Thursday, 21 July 2011

T 1130/09 – Two Will Do

The applicant appealed against the decision of the Examining Division (ED) to refuse its application based on the finding that the subject-matter lacked novelty.

Claim 1 of the main request before the Board read (in English translation):
Substrate having a micro-structured surface at least part of which comprises a biocompatible polymer of the following general formula (I)

wherein n goes from 2 to infinity, R1 to R6 are the same or different and represent an alkoxy, an alkylsulfonyl, a dialkylamino, or an aryloxy residue, or a heterocycloalkyl or heteroaryl residue where the hetero atom is nitrogen, and wherein the surface structures have a dimension of between 10 nm and 100 μm.
In what follows the Board answers the question of whether this claim is novel.

*** Translation from the German ***

[3.1] The subject-matter of claim 1 concerns a substrate having a micro-structured surface at least part of which comprises a biocompatible polymer of general formula (I)and wherein the surface structures have a dimension of between 10 nm and 100 μm.

[3.2] In the impugned decision only document D2 was cited in respect of novelty.

Document D2 also discloses a substrate the surface of which is coated with a polyphosphazene according to formula (I) of the application under consideration. The substrate can also be micro-structured […]. The only disclosure concerning structural dimensions […] reads:
“One is not limited by the structural size of the substrate. Therefore, structures of the order of nanometres, microns or even larger or smaller can be manufactured.”
It is true that document D2 does not disclose a specific range defined by specific upper and lower limits, but by referring to structures of the order of nanometres or microns and by referring to the substrates as being micro-structured substrates it defines a range of dimensions that is limited to such microstructures.

The impugned decision invoked the principle of selection inventions by applying the three criteria of decision T 198/84 [7]. This principle is to be applied when a narrow sub-domain is selected from a greater domain.

The description […] of document D2 discloses that the structural dimensions are of the order of microns or nanometres. Thus the specific claimed domain of between 10 nm and 100 μm is a narrow selection, as already mentioned in the impugned decision. Moreover, as there are no exemplary values in D2, this selection has to be considered to be remote from the central embodiments of document D2. Thus the two first criteria of T 198/84 are satisfied.

However, the third criterion, according to which a technical effect is to be established, cannot be considered in the assessment of novelty, because novelty and inventive step are two distinct requirements of patentability. A technical effect that occurs in the more narrow claimed domain cannot justify the novelty of a domain of values that is novel as such, but can only confirm the novelty of this more narrow claimed domain. However, the question of whether there is a technical effect or not is related to inventive step (see T 1233/05 [4.4], T 230/07 [4.1.6]).

Therefore, the Board is of the opinion that document D2 does not disclose the claimed domain of 10nm to 100 μm and that the subject-matter of original claim 1 is novel over document D2 within the meaning of A 54.

The Board then referred the case back to the ED.

I think this approach is to be approved. It has been criticized in the legal doctrine, for example by Prof. Vigand in the French periodical Propriété Intellectuelle, Décembre 2010, p. 17, in an article dedicated to T 1233/05 (my translation of the French original):
… When the prior art is prior art that is relevant for novelty only (A 54(3) EPC), it is absolutely indispensable to have demanding and precise standards for applying the criterion of novelty.

Therefore, the third condition is necessary because if it is not included, the second applicant, who has not invented anything, can annex considerable portions of the domain claimed by the first applicant.

Thus, if the first [applicant] had covered a domain from 1 to 100, with one example at 80, the subsequent applicants could obtain sub-domains by slices of 10 (from 1 to 10, from 10 to 20, and so on) as long as the first patent has not yet been made accessible to the public. …
With due respect, I do not find this plea very convincing. By abandoning the third criterion, the Board puts an end to mixing novelty and inventive step. In my opinion, the fact that this may lead to regrettable results when the prior art is of the A 54(3) type is more related to the logic behind A 54(3) – which has its flaws – than to selection inventions. In other words, I find it untoward to introduce a dose of inventive step into criteria for novelty assessment in order to mask undesirable side effects of the A 54(3) novelty-only regime.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

NB: There was a post on T 230/07 on this blog, plus some interesting comments left by readers.


Manolis said...

I also like the idea of abandoning the third criterion in this cases.

