Thursday, 1 July 2010

T 1349/07 – Not Just Good-Lookin’

Claim 1 of the main request before the Board read:

1. A transparent or translucent heavy duty liquid composition in a clear bottle comprising:
(a) 10 to 85% by wt. of a surfactant selected from the group consisting of anionic, nonionic, cationic, amphoteric, zwitterionic surfactants and mixtures thereof;
(b) 0.001 to 5% by wt. of an enzyme selected from the group consisting of proteases, lipases, cellulases, oxidases, amylases and mixtures thereof; and
(c) 0.001 to 3% by wt. of an antioxidant selected from ascorbic acid, BHA, BHT and mixtures thereof;
wherein the composition has 50% light transmittance or greater using a 1 cm cuvette at wavelength of 410-800 nanometers; and wherein the bottle has a light transmittance of greater than 25% at wavelength of 410-800 nm.

Its  novelty not being disputed, the Board deals with the assessement of inventive step:

[1.2.1] The Board concurs with the proprietors that the technical problem mentioned in the patent-in-suit (see paragraphs [0001], [0009] and [0010]) is understood by the skilled reader as that of rendering available enzyme-containing TTHDL compositions bottled in clear bottles that possess improved enzyme protection against UV-damage (e.g. during storage in the sunlight). This has not been disputed.

[1.2.2] The opponents have argued however that the aspects of the invention referring to transparency, translucency and clearness were merely aesthetic properties, not contributing to the solution of any technical problem and, thus, the purely esthetical features of present claim 1 were not to be considered as part of the technical problem solved for the purpose of assessing inventive step, as established in T 641/00.

[1.2.3] The Board notes preliminarily that, as also indicated by the Opposition Division in the decision under appeal, the cited T 641/00 explicitly acknowledges (e.g. at point [7] of the Reasons, also reflected in the Headnote) that even a non-technical aim may legitimately appear “as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met”.

However, in the present case, it is apparent to the Board that the visible-light transparencies of the composition and of the bottle defined in claim 1 under consideration (also in the quantitative terms of their visible-light transmittances) are not just esthetical desiderata contributing to the framework of the technical problem to be solved, but also technically relevant constraints of such technical problem. Indeed, the visible-light transmittance requirements contribute to the definition of the nature of the possible ingredients of the composition and of the materials and production methods to be possibly used for making the bottle, thereby also necessarily contributing in determining the level of harmful UV radiation actually reaching the enzyme(s) e.g. during storage in the sunlight of the bottled composition and against which the enzyme(s) must be protected. Hence, they also contribute in specifying technical aspects of the technical aim to be achieved.

[1.2.4] Therefore, the Board has no reason for disregarding any part of the technical problem mentioned in the patent- in-suit as identified above at point [1.2.1], for the purpose of assessing inventive step.

To download the whole decision, you may click here.


Anonymous said...

I agree with the OD and the Board. What T 641/00 says is that it is ok to include "clear bottle" in the problem formulation instead of "a bottle that is aesthetically pleasing". The desire to have a clear bottle for aesthetical reasons is non-technical, so we don't need prior art telling us that clear bottles have been found to be aesthetically pleasing, but the features that make clear bottles technically possible solve a technical problem.

Judging from point VII, the opponent somehow arrived at the problem of providing an attractively packaged alternative and then submits that transparent bottles were already known in the field. However, this is exactly what, according to T 641/00, you would not have to show.

However, what I agree much less with is the Board's reasoning to dismiss document (4) as closest prior art. Why should document (4) be concerned with any technical problem before it could serve as a starting point for the problem solution approach? It is clear that document (4) belongs to the prior art, and if it describes something that can in principle be modified to something falling under the claim, then imo it should be considered. I am not aware that the problem solution approach requires that the skilled person arrives at the closest prior art when searching for a solution to a technical problem.