Saturday, 12 March 2011

T 695/08 – Just Too Vague

This decision deals with the appeal of the patent proprietor against the revocation of its patent by the Opposition Division (OD), on the ground of lack of inventive step.

Claim 1 of the patent as granted read:
A process for making a viscous reaction product and making this into a solid component, comprising the steps of:
a) reacting at least two compounds with one another to form a first active material to form a viscous mixed product which has a viscosity of at least 500cps or even at least 1000cps at 20°C, and mixing this with a second active material that is a perfume mix;
b) mixing the product of step a) with a liquid carrier material, whereby step b) is followed by
c) mixing the mixture of step b) with a solid granulation agent to form a solid component;
d) optionally forming the solid component of step c) into granules.
According to the OD, the benefits of the invention alleged in the opposed patent in terms of improved deposition, fabric substantivity and ease of processing had not been demonstrated by experimental comparisons reported in the patent or by subsequently filed experimental proof. Thus, these alleged effects could not be considered when assessing the presence of an inventive step. The objective technical problem was therefore the provision of an alternative process. Since a perfume would be nothing else than another liquid carrier suitable for adjusting the viscosity of the viscous product, it was obvious for the skilled person searching for a mere alternative to the prior art, to mix the viscous product disclosed in this citation with a liquid perfume mix before a second liquid carrier was added.

These findings are confirmed by the Board:

[1.1] The [patent proprietor] has explicitly confirmed at the oral proceedings before the Board that the wording of step “a)” of claim 1 (in particular the passage reading “to form a first active material to form a viscous mixed product”) can only be interpreted as requiring the initial formation of the product possessing the viscosity indicated in the claim, followed by the addition thereto of the perfume mix.

Since this interpretation appears the only reasonable to the Board, claim 1 is found to define a process for making a solid component mandatorily comprising:
  • step “a)” wherein at least two compounds (i.e. [the] active reagent and the co-reagent) are initially reacted to produce a viscous product which is then mixed with a perfume mix;
  • step “b)” wherein the final product of step “a)” is mixed with a liquid carrier and
  • step “c)” wherein the mixture of step “b)” is mixed with a solid granulation agent to form the solid component.
[1.2] The Board sees no reason to deviate from the findings of the OD, undisputed by the Parties, that the prior art process disclosed in document D1 represents a suitable starting point for the assessment of inventive step for the patented process. In particular, any of the processes described in paragraphs [0110] to [0125] of this citation appears a suitable starting point.

It is also undisputed that the sole feature characterizing the process of claim 1 vis-à-vis this prior art is the addition of a perfume mix into to the viscous product, before the addition thereto of the liquid carrier and of the solid granulation agent.

[1.3] The [patent proprietor] has argued that the OD has erred in disregarding the advantages of the invention indicated in the patent-in-suit simply because these latter were not supported by experimental evidence. In the opinion of the [patent proprietor], the burden of proving that a technical advantage disclosed in the patent-in-suit had not been achieved rested with the [opponent]. Therefore, in the absence of any evidence to the contrary, these advantages were to be considered in view of the definition of the technical problem effectively solved.

[1.3.1] The Board notes, however, that the sole passage in the patent-in-suit that clearly refers to the advantages possibly descending from the addition of a perfume mix (indicated in this passage as the “additional active material”) in the viscous product, is the portion in paragraph [0026] that reads:
“The addition of such additional active material can also help to get the required viscosity. Of course the main advantage is that this active material benefits also from the improved deposition and fabric substantivity and ease of processing.”
The Board notes further the absence in the remaining patent description of any evidence (e.g. an experimental comparison) or any other clarification of the statements contained in this passage.

Under these circumstances, the Board concludes that the patent-in-suit neither identifies in respect to which (prior art of) reference the achieved level of deposition and delayed release of the perfume mix is to be considered “improved”, nor clarifies whether this improvement has been experimentally observed or just predicted on the basis of some undisclosed theoretical reasons (cf. the “Of course”, in the above cited paragraph). Thus, the expressions used e.g. in paragraph [0026] are found too generic to be associated to a technical advantage of the invention also plausibly existing in respect of the prior art identified above.

Hence, the Board concurs with the OD that the advantages of the invention vaguely alleged in the patent-in-suit cannot be taken into consideration in the identification of the technical problem solved.

[1.3.2] Since the patent-in-suit has been found to contain no disclosure of a plausible technical advantage produced by the addition of the perfume mix into the viscous product (i.e. by the feature characterizing the claimed subject-matter vis-à-vis the prior art), the Board finds not relevant the [patent proprietor’s] argument that the burden of proving that a technical advantage disclosed in the patent-in-suit had not been achieved rested with the [opponent].

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