T 0866/24 - Unclear features and their technical effect

Key points

• Claim 1 of auxiliary request 2A differs from claim 1 of the main request in that the following feature has been added at the end (board's labelling and emphasis): 10) "wherein the SPR stops using a maximized proxy provider, at least for a period of time, when at least one of the configured maximum threshold is reached".
• The Board: "The patent description neither mentions the term "maximised proxy provider" nor appears to contain an embodiment having both a "dynamically [configured] utilisation threshold" as well as a "configured maximum threshold". The interaction of these two "thresholds" is thus left to the reader's imagination. ... Since an objection as to lack of clarity cannot be raised in the present case in view of G 3/14, the board has to accept the wording of feature 10) at face value. "
• "If unclear features are added from dependent claims to the independent claims in order to overcome an objection as to lack of inventive step, the onus to show that this objection is credibly overcome typically lies with the proprietor. On balance, in the absence of an objective technical problem which is credibly solved, feature 10) cannot contribute to an inventive step"
• In connection with a further auxiliary request: " According to the perception of this board, there is a recent tendency that dependent claims are less and less examined with respect to clarity in examination proceedings despite the fact that their full examination under Article 84 EPC was not considered "unrealistic" in G 3/14, Reasons 32. Such a full examination is even expressly encouraged by the Enlarged Board of Appeal in G 1/24, Reasons 20 (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. "
• "Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, are deemed to have been examined for clarity, although de facto they have not been. Nonetheless, they cannot be objected to under Article 84 EPC due to the conclusions of G 3/14."
• "The Board deems this result unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. In addition, unclear features tend to elude a sensible comparison with the respective prior art. On top of that, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. "
• "Categorically barring opponents in such cases from raising clarity objections under Article 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal."
• "These unclear formulations of feature 12) do therefore not allow to determine whether the technical effect alleged by the proprietor is indeed achieved."

EPO 

The link to the decision is provided after the jump.

T 1456/23 - A non-obvious alternative (soft gelatin capsule)

Key points

• "In appeal, the appellant [opponent]  takes the hard gelatin capsule of formulation 9, example 1 of D11 as sole starting point for the assessment of inventive step."
• " The subject-matter of claim 1 differs from formulation 9 of D11 in that the claimed capsule is a soft gelatin capsule with a soft capsule shell as defined in claim 1."
• "The [proprietor] relies, among others, on D5 (Annex III and Annex IV) and D83 (Annex V) as evidence of a technical effect on bioavailability associated with the differentiating feature." "The [opponent] contests that these post-published data can be taken into account in view of G 2/21,"
• "The application as filed mentions the problem of providing immediate release calcifediol solid oral formulations having improved bioavailability. As a solution to this problem, the application as filed proposes, in its broadest disclosure, a soft capsule comprising a further undefined soft capsule shell. The particular soft capsule shell composition of present claim 1 is however disclosed on page 9, lines 24-27 and is embodied by the single soft capsule shell prepared in the examples"
• The Board: " It is not debated that the evidence in the application as filed, comparing soft capsules with ampoules, is not suitable to show an effect over the hard capsules of D11. However, the Board considers that the skilled person, based on the application as originally filed, would derive the effect of improved bioavailability associated with the soft capsule including a soft capsule shell composition of present claim 1 as being encompassed by the technical teaching and embodied by the same originally disclosed invention. Considering the preference for and presence of the specific soft capsule shell of claim 1 in the examples studying bioavailability, the link between bioavailability and not only a soft shell generally but also, as the case may be, the now claimed specific soft shell composition, does not change the nature of the claimed invention."
• As a comment: the remark about "the link between bioavailability and not only a soft shell generally but also, [...]  the now claimed specific soft shell composition,' appears to refer to the "no cross-reliance" part of G 2/21 hn. 2: "would derive said effect as being ... embodied by the same originally disclosed invention." 
• "  the Board concludes that the problem is the provision of soft capsules with improved bioavailability of calcifediol"
• Perhaps the reference to 'soft capsules' is a slip of the pen, because the prior art Formulation 9 is about hard capsules, so 'soft capsules' is part of the claimed solution.
• For the obviousness, it is important that claim 1 is directed to an "An immediate release soft capsule" containing calcifediol. Immediate relese formulations and 'modified release formulations' are two different types of formulations. 
• "The gist of D11 is to provide modified release formulations containing wax, and D11 further mentions as one benefit an improved bioavailability []. While some immediate release formulations are shown in D11, this is for comparative purposes only. 
• The choice of D11 as starting point for the assessment of inventive step defines the framework for further developments. The skilled person, seeking to improve the bioavailability of the formulation, would not do away with the key feature of D11 pertaining to a modified release formulation. 
• In this respect, the results reported in D11 do not point to the claimed formulation. ... the [comparative ]  immediate release formulation 9 of example 1 leads to a lower calcifediol bioavailability than the wax-comprising, modified release formulations 3 and 4 of Example 1 (see table 5 of D11). The skilled person, seeking to provide calcifediol formulations with improved bioavailability, is thus not led to the claimed solution.
  
• As a comment, perhaps the above reasoning would also apply in the case of providing an alternative as the objective technical problem. 

• On the type of evidence ofr the improved bioavailability: "the Board considers that a party filing experimental data is not under the obligation to perform any specific statistical analysis of these data, and that, in establishing whether a certain technical effect alleged by a party has been achieved, the EPO has to apply the general principle of free evaluation of evidence (see T 2717/17, point 4.3.5 of the reasons). The decisions cited by the appellant in this regard were either taken in the particular context of qualitative results in tests with a subjective character (see T 1962/12, point 1.5.1 and 1.5.2 of the reasons; T 275/11, point 3.5.2 of the reasons) or in situations where the data were considered not reliable for various reasons which do not characterise the present case, i.e. not simply on account of the small number of tested individuals (see T 785/07, point 2 of the reasons). In the case at hand, the above data are sufficiently convincing considering the information given on the methodology and the absence of demonstration to the contrary. In addition, these in vivo data in dogs are in line with the in vitro data on file (see 3.3.2(b) above). Under these circumstances, the Board considers that, even taking into account the small group of dogs tested (i.e. 3 dogs) and the alleged high inter-individual variability, the effect of improved bioavailability is shown to a sufficient degree of credibility."

