The present decision deals with an appeal from the decision of the Opposition Division (OD) to revoke the opposed patent.
Having shown that claim 1 on file, which was directed to a water treatment system with dosing control, lacked novelty over documents O4 and O6, the Board also examined an alleged case of prior use:
[3.3.1] The [opponent] contended that water treatment devices exhibiting all features recited in claim 1 of the patent in suit had been sold to a large number of customers before the date of priority of the patent in suit, i.e. before 20 May 1997.
[3.3.2] In support of the allegation of prior public sales, the [opponent] submitted the documents O11, O12, O13 and O14.
[3.3.3] In the board’s view none of the documents O11 to O14 is conclusive regarding certain circumstances relating to the sales, notably the respective dates at which the water treatment devices were effectively delivered and installed, so that it became possible for the customers to gain knowledge of the devices and to use them.
In this context the board observes that the date of sale is not necessarily identical with the date at which the object of the sale is made available to the customer, since the two dates may be different. For these reasons the documents O11 to O14 cannot be regarded as a sufficient substantiation of the alleged prior public sale.
[3.3.4] Documents O16, O18, O19 and O21 provide comprehensive information on two specific sales which took place before the priority date of the patent in suit. These facts were not contested by the [patent proprietor].
According to O16, a declaration in writing by Ms A. Michaud, an employee of “Collège de France”, Paris, the “Milli-Q Academic” device having the serial number F7CM29628K was delivered, installed and put into operation on 16 May 1997 at “Collège de France”, Paris […]. This is confirmed by the installation report O18 dated 16 May 1997 and signed by Ms A. Michaud in her capacity as representative of the customer. There existed no express agreement of confidentiality or secrecy between the seller “Millipore S.A.” and the customer “Collège de France” […]. On the basis of the evidence on file, there existed no tacit confidentiality agreement either.
According to O19, a declaration in writing by Mr J.-M. Pagès, an employee of the “Faculté de medicine”, Marseille, the “Elix 5” device having the serial number F6PM23758D was delivered, installed and put into operation in January 1997 at the “Faculté de medicine”, Marseille […]. This is confirmed by the installation report O21 dated 3 January 1997 and signed by Mr J.-M. Pagès in his capacity as representative of the customer. Again there is no evidence that there existed an express or tacit agreement of confidentiality or secrecy between the seller and the customer […].
[3.3.5] The “Milli-Q Academic” device having the serial number F7CM29628K and the “Elix 5” device having the serial number F6PM23758D were the object of a demonstration effected by the [opponent] during oral proceedings (OPs) held on 18 January 2005 before the OD. According to the minutes of the OPs, it was demonstrated that the speed of the pump of the “Milli-Q Academic” device can be varied while the system is dispensing water […]. In order to get access to this function, three of the four buttons or keys of the keyboard, namely “Measure”, “Cleaning” and “Menu” have to be pushed down simultaneously.
As a result a service menu appears on the display, which allows to adjust the speed of the motor of the pump continuously by setting a value between 18 % and 100 %, depending on the desired flow rate at the outlet valve […].
Furthermore it was shown during the demonstration that the menu of the “Elix 5” device provides also the option to set a variable factor of the flow […].
[3.3.6] Apparently no internal inspection of the “Milli-Q Academic” device and the “Elix 5” device was made during the course of the OPs before the OD. Nevertheless the results of the demonstration imply that the following components formed part of the configuration of the two devices:
(i) a variable speed motor,
(ii) a regulating device for controlling the pump output, connected to the variable speed motor,
(iii) an input device in the form of a keyboard allowing to set a desired value on the display, and
(iv) a controller for converting the input signal to a corresponding motor control signal.
[3.3.7] Having regard to the foregoing, the board concludes that the “Milli-Q Academic” and the “Elix 5” devices which were the object of the demonstration before the OD exhibited all features of the water treatment system as defined in claim 1 of the patent in suit.
[3.3.8] The [patent proprietor] did not contest the date and the precise object of the prior use. What was contested, however, were the circumstances of the prior use. In the [patent proprietor’s] view the service manual O8b indicates that the variation of the pump motor of the “Milli-Q” device was not intended to be accessible to customers […]. When demonstrating the “Milli-Q” device, the [opponent’s] technical expert had to use software described in O8a as being accessible only to service engineers, namely the menu “ADJUSTMENT”, which includes a sub category “SERVICE ADJUST. V. MOTOR" […]. To vary the speed of the motor of the pump during the outflow of water from the “Milli-Q” device, the technical expert of the [opponent] had to access and operate the service menu whilst holding a cup for the outflow of water and holding the outlet arm. This did not form part of the public teaching of O4. Moreover, the “Milli-Q” device had no “desired flow rate” entity in its own right as required by claim 1 of the patent in suit […]. Therefore, the [patent proprietor] concluded that the prior use of the "Milli-Q" device is not prejudicial to the novelty of the water treatment system according to claim 1 of the patent in suit.
[3.3.9] In short, the [patent proprietor] contended that the function of the adjustment of the speed of the pump motor had not been made available to the public, since only “service engineers” were able to access the service menu containing this functionality. Thus, the variation of the speed of the motor and, consequently, the adjustment of the flow of water to a desired value, represented a “hidden” feature, which was not disclosed as such by the use of the “Milli-Q” device.
[3.3.10] The board is not convinced by this argumentation. As has been shown by the [opponent], access to the service menu of the “Milli-Q” device, including the sub category of the adjustment of the voltage of the pump motor, could be achieved by a simple operation, namely by pressing down simultaneously three buttons or keys of the keypad. The skilled person was in a position to explore the various functions accessible via the keypad, including the adjustment of the speed of the motor, by analysing the device from the outside, if necessary by means of trial and error. There was no need to open or disassemble any parts of the device for this purpose, since the access to the service menu by using the keypad was expressly foreseen by the manufacturer of the “Milli-Q” device. Moreover, the analysis of the functions of the device did not require any specific instructions provided by the manufacturer, for example in the form of a service manual or a description of the software of the system.
In this respect, the board refers to the decision of the Enlarged Board of Appeal G 1/92, according to which the composition of a product is contained in the state of the art when the product as such is available to the public and can be analysed and reproduced by a skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition (see G 1/92 [headnotes]).
[3.3.11] When arguing that the possibility of adjusting the speed of the pump motor of the “Milli-Q” device was not made available to the public in the absence of an explicit instruction, the [patent proprietor] introduces, in fact, an additional requirement for the device to be available to the public with all its functions. This additional requirement is that the skilled person should be able to recognise a priori, on the basis of the common general knowledge, which functions the commercially available device might have. However, such an additional requirement would not be in agreement with the essence of the decision G 1/92, where only the analysability and reproducibility of the product are required for its composition to be state of the art.
[3.3.12] Regarding the need to access and operate the service menu whilst holding a cup for the outflow of water and holding the outlet arm during the demonstration of the “Milli-Q” device, the board observes that said demonstration did not take place in a laboratory under standard laboratory conditions, but as part of OPs before the OD. Therefore, it is immaterial that the demonstration may have involved a number of minor practical inconveniences.
[3.4] For the reasons given above the board concludes that the water treatment system according to claim 1 of the main request lacks novelty having regard to each of the disclosures provided by O4, O6 and the prior public use of the “Milli-Q” device, respectively.
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NB: Laurent Teyssèdre was the first to report this decision; to read his post, click here.
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