This is an appeal of the opponent against the maintenance of the opposed patent in amended form. It contains an interesting discussion with respect to the use of an A 54(3) document.
Claim 1 of the main request before the Board read:
1. A machine dish wash composition which is in the form of a tablet comprisinga) a hydrophobically modified polycarboxylic acidb) an organic phosphonate andc) a polymer of acrylic acid.
The Board found this claim to be novel over D1, which was prior art under A 54(3). It nevertheless used this document in the context of the inventive step assessment.
[2.1] According to the patent in suit the technical problem to be solved consists in the provision of a dish wash composition which obviates the need for salt or rinse aid in the machine dishwashing process […].
As a solution to this technical problem, claim 1 of the main requests suggests a dish wash composition in the form of a tablet comprising a) a hydrophobically modified polycarboxylic acid, b) an organic phosphonate and c) a polymer of acrylic acid.
It is emphasised that the claimed compositions are particularly effective at antiscaling and antispotting in the machine dish wash process […].
[2.2] Document D1 is the only document cited by the [opponent] relating to the same technical problem as the patent in suit. However, as it is a document according to A 54(3), it does not constitute prior art relevant as a starting point for the assessment of inventive step (A 56).
The Opposition Division (OD) has selected the comparative example of document D3 which comprises Acusol 460 ND as the closest prior art for the reason that it had the most technical features in common with the opposed patent. The Board agrees with the OD and the presentation of both parties during appeal proceedings that this example is a suitable starting point for the assessment of inventive step.
[2.3] Document D3 relates to a machine dish wash detergent or rinse aid formulation which deliver excellent final glassware appearance as evidenced by reduced spotting and filming […]. This effect is obtained by providing a dish wash detergent or rinse aid composition comprising a particular nitrogen containing cationic or amphoteric polymer […].
The superior performance of dish wash detergent formulations containing these polymers with regard to spotting is shown by comparison with formulations containing prior art polymers, inter alia Acusol 460 ND […], which is a hydrophobically modified polycarboxylic acid according to Claim 1 of the present main request.
Test 1 of Table 2 is the only one where the polymers are dosed via the dispenser cup together with a base formulation, namely Product 1 of Table 1 […]. The latter contains a polymer of acrylic acid.
Hence, document D3 discloses as a comparative example a machine dish wash composition comprising a hydrophobically modified polycarboxylic acid and a polymer of acrylic acid, i.e. components a) and c) of present Claim 1.
[2.4] This composition differs from the claimed one only in that it is not in the form of a tablet and does not contain an organic phosphonate (component b) of Claim 1).
[2.5] There is no evidence on file to illustrate that the technical problem mentioned in the patent of obviating the need for salt or rinse aid in the dish washing process, actually has been solved by these distinguishing features.
[2.6] The [patent proprietors] argued, that in the present case, where the technical problem underlying the invention was completely new at the priority date of the patent, it was not necessary to provide evidence to make credible that the technical problem was actually solved. They relied in this respect on decision T 692/09. Given these circumstances, it was prima facie plausible that in view of the comparative example in document D3 the above technical problem was solved by the addition of an organic phosphonate (component b)).
Concerning the tablet form of the composition, the [patent proprietors] eventually agreed that there was no pointer in the patent towards a contribution of this feature to the solution of the technical problem.
[2.7] The Board agrees with the [patent proprietors] insofar as a technical problem set out in a patent is considered to be credibly solved by a claimed invention if there exist no reasons to assume the contrary. In such circumstances, it is normally the opponent’s burden to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If no such evidence is provided, the benefit of doubt is given to the patent proprietor. However, if the opponent succeeds to cast reasonable doubt on the alleged effect, the burden to proof its allegations is shifted to the patent proprietor (Case Law of the Boards of Appeal, 6th edition 2010, chapter VI.H.5.).
In the case underlying T 692/09 no such evidence was forwarded by the opponent.
In the present case, however, the opponent has pointed to the comparative examples of document D1 where it is shown that the antispotting and antiscaling performance of a dish wash composition containing components a), b) and c) (Example 12) is worse than one containing only components a) and c) (Example 10).
[2.8] The [patent proprietors] argued that document D1 has to be disregarded as a whole since it is not prior art under A 56 to be considered for the purpose of inventive step.
[2.9] The Board agrees with the [patent proprietors] that a piece of the prior art which has not been made available to the public at the priority date of the opposed patent cannot be used directly as evidence for the assessment of inventive step.
However, in the present case document D1 is not considered as direct evidence of the existing prior art but only as evidence used indirectly for a conclusion which may be questioned as to its plausibility. Such a document which is not itself part of the prior art does not stand and fall with its publication date even on the issue of inventive step (Case Law of the Boards of Appeal, 6th edition 2010, chapter VI.H.4.1 and decision T 1110/03).
The comparative examples in document D1 are in the Board’s opinion equivalent with comparative examples put forward by a party to furnish proof of what it alleges. Such examples are allowable at any reasonable point of the proceedings, provided they are not in abuse of the proceedings.
Hence, the comparative examples of document D1 could have been reworked by the [opponent] to illustrate exactly what they actually show in document D1. In fact, the [opponent] has reworked some of the examples of document D1 (Examples 7, 9 and 12) and obtained the same qualitative results, namely that compositions containing components a), b) and c) are as insufficient at antiscaling and antispotting as are compositions containing only component a).
The Board further notes that those examples of document D1 which illustrate compositions in accordance with comparative Example 1 of document D3 (Example 10) and composition according to Claim 1 (Example 12) differ from each other not only in that the latter also comprises an organic phosphonate but also in that different brands of acrylic acid polymers have been used. Hence, the antiscaling and antispotting performance may also depend on the particular acrylic acid polymer, a factor not contemplated in the patent in suit.
[2.10] As a consequence, the comparative examples in document D1 as well as the [patent proprietors]’ comparative data cast doubt on the allegation in the patent in suit that the incorporation of an organic phosphonate into the composition according to the comparative example of document D3 would solve the technical problem of obviating the need for salt or rinse aid addition in the dishwashing process.
Since the [patent proprietors] have not invalidated that doubt, the technical problem credibly solved by the claimed subject-matter in view of the comparative example of document D3 boils down to the provision of an alternative machine dish wash composition.
[2.11] The means proposed in Claim 1 to solve this problem consists in the addition of an organic phosphonate and in that the composition is presented in tablet form.
These measures are, however, disclosed in document D3 as optional in the art of dish wash compositions […].
[2.12] The Board, therefore, concludes that starting from the comparative example of document D3 it was obvious for a skilled person, faced with the technical problem of providing an alternative dish wash composition, to add an organic phosphonate and to present the composition in the form of tablets.
The patent was finally revoked.
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