EPO 

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

T 1865/22 - Inventive step of omitting a feature

Key points

• In the case at hand, the only distinguishing feature is omitting a feature of the prior art method.
•  The Board, in the headnote: "The mere fact that claimed subject-matter excludes a technical feature disclosed in the closest prior art as being essential or advantageous for a technical effect cannot in itself establish the existence of an inventive step. "
• "Rather, where the exclusion of the technical feature in question is the only feature distinguishing the claimed subject-matter from the closest prior art, it must be shown that the claimed subject-matter achieves said technical effect to an extent comparable to that of the closest prior art, even without this feature. Without such proof, the claimed subject-matter merely results in an obvious deterioration of the technical effect described in the closest prior art"
• As a comment, possibly, even a surprisingly small deterioration can provide for inventive step in some cases. Indeed, the term 'comparable' used  by the Board (as opposed to identical) could accommodate such cases. 
• 
  

EPO 

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

T 0746/22 - On headnotes and the actual text (and optical lenses)

Key points

• One of the curious aspects of the case law is that the headnotes (catchwords) sometimes can not be found so clearly in the actual text of the decision. I'm not privy to who drafts the headnotes and when (does the entire Board approve of them?). Perhaps someone can share an insight in the comments.
• Headnote: "In a claimed optical lens system comprising a plurality of lenses, it must be examined whether the feature distinguishing the claimed lens system over the prior art has a technical effect. If no effect beyond an arbitrary modification of the prior art lens system can be attributed to the distinguishing feature over the whole scope of the claim, the claimed lens system does not involve an inventive step. See Reasons, point 1.5."
• This headnote is a bit particular in that, except for the part in italics, it is just a statement of established case law that arbitrary variants are not inventive. What is so special about optical lens systems?
• Turning to point 1.5 in its entirety:  "As for instance explained in T 176/97, point 4.4 of the Reasons for the Decision, if the distinguishing feature of a claim has no effect of technical relevance on the claimed subject-matter and does not credibly solve an objective technical problem, then no inventive step can be based on it. In the present case, the objective lens system of claim 15 is considered to be no more than an arbitrary modification of the objective lens system of D4 which does not involve an inventive step within the meaning of Article 56 EPC."
• On the other hand, point 1.3.2 contains some reasoning that could be very important for anyone prosecuting patents in the field of optical lens systems: "merely defining a minimum contribution of the optical power of a lens in a group of five lenses (all of which are barely defined by optical parameters) has no relevant technical effect on any of the optical characteristics of the objective lens system, such as reducing the total optical length, reducing the optical aberrations, improving the optical quality or increasing the field of view. Indeed, all of these optical characteristics of the objective lens system result from precise optical parameters of the objective lens system (e.g. radii of curvature of the constituting lenses, lens materials, distances between the lenses). In order to provide at least a contribution to a well-defined optical characteristic of the objective lens system, it would be necessary that the claimed objective lens system be defined in greater detail by optical parameters, such as the radii of curvature of the lenses, the relative positions of the lenses and the aperture stop, the material of the lenses. "
• The Board adds, for good measure: "the fact that the scope of protection of a claim comprising all relevant optical parameters necessary to achieve a desired optical characteristic of a lens design is rather limited cannot generally be a reason for omitting the optical parameters from the claim".
•  A clear instruction to those patent attorneys working in the field. Whether it is justified or too strict, I can't judge. That is for those intimately familiar with the technology to consider.

EPO 

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

T 1418/22 - Using your failed experiments to your advantage

Key points

• Claim 1 is directed to a polymorph. "It is common ground that compound (1) as prepared in example 6 of D3 is in amorphous form (see also example 5 of the patent, reproducing example 6 of D3). Therefore, the feature distinguishing the subject-matter of claim 1 as granted from example 6 of D3 is that compound (1) is in the crystalline form I."
• "The board [...] considers that the objective technical problem should at least be seen as the provision of a more stable and non-hygroscopic form of compound (1). "
• "as pointed out by the respondent [proprietor], example 1 of the patent (page 19) shows the crystallisation procedure used to achieve form I of compound (1). Among a high number of single solvents and solvent combinations used (75 in total, see table 1 on pages 20 to 25), only four mixtures of solvents (samples 23, 24, 39 and 58) led to form I. In the other cases, when solids were obtained, these represented the amorphous form or, in two instances (samples 53 and 69), a different polymorphic form of compound (1) named form II. Anti-solvent experiments did not lead to form I of compound (1) either "
• "Additionally, while it can be accepted that it would have been expected by the skilled person that crystalline forms are more stable than amorphous forms, the results of the patent (see summary provided by the respondent on page 13 of the reply to the statement of grounds of appeal) show that two further polymorphic forms (form II and form III) of compound (1) were found to be more hygroscopic than form I."
• Including the non-working non-claimed examples and alternative polymorphs in the patent application seems a smart move in this case.
• See also: Dai Rees, Inventive Step: The Stories We Tell - link
• "as set out above, form I has a lower hygroscopicity than forms II and III. Thus, in contrast to the condition referred to under point 5.2 of the reasons of decision T 777/08 for denying inventive step, form I, in terms of its hygroscopicity, is not an arbitrary selection of a specific polymorph from a group of equally suitable candidates."
• The Board did not A14, an experimental report drawn up in 2022, i.e. seven years after the priority date, which was filed by the appellants with the statement of grounds.
• According to the opponent/appellant: "A14 demonstrated that if the skilled person had tried standard crystallisation solvents as disclosed e.g. in D7 [prior art, c.g.k.], they would necessarily have arrived at form I of compound (1) as defined in granted claim 1. A14 also showed that no other solid form was crystallised."
• The Board: "the filing of A14 raises complex issues. In fact, admitting A14 would require, for example, considering whether a characterisation by X-ray powder diffraction of the starting sample used in A14 unambiguously allows concluding that the starting material was in amorphous state and that no crystalline material was present. This was contested by the respondent. It would also require assessing whether the crystallisation procedure followed in A14 was such to unambiguously exclude the presence of unintentional seeding. The discussion and consideration of these complex issues would have been detrimental to procedural economy and contrary to the primary object of the appeal proceedings to review the appealed decision in a judicial manner (Article 12(2) RPBA)."
• After the Disappearing Spoon (a book, link) and the Disappearing Polymorph (Derk Lowe's post, the original article is older), now the Disappearing Technical Problem.

EPO 

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

T 1998/22 - Machine learning

Key points

• "It is noted that the use of a "cross-product feature transformation" in the "wide machine learning model" [as specified in the amended claims] may contribute to establishing that the advantages recited in paragraph [13] are actually achieved, as emphasised by the appellant (statement of grounds appeal, pages 10 and 11), but these advantages [see below] remain of a non-technical nature."
• "According to the description [paragraph 13], "in general, a wide machine learning model can memorize feature interactions through a wide set of cross-product feature transformations and a deep machine learning model can generalize unseen feature combinations by applying embedding functions to the input features", and "by including both [a] deep machine learning model and [a] wide machine learning model, the wide and deep machine learning model can obtain both benefits of memorization and generalization and thus can perform better on predicting an output from a set of input features" (paragraph [13])."
  
  
• "As to the argument that only a "technical expert" could have devised the features of the invention [i.e. the CardinalCommerce test], the board notes, as a general word of caution, that this kind of enquiry may be helpful in some cases to separate non-technical features from technical features - in particular to identify business-related features - but does not constitute a definite test as it only concerns which kind of considerations underlie some features of the invention and not which kind of effects are achieved by it. For instance, a claim to a computer-implemented simulation may involve features which are based on expertise in the technical field of the technical system that is being simulated. This alone would however not be sufficient to conclude that these features contribute to the technical character of the claim (G 1/19, reasons 122, 125, 141 and 142)."
• "In any case, the board tends to consider that claim 1 does not reflect any considerations beyond computer programming (which encompasses the design of algorithms) and mathematics."

