T 0454/23 - The objective vs the subjective problem

Key points

• "As to the objective technical problem solved by present claim 1, the proprietor contended that the combination of features (g) to (m) provided "a robust mechanism for improve[sic] security of an authentication message by a client device" and referred essentially to the conclusions drawn in T 495/91, Reasons 4.2, according to which an objective definition of the problem to be solved by the invention should normally start from the problem described in the application "
• "However, according to the problem-solution approach as defined in T 1/80 (cf. headnote I) (see e.g. also G 1/19, Reasons 26; R 9/14, Reasons 2.1.1) and in the Guidelines for Examination in the EPO (see part G, chapter VII, section 5, items (i) and (ii)), the formulation of the "objective technical problem" should always be done after having identified the closest prior art (i.e. the suitable starting point) for the assessment of inventive step (see e.g. T 1861/17, Reasons 3.4). "
• "As a consequence, the conclusions of T 495/91 do not appear to be reconcilable with the well-established problem-solution approach. To avoid any misunderstandings: of course, by coincidence, the problem described in the application itself, i.e. also called the "subjective problem", may well correspond to the objective problem formulated later on the basis of the selected closest prior art; for example, if the suitable starting point is already cited in the application itself. But, the established problem-solution approach does not imply that, for the purposes of determining the objective technical problem, one should "normally start from the problem described in the application"."
• See also CLBA I.D.4.2.2: "According to the established case law, an objective definition of the problem to be solved by the invention should normally start from the problem described in the application/contested patent. Only if examination shows that the problem disclosed was not solved or if inappropriate prior art was used to define the problem, is it necessary to investigate which other problem objectively exists (see e.g. T 495/91, T 881/92, T 419/93, T 606/99, T 728/01, T 1708/06, T 1146/07, T 1060/11, T 204/16)"
• "Thus, claim 1 encompasses technically sensible scenarios where the "based on" relationship is implemented by merely concatenating the respective keys, i.e. "gluing" them together. Consequently, the subject-matter of claim 1 comprises embodiments where the respective elements are generated in ways which are entirely unsuitable to enhance the security of the underlying hearing-aid system. Therefore, the features of claim 1 which are not disclosed in document D1 do not cause a technical effect which is credibly achieved over the entire breadth claimed (see e.g. G 1/19, cited by the proprietor, Reasons 49, 82 and 124). The board understands that established authentication procedures and the respective messages involved, as such, were commonly known to the skilled person in the field of data communications at the relevant date."

