Tuesday, 7 September 2010

T 820/08 – Conservative And Fearful

This decision, albeit not very exciting in itself, provides some insight into the attitudes of the skilled person.

Claim 1 as maintained was directed at a gel dishwashing composition (DC) comprising an encapsulated bleach and 15% to 80% by weight of water in a water-soluble sachet (WSS).

The Board agreed with the Opposition Division (OD) that the unit dose DC of example 5 of document D2 represented the most promising starting point for the assessment of inventive step.

[1.3] The Board also concurs with the findings of the OD, undisputed by the [opponent], that:
  • the sole distinction between the subject-matter of claim 1 as maintained and example 5 of document D2 lies in the fact that in the WSS of claim 1 the DC is in the form of a gel containing 15% to 80% by weight of water, and not a dry granulate; and
  • the technical problem credibly solved by the subject-matter of claim 1 as maintained vis-à-vis this prior art is the provision of a (further) DC in unit dose, i.e. the provision of an alternative to the prior art.
[1.4] The [opponent] has objected to the reasoning in the decision under appeal by arguing that the person skilled in the art starting from example 5 of document D2 would considered [sic] it obvious to solve the technical problem identified above by replacing the solid DCs in the WSSs of document D2 with the gel DCs of either of document D4 or D5. This party has not disputed the finding of the OD that document D2 does not mention at all DCs in gel or other water containing forms and that documents D4 and D5 are totally silent as to the nature of the materials that could be used for packaging or containing gel DCs during storage. It has however interpreted these facts as necessarily implying that these citations cannot possibly disclose any reason that could have deterred the skilled person from combining their teachings. In addition, the [opponent] has considered of no relevance in this respect either the references in document D2 to problems caused by “moisture” or the fact that the material used in this citation for coating the encapsulated bleach is probably water soluble.

[1.4.1] The Board notes as a preliminary point that, as already expressly established in the jurisprudence of the Boards in the field of biotechnology (see the Case Law of the Boards of Appeal, fifth edition 2006, I.D.7.1.3), the notional skilled person has a conservative attitude. The Board cannot see any reason why such attitude would be restricted to skilled persons working in the field of biotechnology.

Moreover, it is apparent to the Board that, in the present case, the finding of the OD is actually based on the assumption that the person skilled in the art would have at least feared as possible, if not expected, that fluid aqueous formulations could dissolve the water soluble materials used for forming WSSs. This can be deduced from the whole reasoning given in this respect in the decision under appeal, as evident, for instance, from the relevance attributed to the fact that the available prior art does not contain any suggestion “that gel compositions with 15-80 wt % water could be stably contained in water soluble sachets” (emphasis added by the Board).

Hence, even if the Board disregards in document D2 - for the sake of an argument favourable to the [opponent] - the references to problems caused by moisture and the presumably water soluble nature of the encapsulated bleach, still it is immediately apparent that the assumption of the OD, if found credible, would be sufficient to deter the cautious person skilled in the art from the combination of the teaching of document D2 with that of either of document D4 or D5.

[1.4.2] The Board takes the view that this assumption is per se logical and, thus, sees no reason for departing from the finding of the OD as to the incompatibility of these citations. In particular, the facts relied upon by the [opponent] are manifestly insufficient to make it credible that the skilled person would have no doubts or negative expectations as to the stability of packaging made of water soluble materials, when filled with water containing fluid formulation.

Indeed, the absence in document D2 of any mention of DCs containing water could possibly reflect (as implied by the [opponent’s] reasoning) the expected equivalence of any form of DCs, as well as (as argued by the [patent proprietors]) the general consensus in the technical field that it was impossible to store water rich formulations stably in a sachet that is water soluble.

Similarly, the absence of explicit indications in document D4 or D5 as to whether the gel DCs may or may not be stably contained or packaged in materials that are water soluble, could as well be due to the expectation that these water rich gels are not comparable to water in terms of their dissolving abilities (and, thus, suitable for packaging in water soluble materials too) as to the presumption that it was unnecessary to indicate expressly that only packaging materials that are not water soluble could be used for stably storing these gel DCs.

[1.4.3] For this reason alone, the Board concludes that the arguments brought forward by the [opponent] are insufficient to make it credible that the person skilled in the art did not fear that substantial stability problems could possibly arise from the contact between the water soluble material forming the WSS of document D2 and the water contained in the gel DCs of document D4 or D5. Hence, the cautious person skilled in the art would be deterred from combining the teachings given in these citations. […]

[1.6] Thus, the Board concludes that the [opponent’s] arguments are insufficient to reverse the finding of the OD as to the compliance of the subject-matter of claim 1 as maintained with the requirements of A 56.

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


Anonymous said...

Judging from point VI, the appellant primarily argued lack of inventive step when starting from document (5). It seems the Board did not even consider this argument, since it found that document (2) was "closer". I find this approach to lack common sense.

In addition, I don't see at all why it is important that the closest prior art is "conceived for the same purpose or aiming at the same objective as the claimed invention" (point 1.2). In my view, the reason why something was made or published cannot possibly stop that something from being a suitable starting point for the assessment of inventive step. The thing is in the prior art, and if it is obvious to modify it in such a way that one arrives at something falling under the claim, the claim lacks inventive step.

Point 1.2.2 is even weirder. The fact that the claim does not achieve a particular technical effect over its whole scope is held AGAINST the appellant opponent! This is quite shocking: a more limited claim that would achieve the effect of its whole scope would maybe have lacked inventive step! It is contrary to common sense that a more limited claim might lack inventive step whereas the broader claim does not.

A claim lacks inventive step if a SINGLE embodiment falling under the claim can be arrived at in an obvious manner from the state of the art. For an inventive step attack it is therefore perfectly valid to concentrate on a single well-chosen embodiment having the features of the claim and any number of further features and show that that embodiment is obvious. That single embodiment may solve all kinds of technical problems, but that is irrelevant for selecting the starting point.

Concentrating on the technical problem solved by the claim over its whole scope also seems to rule out as a "closest prior art" the prior art that actually served as a starting point for the inventor, since that prior art normally suffers from the problem rather than solving it...

Anonymous said...

Hmm, maybe you could explain the criteria for censoring comments? I suppose I did express my disagreement with parts of this decision in clear terms, but nothing worse than "[an argument] lacks common sense". (Or did my comment simply get caught by an automatic filter?)

My main point: the Board in this decision selects the closest prior art (and discards other potential starting points) on the basis of the technical problem solved by the claim over its whole scope. Strict application of this approach would even rule out as closest prior art the very prior art that served as the starting point for the inventor.

In addition, in point 1.2.2 the Board uses the fact that the claim does not achieve a particular technical effect over its whole scope _against_ the appellant opponent, which means that potentially a more limited claim would have lacked inventive step by the appellant's arguments, while the broader claim on file does not. This is illogical.

Oliver G. Randl said...

I just found your comments in the spam filter. Sorry for the delay.

Anonymous said...

Ah, no problem. I had actually figured out that you must have found my comments off-topic, which arguably they are (since they concern a different part of the decision).

Anyway, this was my last comment... as an anonymous ;-)

Oliver G. Randl said...

I have to confess that I did not even know there was a spam filter. Had I not received a Viagra reseller comment yesterday (which I should not despise, given my advancing age), your comments might have stayed in the spam dungeon forever.

I might add that so far there was no need for censoring at all. My readers are quite well-behaved. But I would not have expected less.