EPO 

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

T 2157/21 - Embodied by the same originally disclosed invention

Key points

• The Board  applies G2/21, hn.2, the part about  "would derive said effect as being [...] embodied by the same originally disclosed invention." (without mentioning the decision).
• A crystalline form of a compound is claimed. After some amendments, the claim meets Article 123(2) EPC and defines the crystalline form quite specifically in terms of XRD peaks.
•  "Claim 1 of auxiliary request 12, which is identical to claim 1 of auxiliary request 12A, claims a crystalline form designated as "Form II" which is characterised by an XRPD pattern comprising lines at 2Theta values measured using CuKa radiation, wherein the X-ray powder diffraction pattern is the same as that shown in Figure 7." (i.e. the claim refers to Figure 7 that is also included in the claim and shows the XRD spectrum as an image.
• "Thus, the question that is decisive for the acknowledgement of an inventive step is whether the claimed polymorph provides an unexpected advantage in comparison with forms disclosed in the prior art. The patent proprietors relied, in this regard, on the data presented in Examples 14 to 16 of the patent in suit."
• "Examples 14 and 15 of the patent in suit compare "Form II" of the patent in suit with the so-called "patent form" disclosed in US8877938B2 (i.e. the US equivalent of D3) in terms of moisture uptake and flowability. It was not in dispute that the comparative experiments reported in Examples 14 and 15 represent a comparison of "Form II" with the crystalline form of trisodium valsartan sacubitril as disclosed in document D3. The reported outcome is that "Form II" showed better flowability (Example 15) and less moisture uptake when exposed to humidity (Example 14). "
• So far, so good.
• "However, it is not disclosed in the patent specification whether the samples tested according to Examples 14 to 16 were obtained according to the process of preparation described in Example 6, or according to the process described in Example 7. In both Examples 6 and 7, the respective product that was prepared is designated as "Form II"."
• "it cannot be confirmed on the basis of the available evidence that the crystalline products of Example 6 and Example 7 are indeed identical, as argued by the patent proprietors. As a consequence, the exclusive use of the term "Form II" in Examples 14 to 16 does not permit the reader to infer that, specifically, the product according to Example 6 and corresponding Figure 7 and Table 4 was tested in these examples. For this reason, it cannot be confirmed that the specific product claimed in claim 1 of auxiliary requests 12 and 12A, which is characterised by the diffractogram in Figure 7, indeed exhibited the favourable properties described in Examples 14 to 16."
• Inventive step is denied.
• For the lower-ranking auxiliary request, the claim refers to Figure 8 instead of Figure 7.
• "By analogy, the same reasoning applies: since it cannot be confirmed that the crystalline product prepared according to Example 7, as characterised by Figure 8 (and Table 5), was used in the experiments described in Examples 14 to 16, it has not been conclusively shown that the claimed product has superior properties in comparison with the crystalline form of D3. Accordingly, the same objective technical problem and the same conclusions regarding obviousness apply as those set out above with respect to auxiliary requests 12 and 12A."
• In other words, likely the compound of Example 14 was either the one of Figure 7 or Figure 8, but the ambiguity prejudices basing inventive step on the effects shown in Example 14. 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0228/23 - The requirements for a technical effect

Key points

• This decision illustrates that there are four requirements for acknowledging a technical effect: procedural admissibility, support in the application as filed (G2/21, hn.2) and proof of the effect; the support requirement in turn comprising two requirements: same technical teaching and same invention.
• "The appellant - patent proprietor relied [during the oral proceedings] for the first time in the entire proceedings on an alleged improvement of friability (even if based on data contained in the documents on file) as a technical effect in the context of inventive step. In particular as argued by appellants - opponents 2 and 4 during oral proceedings friability and hardness are two different properties evaluated by different methods (see D33, paragraphs 17.5.3 and 17.5.4). Moreover, none of these two properties was relied upon by the appellant - patent proprietor as a technical effect for the issue of inventive step in the present proceedings before. This argument therefore constitutes an amendment to the case of the appellant - patent proprietor (Article 12(4) RPBA, 1**(st) sentence). Since this amendment was filed after notification of the communication under Article 15(1) RPBA, its admittance is to be decided on the basis of Article 13(2) RPBA."
• "the Board does not admit the submission of the appellant - patent proprietor of 30 July 2024 in section B.6 concerning friability into the appeal proceedings (Article 13(2) RPBA)."
  
  
• Turning to a further technical effect: "According to the appellant - patent proprietor, the use of dry granulation to prepare the present tablets would result in a faster and more complete drug release compared to tablets prepared by direct compression. This technical effect would be substantiated by the experimental data provided in document D61. Post-published evidences could be taken into account in the present case in line with G 2/21."
• "In the present case, the Board considers that the alleged specific effect of faster and more complete release profile is indeed derivable from the original application in view of the references to immediate release, desired dissolution profiles and dissolution performance (see e.g. Title and page 2 of the original application). In particular, as underlined by the appellant - patent proprietor during oral proceedings, the description of the immediate release profile in the context of the invention on page 4 lines 21-31 of the original application defines an increase of the release percentage and/or a reduction of the release time. This passage suggests that a faster and more complete release profile constitutes a purpose of the invention. This technical effect is thus encompassed by the technical teaching of the original application as required by G 2/21."
• "It remains to be determined whether the second criteria set in G 2/21 was met, i.e. whether the effect is embodied by the same originally disclosed invention. The Board agrees with the appellants - opponents that the original application discloses that the tablets can be prepared by direct compression or dry granulation and does not indicate whether one of these methods is preferred over the other in relation to its effect on the release profile of the tablet. However, the fact that all the examples of the original application concern dry granulation indicates that dry granulation would be preferred over direct compression in general in the context of the application. Moreover, the original application describes merely two preparation processes (dry granulation and direct compression). In this specific case of a very limited number of embodiments defined in the original application, one of these being also the subject-matter of the closest prior art and the other one being generally preferred, and in the absence of any legitimate reason at the effective date to doubt that the alleged effect could be achieved with the claimed subject-matter (see T 116/18, reasons 11.14), the Board is of the opinion that the appellant - patent proprietor should be entitled to specify a preference for one of said originally disclosed embodiments over the other in connection with said effect. In the present case, the alleged effect of faster and more complete release profile for tablets obtained by dry granulation compared to direct compression does thus not change the nature of the claimed invention, as defined in G 2/21 (see last sentence of paragraph 93), so that it is embodied by the same originally disclosed invention in the sense of G 2/21."
• "In line with G 2/21, the alleged technical effect of faster and more complete release profile in so far as it is supported by the post-published experimental data on file is thus to be taken into account when assessing the inventiveness of the claimed subject-matter. "
• "Each of the parties provided comparative experiments based on different reworkings of the example disclosed on page 19 of D1 (see D61 submitted by the appellant - patent proprietor and D40, D66, D56 and D71 submitted by the appellants - opponents). Varying results were obtained, showing: - either a faster and more complete release of the drug when using dry granulation (D61 [filed by the proprietor]), - or no significant difference in the release rates between tablets obtained by dry granulation or direct compression (D40/ D66 and D71, in particular in case of experiments 1 and 4 of D71 [filed by the opponents]).
•   The Board observes that the comparative examples referred to by each party appear to fulfil the standard criteria to appropriately substantiate an effect of the distinguishing feature (the preparation method - dry granulation or direct compression - being the sole difference between each comparative example). The Board considers that the lack of certain details in the example of document D1 required the parties to fill the gaps, leading to different comparative compositions."
• " Furthermore, as argued by appellant - opponent 7, variants of the prior art are usually permitted for comparative tests as long as the features common with the claimed invention are identical and the sole difference remains the distinguishing feature. There is therefore no fundamental reason to consider the experiment of document D61 as having a higher probative value than those of documents D40/D66 and D56/D71."
• "when taking into account all the experimental data on file, an improvement of the release rate for tablets obtained by dry granulation compared to direct compression has not been convincingly substantiated throughout the tested compositions. Hence, the alleged technical effect cannot be considered to credibly occur over the whole breadth of the claims. "
• This is the proof of the technical effect (across the whole scope of the claim) as required by T 939/92 (see also G/03 r.2.5 for the case of a few non-working embodiments).
• The patent is revoked. 