EPO 

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

T 2004/21 - A new kind of alternative problem

Key points

• This decision provides an important refinement of the problem-solution approach, especially for the case of problem inventions. 
• Claim 1 is directed to a chewing gum comprising a base and "a blend of granules consisting of erythritol"
• The claimed chewing gum differs from that disclosed in  D2 [the closes prior art] [...] in that: 1) the blend of erythritol granules comprises 50 to 99 wt% of coarse granules which are retained on a sieve of 250 microns" and in that the amount of erythritol granules is at least 20 wt.%
• " The [proprietor] respondent argued that chewing gums containing fine, coarse or a blend of fine and coarse erythritol granules induced a sensation of hydration, i.e. a mouthwatering effect in the consumer. "
• " The board agrees with the appellant [opponent] that the tests in the patent do not make it credible that a higher proportion of coarse granules enhances the mouthwatering effect. It considers, however, that, as argued by the respondent [proprietor], the overall picture emerging from the results makes it credible that the inclusion of erythritol granules in a chewing gum induces a mouthwatering effect."
• The Board: "not all chewing gums induce a mouthwatering effect. In fact, paragraph [0003] of the patent teaches that certain chewing gums containing sweeteners may induce a sensation of dry mouth and the need to drink water. This makes it credible that the mouthwatering sensation induced by the tested chewing gums is due to the presence of the erythritol granules and that this effect can be achieved with both coarse and fine erythritol granules."
• "The appellant argued that mouthwatering was an inherent property of the chewing gum of D2 and that this document already provided a solution to the problem of providing a chewing gum inducing mouthwatering. Since there was no evidence that the claimed chewing gum induced a stronger mouthwatering effect than that of D2, the underlying objective problem was merely "the development of an alternative chewing gum [according to the opponent]".
• The Board: "Under the established case law, if a known problem has already been solved by the prior art and the claimed subject-matter represents a different solution to that problem, the objective technical problem should be formulated as the provision of an "alternative solution" to the known problem ([CLBA] I.D.4.5, "Alternative solution of a known problem"). 
• However, the situation in the current case is different. Although the chewing gum of D2 has "inherent" mouthwatering properties, D2 discloses neither these properties nor the problem of providing a mouthwatering effect in a user. "Mouthwatering" is not mentioned in any of the cited prior-art documents. The claimed chewing gum can therefore not be considered an alternative solution to a known problem."
• "Formulating the problem as the provision of an "alternative chewing gum" which is meant, explicitly or implicitly, to solve the problem of inducing mouthwatering would imply that this problem, as well as its solution, was known at the filing date. This would require reading into the teaching of D2 the technical contribution wich the patent makes over the prior art, namely the finding that erythritol granules induce a mouthwatering effect. "
• "For these reasons, starting from D2, which discloses chewing gums preventing an abrasive sensation, the underlying objective technical problem is to be formulated as the provision of a chewing gum inducing a mouthwatering effect in a consumer."
• "none of the cited prior-art documents mentions the problem of providing a chewing gum providing a mouthwatering effect. This problem was apparently not even known at the filing date."
• "the skilled person confronted with the underlying problem would have had neither any reason nor guidance to prepare the claimed chewing gum by increasing the amount of coarse particles in the chewing gum of D2."
• The claim is held to be inventive. 

EPO 

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

T 1946/21 - (II) A case where the OTP is not how to achieve the technical effect

Key points

• The objective technical problem can usually be formulated as "how to achieve the technical effect" (see e.g. G 2/21, r. 24). See also T1148/15: "In most cases, the objective technical problem can be formulated as how to achieve the technical effect. "
• However, the Report for Paper C of the EQE often states that the objective technical problem and the technical effect are not the same. ( "typically, the objective technical problem and the technical effect are not identical."- 2023 Report)
• The present case provides an illustration. 
• "the technical effect of the distinguishing features is [an] increased strength of the hanging parts, resulting in the ability [of the claimed swimming pool] to withstand higher internal pressures of the inflatable air chamber."
• "The [opponent] argued that the objective technical problem - according to the problem-solution approach - was thus "how to achieve the technical effect of the distinguishing features".
• "However, the technical effect invoked by the [opponent] (i.e. the hanging element can withstand higher internal pressures) does not solve a technical problem per se but has to be considered in context. Increasing the strength of the hanging parts is not an end in itself but leads to a technical effect whereby the device is able to improve the maintenance of the pool's shape, e.g. when a user is sitting on the top wall or in the pool, as explained in paragraphs [0043] and [0047] of the patent specification."
• The objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent (Case Law, I.D.4.2.2). The (subjective) problem formulated in paragraphs [0043] and [0047] of the patent, namely to maintain the shape of the pool, is convincingly solved. It is true that D28 already provides an inflatable pool constructed in such a way that it does not easily collapse when external pressure is applied. However, in view of [the CPA] D28 and the technical effect of the distinguishing features, the objective technical problem is to provide a pool with further improved maintenance of its shape when external pressure is applied (e.g. by a user sitting on it).
  
• "For inventive step to be assessed fairly and objectively, it is important not to formulate the objective technical problem either too narrowly or too broadly. The same is true for the technical effect to be considered. The Board finds no justification for formulating the objective technical problem in the narrow terms proposed by the [opponent] since this would take the effect out of its technical context and imply that increasing the strength of the hanging parts is an aim in itself for the skilled person without further considerations [incorrectly, I understand]. This already points to the solution and results in an analysis tainted by an ex-post facto approach."
• As a comment, the technical effect could perhaps also have been formulated as "improved maintenance of the swimming pool's shape when external pressure is applied".

EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t211946eu1.html

3.3.4 There is consensus that the technical effect of the distinguishing features is increased strength of the hanging parts, resulting in the ability to withstand higher internal pressures of the inflatable air chamber.

The appellant [opponent] and the intervener argued that the objective technical problem - according to the problem-solution approach - was thus "how to achieve the technical effect of the distinguishing features".

However, the technical effect invoked by the appellant/intervener (i.e. the hanging element can withstand higher internal pressures) does not solve a technical problem per se but has to be considered in context. Increasing the strength of the hanging parts is not an end in itself but leads to a technical effect whereby the device is able to improve the maintenance of the pool's shape, e.g. when a user is sitting on the top wall or in the pool, as explained in paragraphs [0043] and [0047] of the patent specification.

D28 discloses hanging parts which partially address this problem (see D28.1, paragraph under the heading "Operational advantage of the invention" on page 5). However, this does not change the fact that the distinguishing features in question further improve on the aim of D28, i.e. the maintenance of the pool's shape "when external pressure is applied from the top side".

The objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent (Case Law, I.D.4.2.2). The (subjective) problem formulated in paragraphs [0043] and [0047] of the patent, namely to maintain the shape of the pool, is convincingly solved. It is true that D28 already provides an inflatable pool constructed in such a way that it does not easily collapse when external pressure is applied. However, in view of D28 and the technical effect of the distinguishing features, the objective technical problem is to provide a pool with further improved maintenance of its shape when external pressure is applied (e.g. by a user sitting on it).

For inventive step to be assessed fairly and objectively, it is important not to formulate the objective technical problem either too narrowly or too broadly. The same is true for the technical effect to be considered. The Board finds no justification for formulating the objective technical problem in the narrow terms proposed by the appellant and the intervener since this would take the effect out of its technical context and imply that increasing the strength of the hanging parts is an aim in itself for the skilled person without further considerations. This already points to the solution and results in an analysis tainted by an ex-post facto approach.

T 0703/18 - Problem inventions are rare and somewhat at odds with the PSA

Key points

• The Board, under inventive step:  "The problem to be solved proved to be a contentious issue.". 
• "The [opponent] appellant argued that the technical problem was to provide an infant formula suitable for newborn infants. For the [patentee] respondent, however, the correct technical problem was the one identified in the decision under appeal [probably: "resided in recognising that bioavailability of lutein from infant formula was low"]. In its view, the patent involved one of the rare cases of a "problem invention". It had not been recognised in the art that bioavailability of lutein from formula milk was lower than that achieved by human milk. Once this was known, the solution would have been obvious."
• The Board: "As the respondent [patentee] acknowledged, "problem inventions" are rare. One reason for this may be that they are somewhat at odds with the problem-solution approach. It is generally accepted that the formulation of the technical problem should not contain pointers to the solution or partially anticipate the solution. In contrast to this, "problem inventions" tend to do both."
• I'm not entirely certain of what the Board means with the last sentence.
• The Board reviews the foundational decision T 2/83. "T 2/83 concedes that the discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter. This may be so even though once the formulation of the problem is accepted, the question of whether the solution was obvious becomes irrelevant. A situation may arise in which, if a subject-matter claimed is assessed as a "problem invention", an attack based on lack of inventive step can be successfully directed only against the recognition of the problem, not against the claimed solution. At the same time, T 2/83 makes it clear that in the context of a clearly desired improvement, side effects which may be interpreted as a solution of a yet unknown problem shall not be decisive for patentability."
• The Board then turns to the facts of the case at hand. I refer the interested reader to the text below the fold. I would be glad to learn from comments to what extent the Board applies a coherent framework.
• "Considering all this, it is not justified to accept the formulation of a "problem invention", as suggested by the respondent. Instead, the technical problem has to be regarded as that of providing a nutritional formula (with lutein) suitable for infants, including newborns."
• The patent is revoked.

