T 0250/20 - Four oral proceedings

Key points

• In translation: " European Patent No. 2,430,207 relates to a metal part obtained by deformation of a metal strip having an improved appearance. The metal parts thus obtained are more particularly intended, but not exclusively, for the manufacture of skin parts for land motor vehicles."
• "A first oral procedure [in appeal] took place on 21 December 2022, at the end of which an adjournment was decided. "
• A second oral procedure was held on 25 September 2023 at the end of which an adjournment was again decided. 
• A third oral proceeding was held on 11 March 2024, during which it was decided that the main request filed with the letter of 29 February 2024 was not admitted into the proceedings, that the new auxiliary request 1 filed during the oral proceedings (hereinafter "amended auxiliary request 1") in replacement of the previous auxiliary request 1 was admitted and that the subject-matters of its two claims 1 and 2 alone corresponded to the subject-matters of claims 10 and 11 of the patent as granted, respectively. At the end of the oral proceedings an adjournment was again decided.
• A final oral procedure took place on 23 August 2024 at the end of which the operative part of this decision was pronounced. 
  
  
• There is a lot in the decision (but less than could be expected, as the operative requests are significantly limited compared to the claims as granted).
• On the issue of cross-party reliance on arugments: "As stated by Applicants I and II [the opponents], there is no legal provision preventing a party, Applicant I in this case, from resuming in appeal proceedings an objection, line of attack or argument that was raised and maintained by another party in opposition proceedings, in this case Applicant II. The provisions of Articles 12(3) and (4) RPBA do not in any way prevent this way of proceeding. There is no specification therein of what the respondent seeks to allege through the interpretation of the indefinite or definite articles used, namely that only the party that raised and maintained the objection in opposition appeal proceedings would be entitled to pursue it in appeal proceedings. Such a restriction is not inferred from the wording of Articles 12(3) and (4) RPBA.

  This is supported by established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings, cf. JCR, IV.C.2.1.6, T 920/20, point 4.4 of the grounds."

EPO 

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

R 0005/23 - No petition for review against interlocutory decisions

Key points

• The Enlarged Board (in three-member composition) clarifies that petitions for review cannot be filed against interlocutory decisions of a Board of Appeal.
• The Enlarged Board in headnote (translated): "An interlocutory decision by which a Board of Appeal, in its composition as a substitute Board, has rejected as inadmissible a motion for recusal directed against its three members on the grounds of suspicion of partiality is not a decision against which a petition for review within the meaning of Article 112a EPC can be filed."
• Point 6 of the reasons confirms this holds for any interlocutory decision.
• The Enlarged Board: "The legal consequence of a successful petition for review is, according to Article 112a(5) EPC, the annulment of the decision and the "resumption of the proceedings before the Boards of Appeal"."
• "Accordingly, the review procedure under Article 112a EPC, as the relevant provisions are worded, does not in any event concern decisions which do not terminate proceedings before a Board of Appeal as regards the person concerned."
• " the Enlarged Board of Appeal is of the opinion that the application of Article 106(2) EPC in the context of the review procedure is out of the question. " 
• As a comment, a petition for review filed after the final decision can then also be based (exclusively) on a procedural violation of an interlocutory decision, provided that the petitioner shows that the outcome of the final decision could have been different (and more favourable for it) without the procedural violation; cf. J37/89, r.4.2-4.3 for Art. 106(2).

