T 0667/23 - A difference no matter how small

Key points

•  "D1/D1a discloses an alloy C1 falling within the scope of claim 1 except that alloy C1 contains 1.00 wt.% Si. The opponents mainly argued that the lower endpoint of the claimed range (1.03 wt.%) could not establish novelty since it was not far removed from the example. Reference was made to decision T 673/12.
• "The board is not convinced by the opponents' arguments.
• "The concept that a claimed sub-range must be "narrow" compared to the known range and "sufficiently far removed" from any examples disclosed in the prior art originates from decisions T 198/84 (Reasons 5), which is summarised briefly in T 279/89 (Reasons 4.1). It has been accepted as a kind of novelty test for selection inventions. "
• "This board agrees with T 1688/20 (Reasons 3.2.1) that this concept is not in agreement with direct and unambiguous disclosure, which is the uncontested criterion established later on in the case law for evaluating novelty. As explained in T 1688/20, the relative terms "narrow" and "sufficiently far removed" do not provide objective, solid and consistent criteria for establishing the novelty of a selected sub-range. Therefore, these terms are dependent on the case and context and involve considerations linked to the technical effect of the range. Consequently, the concept cannot be reconciled with direct and unambiguous disclosure. It is instead considered to be relevant for inventive step. In fact, neither T 198/84 nor T 279/89 even mentions direct and unambiguous disclosure."
• The difference is the Si content is neither found to provide a technical effect nor an inventive step.

EPO 

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

T 0509/22 - Technical effect not mentioned, G 2/21 still complied with

Key points

• The Board, in translation: " It is correct that these effects - improvement in lubrication performance and leak detection - are not explicitly mentioned in the patent in question.
• " However, it is not required that an effect be explicitly mentioned in the patent or patent application in order for it to be taken into account in the assessment of inventive step. Indeed, the condition set out in the decision of the Enlarged Board of Appeal G 2/21 requires only that the skilled person, on the basis of the application as filed, would consider the said effect to be included in the technical teaching of the patent application. "
• Mentioning the technical effect is, hence, neither a necessary nor a sufficient condition. It really depends on the technical field. 
• "In the present case, the board is of the opinion that the skilled person, when searching for compositions for use in refrigeration systems, inevitably takes into account lubrication and leak detection effects, in particular because these effects are indispensable for the effective use of the compositions as a refrigerant. The problems of achieving these effects are therefore subsumed within the more general problem of making refrigerant compositions available.
• Therefore, the Chamber takes into account the test results described in document D27."
• " Document D27 therefore reveals that the presence of HCC-40 in composition A increases the usefulness of the composition as a refrigerant compared to a composition B which does not contain HCC-40. The technical effect produced by the distinguishing feature therefore consists at least in that a preparation containing a small amount of HCC-40 is characterized by improved leak detection."
• The Board, in the present case, does not discuss if the application makes it prima facie credible that the technical effects are achieved by the claimed invention. 

EPO 

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

R 0006/21 - Clearing the backlog

Key points

• The EBA is currently clearing its backlog of petition for review cases. Which means that it had to finally issue a decision in this case, after slightly more than four years.
• The decision seems to contain nothing especially challenging.
• Water down the bridge?
• Well, let's not forget the importance of proper docket management. Which is not only about mean tendencies but also about the P95 percentile values. And about leading by example.
• I would like to give credit to the EBA for the 100% transparent docket of petition for review cases. 