EPO 

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

T 1520/19 - The description must state a technical problem

Key points

•  In this case, the application does not comply with Rule 42(1)(c) EPC which requires that the description shall " disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art".
• The question is, what is the Article of the EPC that can be used as ground for refusal.
• The Board: " The factual situation can be summarized as follows: it is clear what the claimed invention is and how it can be implemented. However, the skilled person cannot understand from the application or its common knowledge whether the claimed invention solves a technical problem, and which one. The Examining Division refused the application pursuant to Articles 83 and 84 EPC. The Board does not find this to be correct in this case." 
• " According to the requirement of Article 83 EPC that the invention be sufficiently disclosed, the skilled person must be able to carry out the alleged invention. This is the case here for the reasons provided above" 
• " The requirement for the claims in Article 84 EPC is that they define the matter for which protection is sought and that they be clear and supported by the description. These requirements are satisfied: the claimed set of features defines the invention as the description does, so this definition of the invention is supported by the description. It is irrelevant in this regard whether the claimed invention solves a technical problem, or which one." 
• " According to T 26/81 (headnote, last sentence, and reasons 9, esp. second and last sentence), the requirement that the invention should be disclosed in such terms that the technical problem and its solution can be understood (now in Rule 42(1)(c) EPC) cannot be set up as a separate formal criterion independent of inventiveness." 
• " Established case law holds that if a technical effect is not present, i.e. if a technical problem is not solved, then inventive step is to be denied. This is also consistent with the statement in T 26/81 (reasons 9) that, if the subject-matter of of an independent claim, for which there is sufficient disclosure, is judged as being inventive, it must always be possible to derive a technical problem from the application." 
• " In the present case, the application relates to an allegedly improved [] fingerprint sensor [of a particular type]. This undoubtably has the character of an invention in the sense of Article 52 EPC. However, it does not solve any technical problem in respect of a standard [] fingerprint sensor [of that type], so inventive step is to be denied under Article 56 EPC." 

EPO 

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

T 0659/19 - Unambiguously deduced vs. at least hinted at

 Key points

•  The Board, on inventive step: “However, an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art or if it is not at least hinted at in that application” [referring to CLBA]
• As a comment, I would like to recall how different the two alternatives are:
•  " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art" 
• vs. " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect ... is not at least hinted at in [the application as filed]".
• 
  

T 1861/17 - The subjective problem

Key points

• The present Board emphasizes that the objective technical problem can only be formulated on the basis of the distinguishing features in view of the closest prior art / suitable starting point document. 
• The Board thereby departs from e.g. T 0606/99 which had held that "Dabei ist zunächst von der im Streitpatent formulierten Aufgabe auszugehen. Erst wenn festgestellt wird, daß die dort gestellte Aufgabe nicht gelöst ist, muß untersucht werden welche andere Aufgabe objektiv bestand (siehe z. B. T 246/91 oder T 495/91)."
• The present Board: “ sollte die Formulierung dieser "objektiven Aufgabe" nach Auffassung der Kammer regelmäßig erst nach Festlegen des nächstliegenden Stands der Technik erfolgen”.
• As a comment, historically indeed the objective technical problem is 'reformulated' but in my view it needs to be formulated only once, namely on the basis of the distinguishing features and the technical effects that are made plausible and derivable for said features in the application as filed (see T 1/80, hn.II, the very first decision of the Technical Boards of Appeal, cf. Szabo 1986). T1/80 concerned a case wherein the applicant made a technical effect credible in appeal by filing comparative results. 