EPO 

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

T 2360/19 - Rebutting the presumption on priority entitlement

Key points

• In T 0844/18, the Board had decided - after an extensive debate between the parties - that the priority of one of the major patents for 'CRISPR/Cas' was invalid because the PCT application was filed by the company and the priority application (a US provisional application) was filed by the inventors and there was no assignment in place from one of the inventors to the PCT applicants at the PCT filing date.
• The Board applied the established case law at that time (in my view).
• The Enlarged Board, in G 1/22, where the question was whether an informal / oral assignment of the priority right was possible, added the remark in para. 128 that: "An agreement (regardless of its form) can only be held against parties who were involved in the facts establishing the agreement. Co-applicants for the priority application who were not involved in the subsequent application may not be deemed to have consented to the reliance on the priority right by the other co-applicants for the priority application (a situation underlying e.g. T 844/18). The subsequent applicant(s) may however still be entitled to claim priority since the rebuttable presumption of entitlement does not depend on whether the involved applicants acted as co-applicants at any stage."
• This is quite remarkable, given that a large number of divisional patent applications in the patent family of T 0844/18 were still pending. 
• The present case is about a divisional application originating from the same PCT application ('819) filed in 2013.
• "15. The opponents are thus arguing that the appellants [proprietors] have not provided evidence that they are entitled to the priority rights they claim. However, this is precisely what the presumption in G 1/22 states: that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There is no evidence that rebuts this presumption in the present case."
• The Board then discusses a settlement between the inventor Mr. Marrafini and the proprietors of the present patent, concluded in 2018. "However, it is common ground between the parties that the inventorship dispute between Marraffini/Rockefeller University and the appellants has been settled in 2018. The entire purpose of the inventorship dispute was to have Marraffini named as inventor, and the Rockefeller University as proprietor, of PCT 819 (and some other PCT applications). "
• " Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed (see G 1/22, reasons 100, 109)."
• G 1/22 r.100: "Even the requirement that the transfer of the right of priority needs to be concluded before the filing of the subsequent European patent application (above point 68) is questionable in the Enlarged Board's view. If there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards."
• "However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file (see again G 1/22, reasons 100). As also reiterated in G 1/22, reasons 114: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute. Hence the entitlement to priority was validly claimed."
• Im unsure about how this paragraphs should be understood.
• "G 1/22 brings legal certainty to all involved, in particular for the parties that the system was designed to protect."
• The priority is considered to be valid.
• After the clear 'instruction' of the Enlarged Board in para. 128, this is perhaps not a surprising outcome. 
• However, generally, the substantiation of the rebuttal of the presumption of G 1/22 by the opponents should not be a burden to prove a negative. 

EPO 

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

T 0964/21 - Appeal against cost apportionment

Key points

• "The patent proprietor and opponents 2 and 3 (appellants) each filed an appeal against the interlocutory decision of the opposition division, in which the opposition division found that European patent No. 2 879 636 in an amended form [namely Auxiliary Request 12] met the requirements of the EPC. The appellant-proprietor's appeal lies also against the o.pposition division's decision to apportion costs against it."
• AR-12 before the OD is the current main request: "The appellant-proprietor requested as a main request that the decision under appeal be set aside and the patent be maintained on the basis of auxiliary request 12 underlying the impugned decision, or as an auxiliary measure that the appeals of appellant-opponents 2 and 3 be dismissed (i.e. maintenance of the patent in the version found to be allowable by the opposition division). Furthermore, it requested that the opposition division's decision as regards the apportionment of costs be set aside."
• Which is interesting, because then the proprietor no longer contests the decision of the OD on the higher ranking sets of claims. Is the appeal against the cost apportionment still admissible? (Rule 97(1)).
• Rule 97(1): "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. "
• "The Board therefore concludes that the subject-matter of claim 1 of the main request extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC."
• "Since the further amendments in claim 1 of the auxiliary request, relating to the provision of an additional transmission layer, do not affect the above finding, as also acknowledged by the appellant proprietor, the patent may not be maintained on the basis of this request, also for non-compliance with the requirement of Article 123(2) EPC."
• "The appellant-proprietor requested that the opposition division's decision as to the apportionment of costs be set aside.

  The formulation of that decision is set out in the reasons of the impugned decision (cf. page 35) as follows:

  ".. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing." 

• " the Board wishes to emphasise that an order on the apportionment of costs under Article 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to above does not in any way comply with this requirement. In this context, it should be noted that the order is so vague that it is not possible to clearly determine in particular,

  (a) whether the costs for the representatives in preparing for the oral proceedings are included, and

  (b) whether the costs for the representatives for both oral proceedings are included."

• "It should also be noted that the addition in the above-mentioned formulation "and for the undue delaying of the procedure in respect of late filing" does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy. 

• " Furthermore, the opposition division's decision also fails in terms of substance. Irrespective of the question of whether a decision under Article 104 EPC constitutes a discretionary decision, it should first be noted in view of the submissions of appellant-opponent 2 that discretionary decisions can also be reviewed by the Boards in terms of their merits. ... A substantive review of a discretionary decision is therefore not excluded according to established case law. [i.e. G7/93]"

• "the fact that the patent proprietor did not contest the validity of one of the priorities of D22 [a prior right under Article 54(3) EPC] until the first oral proceedings before the opposition division cannot justify a different apportionment of costs in the present case."

• " it is noted that the Board also considers the appellant-proprietor's argument that the late filing of amended requests was also due to the late filing of the objections based on D22 to be convincing. "

• "there are no reasons that would justify a different apportionment of costs. Thus, the Board finds it appropriate that each party shall bear its own costs. Consequently, the decision of the opposition division as to the apportionment of costs is set aside."