EPO 

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

T 2497/22 - Putting the effect in the claim and a claim feature in the OTP

Key points

• On the EQE, you are thaught to include no pointers to the solution in the objective technical problem.
• Claim 1 in this case: "1. A transparent or translucent liquid laundry detergent composition, wherein the composition comprises 
• from 1% to 20% by weight of alkyl ether sulfate ... 
• from 0.1% to 5% by weight of amine oxide; 
• from 0.1% to 5% of a cleaning polymer; from 1% to 15% by weight of a solvent comprising 1,2-propanediol; and water; 
• wherein the transparent or translucent composition has 50% transmittance or greater of light  [...] "
• The parties did not dispute the view that D2 is the closest prior art. D2 is concerned with the preparation of liquid detergent compositions comprising only biodegradable and eco-friendly ingredients and exhibiting exceptional performance compared with traditional detergent formulations
•  It was undisputed that the composition of claim 1 as granted differs from those of D2 in that it contains 0.1 to 5 wt.% of an amine oxide and in that it is transparent or translucent.
• As to the technical effect brought about by these differences having regard to the closest prior art, the appellant did not contest the view that the comparative tests in Examples 2 to 4 of the patent show that the composition of claim 1 performs better than two known eco-friendly laundry detergents and similarly to a traditional laundry detergent. The main point in dispute between the parties was whether the transparent or translucent feature in claim 1 was technical or, at least, whether it contributed to the technical character of the invention. 
• Ultimately, the question arose as to whether the transparent or translucent feature could be taken into account in the assessment of inventive step.
•  According to the appellant [opponent], the transparent or translucent feature was merely aesthetic and the patent did not explain how transparency or translucency contributed to the technical character of the invention. Therefore, the feature could not be taken into account in the assessment of inventive step.
•  The board disagrees. Claim 1 defines a liquid laundry detergent composition characterised by the result to be achieved, namely that the composition is to have at least 50% transmittance of light [].  This result implies that the composition is transparent or translucent. Thus, transparency or translucency is not only a technical feature that physically characterises the claimed composition. It is, in fact, also a technical effect resulting from the combination of ingredients defined in claim 1. Contrary to the appellant's view, neither transparency nor translucency has to produce additional technical effects in order to be taken into account in the assessment of inventive step. They themselves make a technical contribution to the invention. Moreover, as noted by the respondent [proprietor], being transparent or translucent is a desirable feature since it shows that the composition is stable and it is a feature associated with cleanliness by many users.
• " the objective technical problem solved by the composition of claim 1 can be defined as providing a transparent or translucent liquid laundry detergent composition based on renewable components that has a cleaning performance comparable to that of traditional detergents."
• So the distinguishing feature is included in the OTP.
• The appellant did not cite any prior-art document suggesting that the addition to the compositions of D2 of an amine oxide in the amounts defined in claim 1 could solve this objective technical problem. Therefore, the subject-matter of claim 1 is not obvious.
• Apparently, the opponent did not contest that adding amine oxides made the composition more transparent than the one of D2, even though the Board only states that "examples 2 to 4 of the patent show that the composition of claim 1 performs better than two known eco-friendly laundry detergents and similarly to a traditional laundry detergent".
• Would the outcome of the case have been different if the claim only recited the amount of amine oxide as a distinguishing feature and mentioned transparency in the description?

EPO 

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

T 1574/23 - GL examples on inventive step

Key points

• The Board: "The appellant's  [applicant's] view is however correct in this respect. The platform of D3 is clearly limited to a height/diameter ratio of less than 0.05 (see claim 1). Accordingly, D3 teaches away from the claimed ratio. The cited reference to Annex 3.1 (ii) of the Guidelines for Examination in the decision is not correctly interpreted by the Examining Division."
• The reference is to the following example in the  Guidelines, Chapter G-VII (Inventive step), Annex, para. 3.1 "Obvious and consequently non-inventive selection from among a number of known possibilities." - ...(ii): "The invention consists in choosing particular dimensions, temperature ranges or other parameters from a limited range of possibilities, and it is clear that these parameters could be arrived at by routine trial and error or by applying normal design procedures."
• Fun fact: this paragraph is almost verbatim the same as in the 1st edition of the Guidelines (1978): Chapter C-IV, 9.8, C1:

• In case you wonder, the 1978 GL are not (yet) on the EPO GL archive page.  If you are interested, please contact the EPO, and if that doesn't work, feel free to contact me. 
• There is a lot to say about these examples. In particular, they predate the EPO's problem-solution approach, which was developed by the boards of appeal in the early years of their operation, i.e., after 1978. The first edition of the GL was drafted by various national delegations and an Interim Committee. For that reason, the examples omit the steps of identifying the technical effect, and the particular example speaks of 'could' whereas the actual rule is "would (not merely could) have arrived at " (according to the later decision T2/83). Indeed, the Annex is called"Examples relating to the requirement of inventive step – indicators", with the "indicators" (Indizien) referring the method that was used to examine the inventive step requirement by the national courts and patent offices before the PSA was developed by the EPO. 
• 
  
