T 0601/09 - Skilled person and inventor

EPO T 601/09

For the decision, click here.

Key point

• The opponent tried the argument that the skilled person would have consulted D3, because D3 has the same inventor as the present application. That argument does not work. The skilled person is not the same as the inventor (cf. e.g. T39/93).

Entscheidungsgründe
[...]

3.6 Als Begründung dafür, dass die gemäß Streitpatent angebotene Lösung nahegelegen habe, führte die Beschwerdeführerin die Druckschriften (3) und (4) an.

3.6.1 Druckschrift (3) betrifft ein Verfahren zur Reaktivdestillation, [...]

Die Beschwerdeführerin brachte vor, Herr Kaibel sei sowohl im Streitpatent als auch in Druckschrift (3) als Erfinder genannt. Daher sei auch Druckschrift (3) im gleichen technischen Gebiet angesiedelt wie das Streitpatent, so dass der Fachmann auch die Lehre der Druckschrift (3) zur Lösung seiner technischen Aufgabe herangezogen hätte.

Ob der Fachmann eine Druckschrift zur Lösung des Problems herangezogen hätte, hängt jedoch nicht vom Wissen des Erfinders ab, sondern von dem des Fachmannes. Dieser verfügt jedoch lediglich über durchschnittliches Wissen und Können in seinem begrenzten technischen Gebiet, wogegen den Erfinder zusätzlich die Fähigkeit zu problemlösendem Denken auszeichnet. Somit ist der Erfinder nicht mit dem Fachmann gleichzusetzen (siehe z.B. T 39/93, ABl. EPA 1997, 134, Punkt 7.8.4). Das Argument der Beschwerdeführerin kann daher nicht durchgreifen.

T 0025/13 - Closest prior art

EPO T 25/13

For the decision, click here. (online on 19.01.2015; abstract in EPO OJ 2015, S4)

Key points

• This opposition case is a classical example of the requirement that the closest prior must relate to the a similar purpose or effect as the invention. The patent was for a fastener for use in a motor vehicle, the cited document to a fastener for a tumble dryer. 
• However, the present Board phrases this in such a way that the reasons for this rule are once again clarified. 
• In the summary of the EPO: "to serve as the starting point for evaluating [inventive step], a document had to relate to the same or a similar technical problem as the patent in suit, or at least to the same or a closely related technical field. [...] Opponents were essentially free to choose the starting point for assessment, but their choice then had implications for the technical knowledge of the relevant skilled person. [If it is chosen to] take D4 as the starting point, [] the skilled person's field would be domestic appliances and it would not have been obvious to him to adapt the fastening device disclosed in D4 for use in a motor vehicle."
• In the words of the Board (own translation): " If a a fastening device for a tumble dryer is taken as starting point, it is to be ascertained whether it was obvious or not to modify it into a fastening device for a motor vehicle in the eyes of a person skilled in the art who is familiar with the technology described in D4, i.e. in the eyes of a person skilled in the art of domestic appliances."  

EPO OJ 2015, S4

I.C. 2.1 Similarity of the technical problem

(CLB, I.D.3.3)

The invention in T 25/13 related to a device for fastening an actuator and a housing, for use in a motor vehicle. D4, the only document cited by the opponent, which bore the burden of proof for lack of inventive step, described a fastening device for a tumble dryer.

The board observed that, to serve as the starting point for evaluating the inventive merits of an invention, a document had to relate to the same or a similar technical problem as the patent in suit, or at least to the same or a closely related technical field. D4, and more specifically the embodiment for tumble dryers shown in its drawings, came under domestic appliances, a field not even closely related to automotive technology, and for that simple reason could not be "the closest prior art". The skilled person attempting to solve a technical problem on a "closest prior art" basis might consult D4 as a source of secondary information, but only if the technical problem gave him reason to do so.

Opponents were essentially free to choose the starting point for assessment, but their choice then had implications for the technical knowledge of the relevant skilled person. The board found that in the case at issue there were two options: either to take the skilled person in the field of the invention – who would never have consulted D4 because it was from a totally different field – or to take D4 as the starting point, in which case the skilled person's field would be domestic appliances and it would not have been obvious to him to adapt the fastening device disclosed in D4 for use in a motor vehicle.

The opponent had gone for the second option, and the board held that its objections based on D4 had failed to establish that the subject-matter claimed lacked inventive step.

