Tuesday, 30 March 2010

T 1333/07 – Credible Cause ?

In a recent post we have seen a decision examining the credibility that a given problem had indeed been solved. Once it is established that the problem has been solved, it remains to be demonstrated or at least made credible that the claimed features are at the origin of the effect.

[4.2.5] The Board agrees with the Respondents that the extruders used in the examples of the patent in suit show improved efficiency when compared with those of D2.

There is however no evidence that this improvement is due to the distinguishing feature of the claim, namely the number of thread starts. On the contrary the comparison between experiments 10 and 11 discussed above undisputedly question that this is the case.

[4.2.6] In addition to the results in the patent, the Respondents relied during the oral proceedings on paragraph [0007] of the specification in order to establish that an increase of performance has been achieved. According to this paragraph it was possible to dramatically increase the performance of an extruder when used in the manufacture of ice cream by:
(a) operating with a pitch angle which is outside what has been used up until now in the manufacture of ice cream,
(b) operating with screws which have more than one thread start, whereas up until now screws with only one thread start have been disclosed, and
(c) operating with extruders which are much shorter than what has been used up until now.

[4.2.7] The Board notes: that feature (a) is not a distinguishing feature of the claimed extruder; that the results in the Table of the patent question the affirmation of the Respondents that feature (b) is responsible for the increased performance of the extruder; and that feature (c) is not a feature of the subject-matter of Claim 1 of the main request.

With respect to feature (b) the Board notes furthermore that, in the absence of supporting evidence, an improved performance of an extruder having a screw with more than one thread start over an extruder with a single threaded screw is not per se credible, because given the complexity of the parameters influencing the rheological properties in an extruder, this feature by itself can in all probability not be assumed to influence the cooling performance in the desired fashion independently of other parameters.

The Board thus concludes that an improvement of the efficiency of the extruder relating to the distinguishing feature of the invention is not derivable from the patent in suit.

Reformulation of the problem and its solution

[4.3.1] In view of the above, an improvement of the energy efficiency of the extruders according to Claim 1 cannot be acknowledged as the objective technical problem underlying the invention as claimed in the main request. As a consequence, the problem has to be reformulated in a less ambitious manner, not involving such improvement. 

[4.3.2] The objective problem can thus be reformulated as the provision of further screw extruders for the manufacture of ice cream. 

[4.3.3] It is not disputed that this less ambitious problem is solved by the claimed single screw extruders having between 2 and 6 thread starts according to Claim 1 as it is an alternative design when compared to that of D2.


[4.4.1] The question which remains to be decided is whether this solution involves an inventive step, that is to say, if in view of the reformulated problem the claimed subject-matter is obvious or not.

[4.4.2] In the absence of an improvement of the efficiency of the extruder, the use of a screw extruder with more than one thread start is regarded by the Board as obvious for the skilled person and therefore lacking inventive step.

[4.4.3] The reason for this conclusion is that it is undisputed that multiple thread starts are well known in the design of screw extruders (see, for instance, D40). Moreover extruders with multiple thread starts have already been used in the manufacture of ice creams, for instance in Example 1 of D7.

[4.4.4] As this finding was not disputed by the Respondents, who even admitted during the oral proceedings that if the improvement of the efficiency of the extruder was not accepted, there was no inventive step in the use of a screw with multiple thread starts, no further comments are needed.

[4.5] For the reasons set out above the subject-matter of Claim 1 of the main request lacks inventive step.

Normally this less-ambitious-problem situation precedes the revocation of the patent for lack of inventive step. In the present case, however, the third auxiliary request (claiming a screw extruder with a screw having between 2 and 6 thread starts and a screw length/screw diameter ratio of between 2 and 10) was found to involve an inventive step, not because it solved a more ambitious problem, but because use of such screws was not known or suggested in the prior art.

To read the whole decision, please click here.


Anonymous said...

The final outcome surprises me. Would the common general knowledge of the skilled person not suffice for the realisation that screws with basically any number of thread starts and any screw length / screw diameter (and certainly those that were claimed) are possible? And once we have the "could", we also have the "would", since the choice made does not have any technical effect, i.e. is arbitrary.

funes said...

For anonymous:

I think that your comment smells at ex-post facto analysis...