T 1861/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t171861du1.html 

3.4 Obwohl in der Rechtsprechung bisweilen bei der Ermittlung der objektiven technischen Aufgabe zunächst grundsätzlich von der im Patent genannten Aufgabe ("subjektive Aufgabe") ausgegangen wird (siehe z.B. T 246/91, Gründe 4.4; T 495/91, Gründe 4.2; T 606/99, Gründe 5.3.1 und die nachfolgenden Entscheidungen, die sich darauf berufen), sollte die Formulierung dieser "objektiven Aufgabe" nach Auffassung der Kammer regelmäßig erst nach Festlegen des nächstliegenden Stands der Technik erfolgen. Nur auf der Basis der Unterscheidungsmerkmale im Vergleich zum nächstliegenden Stand der Technik (geeigneten Ausgangspunkt) kann ja nach dem etablierten Aufgabe-Lösungs-Ansatz überhaupt die objektive technische Aufgabe bestimmt werden (siehe z.B. R 9/14, Gründe, 2.1.1). Die Patentschrift kann aber logischerweise nicht vorab vom später zu ermittelnden, tatsächlichen nächstliegenden Stand der Technik ausgegangen sein.

T 1147/16 - Bonus effect

Key points

• This is an opposition appeal about inventive step. The Board finds that the distinguishing feature provides for the technical effect of "reduction of epimerisation". The Board also finds that none of the cited documents teaches that the feature at issue (adding lactose) will reduce epimerisation. The opponent then argues that adding lactose is well-known to provide for "a more general stabilisation effect", such that "the particular effect of reduction of epimerisation" is a bonus effect which can not provide for inventive step.
• The Board: "As stated in T 227/89, in determining which effect is crucial and which is merely accidental (the so-called "bonus effect"), a realistic approach has to be taken, considering the relative technical and practical importance of those effects in the circumstances of a given case." 
• The Board then turns to the technology at issue and concludes that "the known potential use of lactose to stabilise lyophilisates does not equate with the specific effect of lactose on [] epimerisation disclosed in the patent, nor does this known optional use justify that the crucial epimerisation problem be disregarded in the assessment of inventive step."

T 1147/16 - link

11.5 The appellants-opponents 1 regard the particular effect of reduction of epimerisation as a bonus effect, with the consequence that the known more general stabilisation effect of lactose on lyophilisates would render the claimed subject-matter obvious. The Board does not agree.

As stated in T 227/89, in determining which effect is crucial and which is merely accidental (the so-called "bonus effect"), a realistic approach has to be taken, considering the relative technical and practical importance of those effects in the circumstances of a given case.

It is not contested that lactose is one of many commonly known bulking agents that may optionally be used to physically stabilise lyophilisates. However, as submitted by the appellant-patent proprietor, there is no suggestion in the art that a bulking agent is needed for a tigecycline composition, let alone desired (see D37, paragraph 29). In contrast, the issue of tigecycline C-4 epimerisation appears crucial considering that the C-4 epimer lacks the anti-bacterial efficacy of tigecycline, and that the epimerisation rate of tigecycline is particularly fast (see paragraphs [0010] and [0012] of the patent).

Thus the known potential use of lactose to stabilise lyophilisates does not equate with the specific effect of lactose on tigecycline epimerisation disclosed in the patent, nor does this known optional use justify that the crucial epimerisation problem be disregarded in the assessment of inventive step.