• The Board in the present case, as cited in part before: "The appellant's  [applicant's] view is however correct in this respect. The platform of D3 is clearly limited to a height/diameter ratio of less than 0.05 (see claim 1). Accordingly, D3 teaches away from the claimed ratio. The cited reference to Annex 3.1 (ii) of the Guidelines for Examination in the decision is not correctly interpreted by the Examining Division. The issue at hand is not a selection in the sense of a choice from a limited range of possibilities in the prior art, since D3 does not disclose a range of ratios within the claimed ones (0.06 to 0.35), but of less than 0.05 (see claim 1 and page 11 of D3). It is not apparent why the skilled person, starting from the platform of D3, would seek to optimise such a ratio outside the specific teaching of staying below 0.05. The reasoning is tainted by hindsight."
• "Consequently, the decision is incorrect in this respect and the subject-matter of claim 1 is not rendered obvious by the combination of D3 with common general knowledge."
• "Furthermore, since none of the cited documents teaches or points to such a ratio for a disc-shaped platform with a completely watertight radial structure, the subject-matter of claim 1 cannot be rendered obvious by them (Article 56 EPC)."
• 
  

EPO 

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

T 0002/23 - On the basis of the prior art provided

Key points

• This case is about exceptional circumstances under Art. 13(2) (admitted) and a non-obvious alternative (also acknowledged)
• The reasoning on inventive step set out in the statement of grounds of appeal [of the opponent], while it started from D2 as the closest prior art, exclusively relied on a combination with documents D1 or D9 to arrive at a conclusion of lack of inventive step of granted claim 1 (statement of grounds of appeal, sections I.5.1 and I.5.2). 
• While the preliminary opinion of the Board was mainly based on paragraph 49 of D2 which was amply discussed in the decision under appeal [...] and by the appellant in appeal [...], it shed a new light on the analysis of inventive step by drawing a preliminary conclusion that there was lack of inventive step on the basis on document D2 alone, while considering unsuccessful the attacks of the appellant based on the combination with D1 or D9. 
• On this basis, the Board sees the presence of exceptional circumstances which justify the reaction of the respondent and the filing of a further set of claims after the communication addressing inventive step based on D2 alone. Under these circumstances, the Board finds it appropriate to admit auxiliary request set B into the appeal proceedings (Article 13(2) RPBA)."
• The auxiliary request, filed one month before the oral proceedings, is admitted.
•  It was undisputed that claim 1 of auxiliary request set B additionally differed from D2 in the selection of the anionic surfactant a1) among a list of options which are not mentioned in paragraph 49 of D2. The limitation of the anionic surfactant a1) according to operative claim 1 was not associated with any new effect over D2. The problem defined for the main request, namely the provision of further heat-sealable polyester films with anti-fogging properties, is therefore also valid for claim 1 of auxiliary request set B."
• " Paragraph 49 of D2 contains a list of anti-fogging agents among which the only anionic surfactants are anionic fluorinated surfactants, like quaternary ammonium salt of perfluoroalkylsulfonates. There is no further teaching in D2 from which it could be concluded that anionic fluorinated surfactants could be replaced by any of the anionic surfactants defined in operative claim 1." 
•  The appellant [opponent] argued at the oral proceedings before the Board that the presence of fluorine atoms on the anionic surfactant was irrelevant and would not change the question of inventive step over D2. Evidence that a skilled person would consider any of the specific anionic surfactants listed in operative claim 1 in place of the anionic fluorinated surfactants mentioned in D2 was however not provided. It follows that the Board cannot conclude on the basis of the prior art provided that a skilled reader of D2 would have considered using any of the anionic surfactants listed in claim 1 of auxiliary request set B in place of the anionic fluorinated surfactants disclosed in D2."
• "The Board can therefore only conclude that on the basis of the evidence provided it was not shown that the composition of claim 1 of auxiliary request set B lacks an inventive step over D2 alone. As the attacks based on a combination of D2 with either D1 or D9 do not lead to the subject-matter of claim 1 for the reasons detailed for the main request (see point 1.19, above), the objection of lack of inventive step of the appellant is unsuccessful."
• As a comment, I suppose that the opponent did not request a remittal in order to have an opportunity to file more prior art about non-fluorinated anionic surfactants. 

EPO 

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

T 1913/21 - The claim says 'use of', but is it a use claim?