First of all, the choice made (i.e. the distinguishing feature) has indeed a technical effect (see formulation of the technical problem, by the Board in §4.3.2).

Furthermore, Board dixit: "use of such screws was not known or suggested in the prior art"

If the prior art neither teaches nor suggests the distinguishing feature, then the skilled person would not have arrived at the claimed invention. How would he do so if he cannot find the solution anywhere? (see C-IV 11.7.3, T 2/83)


Oliver G. Randl said...

Personally I tend to agree with funes.

I was also a bit surprised when I first read the decision, but when you think about it, it is not really shocking. If there is no hint or suggestion whatsoever in the relevant art, it appears difficult to conclude that the invention, having regard to the state of the art, is obvious to a person skilled in the art. Having said this, this is a point where the incomplete knowledge of the prior art (all extruder screws accessible to the public at the priority date) by the Examiner/Board might become decisive.

Anonymous said...

I don't think there is ex-post facto analysis in my reasoning. It is the common general knowledge that (in my opinion) suffices for the realisation that screws with essentially any number of thread starts and any screw length / screw diameter ratio can be envisioned, including those specified by the claim. The skilled person hence could pick those, and therefore would pick those (for lack of technical effect of this choice, see 8.3.1 and 8.3.2).

If the prior art had not shown any screws with multiple thread starts, I might agree that it might not be obvious to consider screws with multiple thread starts. But the prior art does show those (4.4.3). The exact number of thread starts is then irrelevant for inventive step. Same for the ratio: surely the skilled person would consider varying length and/or diameter of a screw in accordance with circumstances.

Suppose the claim defines a table with 10 legs and the prior art only discloses tables with 3-6 legs. No technical reason is given for choosing 10 legs. Would the claimed table be inventive?

funes said...

For anonymous:

I do not know what is here common general knowledge... I suppose that the Board had a good reason to believe that such screws were not part of it.

Regarding your example, I agree in principle with you. You can say that adding further legs have a technical effect (e.g. further stability). However, it is clear that a prior art table with a plurality of legs is an indicator to the skilled person for adding further legs (e.g. 10) in order to increase stability. Therefore such a selection would not involve an inventive step.

However, here the Board holds that the claimed single screw extruders are a non-obvious alternative to the extruders of the prior art since D2 is completely silent about this parameter and cannot give any incentive to use extruders as now claimed.

That is an strict application of PSA: if you do not have prior art inciting the skilled person to go in the claimed direction, then you are inventive.

I think the point is not whether there is a technical reason for choosing an alternative but rather whether a technical problem is solved.

Here, the granted claim solves the technical problem of providing an alternative screw which is not shown in the prior art.

Anonymous said...

This invention of the week relates to a painting process involving the use of the posterior of an infant. The USPTO granted a patent.

Let us assume that the prior art does not disclose the use of the posterior of an infant in a painting process. Would this invention be inventive under the EPC?

We can probably agree that there is no technical effect involved in the choice of the posterior of an infant over conventional painting tools. (Any effect will at most be aesthetic, hence non-technical.) So the claim only solves the technical problem of providing an alternative painting tool (the prior art being a conventional painting process using a conventional brush).

In my view, the solution of providing the posterior of an infant must be regarded as obvious if the skilled person would recognise that the posterior of an infant is suitable as a painting tool (the answer being yes). Otherwise, the more ridiculous the alternative, the more likely a patent would be granted.

Maybe this goes a little against the "strict" approach of determining whether the prior art discloses the solution to the problem of providing an alternative, but in my view this is at most a deficiency of the "alternative solution"-approach.

Oliver G. Randl said...

Point well made. This grotesque example brings us to the limits of the approach. Your proposition is pragmatic, but (to me) it raises an ex post facto issue. No offense meant, but it takes a weird mind to imagine that the posterior of an infant could be used as a painting tool. I still have to think this through. Perhaps an Examiner could tell us how he/she would tackle this case ?

Anonymous said...

The comment of 5 april 2010 was in fact from an examiner ;). Not one in the field of infant posteriors, though.