T 2291/15 - Essential features

Key points

• This examination appeal is about the requirement of "support" of Article 84 EPC.
• " It is established case law of the Boards of Appeal that the requirement under Article 84 EPC  as to clarity of the claims implies that all the essential features of the invention have to be indicated in an independent claim. The essential features are those features which are necessary for solving the technical problem with which the application is concerned" 
• The question is: what is " the technical problem with which the application is concerned"? Is it the objective technical problem - which is always defined in view of one prior art document? Or is it the "subjective technical problem" as is apparent from the description only? 
• Still in connection with Article 84, the Board states: " In the present case, the board agrees with the appel­lant in that the technical problem of the application cannot be considered the prevention of the presence of hydrogen in the oxide layer. Such a formulation­ con­tains a pointer to the solution of the invention, which should be avoided as it results in an inadmissible ex post facto approach when assessing inventive step." 
• This means that the "problem" under Article 84 needs to be formulated according to the same rules as the objective technical problem for inventive step? (although I understand the Board's point).
• The Board: " The description of the invention starts by outlining the relevant state of the art, in particular the use of sili­con nitride layers in semi­conductor devices in or­der to improve their electronic properties and to pro­vide an environmental barrier. However, when chemi­cal vapour deposition (CVD) is used to form such nitride layers, they tend to contain hydrogen due to the use of silane (SiH4) or ammonia (NH3) as pre­cursors in the CVD schemes. The hydrogen may [...] degrade device performance of semi­con­duc­tor devices made of Group III nitrides or silicon carbide [...] . These are thus considered the tech­nical problems with which the application is concerned." (emphasis added).
• As a comment, for inventive step, the provision is an alternative can be sufficient. Hence, for inventive step, the applicant is not required to put in the claim all (or any) the features mentioned in the description as solving some problem. Under Article 84 EPC it seems that the Examiner can require so even though the subject matter is otherwise patentable. 

EPO T 2291/15 -   link

Reasons for the Decision

1. Clarity

1.1 The independent claims of the main and first auxiliary request correspond - apart from minor clari­fications and a spelling correction - to the respective indepen­dent claims of the main and first auxiliary requests underlying the decision under appeal.

In the contested decision the examining division held that the feature that the sputtered nitride layers were hydrogen-free was essential for solving the problem of preventing the presence of hydrogen in the oxide layer. Since the independent claims of the main and first aux­il­iary requests pending at the time did not con­tain this feature they were unclear (see points 22 and 23 of the Reasons).

1.2 It is established case law of the Boards of Appeal that the requirement under Article 84 EPC 1971 [sic!] as to clarity of the claims implies that all the essential features of the invention have to be indicated in an independent claim. The essential features are those features which are necessary for solving the technical problem with which the application is concerned (see Case law of the Boards of Appeal of the EPO, 8th edition 2016, section II.A.3.2).

1.3 In the present case, the board agrees with the appel­lant in that the technical problem of the application cannot be considered the prevention of the presence of hydrogen in the oxide layer. Such a formulation­ con­tains a pointer to the solution of the invention, which should be avoided as it results in an inadmissible ex post facto approach when assessing inventive step.

The description of the invention starts by outlining the relevant state of the art, in particular the use of sili­con nitride layers in semi­conductor devices in or­der to improve their electronic properties and to pro­vide an environmental barrier. However, when chemi­cal vapour deposition (CVD) is used to form such nitride layers, they tend to contain hydrogen due to the use of silane (SiH4) or ammonia (NH3) as pre­cursors in the CVD schemes. The hydrogen may lead to parasitic capaci­tan­ces or de­graded ohmic contact characteristics and thus limit or degrade device performance of semi­con­duc­tor devices made of Group III nitrides or silicon carbide (see paragraphs [0006] to [0012] of the descrip­tion of the applica­tion). These are thus considered the tech­nical problems with which the application is concerned. 

1.4 According to the invention the nitride layers are de­posited using sputtering rather than chemical vapour deposition. In this manner the nitride layers are sub­stantially hydrogen-free thereby overcoming the above problems (see e. g. paragraphs [0034] and [0039] of the descrip­tion of the applica­tion).

In the decision the examining division was of the opin­ion that the sputtering technique would not auto­mat­ic­ally result in a hydrogen-free nitride layer, because other process parameters such as hydrogen contamination in the process chamber could lead to the presence of hydrogen in the nitride layer (see point 22.3 of the Reasons).