EPO

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

T 1610/22 - Solution prior to the problem

Key points

• "According to the patent in suit, the problem to be solved is to provide a redox flow battery having a long cycle life (paragraph [0006])."
• "It is proposed to solve the problem using a redox flow battery characterised in that a first permeation preventing unit is disposed adjacent to an outlet for the first electrolytic solution of the first electrolytic solution container."
• "the patent lacks any evidence that the presence of a permeation preventing unit in a set-up as shown in D2 would provide any benefit in the long run. Even if it were accepted that the pellets of D2 would degrade over time, there is still no evidence that the degradation would be such as to clog the porous carbon felt electrode. As indicated by the respondent [proprietor (?)], the degradation of materials in batteries over time is only now becoming the subject of intense research, so this phenomenon was not described and corroborated by evidence in the patent. Therefore, no benefit of a permeation preventing unit in D2 can be discerned.
• Cf. G2/21 hn.2. 
•  "to provide a permeation preventing unit in the set-up of D2 since it does not bring any benefit (see respondent's reply to the appeal, page 17, first full paragraph).  Therefore - as even the respondent acknowledges - including such a unit is a disadvantageous modification which cannot justify an inventive step"
• In Ar-3, the active material is limited to powder, which could leach (in D2, the active material is in the form of the pellets). However, that auxiliary request is not admitted under Art. 13(2).

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0228/23 - The admissibility of a technical effect

Key points

• In G 2/21, Question 1, as posed by the TBA, was formulated in terms of the admissibility of post-published evidence for the technical effect ("must be disregarded").
• The answer given by the EBA in the second headnote concerned the technical effect in terms of substantive patent law (see points 57-58 of the reasons), and in terms of "the technical teaching" of the application as filed.
• Thereby G 2/21 did not pre-empt the procedural admissibility of technical effects, in the sense that a technical effect is a factual assertion (of the proprietor) that can be late-filed and inadmissible, as the present decision shows. 
• In other words, the requirement of G 2/21, hn.2, and the exercise of discretion under Art.114(2) EPC are independent of each other. 
• " In section B.6 of its submission of 30 July 2024 [shortly before the oral proceedings], the appellant - patent proprietor referred to an improvement in terms of friability when preparing the tablets by dry granulation compared to direct compression. The appellant - patent proprietor argued during oral proceedings that the improvement of friability was encompassed by the teaching of the patent, since the patent explicitly refers to the hardness of the tablets and friability is a known critical parameter of tablets."
• Note, the second sentence is about G 2/21, headnote 2.
• "This argument [...] constitutes an amendment to the case of the appellant - patent proprietor (Article 12(4) RPBA, 1st sentence). Since this amendment was filed after notification of the communication under Article 15(1) RPBA, its admittance is to be decided on the basis of Article 13(2) RPBA."

• "In the present case, the appellant - patent proprietor has not indicated any such exceptional circumstances."

• " As a consequence, the Board does not admit the submission of the appellant - patent proprietor of 30 July 2024 in section B.6 concerning friability into the appeal proceedings (Article 13(2) RPBA)."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0314/20 - Interpreting G 2/21

Key points

• This decision was issued in writing on 20.12.2024.  The decision was taken on 16.11.2023 (!). 
• No communication under Art. 15(9) RPB is visible in the public online file. We must trust the President of the Boards was informed of the delay as prescribed.
• The catchword is "On the interpretation of decision G 2/21 ",  so I can see why the Board needed some time.
• Claimed is the combination of empagliflozin with linagliptin. 
• "In support of the alleged  [technical effect of] "increase in GLP-1", the respondent [proprietor] referred to post-published documents D55 and D56."
• "As explained below, the technical effect relied on by the respondent for inventive step (see point 6.9 above) and possibly shown by document D56 cannot be taken into account for formulating the objective technical problem in light of decision G 2/21 "
• "he current Board identifies three challenges in interpreting point 2 of the order of decision G 2/21."
• "First, the requirements "encompassed by the technical teaching" and "embodied by the same originally disclosed invention" were not used in the plausibility case law underlying questions 2 or 3 of the referral. Therefore, their relation to this case law remains to be defined, particularly in terms of whether, and to what extent, they replace, align with, or modify it."
• "Second, the Enlarged Board did not expressly define these requirements. It could be argued that the dependent clause "because such an effect does not change the nature of the claimed invention" in point 93 of decision G 2/21 (see point 6.12.2 above) serves as their definition. However, if this were the case, it would be unclear why the Enlarged Board did not simply state that a patent applicant or proprietor can only rely on a technical effect if such an effect does not change the nature of the claimed invention, instead of introducing two distinct requirements. "
• "Finally, the Enlarged Board did not expressly state the purpose of these requirements."
  
  
• " In decision T 116/18 [of July 2023, after the remittal], the competent [Technical] Board reached a number of conclusions on the relationship, the purpose and the content of the two requirements outlined in point 2 of the order of decision G 2/21."
• See my blog post on that decision.
• " This Board faces two issues with the interpretation of decision G 2/21 given in the passages quoted from decision T 116/18 in point 6.13.4 above. [...]
• "the [TBA in T116/18 of July 2023] effectively adopted what it defined in the referral T 116/18 as the "ab initio implausibility" standard."
• "some of the inferences drawn in the passages quoted above from decision T 116/18 are not supported by the text of decision G 2/21. "
  
  
• "In the present case, the current Board does not need to give a definitive answer as to whether it can endorse all the conclusions of decision T 116/18 regarding the two requirements set out in point 2 of the order of decision G 2/21. The Board considers that the purpose of these requirements is to prevent patents from being granted for inventions that are not complete at the filing date. Such speculative applications arise where either the existence of the claimed technical effect or its generalisation is speculative. This may occur because relevant data have not yet been generated or, if available to the patent applicant, have not been disclosed in the patent application.
• " If the Board's understanding of the purpose of the two requirements - which aligns with the view in T 116/18 - is correct, the respondent cannot rely on the technical effect in this case. This is because a skilled person would not expect the technical effect in question - an increase in active GLP-1 levels from the combination of empagliflozin and linagliptin compared to increases in active GLP-1 levels achieved with combinations of emplagliflozin with sitagliptin and vildagliptin, respectively - on the basis of the original disclosure of the application itself. This effect is not only unsupported and not made credible by the application as originally filed; it even contradicts its technical teaching. Therefore, whatever the meaning of the two requirements in G 2/21, they cannot be met in the present case if patenting for inventions not made at the filing date is to be excluded."
  