• 
  

EPO 

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

T 1423/22 - Calculating new medical data

Key points

• Claim 1 of the main request reads as follows:

  "1. A method for estimating glomerular filtration (GFR) rate in an animal subject, the method comprising:

  (i) measuring the concentration of free symmetrical dimethylarginine (SDMA) in a blood sample from the subject;

  (ii) measuring the concentration of creatinine in a blood sample from the subject; and

  (iii) comparing a value resulting from an equation comprising the product of the concentration of creatinine and the concentration of free SDMA to one or more standard values that correlate to glomerular filtration rate in the animal subject."

• Patent, para. [0002]:  " It is important to be able to measure renal function quickly and accurately. For example, the dosing of drugs must be adapted for patients with renal insufficiency. Thus, making an accurate assessment of renal function is a requirement in clinical medicine."

• " The claimed method differs from that proposed in document D1 in step (iii) (see point 11. above), i.e. in that a value resulting from an equation comprising the product of the sCr and SDMA concentration values is compared to one or more standard values that correlate to the GFR in the animal subject. This was not contested."

• "The claimed method has a technical character as it solves the technical problem of estimating the GFR, a clinical parameter relevant in renal diseases, based on measuring the blood concentrations of two markers (SDMA and sCr). Step (iii), which is non-technical, contributes to solving this technical problem, together with measurement steps (i) and (ii), because the GFR estimated for an animal subject is determined by the recited calculation of a product of measured SDMA and sCr concentration values and a comparison of this product to one or more standard values that correlate to the GFR in the animal subject."

• " the skilled person immediately understands from the wording of the claim that the comparison to standard values, which correlate to a particular GFR, directly and necessarily leads to the estimation of the GFR in the animal subject for which the blood markers were measured. The missing explicit link of how the steps of the claimed method result in the estimation of the GFR can thus be implicitly understood from the method steps. "

• " none of the appellant's arguments as to why the claimed method was obvious when selecting document D1 as the starting point for the assessment of inventive step are persuasive."
• As a comment step (iii) can be a mental step. It could also be computer-implemented, with implicitly a step of displaying the resulting calculating information, perhaps.
• As a further comment, the result of step (iii) is not used to improve step (i) and (ii).
• Cf. T 1741/22 (yesterday's post) for a different approach (it seems).

