tween 20 [as now specified in the claim], the claimed solution was not obvious to the skilled person unless, as was argued by the [opponent] with reference to document D24, Tween 80 [used in the prior art document D8] and Tween 20 were known to the skilled person as being equally suitable for virus inactivation in protein production processes. ... Document D24 is [] silent on the [opponent's] allegation that the detergents are equivalent for the purpose they serve in the method claimed, i.e. virus inactivation. .... In view of the above, the board has come to the conclusion that the skilled person seeking to provide an alternative to the method disclosed in document D4 [the closest prior art] had no reason to modify it by introducing virus inactivation by the use of Tween 20. Thus the claimed solutions were not obvious to the skilled person when starting from the disclosure in document D4.”

T 0115/18 -  link

(decision text omitted)

T 1180/18 - Alternative solution inventive

 Key points

• The Board, at the end of a lengthy decision: “the Board is of the opinion that the fact that the alternative solution offered in the present claims might appear a priori more cumbersome does not necessarily deprive it of inventiveness. The present process, for the reasons stated above, solves the problem posed and is not suggested by the prior art, which is, in the present case, sufficient to render it inventive.  Accordingly, the subject-matter of claim 1 of auxiliary request 32 involves an inventive step.”
• Claim 1 of AR-32 differs only from the Main Request in that product claims 9 and 10 are cancelled.
• The opposition was filed 21.08.2008 (!). This is the second appeal after decision T 0598/13 of 14.07.2016. In that first appeal, the Board admitted new evidence in connection with sufficiency of disclosure and remitted the case to the opposition division. The Board then did not take any substantive decision on the grounds of opposition.
• “The Board further notes that the interpretation by the opposition division of the results of the patent's example changed following the admittance of new evidence filed during appeal case T 598/13. The disputed amendments being based on a feature of said example, the opposition division was led to re-examine the issue of compliance with Article 123(2) EPC. The Board considers that the change of underlying facts constitutes a sufficient reason for the opposition division to re-examine the issue of compliance with the requirements of Article 123(2) EPC.”
• The substantive decision seems thorough, but the question remains if it is acceptable that the EPO needs 13 years to arrive at the final decision in opposition.

https://www.epo.org/law-practice/case-law-appeals/recent/t181180eu1.html

T 1180/18

(decision text omitted)

T 2530/16 - Routine modifications

Key points

• The Board finds the technical effect to be not credible and then turns to the question whether the claimed device (a lamp) is an obvious alternative.
• “ In the same way, starting from a commercially available triphosphor low pressure mercury vapor discharge lamp, if the problem is merely to find alternative lamps regardless of their likely useful properties, all lamps which could be arrived at by routine modifications (such as using well-known equivalent phosphors or adjusting phosphor weight ratios) would be obvious, irrespective of their number, and this would include embodiments falling within the ambit of claim 1 ” (underlining added).
• The Board extensively cites T 939/92. 

EPO T 2530/16  - https://www.epo.org/law-practice/case-law-appeals/recent/t162530eu1.html

3.10 Consequently, the Board is not persuaded that the problem of providing improved colour rendering is solved over the breadth of claim 1, and, as a result, this problem cannot serve as the objective problem within the context of the problem-solution approach. In the absence of any other specific problem plausibly solved across the entire breadth of the claim, the problem can only be seen as merely providing an alternative low pressure mercury vapor discharge lamp.

3.11 In the light of such a general requirement, essentially any conventional modification of the prior art could be seen as an obvious solution to the problem, for example, using different or additional known phosphors, or changing the phosphor weight ratios.