In this opposition appeal case, claim 1 before the Board read:
1. A process for producing metal powders comprising the steps of:
- providing a hydride powder of a first metal being selected from the group consisting of tantalum, niobium and alloys of said metals with each other or one or both of them with other metals, the hydride having an oxygen content of under 300 ppm;
- mixing said metal hydride with a metal having a higher affinity for oxygen, and heating the mixture;
- removing the metal having a higher affinity for oxygen from the metal, to form a powder of the first metal having an oxygen content of less than 100 ppm.
The Opposition Division (OD) had dismissed the opponent’s inventive step attack, which was based on a combination of documents D1 and D3, and then pursued:
The Board found the way in which the OD had assessed inventive step to be unsatisfactory, because the lack of inventive step was asserted without referring to any concrete prior art document:
[3.1] [The opponent] submitted that the alleged inventive effect of producing a powder with an oxygen content of less than 100 ppm cannot be achieved simply by following the steps defined in claim 1, and that it has not been shown that the effect is obtained for all the alloys covered by the claim, hence the requirements of A 56 have not been met. It was argued that, although the basic process steps are defined in claim 1, many specific details, such as quantities, particle sizes, temperatures, times etc., which influence the oxygen content, are not present. In particular, Examples 1 and 2 of the patent specification show that, despite following the steps defined in the claim, an oxygen content of below 100 ppm is not obtained. Even Example 3, which results in 75 ppm oxygen, fails to give details of the hydride starting material, which would be important for the desired effect.
[3.1.1] The board agrees that there are many parameters that influence the final oxygen content of the powder. Examples 1 and 2, which are not cited as examples of the invention, show that an oxygen content above 100 ppm is obtained when lower temperatures and shorter times are employed. This, however, does not mean that the technical effect underlying the invention is not achieved. Example 3 demonstrates that when heating takes place at a sufficiently high temperature and for a sufficient length of time, the claimed process leads to a powder having the required oxygen content.
[3.1.2] It may or may not be the case that there is insufficient information, such as details about the tantalum hydride starting material or about other process parameters, for the skilled person to achieve the required oxygen content, but this relates to sufficiency of disclosure (A 83), which is not an issue in these proceedings.
[3.1.3] [The patent proprietor] has shown that the decision under appeal regarding the ground according to A 76 is wrong. In addition, [the patent proprietor] can rely on Example 3 as demonstrating that the inventive effect is plausible, particularly as the skilled person is aware that the properties of tantalum and niobium are similar, as evidenced by D9, page 1, first four lines. Consequently, it was for [the opponent] to put forward reasons as to why the invention could not be worked over the entire scope of the claim. However, that the required effect cannot be achieved for all metals and alloys falling within the scope of the claim has not been substantiated. Hence the board sees no reason to conclude that the invention cannot be worked over the entire scope of the claim.
[3.2] The OD agreed with the above submission of [the opponent] that the claimed subject-matter does not meet the requirements of A 56. It reasoned […] that the claimed process was inventive over the disclosures of D1 and D3 but, citing T 939/92 (“the Agrevo decision”), concluded that the technical problem of reducing the oxygen content to below 100 ppm had not been solved over the whole ambit of the claim.
[3.2.1] As submitted by [the patent proprietor], the reasoning of the OD is incorrect. As set out in T 87/08 [6.3], T 306/09 [4] and T 2375/10 [2], the requirement of inventive step, as defined in A 56, is based on the “state of the art”. Hence the mere statement that the technical problem is not solved over the whole scope of the claim without reference to prior art amounts to insufficient reasoning for a lack of inventive step. If the conclusion was that the objective problem had not been solved, then the problem should have been re-defined and inventive step assessed on the basis of the re-defined problem.
[3.2.2] T 87/08, T 306/09 and T 2375/10 are consistent with T 939/92 which, despite saying that there was a lack of technical effect, analysed inventive step in light of prior art (points [2.5-6]). In T 939/92 the claim concerned a group of chemical compounds and, on the basis of the prior art, the problem to be solved was to provide alternative compounds having herbicidal activity; since the claim included compounds not having his property, it extended to compounds that were not inventive.
[3.2.3] In T 87/08, T 306/09 and T 2375/10 the opposition or examining divisions gave no analysis whatsoever of inventive step based on the prior art, but merely stated that the purported effect was not achieved over the scope of the claim. This is not quite the same situation as in the present case, where the OD considered the prior art before it, and concluded that the claimed process was inventive [...] but then went on decide that the claimed process nevertheless did not meet the requirements of A 56.
[3.3] So, in assessing inventive step correctly, the prior art must be taken into account, which in the present case means taking D1 into consideration.
As with the contested patent, D1 relates to the production of powders of tantalum, niobium and their alloys having low oxygen contents (column 1, lines 16 to 18). This is the same objective as the disputed patent, hence D1 is a suitable starting point for determining inventive step.