Indeed, it takes a weird mind to think of this, but does that make it inventive? A crazy story printed in a book does not make the book inventive. I am aware this example is not fully analogous to the infant posterior example, but still, try to deal with this using the alternative problem formulation approach and its "strict" application. The problem is providing an alternative book. The proposed solution, i.e. the crazy story, is nowhere to be found in the prior art. Then why is it not inventive? (The approach taken in T 641/00 (COMVIK) easily deals with this example, but different approaches should not lead to different answers. In fact, different approaches should not be different when looked at carefully.)

Following the approach taken in T 1333/07, the infant posterior claim would seem to be inventive (at least over the use of a normal brush, maybe not over other known methods of using body parts). For me this confirms my doubts that this approach is fully correct.

Of course no offense taken whatsoever. I also have to think this through a bit more. The test that I proposed indeed smells of ex post facto and might clearly fail on other examples...

Maybe the "proper" way to deal with the infant posterior is the following. Let us assume that the prior art teaches that basically any suitably shaped object can be used to paint. The claim differs from this prior art in that the object is more specifically the posterior of an infant. Now this adds absolutely nothing from a technical point of view. It is an arbitrary choice among all suitably shaped objects, hence obvious.

This is not much different from my earlier proposition, but it is slightly different. It has to be shown now that the prior art or common general knowledge teaches that a normal brush can be replaced by any suitably shaped object. And this seems to correspond exactly to the technical contribution of the infant posterior claim.

Going back to the alternative problem formulation of providing an alternative painting tool (starting from a normal brush), the knowledge that all suitably shaped objects will do, will now teach the skilled person to select any such suitably shaped object. This choice among all suitably shaped objects is arbitrary, hence picking the posterior of an infant is obvious.

It's all very subtle, yes... ;)

Anonymous said...

And applying this approach to the book example: the skilled person looking for an alternative book certainly realises that any (not excessively long) text can be printed in a book. The choice for the particular claimed crazy story among all possible texts is arbitrary, hence obvious.

Oliver G. Randl said...

I find your musings very interesting.

The infant posterior example is more revealing to my eyes. The book example is not so good in that the alternative text is not a technical feature. Having said this, the "alternative solution" approach could still be followed by saying that the crazy (or any other) text is an alternative way of distributing ink on a plurality of sheets of paper, which provides some technicality.

I wonder whether our conceptual problems are not related to the change of paradigm concerning inventions, from the "contribution approach" (Vicom et al) to the present approach where any object or method involving technical means is an invention. Under the contribution approach it was possible to exclude things that had no technical contribution (as your crazy story or perhaps even the infant posterior), which is much more difficult now. The inventive step assessment, however, has not changed, which may explain our difficulty.

Another thought on your (rhetorical) question "Indeed, it takes a weird mind to think of this, but does that make it inventive?" I would say that the need for a 'weird' mind could be a valid indicator of inventive step (not yet acknowledged in the Guidelines though). I tend to believe that there is a connection between creativity and mental disorder. Of course I do not mean that creators are necessarily crazy, but I think that crazy people are to some extent creative. The skilled person, who is the measure of inventive step, is, as far as I can see, quite the opposite of a crazy person. He/she only does what is reasonable, on the basis of common general knowledge. He/she would never do crazy things - nor would he/she invent whatsoever.

Take it for what it's worth.

Thanks again for sharing your thoughts.

funes said...

I respectfully note that, in my opinion, a child posterior has a technical character when used as a paint tool.

Look at it in another way, if the invention would disclose a new brush, which provides a new and non-previously suggested way of impinging paint on a surface, it would be patentable, other?

In my opinion that "the solution of providing the posterior of an infant must be regarded as obvious if the skilled person would recognise that the posterior of an infant is suitable as a painting tool (the answer being yes)." is only related to the "could" question and not to the assessment of the "would". The latter being the question to be answered in order to avoid an unduly ex post facto analysis of inventiveness.

Regarding the book example, I think that is a quite different topic. In the "child posterior" invention, we are talking about a tool (a technical thing, non-excluded from patentability). In the book, we are talking about presentation of information (excluded from patentability under Art 52(2) EPC).

Regards and thank you for the fruitful discussion.

Anonymous said...

@funes (and Oliver):
A new brush that provides a technical effect not present in known brushes would certainly be patentable, yes. But let us agree (at least for the purpose of this discussion) that the infant posterior has at most non-technical aesthetic effects compared to known brushes.