The board notes that sputtering is conven­tion­ally per­formed using a noble gas such as argon or kryp­ton as the sputtering gas filling the sputtering chamber in or­­der to avoid reactions with the target source mate­ri­al. Only when such reactions are intended in reactive sput­ter­ing schemes the gas may also comprise the de­sired par­ticles. Accordingly, in the present case of sputter de­positing nitride layers the gas comprises argon and nitro­gen (see e. g. paragraph [0053] of the description of the application). Hence, the board con­siders that under realistic conditions there is no hydro­gen present when nitride layers are sputter de­posited.

Consequently, the features related to the sputter de­posited nitride layers and the corresponding deposition steps as claimed in the independent claims of the main request and first auxiliary request (see features (a)-(c) and (d)-(e), respectively) overcome the tech­nical problems stated above thereby leading to improved de­vice per­for­mance.

The independent claims of the main request and of the first auxiliary request are thus considered to contain all the essential features of the invention.

1.5 In the independent claims of the second auxiliary re­quest it is explicitly specified that the sputtered nitride layers are hydrogen-free. Hence, the above issue concerning lack of clarity due to the absence of precisely this feature as an essential feature does not arise for these claims.

1.6 In view of the above the board is of the opinion that the claims of the main request and of the first and second auxil­iary requests meet the requirements of the EPC as to clarity of the claims (Article 84 EPC 1973 in combi­na­tion with Rule 29 EPC 1973).

2. Further procedure

In the decision under appeal only the requirement of the EPC as to clarity of the claims (Article 84 EPC 1973 in combi­na­tion with Rule 29 EPC 1973) was dealt with. The other requirements of the Conven­tion were not dis­cussed. In order to allow for the examination of these requirements in two instances, remittal of the case to the department of first in­stance under Article 111(1) EPC 1973 - as requested by the appellant - is deemed appro­priate.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 2321/15 - Problem invention accepted

Key points

• The Board accepts inventive step based on a problem invention.
•  "Consequently, the Board considers that the problem posed by the contested patent [the presence of air pockets in the freeze dried porous microspheres, and the resulting difficulties in rehydrating the particles] is an unrecognized problem in D4 [the closest prior art]."  
• " The discovery of a yet unrecognised problem may give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem inventions"). The question regarding the inventive step, in relation to the modification of the process of D4, is not whether the skilled man could have added a sealing and storage step under vacuum, but whether he would have done so in expectation of some improvement or advantage. " 
• " Since the process disclosed in D4 appears to be satisfactory, the addition of a further process step would have appeared superfluous, wasteful and devoid of any technical effect. In view of the recognition that a sealing and storage step under vacuum has a substantial proven effect, the outcome was not predictable and the claimed modification involves an inventive step on this basis. "

EPO T 2321/15 - link

3. Main request - Article 56 EPC

3.1 The invention relates to methods for formulating easily rehydratable dried pharmaceutical compositions made from swelling particles, which are used as chemo-embolic compositions. One problem with freeze drying gels, such as porous microspheres is that air pockets develop within the microspheres as the water is removed during the drying process, which is problematic when the dry beads are rehydrated.

3.2 The closest prior art is D4, which discloses the preparation of PVA porous microspheres comprising an active agent for embolization, by a method involving a freeze-drying step (see pages 8-9 and examples 23-26). This document does not disclose a sealing step under vacuum, but mentions that "the vials can be sealed, in situ, under a protective atmosphere if required" (see page 10, lines 8-9). Examples 25 and 26 of D4 mentions the rehydration of microspheres.

T 2341/13 - No need to explain why

Key points

• This examination appeal deals with an interleaver, so the technology is not easy (at least for me). The problem addressed by the invention is, essentially, providing a hardware chip design (for a mobile phone) "capable of interleaving input data frames with a size that is not a multiple of 2**(m)". The difficulty for the Examining Division was that the application does not explain why you would want to use frame sizes (and presumably, such frame sizes are not common in the art).
• " In the oral proceedings before the Examining Division, it was repeatedly asked why the invention should use a frame size that was not a multiple of 2**(m). The Examining Division appears to have considered it problematic that the application suggests that the invention may be used in a communication system based on a standard that was neither publicly available at the priority date nor fully disclosed in the application.