[3.3.1] According to the process of D1, metal powders are heated in the presence of an oxygen-active metal, i.e. a metal having a higher affinity for oxygen; this results in a powder having less than 300 ppm oxygen […].
[3.3.2] The process of claim 1 differs in that a metal hydride containing a lower amount of oxygen is used as the starting powder, and in that the resulting powder has a lower oxygen content (less than 100 ppm).
[3.3.3] [The opponent] argued that the first step in the claimed process is the reduction of the hydride to metal, which then reacts at a higher temperature with the metal having a higher affinity for oxygen, hence is indistinguishable from the process of D1. This may well be the case, but as argued by [the patent proprietor], a different starting material is used in the claimed process, and this has a different structure and morphology which, on the face of it, has an effect, namely it results in a lower oxygen content.
[3.3.4] Irrespective of the magnitude of the specific oxygen contents of the powders of the patent and D1, the oxygen content is defined in claim 1 as being less than 100 ppm, whereas the lowest oxygen content achieved by the process of D1 is 135 ppm […]. The problem to be solved starting from D1 is thus not merely to provide an alternative process, as argued by [the opponent], but to reduce the oxygen content yet further to below 100 ppm.
[3.3.5] According to [the opponent], this results in a powder having worse properties than that of D1. However, [the patent proprietor] has argued convincingly that the purpose of the invention is to produce a powder with a very low oxygen content, and this is itself desirable, irrespective of the fact that may have some disadvantages.
[3.3.6] [The opponent] submitted that the solution to the problem can be found in D3, which discloses a process for reducing the oxygen content of tantalum and niobium powders. [… I]t is said that any tantalum or niobium (columbium) containing material can be treated.
Although Examples 1 to 10 and 12 all concern metallic tantalum, Example 11 discloses a process in which tantalum hydride is used as the starting material. The tantalum hydride powder is heated in hydrogen gas, and the water vapour formed by the reaction of hydrogen with the oxygen in the powder is then “gettered” by a more oxygen-active metal than tantalum, in this example, zirconium. However, the oxygen content is not reduced to less than 100 ppm by the process; it is 1140 ppm in the hydride starting powder and present in a comparable amount in the tantalum powder end product […].
Unlike D3, the process of D1 does not involve heating a hydride powder in a hydrogen atmosphere, so the board agrees with the OD that D1 and D3 concern different processes and it is unreasonable to combine the teachings. Consequently, tantalum hydride is not an obvious alternative to tantalum metal as a starting material for the process of D1. Even if D1 and D3 were to be combined, there is no indication that use of a hydride starting powder results in an oxygen content below 100 ppm.
[3.4] Consequently, the subject-matter of claim 1 is not obvious in light of D1 and D3.
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16 comments:
According to the minutes, these oral proceedings were held contemporaneously with the ex-parte oral proceedings in respect of the divisional application, with both hearings being on the same day, starting at 9:00 a.m. How can this be possible? Which hearing came first? I suspect it was the opposition case which appeared to have coloured the view of the BoA in resepct of the divisional.
From the minutes of the oral proceedings for the divisional application:
"The Chairman declared the oral proceedings open and noted that the discussion concerning this case would be commenced after the announcement of the decision in case T1212/11-3203."
I find it interesting that two oral proceedings were going on at the same time before the same Board.
I have seen that more often. Two possibilities: either the oral proceedings take place at the same time in different rooms with different board compositions. Or they are announced at the same time in the same room with the same board composition but are in fact held one after the other. The latter may be done e.g. when it is not clear how long the first one will take. Often you see that in such a case two days are reserved, leaving open the possibility to deal with the two cases consecutively at the same day, or on two consecutive days, depending on the length of the first one. Usually one may find more details about this in communications written in preparation of the oral proceedings.
I think it should be possible to assert that the problem has not been solved without referring to prior art. Of course prior art might need to be cited as 'evidence' to support the assertion, but in some cases it might be clear from the application/patent that the problem had not been solved, i.e. the invention doesn't work.
Suleman, that is not the point. Of course it is possible to conclude that the problem indicated in the patent has not been solved by the proposed measures. But that is not where the problem-solution approach ends. After that conclusion, a different, less ambitious problem has to be formulated, which is often just to find an alternative to the known product or process. Only then can the question be answered if the solution given is obvious or not, which always has to be done by reference to state of the art (not necessarily a document). That step was omitted by the opposition division.
To summarize: the problem-solution-approach has four steps:
1. determine closest prior art, which is mostly a document that refers to the same or a similar problem as the patent in suit.
2. define the problem to be solved over the closest state of the art.
