Friday, 3 September 2010

T 27/07 – How To Shoot Oneself In The Foot


Remember R 7/09? This petition for review was the first (and, as far as I can see, the only) petition to succeed so far. The patent proprietor, whose patent had been revoked, obtained that the decision under review be set aside and the proceedings before the Board of Appeal re-opened. The present decision shows what happened afterwards.

Claim 1 of the main request on file read:

An endoscope capable of being autoclaved, comprising: an insertion unit having a soft member; an internal endoscope space including the internal space of said insertion unit that is sealed at a first sealing level at which the internal space is sealed in a watertight manner relative to an outside; and contents all or part of which are arranged in said internal endoscope space; wherein said contents include at least one hermetically sealed unit composed of a plurality of airtight partition members and formed at a second sealing level higher than the first sealing level by joining the sealing surfaces of said airtight partition members using an airtight joining means; wherein even when high-pressure high-temperature steam permeates through said soft member of said insertion unit which is made of a soft polymeric material as at least part of an insertion unit casing, and invades into said internal endoscope space formed at the first sealing level, the high-pressure high-temperature steam will be hindered from invading into the hermetically sealed unit included in said contents and formed at the second sealing level; and wherein said hermetically sealed unit includes at least one of optical members and electronic parts or both the optical members and electronic parts.

The Board considers document D3 to be the closest prior art.

[3.2] […] D3 does not disclose the feature of claim 1 in suit according to which the soft member of the insertion unit is made of a soft polymeric material and that the internal space of the insertion unit is sealed relative to the outside in a watertight manner at a first sealing level, whereas the hermetically sealed unit is sealed in an airtight manner, i.e. at a second sealing level higher than the first watertight sealing level.

The technical problem presented in the contested patent […] of providing an endoscope capable of avoiding high-pressure high-temperature steam invading into the interior of the endoscope and the optical system during autoclaving has already been addressed in D3 […]. It is solved in this document by the provision of an endoscope entirely sealed in an airtight manner […].

However, even if the outside fitting parts of the endoscope are made airtight, there is still a risk of high-pressure high-temperature steam entering the interior of the endoscope during sterilisation […]. If the device of D3 was really entirely airtight, as it is supposed to be, the above-mentioned risk would not be present any more. Therefore, it is likely that the outer tube 152, 157 shown in Figures 29 and 30 might only be watertight, as is generally the case in conventional endoscopes.

Moreover, as explained in the patent itself […], for endoscopes known as airtight endoscopes and having a bending ability (as in the case in D3), the steam given off during autoclaving can barely be prevented from invading into the interior of the endoscope.

Furthermore, it is well known from the state of the art presented in the application itself that conventional endoscopes have a soft, bendable insertion unit comprising a tube made of soft polymeric material, thus providing a watertight sealing level […]. Additionally, D2 […] discloses an example of rubber used as a suitable material for the bending portion, as recited in […] the contested patent concerning the soft polymeric material.

Starting from the disclosure of D3, even if it is assumed that the outer tubes 152, 157 are such as to provide an airtight sealing level, the skilled person would indeed consider lowering this level to a still acceptable watertight sealing level, on the basis of his common general knowledge as given in the application as filed, the more so since lowering the sealing level of the internal space of the insertion unit from airtight to watertight has no bearing on the level of protection of the internal hermetically sealed unit, which remains airtight anyway. In fact, the plurality of airtight partition members such as optical members and electronic parts are all formed at a higher airtight sealing level and are sufficiently protected against high-pressure high-temperature steam entering the interior of the endoscope during autoclaving.

It is true that, as submitted by the respondent, common general knowledge needs to be substantiated if challenged by a party. In the present case, however, the information emerges from the applicant himself in the application as originally filed. It is not the responsibility of the Board or the other party to provide evidence whether the state of the art presented in the application as filed, now no longer acknowledged by the respondent-proprietor, is correct or not. On the contrary, it is the proprietor’s responsibility to provide the EPO with a text ready for grant, i.e. agreed by him (A 113(2)).

It results therefrom that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of A 56 with respect to the disclosure of D3, having regards to the general knowledge of the person skilled in the art.

The first auxiliary request having been found to lack inventive step and the second auxiliary request having been refused as belated, the patent was revoked, for the second time. So the only successful petition for review finally led to a confirmation of the Board’s verdict. Vanity of vanities ...

If you wish to download the whole decision, just click here.

5 comments:

Anonymous said...

Let's not confuse things. The petition was allowed, since the proprietor argued that he had not received the opponent's statement of grounds of appeal and the EPO was not able to establish its delivery (point 2 of R 7/09).

Now the board judged the substance of the patent and found it not inventive.

Anonymous said...

I suppose the title of this post is not referring to the fact that the petition ultimately did not help the proprietor, but to the fact that the proprietor was shot in the foot by the common general knowledge he himself presented in the application as filed.

So indeed let's not confuse things ;-).

Oliver G. Randl said...

You got it. Sorry for having confused you.

And for my French readers: Je suis confus.

;-)

Anonymous said...

I understand the title of the post. I merely found that statements like:

"This petition for review was the first (and, as far as I can see, the only) petition to succeed so far."

and

"So the only successful petition for review finally led to a confirmation of the Board’s verdict. Vanity of vanities ..."

were somwhow suggesting that both issues were linked.

Anonymous said...

Ah, I agree that the addition "vanity of vanities" is not really needed. The proprietor did manage to get a full shot at arguing its case, and that in the end he did not succeed is part of the game.