  
• "as observed by the appellants [opponents] at the oral proceedings, the application as originally filed presents combinations of empagliflozin with linagliptin, sitagliptin, vildagliptin, saxagliptin or alogliptin at an equal level of preference. This is apparent from the paragraph directly below Table 1 (see page 33, lines 2 to 5). This paragraph explains that among the 176 combinations exemplified in Table 1, the combinations numbered "97", "165", "166", "167" and "168" are most preferred. Combination 97 pertains to the currently claimed combinations, i.e. combinations of empagliflozin and linagliptin or a pharmaceutically acceptable salt of it []. Combinations 165 to 168 relate to combinations of empagliflozin with sitagliptin, vildagliptin, saxagliptin and alogliptin, respectively []"
• "the purported technical effect relied upon by the respondent [proprietor] for inventive step is an increase in plasma levels of active GLP-1 which is stronger and more prolonged in time than the one achieved by combinations 165 and 166, i.e. combinations of empagliflozin with sitagliptin and vildagliptin, respectively (see point 6.9 above)."
• The Board states it like this. It is not entirely clear to me what D2, the closest prior art, discloses. 
• "The Board concludes that the technical teaching of the claimed invention that the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed, encompasses the following.

  (a) Combination 97 (i.e. the currently claimed combinations) gives rise, inter alia, to an increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases.  (b) Combinations 165 to 168 (i.e. combinations of empagliflozin with sitagliptin, vildagliptin, alogliptin and saxagliptin, respectively), having the same level of preference, achieve the same increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases as combination 97."

• "It follows from the analysis made in points 6.20 to 6.24 above that the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would not derive the increase in plasma levels of active GLP-1 relied on by the respondent (see point 6.25 above) as being encompassed by the technical teaching of the claimed invention and embodied by the same originally disclosed invention."

• "From the above it follows that the objective technical problem is to provide a specific combination of a glucopyranosyl-substituted benzene derivative of formula I as shown in document D2 with a DPP IV inhibitor in the context of diabetic diseases."

• "In the board's judgement, the proposed solution would have been obvious having regard to the state of the art. The reasons are as follows."

• "In such cases of arbitrary selections, the prior art does not need to contain a pointer towards the compounds claimed, i.e. empagliflozin and linagliptin.  Instead, all possible solutions have to be regarded as being equally suitable and obvious candidates for solving the objective technical problem as defined above "

• The request for a referral to the Enlarged Board is refused. "in the case at hand, the Board also believes that any tenable interpretation of the requirements introduced in decision G 2/21 would lead to the conclusion that the respondent cannot rely on the alleged "increase in GLP-1" of the claimed combination"

• To cite a few more paragraphs: 

• "Irrespective of how the term "technical effect" in point 2 of the order of decision G 2/21 is to be interpreted, it remains that the technical effect relied upon by the respondent for acknowledgement of inventive step rests on experimental data (i.e. document D56, Figures 1 to 3 and Table 1) which does not confirm the technical teaching conveyed by the application as originally filed (i.e. the same increase in active plasma levels of active GLP-1 for combinations 97, 165 and 166). Rather, these experimental data teach against it. "

•  As regards the respondent's argument that the technical effect relied on did not change the nature of the claimed invention since the claimed combination was disclosed in the application as originally filed and no additions or changes to this combination were required to arrive at this effect, the Board notes that this is not sufficient for the requirements stated in point 2 of the order of G 2/21 to be met. More precisely, it is not enough that the claimed invention is disclosed in the application as originally filed in terms of its technical features and that these same features (possibly) achieve this effect without requiring any modification. Rather, it is the purported technical effect relied on for inventive step that must be derivable by the skilled person, having the common general knowledge in mind, and based on the application as originally filed, as being encompassed by the technical teaching and embodied by the same originally disclosed invention. These requirements are not met in the case at issue. "" 

• "For the reasons set out above, the technical effect "increase in GLP-1" associated specifically with the combination claimed would be unexpected to the skilled person in view of the application as originally filed. As a consequence, the alleged "increase in GLP-1" relied upon by the respondent for acknowledgement of inventive step cannot be taken into account for the formulation of the objective technical problem."

EPO 

R 0008/19 - Objective technical problem, length of review procedure

Key points

• "In the present case, a cornerstone of the Board's inventive step reasoning [in T1537/16]  with respect to claim 1 of auxiliary request 1 was the construction of the objective problem solved by the claimed subject-matter. In line with its reasoning concerning the main request, the Board did not follow the proprietor's view that the objective problem consisted of the provision of an improved pharmaceutical formulation with reduced variability in its pharmacokinetic parameters, since it considered that a corresponding effect had not been demonstrated. But it also did not follow the petitioner's view that the problem was merely the provision of an alternative tablet. Instead, it considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile."
• The TBA on the main request: The TBA could not follow the argument of the proprietor that "the eroding matrix of claim 1 of the main request necessarily provides a zero order release profile, which is not the case of D1". "An eroding matrix is not necessarily a matrix with a zero order release. Said term is not necessarily connected with specific release properties, it only defines a way of releasing by slow dissolution". The Technical Board also found that the dosage form of example 16 of D1, with a matrix system and a water-insoluble rate-controlling polymer, inherently provided an eroding matrix.
• The TBA on auxiliary request 1: "contrary to claim 1 of the main request which referred generally to a "rate-controlling agent" [of the erosion matrix, I understand], claim 1 of auxiliary request 1 has been restricted to a water-soluble rate-controlling polymer". "it is clear that the distinct nature of the rate-controlling agent shows an effect on the release of the fumaric acid ester from the core tablet. Accordingly, the technical problem is the provision of a pharmaceutical formulation showing a zero order release."
• The Enlarged Board: "The question arises, whether the Board's reliance on an objective problem that was never mentioned to the petitioner amounts to a fundamental violation of the right to be heard. In the Enlarged Board's view, this question cannot generally be answered in the affirmative. The application of the problem-solution approach can be viewed as a method of determining and reasoning whether a claimed invention fulfils the requirement of inventive step (Articles 52 and 56 EPC). "
• "For the reasons given below, the Enlarged Board comes to the conclusion that the Board based its decision only on grounds that were objectively foreseeable by the parties, in view of their submissions and the Board's statements during the appeal proceedings. During the entire proceedings leading to the decision under review, the zero order release profile - the provision of which was eventually adopted by the Board as the objective technical problem - was discussed, either as a quality of the erosion matrix or as a feature that was desirable per see."
• Follows a detailed analysis of the facts of the specific case in points 19 - 27.
• "Under these circumstances, it could not be surprising that the Board connected the additional limiting feature of claim 1 of auxiliary request 1 ("wherein the rate-controlling agent is a water-soluble polymer") with the generally acknowledged advantages of a zero-release profile, which profile was also set out for examples 18 and 22 in Figure 1 of the patent."
• The Enlarged Board also includes a general remark: "In the context of the problem-solution approach, there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what has been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that has not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning has to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had an opportunity to comment."
  
