T 1932/09 – Speculation?

One of the more unpleasant experiences of an in-house patent attorney is to be confronted with prior art filed by individual inventors the subject-matter of which cannot possibly work and has never been reduced to practice, but which nevertheless affects the patentability of the invention you have to protect. It is not easy to prove that something does not work, and you certainly have to provide good evidence, as the present decision illustrates.

Claim 1 of the main request on file read:

1. A swallowable capsule (10) for in vivo imaging of the gastrointestinal tract, said capsule (10) comprising an optical window (21), the capsule comprising:

at least one CMOS imaging camera (24);

two illumination sources (23) for illuminating a gastrointestinal tract site;

an optical system (22) co-planar with said illumination sources (23) for imaging the gastrointestinal tract site onto the CMOS imaging camera (24), the optical system (22) being separated from the optical window (21), the CMOS imaging camera (24) imaging the site via the optical window (21) and via the optical system (22), and the illumination sources (23) being disposed on either side of said optical system (22) and illuminating the site directly via the optical window (21) and not via the optical system (22); and

a transmitter (26) for transmitting an output of the CMOS imaging camera (24).

[2.1] Document D7 is considered as the closest prior art. D7 discloses a swallowable capsule for in vivo imaging of the gastrointestinal tract […] comprising an imaging sensor […], two light sources […], a focussing lens […] for imaging the gastrointestinal tract site onto the imaging sensor […], and a transmitter […] for transmitting an output of the imaging sensor […]. […]

[2.2] Consequently, the swallowable capsule of claim 1 of the main and first to third auxiliary requests differs from that of D7 in that the capsule comprises a CMOS imaging camera.

[2.3] Hence, when attempting to reduce the capsule of D7 to practice the skilled person needs to solve the objective technical problem of finding a suitable imaging photodiode sensor for endoscopic imaging.

[2.4] Document D2 discloses a large variety of endoscopic imaging devices […] utilising as an imaging sensor a photodiode-based CMOS imaging chip, or CMOS imaging camera […]. D2 explains that such an imaging camera has the benefit of being very compact and having low power requirements […]. These are in fact the same technical effects which the application aims to achieve by using a CMOS imaging camera […].

[2.5] Hence, the skilled person faced with the problem of reducing to practice the capsule of D7 would readily consider the teaching of D2 and thus devise the imaging sensor of D7 (in particular in its embodiment as a linear array) as a CMOS imaging camera. Thereby, the skilled person would arrive at the claimed subject-matter without exercise of an inventive step.

[2.6] In its first line of argument, the [applicant] argued that D7 did not provide the skilled person with an enabling disclosure, so that D7 should not be considered as the closest prior art.

[2.6.1] According to A 54(2), “the state of the art” comprises “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application”.

It is established jurisprudence (see e.g. T 230/01 [5.2] and decisions cited therein) that a document normally forms part of the state of the art, even if its disclosure is deficient, unless it can unequivocally be proven that the disclosure of the document is not enabling, or that the literal disclosure of the document is manifestly erroneous and does not represent the intended technical reality. Such a non-enabling or erroneous disclosure should then not be considered part of the state of the art.

[2.6.2] At the oral proceedings (OPs) the [applicant] no longer disputed that it was physically possible to construct the device disclosed in D7, but it was alleged that D7 contained insufficient information to render the device workable for imaging the intestine. In this respect, the [applicant] mainly contended that it was impossible to control the rotation of the capsule with an external magnetic field and to determine its rotational and translational positions in a sufficiently precise way to create a meaningful image.

The Board finds however that document D7 in fact basically discloses how the capsule is rotationally and axially moved in an external magnetic field controlled by three orthogonal coils […], and it also discloses how the position of the capsule is determined using three orthogonal dipoles in the capsule […]. Therefore, in the Board’s view, the alleged insufficient precision or quality of the produced image as perceived by the [applicant] falls short of unequivocally proving the alleged speculative nature of D7.

The Board considers moreover that since the illumination sources in D7 are provided precisely for illuminating the site of the intestinal wall being imaged, the [applicant’s] allegation that the device in practice only produced completely dark image points is unconvincing. In the absence of any further convincing argument or evidence, the Board could also not accept the [applicant’s] initial allegation that the skilled person would not know how to construct the capsule with a freely rotatable inner housing within the outer shell H as disclosed in D7 […]. At the OPs the [applicant] did indeed accept that it was physically possible to construct the device disclosed in D7 (but not with the necessary image precision, as discussed above).

[2.6.3] The Board consequently finds that the [applicant’s] submissions do not contain sufficient evidence to unequivocally prove that D7 is indeed speculative, i.e. not enabling. It is thus not incumbent on the EPO to prove the contrary of what the [applicant] has merely alleged.

The Board thus reaches the conclusion that document D7 is to be taken into consideration as the closest prior art.

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The file wrapper can be found here.