3. Check if that problem has been solved (a step very often forgotten). If not, reformulate the problem. Is it an improvement? An alternative? Even if an improvement is mentioned in the patent but there is no evidence or a plausible explanation for it, it will mostly just be an alternative.
4. Is the solution offered (mostly defined in claim 1) obvious in view of the prior art?
In my view a very logical and relatively easy-to-apply chain of actions that give a result as objective as possible.
Thanks Anonymous of 14:19, I see now. One needs to identify the problem that has been solved, and then send it through the problem-solution analysis. I suppose that could be a very artificial analysis in some instances, for example where the application/patent does not have any data.
Suleman, please can you explain why it is "artificial" when the application as filed delivers no comparative data. I'm not following your thinking. Thanks.
@Anonymous:
Two possibilities: either the oral proceedings take place at the same time in different rooms with different board compositions.
True, this is can happen as well and I also have seen at least one instance of it.
I'm also familiar with one Board in the same composition holding two oral proceedings with the same party or parties one after the other, but here they were both (formally) opened at the same time. I guess different Boards have slightly different ways to achieve the same result.
Suleman,, not quite. Identifying the problem that is solved is part of the problem solution approach, not a step before it. What you do is identify the problem actually solved and then see if the solution is obvious.
In response to MaxDrei, how I understand this situation is that if the problem which the application alleges to solve is not solved, then we need to perform problem-solution analysis based on the problem that is solved. So if I claim a drug X to treat condition Y, and in fact X does not treat Y, then the problem becomes something like 'providing a drug X', which would then probably be obvious from the prior art. By the use of the word 'artificial' I meant when one says in a patent application X does something, and it doesn't, the one might have difficulty coming up with a new problem that is solved. If one had data that would show some sort of phenomenon to base the new problem on, but if one did not then it seems there would be situations where one's choice of the problem solved would be almost arbitrary (though I'm sure justice would be done).
Thanks Suleman. I see an interplay between your "artificial" and the EPO determination to be objective about obviousness.
As I see it, one doesn't get to "choose" the objective technical problem. Rather, it emerges from a strict comparison between D1 and what you said your invention is and does, in the specification you wrote before you filed at the Patent Office. Once you have filed your application, it is too late to "choose" the OTP.
If you had read D1 when you wrote your spec, you are in control. but if you were ignorant of D1 when you wrote and when you filed, you might later find your Claim 1 invention was already objectively obvious by the time you presented it, in words of your own choosing, on your Patent Office filing date, to any person that has the attributes of the imaginary skilled person. Of course, this person, being not a real one but, rather, the well-known legal fiction, is a person who has already digested D1.
Artificial to a real inventor perhaps. But not to the PHOSITA, surely.
And also you are not free to choose an entirely different problem afterwards. There has to be some basis for that choice in the original application. So it is wise, when drafting, to mention as many advantages as possible apart from what is seen as the main problem. Just as to mention a number of ranges, so you can restrict without getting 123(2) problems. All elementary stuff that I learnt during my training for patent agent, which I do not see applied very often anymore. Where have the good patent agents gone? Or are the parties too greedy to pay them and think they can do it all by themselves, which of course they can't, and then turn to a patent agent when the harm has been done and is irreparable?
In my opinion, there are good reasons for not identifying a problem to be solved in the application documents. As shown in the recent decision T1943/07, if you do identify a problem, the EPO will take this and use it against you in respect of prior art which was not being considered when the problem was formulated. If no problem is stated in the application, the organs of the EPO are forced to formulate the problem to be solved in an objective manner and accordingly may differ substantially from any problem the applicant was originally addressing.
Anonymous 12:50, that is not a good idea at all! It is much better to formulate many problems/advantages that are the result of the invention. Read Anonymous 19:31.
If you formulate no problem at all, the problem formulated by the EPO will be an alternative and though that may be non-obvious, it is much more likely that it is obvious.
Anonymous 19:19 - are you proposing that you should describe your invention as an all singing, all dancing, the best thing since sliced bread widget? If so, then good luck before the UK courts where these advantages will be used against you as limitations as to the scope of the claimed subject matter.
It is simply impossible to define in advance a benefit of the invention over some unknown prior art. Best to stick to a good description of what your invention is and what properties it may have.
Graham Ashley discussed this issue in his presentation at today's seminar at the EPo and indicated that there is a difference between patents in th echemical and mechanical fields.
Taking his example of a steel of a particular alloy composition indicated in the patent to have good corrosion propoerties, if it turns out that the composition is close to a prior art disclosure also dealing with corrosion properties, the implication was that the composition would not be patentable whereas it might if another property was described, e.g. high strength.
Looking at this from a mechanical background, whatever the properties are, my view would be the composition would not be inventive if the skilled person would arrive at the claimed composition for whatever reason. Would it be possible to draft a claim limiting the scope to a particular application though?
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