Motifs de la décision

[...]

2.2 L'état de la technique le plus proche

T 0943/13 - Second medical use and A56

EPO T 943/13

For the decision, click here. [C]

EPO Headnote
The causal relationship between the substance or composition on the one hand and the therapeutic effect achieved on the other hand is decisive for the assessment of inventive step of further-medical-use claims (see point 4.1.5).

Key points

• The claim is a second medical use claim (drafted as product for use in the treatment). A prior art composition D12 gives the same effect.  According to the Board, the objective technical problem is therefore " the provision of the claimed therapeutic effect by a different means", and not, as asserted by the opponent, "the provision of an alternative composition" .
• The Board states that "the board acknowledges that the objective technical problem might indeed be the provision of an alternative composition if claim 1 was a "normal" product claim directed to a substance or composition. However, claim 1 is formulated as a further medical use claim directed to a substance or composition for use in a therapeutic application"  and then finds that for that kind of claims, the objective technical problem is as formulated by the Board.
• As a comment, if the claim had been a product-as-such claim, the objective technical problem may still have not been the provision of alternative compositions (as such). Rather, since the composition was deemed to provide a technical effect, be it the same as D12, the objective technical problem would possibly be the provision of alternative solutions for obtaining that effect. In other words, in this context, alternative would not mean an arbitrary composition, but a composition that would provide the same technical (therapeutic) effect as D12. 

Summary of Facts and Submissions

II. The opposition division's decision was based inter alia on the patent as granted (main request), claims 1 and 12 to 15 of which read as follows:

"1. A soluble dietary fibre for use in the treatment or reduction of the incidence of muscle wasting and/or chronic muscle wasting and/or sarcopenia, the dietary fibre comprising at least 30 wt.% of oligosaccharides having a chain length of 3-10 anhydromonose units."

Reasons for the Decision

4. Inventive step

4.1 The opponent argued that the subject-matter of claim 1 lacked inventive step in view of D12 as the closest prior art.

4.1.1 Like the patent, D12 aims at reducing the incidence of muscle wasting. Consequently, this document can be considered to represent the closest prior art.

4.1.2 As set out above, the composition to be used according to claim 1 differs from the composition disclosed on page 2, line 25 to page 3, line 10 of D12, in that it contains a dietary fibre comprising at least 30 wt% of oligosaccharides having a chain length of 3 to 10 anhydromonose units.

4.1.3 As furthermore set out above when discussing sufficiency of disclosure, it is credible that the dietary fibres to be used according to claim 1 lead to the claimed therapeutic effect, i.e. the treatment or reduction of the incidence of muscle wasting and/or chronic muscle wasting and/or sarcopenia. The same effect is achieved in D12 by the whey protein [...]. The objective technical problem is therefore the provision of the claimed therapeutic effect by a different means.

T 1273/11 - Reimbursement

 EPO T 1273/11

For the decision, click here [C]

Key points

• During oral proceedings before the Board, the respondent requested an apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division.
• The Board cannot decide on the request because it was filed only in appeal, not during the first instance proceedings hence not subject of the appealed decision (following T1059/98).
• A second point is that the claims were amended by adding a feature from the description. The Board does not admit the request, one of the reasons being that this would necessitate a remittal to the opposition division to perform or order an additional search, rather than this would be incumbent on the opponent. 

Reasons for the Decision 

[...]

6.3 Article 13(3) RPBA

The features added to claim 1, relating to the type of motor chosen, come from the description. This leads directly to the question whether such features have been included in the original search, or whether an additional search would be necessary.

6.3.1 Since the description is rather indifferent on the choice of motor (no particular effect is mentioned for any of the choices) it is unlikely that these features were included in the original search (Guidelines B- III, 3,5).

6.3.2 This leads to the question whether it falls upon the appellant/opponent to perform such a search. The respondent argued that the six weeks available to the appellant should suffice. However, the Board questions whether it is actually incumbent on the appellant/opponent, in the present case, to perform such a search. It would be more a question of a remittal to the opposition division to perform or order an additional search (Guidelines, D-VI, 5, see also T 1732/10, point 1.5 and T 447/09, point 2.3 of the reasons).

[...]

7.2 The respondent requested during oral proceedings a different apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division. These proceedings were to be held on a Monday, the opponent only notified its absence on the preceding Friday; the oral proceedings were cancelled by fax on that same day.