Interesting to see that all the recent decisions (230/07, 1233/05, 1130/09) that do in that direction are from chemical boards (3.3.x). This is contrast with 126/09, which was also commented in this blog in May, and insists in the use of the third criterion and which comes from a mechanical board (3.2.2).

Rimbaud said...

+1: I feel much more comfortable with the two first criteria for novelty.

Regarding the plea of Prof. Vigand, I think we could imagine a similar problem in mechanics or electricity, when a subsequent applicant changes a feature only slightly to get it new wrt to A.54(3) EPC doc.

Anonymous said...

Starting from basic principles I don't really see what's wrong in asking for technical novelty rather than semantic/numerical novelty, after all isn't that what the patent system is supposed to be about? Or am I too naive?

Be that as it may, I think the board got it wrong on the other counts. What justification is there for saying that the presently claimed range is a narrow one in comparison with the prior art? Or that the claimed range is remote from the central embodiments of D2? (That latter statement is complete bunkum.) If you look at the file you will see that D2 was based on the same priority as that claimed for the present application (but not accorded), so it is inevitable that they describe the claimed invention in similar terms. Both refer to the claimed microstructure giving a "lotus effect" or "Haifischhaut". From a technical point of view this is a clear implicit instruction to the person skilled in the art to work in the size range claimed.

Since priority has been denied D2 is full state of the art. So the ED will just bounce this back for lack of inventive step. Another complete waste of time by a board seemingly determined to make a point despite the facts.

Myshkin said...

I agree with the anonymous commenter that it is reasonable to ask for technical novelty. If a document discloses a parameter range [10, 20], should selecting the completely arbitrary value of 12.582593 for the parameter be sufficient for novelty?

I wonder much more about the logic behind conditions (i) and (ii). Who cares whether the subrange is "narrow" and whether the end points are "sufficiently far removed" from those of the larger range? If someone discovers that selecting the parameter from the subrange [10.1, 19.9] improves some technical property (meaning in particular that none of the elements of this subrange are arbitrary specimens of the original range, since they all provide a technical improvement), I see no reason not to acknowledge novelty.

Certainly it can be debated whether the presence of a technical effect should matter for novelty, but at least this is an objective criterion. Narrowness and remoteness seem much less objective.

Manolis said...

The debate of technical novelty vs photographic novelty is not new and we are far from reaching a final conclusion, I believe.
On the other hand, I do not think it will make a difference whichever way it goes. If novelty is reduced to a "formality" there is always inventive step. The main issue that an application will be refused if it deserves to be refused. Whichever article is used it is not important. Look at the issue with exceptions from patentability. It is easy to overcome an objection under 52(2) but the 56 hurdle is not easy to pass. In the end application refused. What is the difference?
I agree with anonymous that in this case, most probably, the ED will refuse again under 56. So in the end the result is the same (and probably a waste of everybody's time).
It is interesting to look at the letter of the law and discuss which article applies but we shouldn't miss the big picture: the application will be refused anyway...

pat-agoni-a said...

It is important to clearly determine what the requirements are for obtaining a patent. It is in this sense that the BoA have stated the difference that exists between the two requirements: novelty and inventiveness. It is not important that an application be refused, but that the requirements for grant be clearly defined. Grant of a patent should not depend on the good will of an examiner or a BoA, but should be based on legal requirements that have to be met. These requirements should as far as possible be clearly defined.

I am convinced that the photographic novelty requirement makes sense and that other considerations be left to inventiveness (this is also true for technicality). It is for this reason that I consider the other two novelty requirements (remoteness and narrowness) unclear and redundant.

A range discloses its end points and the range itself, not all of its inner lying points. If a second, newer range is different from a first, older range (I don´t use new and old for identifying the ranges, as this makes the statement "the new range is new" odd) and none of the first range´s end values are within the second range, then the second range is new with respect to the first one irrespective of its narrowness or remoteness. Of course this also applies for any disclosed inner points of the first range which have to be outside the second range.

If the second range involves some special technical effect or not is something that should be dealt with under inventiveness.

Prior art under A 54(3) is not a problem, since photographic novelty has always applied to it. Eg a block of 100 cm side has always be considered new over a block of 99.9 cm side, also for A 54(3) prior art and this is not a bar for granting both applications. This is a consequence of how A 54(3) prior art is treated, but this is a decision made by the lawmaker. There are other possibilites, but this is not the point.