  
• The decision in case R 8/19 was issued in writing on 20.09.2024. The decision was taken on 12.04.2024. The petition for review was filed on 25.09.2019, so the Enlarged Board took five years (minus a few days) to decide on the case. The decision was taken by a five-member panel.  
• The Enlarged Board also needed more than three months to issue the decision, but Art. 15(9) RPBA has no counterpart in the RPEBA.
• At the time of writing, R12/20 is still awaiting the written decision, and three petitions that were filed in 2021 are still pending. It seems the Enlarged Board is clearing up a (corona-induced?) backlog. 
• The application was filed as a PCT application in 2010. The overall length of the procedure was 14 years. 
• No interruption of the procedure is visible in the Register (Rule 143(1)(t) EPC).

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1354/23 - Crystalline form

Key points

• Claim 1 is directed to a crystalline form of a medical compound, apalutamide.
• Inventive step is at issue. "In experimental report D3, appellant I [opponent I] reworked the preparation of apalutamide according to D1 and obtained a solid which when analysed by XRPD was revealed as amorphous. Since this conclusion was not disputed by the respondents, it is accepted in the following that apalutamide prepared according to D1 is amorphous."
• Patent document D2 discloses the preparation of apalutamide and its recrystallisation from DCM/EtOH (paragraph [0091]). There is no information in D2 nor has any evidence been provided by any of the parties as to the specific form of the crystalline material prepared according to D2."
• "Claim 1 of the main request is therefore distinguished from both D1 and D2 in that a specific crystalline form of apalutamide denoted Form B is provided, while D1 discloses the amorphous form and D2 discloses an undefined crystalline form.
• "The respondents [proprietors] , relying on evidence in the patent as well as D19, argued that a technical effect of Form B was that it was less hygroscopic than the amorphous form of D1 and the other forms disclosed in the patent.
• "D19 also indicates that another crystalline form, namely Form A is significantly more hygroscopic, demonstrating a weight change of about 1.8% (D19, figure 1). "
• "On the contrary, as argued by the respondent, in relation to hygroscopicity, example 7 of the patent indicates that Forms C, D and J are "slightly hygroscopic" according to the definition provided in D18, addressed above, in contrast to Form B, which was demonstrated as negligibly hygroscopic. Since as set out above D19 also demonstrates that Form A is more hygroscopic than Form B, in the absence of any evidence to the contrary, it can be accepted that Form B is less hygroscopic than the other forms disclosed in the patent. "
• In the PCT application, forms C, D and J are solvates. The PCT application mentions an unsolvated form, form H.
•  The comparison of form H and form B using the data in the patent was not admitted into the proceedings under Art. 13(2) RPBA - the Board considered it a new 'fact' in the sense of T1914/12. 
• "Appellant II [opponent] argued that no improvement in hygroscopicity was demonstrated in relation to other polymorphic forms, in particular the undefined form of D2. The board disagrees. As argued by the respondents, the disclosure of D2 in relation to the crystalline form obtained is vague: the only information provided in paragraph [0091] thereof is that the obtained solid was recrystallised from DCM/EtOH. However, insufficient information is provided to reproduce the recrystallised product, such as relative amounts of the solvents mentioned, order of addition, addition rate, etc. As stated by the respondents, the information in the patent in combination with D19 is sufficient to render credible the effect that Form B is negligibly hygroscopic. The burden of proof in demonstrating a equally low hygroscopicity for other crystalline forms or the undefined form of D2 therefore lies with the appellants [opponents]."
• This touches on G 1/23: what about non-enabled prior art?
• See also G 2/21 r.26: " According to the established case law of the boards of appeal (see CLB, 10th edition, I.D.4.2, and the decisions therein) it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved.". The Enlarged Board here did not say that the proprietor has the burden of proof to show the improvement, i.e. to rework the prior art. 
• " Consequently, an improvement (i.e. reduction) in hygroscopicity relative to the amorphous form of D1 and the undefined form disclosed in D2 can be relied on in defining the objective technical problem."
• Another approach is that the objective technical problem over D2 is the provision of a 'negligible hygroscopic' form of the compound.
• The Board considers some further evidence on other properties and concludes: " On the basis of the foregoing, the objective technical problem underlying claim 1 starting from either of D1 or D2 is essentially that proposed by the respondents, namely the provision of a form of apalutamide with a beneficial combination of properties, namely improved hygroscopicity, high thermodynamic stability and high polymorphic stability." 

• For obviousness, "This corresponds to the principle set down in landmark decision T 777/08. According to that decision, the technical effects or properties of the claimed polymorph (improved filterability and drying characteristics) were effects which were expected merely by virtue of being crystalline. Hence, since it belonged to the routine tasks of the skilled person involved in the field of drug development to screen for solid-state forms of a drug substance, there was an incentive for the skilled person to arrive at the claimed solution in the expectation of achieving these improved characteristics. The board stated (see headnote 2) that "the arbitrary selection of a specific polymorph from a group of equally suitable candidates cannot be viewed as involving an inventive step." The implication from T 777/08 is therefore that when the advantages or effects of the claimed crystalline form are unexpected, i.e. they are not arbitrary and do not follow merely by virtue of being crystalline, then an inventive step is present.
• "In the present case, there is no absence of unexpected properties, and the selection of Form B is not arbitrary, since Form B possesses a beneficial combination of properties as set out above."

• The question is: the non-arbitrary selection of Form B from what? What are the other members of the class it is selected from?   

• It seems a useful strategy to include a few poor crystalline forms  (solvated or not) in a patent directed to a 'good' polymorph. 

The link to the decision and an extract of it can be found after the jump.

T 0419/16 - Inventive step of first medical use

Key points

• The decision deals with inventive step of a first medical use claim in the format of Article 54(4) EPC.
• "The purpose given in the claim is "for use as a medicament". The board also notes that according to the patent, the claimed antagonist is useful specifically in the treatment of "a disorder or condition selected from the group consisting of asthma; allergy; multiple sclerosis; or arthritis" (see paragraph [0011] and claim 4 of the patent as granted). "
• Claim 1 is, moreover, a functional antibody claim: "1. An antagonist of IL-33 for use as a medicament, wherein the antagonist comprises a binding composition from an antibody that specifically binds to IL-33."
•  The opposition division came to a positive decision on inventive step, assessed solely when starting from the disclosure in document D6 representing the closest prior art. The appellants [opponents] however consider the disclosure in several (different) documents (documents D3, D4 or D6/D10) as starting points for assessing inventive step."" 
• "Although assessing inventive step only from one closest prior art disclosure may constitute an efficient approach to address the situation where multiple similar disclosures were presented as starting points for the assessment of inventive step, it is, however, not an appropriate approach if the alternative starting points represent alternative and different routes to the invention, as they do in the case at hand. In such a situation, each starting point needs consideration because under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the state of the art, i.e. any prior art disclosure with the exclusion of documents under Article 54(3) EPC (see T 694/15, Reasons 13 to 15, T 816/16, Reasons 3.7.1 and T 261/19, Reasons 2.5)."
• For inventive step over D6: "the difference between this [antibody of D6] and the claimed antibody is the target (ST2/IL-33 receptor) and its medical use(s) both in general and the specific uses identified in the description of the patent (treating asthma, allergy, multiple sclerosis and arthritis)."
• "The objective technical problem that arises out of the above differences and their technical effects can be formulated as the provision of a medicament, e.g. for treating asthma, allergy, multiple sclerosis and arthritis."
• The decision is interesting because for inventive step of product claims, we normally consider only at the use mentioned in the description. 