EPO 

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

T 1741/22 - Displaying medical data

Key points

• The case was given publication code [B] by the Board, i.e. of general interest.
"Claim 1 of auxiliary request 10 contains the following limiting features (board's labelling):
(a) A system for analysing glucose monitoring data indicative of a glucose level in a bodily fluid, comprising: an input device, a data processing device, an output device, a display device, and machine-readable instructions that are executed by the data processing device,
(b) [wherein the machine-readable instructions cause the data processing device to] receive continuous glucose monitoring data via the input device, the continuous glucose monitoring data indicating a glucose level sampled for a person in a bodily fluid at a plurality of sample times over a measurement time period in a continuous glucose level measurement, and comprising a plurality of continuous glucose profiles, each of the glucose profiles comprising a plurality of glucose values with a glucose value for each of the plurality of sample times over the measurement period, wherein the plurality of glucose profiles is determined on different days by sampling the glucose level on each day over the measurement period, wherein the measurement period is 24 hours;
(c) [wherein the machine-readable instructions cause the data processing device to] for the plurality of continuous glucose profiles, determine a plurality of minimum glucose values and/or a plurality of maximum glucose values for a selected group or each of the plurality of respective sample times
(d) [wherein the machine-readable instructions cause the data processing device to] provide first display signals representing the plurality of minimum glucose values and/or the plurality of maximum glucose values for the selected group or each of the plurality of respective sample times;
(e) [wherein the machine-readable instructions cause the data processing device to] output the first display signals via the output device to the display device; and display a first graphical representation according to the first display signals on the display device."
• Essentially, the system has a display to display minimum and maximum values from 24 hours of received "continuous glucose monitoring data" (from a wearable glucose measurement device,  I guess). The system itself is not a continuous glucose monitor.
• "The appellants [proprietors] argued that the distinguishing features of claim 1 of auxiliary request 10 over D1 were features (c) and (d), i.e. determining and displaying minimum/maximum glucose values. [D1 shows percentiles]. [The proprietors] stated that the technical effect of the distinguishing features was to provide an "improved analysis of glucose monitoring data". In particular, "the plurality of minimum/maximum glucose values may correspond to medically relevant outlier values", which "would otherwise be averaged out in the context of known methods employing percentiles as in D1". "
• The question is whether these features provide for an inventive step. The Board approaches it from the question of whether the features provide a technical contribution ("contribute to the technical character of the invention").
• As an aside, a test of the Board's reasoning is if it makes sense if the distinguishing feature was "calculating the third harmonic eigenvalue" (instead of minimum/maximum, just making up a fancy term here) and the clear and convincing evidence is that this value, hidden in what was considered random noise before the invention, turns out to be life-saving information. That helps to distinguish between 'this is obvious for any scientist in the field but I don't have the right prior art at hand' and 'it is very smart but not technical'.
• The Board: "if the mere generation of "new data" were sufficient to contribute to the technical character of the invention, Article 52(2) and (3) EPC would contain meaningless limitations of patentable subject-matter, as e.g. mathematical methods are supposed to constantly generate "new data"."
• The Board then sets out that steps C and D are not actual measurement steps and are not, for that reason, technical.
• Note that even including a technical measurement step may not necessarily mean that the further steps of processing the resulting data are automatically technical in the sense of G1/19 (T 0489/14, r.7.4). 
• "The appellants [proprietors] referred to T 2681/16 and to the Guidelines for Examination in the EPO in support of their view. "
• Dealing with the argument based on the GL first in this post: "the Guidelines for Examination in the EPO (in its applicable version of March 2022 and also in its current version of March 2024), section G-II, 3.3, which relates to the technical contribution of mathematical methods, lists "providing a medical diagnosis by an automated system processing physiological measurements" among "examples of technical contributions of a mathematical method". As providing a "medical diagnosis" - whether done by a physician or by an automated system - is devoid of any technical character (see e.g. G 1/04, Reasons 5.3 and 6.3), this example is clearly erroneous. As there is no further explanation, let alone a reference to any case law, the board sees no reason to speculate on how the Guidelines came up with this example (cf. Article 20(2) RPBA)."
• I will quote the relevant parts in G1/04 in full. It would have been helpful if the TBA had identified the relevant sentences - especially because G 1/04 was about Art. 52(4) EPC 1973, i.e. about industrial applicability, not about non-inventions of Art. 52(2) EPC 1973. 
• I will highlight below some parts of G1/04, cited paragraphs, that are at first sight a bit at odds with the TBA's reasoning based on the same paragraphs of G1/04, to the extent I can understand the TBA's reasoning in all its brevity. 
• G 1/04: "5.3 Since diagnostic methods referred to in Article 52(4) EPC are inventions within the meaning of Article 52(1) EPC (cf. point 4 above), it follows that, in a situation where the deductive medical or veterinary decision phase is a purely intellectual exercise, i.e. a step of a non-technical nature, such a method must necessarily further include preceding steps (cf. point 5 above) of a technical nature, in order to satisfy the requirements of Article 52(1) EPC. The subject-matter of a claim including technical and non-technical features may satisfy the requirements of Article 52(1) EPC if the non-technical features interact with the technical features in order to bring about a technical effect (cf. T 603/89 (OJ EPO 1992, 230), point 2.5 of the Reasons). 
• "6.3 In the judgment of the Enlarged Board of Appeal, the qualification of an activity as having a diagnostic character may not depend on who is involved. The wording of Article 52(4) EPC is unequivocal in that the exclusion relates only to the method, and not to the person carrying out the method. Furthermore, no indication can be found in the preparatory documents to the EPC which would restrict the exclusion of diagnostic methods from patentability to a certain group of persons such as medical or veterinary practitioners. Also, as already mentioned under point 6.1 above, defining the medical or veterinary practitioner on a European level within the framework of the EPC is difficult if not altogether impossible. To allow the grant of a European patent to depend on the involvement of such a person would therefore introduce legal uncertainty into the patent granting procedure. Thus, whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC should neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medicinal or non-medicinal support staff, the patient himself or herself or an automated system. This also reflects the well-known fact that technological advances penetrate human and veterinary medicine and the medical and veterinary profession. Today, and more than at any time before, technology is about to fundamentally alter how and by whom health care is administered, with the result that human and veterinary medicine is gradually being reshaped by technology. In a changing medical or veterinary environment brought about by technological progress, the need for reconsidering the relationship between medical or veterinary practitioners and non-medicinal support staff will become more pressing than ever before. This will have implications for the non-medicinal support staff in terms of profile and expansion in that a great variety of diagnostic and other information will have to be procured and gathered by these persons. Moreover, no distinction should be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it. The reason for this judgment lies in the fact that, again contrary to the requirement of legal certainty, the assessment of the factual and legal situation in connection with these issues could change considerably in time. As has been mentioned under point 6.1 above, consideration might be given to exploring the possibility of protecting the activities of medical and veterinary practitioners by other means on the national level."
• The Board also " disagrees with the finding in T 2681/16 that providing an overall "measure" of the glucose variability and a prediction of glycemic events amounts to a technical effect.". "In the present case and in the case underlying T 2681/16, where the "physical reality" is typically the "patient's blood", the interaction with the physical reality ends once blood glucose measurements are carried out, directly on the relevant physical entity "blood", or indirectly e.g. on another bodily fluid [note; and these physical steps are not claimed in the patents] The [note: actually claimed steps of the ] provision of overall glucose variability and a prediction of glycemic events are mathematical steps or intellectual activities which take place in the absence of this interaction with the physical reality and are therefore not "measurements" in this sense."
• "generating (and displaying) further data by an evaluation or interpretation of these measurements (as done according to features (c) and (d) here) amounts to "measurements" generated merely by a cognitive or mathematical exercise that is inherently non-technical. "
• G 1/19 r.98: "Calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect. Still, in general, data about a calculated technical effect is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims"
• G 1/19, r.128 mutatis mutandis: " In the Enlarged Board's view, calculated numerical data reflecting the physical behaviour of a system [from measurements] usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the [measurement]. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes"
• See also r.98: "calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect. Still, in general, data about a calculated technical effect [?] is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims (see point E.I.b above, referring to T 939/92)."
• See also the broken technical chain fallacy as reviewed in T 1670/07: "the Board sees something of a well known argument that could be termed the "broken technical chain fallacy" after decision T 1741/08 - GUI layout/SAP. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user's reaction to information. The decision essentially concluded (see point 2.1.6) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user's reaction to the itinerary."
• These observations are without prejudice to the question of whether claims involving the display of medical diagnostic data should benefit from the exception of G1/19 r.98 and r.128 of an implied technical use and effect of the calculated or displayed data, the possible argument being the potential use of the data is (practically, realistically) limited to medical purposes (methods of treatment of patients) and that medical purposes are technical purposes.