 Key points

• More precisely, is the following claim a valid second non-medical use claim in the sense of G 2/88: "Use of an inhibitor of cysteine degradation for reducing the formation of trisulfide bonds in proteins, wherein the inhibitor of cysteine degradation is [compound X]; and wherein the use comprises: culturing cells expressing said proteins in the presence of an effective amount of the inhibitor of cysteine degradation, whereby trisulfide linkage formation in said proteins is reduced relative to cells cultured in medium without the inhibitor of cysteine degradation."
• The Board combines two aspects of G 2/88. Decision G 2/88 dealt with Art. 123(3) and with Article 54(1). The Art. 123(3) issue was about whether you can amend a claim in the patent as granted directed to a compound into a use claim (use of that compound for ...) without violating Article 123(3), i.e. 'change of category'.
• Regarding the change of category, question (ii) in G 2/88 was "Can a patent with claims directed to a "compound" and to a "composition including such compound" be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" [without violating Article 123(3) EPC]. In that respect, the Enlarged Board considered the effect of Article 64(2) EPC and found the amendment admissible provided that a use claim in reality defines the use of a particular physical entity to achieve an "effect", and does not define such a use to produce a "product"" because in the former case, "the use claim is not a process claim within the meaning of Article 64(2) EPC"
• Come to think about it, I wonder whether the interpretation of the term 'process' in Article 64 (2) isn't properly the domain of the national courts.
• The third question concerned the novelty of the use claims and was answered as follows: "A claim to the use of a known compound for a particular purpose [*] should be interpreted as including that technical effect as a functional technical feature"
• * =  "which is based on a technical effect which is described in the patent"
• The present Board:  "It is apparent from this that the Enlarged Board's findings relating to new uses of known compounds are limited to uses/methods/processes which are not processes resulting in products, as referred to in Article 64(2) EPC."
• I don't know how apparent this is.
• There is case law that G 2/88 does not apply to claims reciting "use of a process" (link) but I'm unaware about case law about claims directed to "use of compound X in a process". 
• " It is further apparent that claims which when correctly construed are directed to processes resulting in products referred to in Article 64(2) EPC are not subject to the special treatment established under G 2/88 and G 6/88, even if they contain the word "use"."
•  "The board considers that the proteins produced by the claimed process would be covered by Article 64(2) EPC as "products directly obtained" by the claimed process. The board concurs in this regard with the findings in T 892/94 (Reasons 3.8) that applying the concept of novelty developed in G 2/88 to claims for processes of producing a product, even when drafted as use for achieving a technical effect that results in an improved product could potentially result in a permanent monopoly of the use of a known substance for a known purpose. Such a permanent monopoly would arise from the repeated drafting of claims for a process of production including a new, possibly only subtly different, technical effect associated with this known process (see also T 1179/07 cited above, Reasons 2.1.3)."
• Given that a claim must still be novel and inventive, I find this reasoning difficult to follow. However, the Board appears to cite T 0892/94 here. 
• "The board must determine whether or not the "use" of claim 1 is in fact a process to produce a product or if it is a use to achieve a (new) technical effect"
•  "In the present case (and as was the case for claim 1 of auxiliary requests XI and XII in T 308/17), the choice of drafting the claim as a "use" of chemical compound cannot mask the fact that the claim defines a production process and the new technical effect can only take place in the context of this process. The mere formatting of the claim to give the appearance that its subject-matter falls under the principles established by G 2/88 cannot circumvent the fact that on analysis, the claim is directed to a use or process for the production of a product, here one having the 'improved' property of having 'fewer' trisulfide bonds."
• "Thus the new technical effect recited in the claim of reducing the formation of trisulfide bonds in proteins pertains to the product (the protein produced) and cannot be considered a technical limiting feature of the "use" according to G 2/88. Indeed, where an invention relates to a new technical effect of a physical entity that can only occur as part of a process for the production or manufacture of a product, such that this effect is inextricably linked to and cannot occur in isolation from the production process, a claim directed to that "use" of the physical entity to achieve that effect must be regarded as directed to the production process per se."
• "The assessment of novelty in the present case will therefore be done by answering the question of whether or not there was a disclosure forming part of the state of the art of a process having the same physical steps (culturing cells expressing said proteins in the presence of an effective amount of a compound that may act as an inhibitor of cysteine degradation) and leading to the production of the product defined in the claim."
• "In view of the above considerations on claim construction, the subject-matter of claim 1 lacks novelty over the disclosure in documents D3 and D24"

EPO 

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