Saturday, 22 January 2011

T 892/08 – Arbitrary Selection, Again

The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke its patent.

Claim 1 on file read:
A detergent granule or tablet comprising an anionic surfactant system which comprises an anionic sulphate surfactant and an anionic suphonate surfactant and other detergent active ingredients, the granule or tablet comprising at least a first and a second particulate component and optionally a binding agent, characterised in that the ratio of anionic sulphate surfactant to anionic sulphonate surfactant in the particulate components and, when present, in the binding agent, is less than 1:4 or more than 4:1, or even less than 1:5 or more than 5:1; and in that the first particulate component comprises an anionic sulphonate surfactant and a waterinsoluble builder material, wherein the ratio of the anionic sulphonate surfactant to the waterinsoluble builder material in the component is less than 1:6 or more than 6:1; and in that the second particulate component comprises an anionic sulphate surfactant and an inorganic salt, wherein either (a) the ratio of the anionic sulphate surfactant to the inorganic salt in the component is less than 1:5 or more than 5:1; or (b) the detergent granule or tablet comprises a polymeric builder material, provided that when the polymeric builder material is present in a particulate component or binding agent comprising an anionic sulphate or even any anionic surfactant, the ratio of the anionic surfactant or anionic sulphate surfactant to polymeric builder material is less than 1:4 or more than 3:1.
The Board finds the claim to be novel but to lack inventive step:

[1.6] The Board notes the undisputable fact that, as extensively discussed by the [opponent] already in its written reply to the grounds of appeal, the examples in document D5 and D7 disclose non-homogeneous detergent granules made from multi-component particulates whose ingredients are present at the same or at about the same amount ratios as those defined in claim 1 under consideration.

Hence, the Board finds that the skilled person, starting from the prior art of example 1 of document D4, and aiming at alternative ways to put into practice the technical teaching of this citation (i.e. to avoid intimate mixing of sulphate and sulphonate) would arrive at the subject-matter of present claim 1 without exercising any inventive ingenuity, by just arbitrarily selecting among the other particulate streams that have already been used for producing nonhomogeneous detergent granules in which sulphate and sulphonate are present in distinct phases within the granules, the multi-component particulates used in the examples of document D5, or of document D7 or slight modifications thereof.

[1.7] The [patent proprietor] has also argued that, in case the Board found that the objective technical problem solved consisted in the provision of an alternative, the claimed invention was still inventive over document D4 because this latter gives no motivation to the skilled person to include water-insoluble builder materials and inorganic salts into the surfactant ingredients in the manner required by claim 1; therefore, while the skilled person could make such a selection it was unfounded to state that he would. It referred to the Case Law of the Boards of Appeal such as T 2/83, T 9/84 and T 7/86 that would substantiate that even if a skilled man could (rather than would) make a selection, this did not render that selection obvious.

The Board finds that the cited Case Law (whereby the decision indicated as “T 9/84” appears to be that of case T 90/84) only addresses situations in which the skilled person is expecting some improvement or advantage by means of the selection (see T 2/83 [7]; T 90/84 [9] and T 7/86 [6.6]).

Therefore, these decisions are not applicable to the present case relating to the provision of an alternative only. The Board considers instead relevant in the present case the established Case Law that, when the technical problem is simply that of providing a further composition of matter or a further method, i.e. simply that of providing an alternative to the prior art, any feature or combination of features already conventional for that sort of composition of matter or method represents an equally suggested or obvious solution to the posed problem.

Indeed, the Boards have repeatedly established that the simple act of arbitrarily selecting one among equally obvious alternative variations is deprived of any inventive character (see e.g. T 939/92 [2.5.3] or T 311/95 [2.5.7]).

Hence, even if the skilled person “could” also have taken into consideration other conventional modifications of the prior art, the existence of such other obvious solutions does not render inventive the one leading to the presently claimed subject-matter.

[1.8] Thus, the Board concludes that the subject-matter of claim 1 of the sole request of the [patent proprietor] does not involve an inventive step vis-à-vis the prior art.

Hence, this request is found not allowable in view of A 56.

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For a similar decision, click here.