• The Board observes that knowledge of any communication standard is not necessary to carry out the claimed invention and that it is perfectly valid to pose the problem of obtaining interleavers for frame sizes that are not a multiple of 2**(m). If the claimed solution to this problem is not rendered obvious by the prior art, then an inventive step is present. " 

EPO T 2341/13 -  link 




5.4 Neither document D1 nor document D3 addresses the problem of constructing, from a plurality of m-stage PN generators, an interleaver of low hardware complexity which is capable of interleaving input data frames with a size that is not a multiple of 2**(m). In particular, neither document hints at the solution as claimed.

T 0584/10 - Technical effect and objective technical problem

Key points

• The decision relates to the formulation of the objective technical problem for a claim directed to (effectively) an input device for a navigation system.
• The Board can not acknowledge that the distinguishing feature provides a more intuitive or user friendly input device, because that effect is not provided directly by the feature. The Board holds, as established case law, that the objective technical problem should follow from objective physical, chemical or similar effects which are associated directly and causally with the technical features of the claimed invention and which also are derivable from the application as filed. 

T 0584/10 - link

Entscheidungsgründe

1. HAUPTANTRAG

Dieser Antrag entspricht der Aufrechterhaltung des Streitpatents auf Basis des der angefochtenen Entscheidung zugrunde liegenden "Hilfsantrag 3".

Anspruch 1, wie aufrechterhalten, umfasst folgende einschränkenden Merkmale:

Verfahren zur Eingabe einer Zeichenfolge in eine Recheneinheit, wobei
A) in einer Speichereinheit Zeichenfolgen gespeichert werden und von der Recheneinheit durch einen Vergleich bisher eingegebener Zeichen mit den gespeicherten Zeichenfolgen auswählbare Zeichen für ein nächstes, einzugebendes Zeichen der Zeichenfolge ermittelt werden;
B) die auswählbaren Zeichen in einer Anzeige hervorgehoben angezeigt werden;
C) eines der auswählbaren Zeichen als ein einzugebendes Zeichen angezeigt und als ein nächstes Zeichen der Zeichenfolge durch eine Bestätigungseingabe eingegeben wird;
D) die Zeichen in einem zweidimensionalen Feld angezeigt werden;
E) von dem eingebbaren Zeichen über eine Richtungseingabe zu einem in der eingegebenen Richtung in dem zweidimensionalen Feld zu dem eingebbaren Zeichen liegenden auswählbaren Zeichen gewechselt wird;
F) als eine Richtung jede der Richtungen unten, oben, rechts und links über das Bedienelement in Form einer Kreuzwippe oder eines Joysticks ausgewählt werden kann und eine der Richtungen unten, oben, rechts oder links ausgewählt wird;
G) das auswählbare Zeichen, zu dem gewechselt wird, als eingebbares Zeichen angezeigt wird.

T 0273/11 - Could or should have been presented

Blog headnote
In Art 12(4) RPBA, "could have been presented in the first instance proceedings" is to be read as "should have been presented", as the requirement for holding inadmissible (claim) requests in appeal (see e.g. T 144/09).

Analysis

• Board admits claim request because it is "the logical development of the discussion on inventive step and constitutes a reaction to the opposition division's decision to consider the main request as not inventive". 
• "Mix of mainly" does not provide basis for "comprising".
• The decision also contains a nice example of the Board demonstrating how to formulate the objective technical problem without pointers to the solution in it.

T 0273/11 published 01.04.2015

Dated 28.01.2015 - Board 3.3.07 (Semino, Usuelli, Schmitz) - for the decision, click here.

Summary of Facts and Submissions

I. The appeal of the patent proprietor (appellant) lies against the decision of the opposition division to revoke European patent No. 1 337 238. [...]

VI. [...] Claim 1 of the main request read as follows:

"A device for producing a microfoam suitable for use in scleropathy of blood vessels, comprising