The Board establishes that this request was not submitted before the opposition division, nor did the opposition division consider and decide upon such matter in the decision under appeal.

The Board concurs with T 1059/98 (reasons point 22) which states:

"Article 21(1) EPC provides that a Board of Appeal can only examine appeals from decisions of the first instance departments of the EPO. This clearly means, in the circumstances of the present case, that the Board cannot examine and decide upon a request for apportionment of costs incurred as a result of oral proceedings before the opposition division, if that request was presented for the first time before the Board of Appeal and thus no decision has been taken on this request by the first instance."

Also this request must therefore be rejected.

T 0621/11 - A or the, an inescapable trap

EPO T 621/11

For the decision, click here

Key points

• The invention relates to a medicament for treating or preventing a metastasis of a tumor.The patent is stuck in the inescapable trap (Art 123(2)/(3)) by changing "the step of inoculating a tumor in the patient" in the application as filed into " suitable for inoculating the tumor in a patient", because " the"  tumor is the primary tumor (according to the Board), and inoculating this specific tumor is not disclosed in the application as filed. Reverting back to " a tumor" extends the scope of protection. 
• The Article 123(3) objections was admitted, even though late filed,  "given the nature of the objection".

Summary of Facts and Submissions

I. European patent No. EP1003533, based on European patent application No. 98939886.2, published as WO 99/07394 (hereafter referred to as "the application as filed") and entitled "Use of herpes vectors for tumor therapy", was granted with 17 claims.

National decision - Partial priority

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) (BAILII) 

Key point

• In this UK decision, a question was whether the claims had priority in view of the requirement of "same invention", because the claims were a generalization from the priority document. 
• This decision is also discussed in recent decision T 557/13 referring the questions about partial priority to the Enlarged Board in G1/15:

15.2.2 In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) of 10 July 2013, concerning European Patent (UK) 0 932 865, the judge noted with reference to G 2/98 (Reasons, 6.7), that "although one can sympathise with the desire for a limited number", it was questionable whether there was "any principled basis for such a requirement". The "need for clearly defined alternative subject-matters" was expressly accepted "if a single claim is to be given partial or multiple priorities" (paragraph 160).
In effect (paragraph 195), claim 1 comprising features defined with respect to a "high level language", was not found to be (even partially) entitled to priority, since "Java" was the only programming language disclosed in the priority document. However, claim 3, dependent on claim 1 and limited by reference to "Java", was found to enjoy priority.

This post has been kept in stock for some time. 

Summary
OJ 2015, Sp. 2. 

Keyword: priority – same invention – multiple priorities

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller").

T 1890/09 - Poisonous priority strikes again

T 1890/09

For the decision, click here (online on 23.07.2015)

Key points

• The Board finds a claim to be not novel over an embodiment disclosed in the published priority document.
• The Board 3.2.02 does not at all discus partial priority, although the decision was taken on 26.03.2015, while Board 3.3.06 had announced months earlier in oral proceedings to refer questions to the Enlarged Board about that issue. 
• Credits to EdT for spotting this one (IPKat).

Sachverhalt und Anträge

I. Mit der am 10. Juli 2009 zur Post gegebenen Entscheidung hat die Einspruchsabteilung das Patent

Nr. 1 348 394 in veränderter Form auf der Basis des damaligen Hilfsantrags I aufrechterhalten. In dem Patent wird die Priorität der früheren Anmeldung Nr. 02007218 (veröffentlicht als EP-A-1 348 393 und im Folgenden als Prioritätsdokument bezeichnet) mit Anmeldetag vom 27. März 2002 in Anspruch genommen.

II. Die Beschwerdeführerin (Einsprechende) legte hiergegen am 21. September 2009 Beschwerde ein und entrichtete am selben Tag die Beschwerdegebühr. Die Beschwerdebegründung wurde am 19. November 2009 eingereicht.

[...]

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Hauptantrag

[...]

2.2 Priorität

In Anspruch 1 ist definiert, dass "das [dreidimensionale generische] Modell durch eine Datenverknüpfung auf zweidimensionaler Ebene mit patientencharakteristischen, zweidimensionalen Erfassungsdaten angepasst wird".

Im Prioritätsdokument ist dieses Merkmal nicht wörtlich offenbart. 

Als Basis gibt die Beschwerdegegnerin Anspruch 8 und den (gleichlautenden) Absatz [0022] an.