EPO 

The link to the decision and an extract of it can be found after the jump.

T1247/21 - The possible feature in the CPA is inventive

Key points

• The case is mostly about novelty and inventive step over a public prior use. The invention concerns a thermoforming packaging machine. The feature at issue is "a measuring unit (51, 42, 45) is provided which is configured to detect a contact between the upper tool part (7) and the lower tool part (3)".  (all quotes are machine translations).
• The opposition division [held that] knowledge of the source code [of the public prior use apparatus] was necessary in particular in order to recognize whether contact between an upper part of a tool and a lower part of a tool was being measured. Accordingly, feature K2 was not known from the public prior use.
• " The source code was not accessible to the customer Wolf (or other third parties) for factual and legal reasons. This was not disputed by the parties involved. "
• I take this to mean that the feature is actually present in the source code, but that the source code was not accessible to the customer. 
• The Board: "an alleged disclosure can only be considered implicit if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature was part of the disclosed subject matter (cf. RdB, ibid, IC4.3). It therefore depends on whether the skilled person, in view of the information available to him on the public prior use, specifically recognises the real possibility of configuring the measuring unit to detect contact between the upper and lower parts of the tool, and not whether such contact is hypothetically conceivable."
• The Board concludes after consideration of the facts of the case that the feature was not implicitly disclosed because a "reference run" would have been necessary, and alternatives were conceivable. 
• As a result, the Board is convinced that the skilled person cannot directly and unambiguously derive feature K2 from the public prior use "Power PAK RT 520".
• Regarding inventive step, "the parties unanimously formulated the technical task associated with the distinguishing feature K2 as improving or facilitating the adjustment of a known foil punch, for example, when changing tools. 
• Note, if the feature was actually present in the public prior use device, then there is no actual technical improvement over that device. 
• "The appellant [opponent] merely argued that the expert would like to prevent the control of a known foil punch from going beyond the contact point. However, this consideration alone does not provide any reason or indication for providing feature K2. In fact, there is no obvious reason for this in the prior art in the proceedings. "
• The feature is held to provide for an inventive step.

You can find the link to the decision and an extract of it after the jump.

T 1304/22 - A therapeutic effect of VR

Key points

• This is an examination appeal, i.e. an ex parte case.
• Claim 1 is directed to: 'A system for representing symptoms and symptoms alleviation,  comprising: a processor; a head mounted virtual reality display; and a memory operatively coupled to the processor and configured for storing data instructions that, when executed by the processor, cause the system to perform a method, ..."

• This is not a second medical use claim, but by way of the software rule for novelty, the method is still a limiting feature of the claim.

• " The board agrees with the appellant that, among the cited prior-art documents, document D2, in particular Embodiment 2 ("Pain Management") disclosed in paragraphs [0047] and [0048], constitutes the most suitable starting point for assessing inventive step. The appellant argued that the distinguishing features of claim 1 over D2 were that [in claim 1] a "second digital model" was created for displaying a "symptom" [] and that a "third digital model" was created for displaying an "alleviation or removal of said symptom" [on the VR display]. It submitted that these distinguishing features had the technical effect of pain reduction and solved the objective technical problem of achieving an improved virtual reality system for reducing chronic pain."

• " although claim 1 is silent as to the details of the respective "digital models", the board, in the appellant's favour, accepts the technical effect and the objective technical problem as submitted by the appellant. Thus, the question to be answered next is whether the distinguishing features of claim 1 of the main request were obvious to the skilled person starting from D2."

• Hence, the Board is willing to accept 'pain reduction' as a technical effect (further technical effect in the sense of G 1/19, it seems to me).

• The Board considers the feature to be obvious. "document D2 also gives an overview of known techniques in the prior art, in which it discusses (paragraph [0015] ff.) prior-art techniques using virtual reality for the treatment of various conditions by exposure therapy. In this context, paragraph [0018] of D2 refers to D5 [US 5 546 943] 

• which "proposes use of a visualization system using a computer to provide a user with a view of their internal anatomy based on medical scan data. The user acts upon the information in an interactive virtual reality environment by using tools or other devices to diminish a visual representation of an ailment." (board's emphasis). Thus, although it may not have been the solution preferred by the authors of document D2, it was nevertheless an alternative solution known to the skilled person at the present application's priority date to display a visual representation of a "symptom" and to display its "alleviation or removal" for the therapy of that symptom, the choice of which would have been obvious. " 

• D5 did not use a VR display.

   

 