It is certainly a technical feature, but I do not see an inventive step in the selection of an infant posterior when looking for a paint tool, basically because it is entirely arbitrary (from a technical point of view) to choose the posterior of an infant when looking for a suitable object for painting.

Regarding could/would: see decision T 273/02, r. 8.7:
"Thus, the "could/would approach" only applies if the "would" part involves technical considerations. If it does not, the fact that the invention could be arrived at is sufficient to render it obvious."
(The decision also discusses T 2/83.)

Btw, I wouldn't be surprised if decisions can be found that contradict this view. (I think one can argue that T 1333/07 is such a decision.)

Regarding the book example: yes, text is excluded. However, the "implementation" of the text in the form of ink patterns is technical. Why does a technical and very creative ink pattern not render the book inventive? In my view because its creative aspect is separate from its technical aspect.

The posterior of an infant is technical and certainly a creative choice, but its creative aspect (the choice of that object out of all objects suitable for painting) is separate from its technical aspect (it is suitable for painting, as the skilled person would recognise).

You are right that Art. 52(2) plays a role in one example and not in the other. My answer is that in the context of inventive step excludedness (the text formed by the ink pattern) is not really different from technical arbitrariness (the selection of the infant posterior as a suitable object for painting), but you might have a different view.

Btw, I will not deny that partly I'm simply looking for a legal justification of my feeling that the EPC should not allow a patent for silly inventions like this one. If this is a patentable invention, then I can easily write down a list of a thousand patentable inventions, simply by coming up with other silly objects that surely nobody has ever considered to use as a paint tool (what about the use of a dead Norwegian Blue parrot as a paint tool). Similarly, I could easily write down 1000 combinations of screw parameters that cannot be found in the art (e.g. a screw length / screw diameter ratio that when written in base 26 and converted to a-z reads "m.ontypython"). Maybe this is how US patent law works, but the EPC should do better. (But of course this "feeling" is not valid reasoning, so a legal justification has to be found.)

@Oliver: Craziness may lead to creativity, but not necessarily to technical creativity.

Thanks to you both as well (and feel free to continue to disagree!).

Oliver G. Randl said...

There is not much more I can say on this issue. I understand your concern, but as explained above, I have the feeling that the case law of the Boards of appeal as it stands offers no remedy against such inventions, at least since the 'contribution approach' has been abandoned.

One could perhaps add that there is not much harm done by such patents. Maybe it is a good idea that weird people spend their money on useless patents rather than on other odd things. ;-p

Anonymous said...

Well, if you accept that the skilled person "could" and you follow T 273/02, you're there already.

A decision that deals with a situation as in T 1333/07 but that, at least to me, seems more representative of the case law is T 1541/07, see points 4.7 and 5.4. It basically goes from the lack of technical effect of a parameter value or range directly to the conclusion that there is no inventive step. Another example is T 374/04, point 2.5.

Another interesting case is T 176/96:
"The Board is aware of decision T 1027/93 of 11 November 1994 (not published in OJ EPO), in which another Board observed (obiter) that the EPC does not require that an invention, to be patentable, must entail any useful effect, and that the apparent futility of a given modus operandi could rather be said to render it completely non-obvious.

In this respect, the Board wants to emphasize that the notion of "non-obviousness" is related to the concept of "invention". The concept of "invention" implies a technical character. This follows directly from the wording of Article 56 EPC, wherein the expressions "invention" and "obvious" are linked with "state of the art" and "a person skilled in the art" (see also Schulte, Patentgesetz mit EPÜ, 5th edition, pages 12 to 13). In the Board's judgment, technically nonfunctional modifications are therefore irrelevant to inventive step, even if the skilled person would never think of such a modification. A parallel can be drawn here with a new design based on a known technical concept. That new design might be a surprise and thus "not obvious" for professional designers. Nevertheless if the modifications have no technical relevance and are, from a technical point of view, arbitrary, the new design is not patentable and does not involve an inventive step within the meaning of Article 56 EPC. In the present case the device according to claim 1 is considered to be no more than an arbitrary modification of the design of the device according to D2 which does not involve an inventive step within the meaning of Article 56 EPC."

I don't think the switch away from the contribution approach makes much of a difference. What used to be excluded under Art. 52(2)(3) now lacks an inventive step under Art. 56 (unless there are no technical features at all). There must still be a non-obvious technical contribution.