EPO 

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

T 0355/22 - Amending to restore inventive step

Key points

•  The proprietor restores inventive step by adding a feature to claim 1 that is already taught in the closest prior art.
• This would be an interesting thing to test on the (new) EQE.
• "D9 also relates to carbon-based additives for lead-acid batteries (paragraphs [0001] and [0011]) and is a suitable starting point for assessing inventive step."
• "The opponent is of the view that the objective technical problem is merely providing an alternative because oxidized carbon black "A" ([(] Table 1 of the contested patent) showed comparable performance with the control carbon black "CB" (Table 4 and Figure 4) "
• The Board:"Oxidized carbon black "A" is not encompassed by claim 1 because the volatile content is slightly below the claimed range of at least 5.5 wt.%. The observation that oxidized carbon black "A" does not solve the technical problem posed in this case nevertheless leads to the conclusion that the technical problem is not solved across the entire scope of the claim. Oxidized carbon black "A" differs from samples "B" to "E" in that it has a lower volatile content and a higher BET surface area. The claim, however, encompasses oxidized carbon blacks having a similar volatile content to sample "A" and an even higher BET surface area of up to 2 100 m**(2)/g. Such samples are closer to sample "A" than to samples "B" to "E". Considering that sample "A" does not solve the problem posed, it cannot be concluded that the problem would be solved by any such other samples encompassed by the scope of the claim."
• "In the light of the above, the objective technical problem is merely that of providing an alternative."
• The Board finds the modification to be obvious.
• Turning to the lower-ranking auxiliary request: "While the limitation does not provide an additional delimitation from D9, it does affect the question of whether the technical problem posed (see point 9.3) has been solved across the whole scope claimed.

  13.2 Oxidized carbon black "A" (BET surface area of 1 520 m**(2)/g, volatile content of 5.28%, Table 1 of the contested patent) is not included in the scope of the claim as its BET surface area is too high and its volatile content slightly too low. This example on its own thus does not call into question whether the problem is successfully solved. Moreover, the question of whether any technical effect may be achieved if the oxidized carbon black has an even higher BET surface area than sample "A" and a similar volatile content no longer arises since these samples are outside the scope of the claims."

• " For these reasons, and in the absence of any counter-evidence, the technical problem of obtaining improved dynamic charge acceptance and minimised water loss may be considered solved."

• The Board consides the technical facts and concludes that the claim is inventive.

EPO 

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