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0053/22 - Bonus effects

Key points

• "The invention relates to a manufacturing method of a turbine wastegate." "A turbine wastegate is a valve []. It includes a wastegate seat, a plug, an arm connected to the plug, a shaft, [and] a control arm at the opposite end of the shaft."
• "The invention aims at improving fit of the plug to the arm, shaft and wastegate seat for reducing leakage. With this aim the assembly process includes welding of the arm to the plug in a closed position against the seat in the turbine housing. Such a method reduces clearances and customizes fit of the plug".
• The method specifies a step of "applying a force to a control arm operatively coupled to the shaft"; this force is used to maintain the arm and the plug in a closed position against the seat.
• The opponent: "D2 is silent about where to apply the force to the actuating element [(which is the subunit formed by the shaft and the arm in the sense of the contested patent) ] while performing the welding step between actuating element and plug in the manufacturing method described there. Applying it to a control arm operatively coupled to the actuating element's shaft is an obvious choice for the skilled person when tasked with carrying out in practice the method taught by E2."
• The Board: "The objective technical problem [over D2] must be formulated based on effects that can be associated with the differentiating feature of applying force to an operatively connected control arm"
• "In the Board's view the primary, main effect associated with specifying that force is applied via the control arm is that it allows D2's teaching to be put into practice. As noted D2 only states that force is applied by means of the actuating element 5 but gives no further detail. Therefore, if the skilled person wants to carry out D2's teachings, it must first identify a suitable way of applying force by means of the actuating member to produce the required contact pressure for welding. In the Board's view this is an objective and realistic reflection of what a skilled person, in this case an engineer designing turbochargers, would do and the considerations they would have when confronted with the teaching of D2. It thus seems reasonable to formulate the objective technical problem starting from D2 accordingly, and as broadly as possible, as how to practically implement the invention taught by D2. "
• "As variously stated in case law, once a realistic problem has been defined and once it has been established that a particular solution to such a problem is obvious, that solution cannot be said to involve an inventive step, and this assessment is not altered by the fact that the claimed invention inherently also solves further technical problems"
• "The respondent proprietor argued that using the control lever reduces the introduction of undesirable misalignment in the control linkage" "If not already the primary effect on which the objective technical problem should be based, it was more than just a "bonus effect". For it to be a "bonus effect", the respondent proprietor argues, citing CLBA, 10th edition, 2022, I.D.10.8 and case law mentioned therein, the skilled person must be in a "one-way street" situation with no other alternative courses of action." (according to the proprietor).
• " The Board has already indicated above why it considers any further effect, and thus also the (further) reduction of misalignment, to be only secondary or supplementary to the primary effect of realizing D2's teaching. Because, as also explained above, there are only very few realistic options available to the skilled person when carrying out D2's teaching to press the plug into its seat by means of the actuator, and these are all known and thus obvious to them, the presence of a further effect (whether surprising or not) cannot change the fact that each of these very few options is obvious. The situation may be different if there is a "multiplicity", as in "a large number", of options as in the case law cited, e.g. T0192/82. There, and in other cited decisions, it was held that if a selection of one amongst many options could be associated with a (derivable and plausible) "surprising effect" then that selection was non-obvious by virtue of that surprising effect."
• "Nor is this case similar to T0848/94, where the Board held an effect arising from a combination of measures to be a synergistic effect and not a bonus effect, because that combination of measures, that might each be prima facie obvious, was not a "one-way street", that is something the skilled person would inevitably do. In this case it has not been argued that the reduced misalignment would be a synergistic effect arising from a combination of measures."
• "Further cited T0936/96 in section 2.6 underscores the general approach to bonus effects mentioned above without reference to a "one way street". Indeed, it is clear from section 2.4, last paragraph, that there were several choices available to the skilled person, but that nonetheless the alleged effect was seen to be a bonus effect that could not render an obvious combination inventive"
• See also T 1356/21.
• 
  

EPO 

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

T 0116/18 - After G 2/21 - Original examples and narrower claims

Key points

• This decision is old (July 2023). I will still provide my summary and analysis. 
• Claim 1 is directed to a composition of comprising thiamethoxam and a compound according to a Markush formula. Inventive step is the issue to be decided. The individual compounds were known as insecticides at the priority date. The patent asserts that a synergy was found. The Board referred questions to the Enlarged Board in G2/21, and the Enlarged Board gave an answer. 
• The Board: " the focus on the application as filed and the filing date (G 2/21, point 93 of the Reasons) is intended to prevent the filing of applications directed purely to speculative (armchair) inventions made only after the filing date."
• " What matters is that when deciding whether a patent applicant or proprietor may rely on a purported technical effect for inventive step, it is the requirement(s) defined by the Enlarged Board in order no. 2 that has (have) to be applied, rather than simply using any rationale developed in the previous plausibility case law. "
• The Board analyses the holding of G2/21 semantically.
• " Requirements (i) and (ii) use the terms "technical teaching" and "invention". The EPC does not contain the concept of technical teaching, while a tautological definition of the term "invention" is considered to be formulated at Rule 42(1)(c) EPC, namely as a solution to a technical problem."
• " In the case law the term "invention" has been defined by the Enlarged Board only indirectly by adopting the reasoning in the "Rote Taube" decision by the German Federal Court of Justice (BGH 27.3.1069, X ZB 15/67: "Lehre zum planmäßigen Handeln unter Einsatz beherrschbarer Naturkräfte zur Erreichung eines kausal übersehbaren Erfolges"; translation given in G 1/19 (point 75 of the Reasons): "a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result"). According to G 2/07 and G 1/19, the "Rote Taube" decision stated that the term "invention" required (G 2/07, point 6.4.2.1 of the Reasons) or implied (G 1/19, point 75 of the decision) a technical teaching. In the present board's view, this definition of the term "invention" does not reveal any difference from the term "technical teaching" which would justify the assumption that the two terms have a different meaning."
• Note, the claim in the Red  Dove decision was a method of breeding a red dove (link). The point was whether (controllable) biological forces can "support" an invention, in addition to the traditionally used chemical, physical, and mechanical forces.
• In G 1/19, it was about software inventions. In G 2/07, the point was that methods of plant breeding can be inventions.
• "in the board's view G 2/21 seeks to prevent speculative inventions. In turn, the broader the application as filed, the more likely it is that the invention defined in it was speculative from the outset. Hence, in order to fulfil this purpose of G 2/21, the assessment as regards requirements (i) and (ii) of order no. 2 has to be made based on the broadest technical teaching of the application as filed contained in it with regard to the claimed subject-matter."
• Regarding requirement (ii): the question to be asked is: "would the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter?"
• I don't think the Enlarged Board prescribed the threshold as "legitimate reason to doubt" in G 2/21.  
• "Requirement (ii) is met unless the above question is to be answered in the affirmative."
• The Enlarged Board did not formulate requirement II as an unless-clause in G 2/21.
• I understand requirement II to seek to prevent shift support, e.g., wherein embodiment B is claimed, but the examples for embodiment A are used as support for the technical effect in cases wherein the skilled person would consider the link between the two embodiments insufficient. 
• G2/21 "speak'[s] of "derivable"/"derive" but not of e.g. "directly and unambiguously derivable". 
• The Board then turns to the examples of the application as filed and common general knowledge.
• "test example 3-a demonstrates a synergistic effect against Chilo suppressalis for a compound of formula Ia in combination with clothianidin. As submitted by the respondent and not disputed by the appellant, clothianidin and thiamethoxam are structurally very similar. Therefore, the board agrees with the respondent's argument that the skilled person would have no legitimate reason to doubt that the synergistic effect against Chilo suppressalis would be maintained when replacing clothianidin with thiamethoxam in the insecticide combination in test example 3-a."
• This reasoning seems to align with the Enlarged Board's suggestion to focus on the technical facts and the technical field at issue (in r.95).
• The Board: "test examples 1 to 5 of the application as filed show a synergistic effect for eight different insecticide combinations, each against one of three insect species (Spodoptera litura, Chilo suppressalis and Plutella xylostella). The insecticide combinations in question each comprise one of three different insecticides of general formula II (clothianidin, thiamethoxam, dinotefuran) and one of six different insecticides of general formula I (compounds I-1 to I-6). Therefore, in the board's judgement, these test examples exhibit a reasonable degree of variation with respect to the insecticides and insect species, and it is not apparent to the board why the skilled person, based on the application as filed, should have legitimate reason to doubt that the combination of insecticides of formulas I and II do not act synergistically against at least those insect species which are the object of the test examples, i.e. also Chilo suppressalis. A fortiori this must also apply to subsets of formulas I and II, such as the insecticide combinations in claim 1 as granted, which are based on compounds of formula Ia and thiamethoxam."
• In other words, the limiting amendments made to the claims (possibly for novelty) do not diminish the technical teaching of the application as filed. 
• I think the Board could also have found this technical teaching to be credible based on the application as filed. 

EPO 

The link to the decision is provided after the jump.