T 2433/09 – Boomerang

When a patent (or application) does not contain any evidence that the underlying problem is indeed solved, the patent proprietor (or applicant) is in a bad position because it has to argue that this was credible, on the basis of common general knowledge (CGK). This, however, will prove problematic at a later stage of the problem-solution approach where the very same CGK then suggests that this solution was indeed obvious to the skilled person.

The present case provides an example of such a situation.

Claim 1 of the main request on file read:

1. A vehicle for a hot melt ink-jet ink, the vehicle comprising from 35 to 98% by weight of a radiation curable material and a thickener, said vehicle being a thixotropic paste at 20ºC, preferably also at 25ºC, and said vehicle having a viscosity of less than 25 centipoise at least one temperature in the range of from 40ºC to 130ºC.

The Board found document D0 to be the closest prior art and then pursued the assessment of inventive step:

[3.4] As the next step according to the problem-solution approach, it is necessary to determine the problem which the claimed invention addresses and successfully solves in the light of the closest prior art.

[3.4.1] The [patent proprietor] defined the problem to be solved in view of document D0 as lying in the provision of an ink-jet ink affording better flow properties within the printer apparatus, and improved image quality and durability.

The solution as defined in claim 1 of the patent in suit relates to a vehicle for a hot melt ink-jet ink characterised in its higher content of radiation-curable material and lower content of thickener, and being a thixotropic paste at 20ºC.

[3.4.2] The board would like to emphasise in this context that the patent in suit itself does not contain a single example of a printing process employing the claimed vehicles or inks, nor has any such data been supplied by the [patent proprietor] in the present opposition/appeal proceedings.

Thus, no evidence has been provided that any of the alleged advantages have actually been achieved in comparison with the inks according to document D0 or any other prior art.

Any positive assessment in this respect can therefore only be based on CGK and the known properties of the components of the claimed compositions.

[3.4.3] Concerning the alleged advantage of improved flow properties within the printer apparatus, the [opponent] disputed that this had been plausibly demonstrated. Indeed, according the printing process disclosed in document D0, at the operating temperature of the printing apparatus, the ink is in a liquid state in the printer head […], and therefore possesses good flow properties. Therefore, it does not appear to be credible that any advantage in this respect would be observed by employing the present vehicle in the printer apparatus disclosed in document D0.

[3.4.4] The remaining two advantages relied on by the [patent proprietor] were improved print quality and durability. In view of the fact that the [opponent] explicitly acknowledged that these two advantages could be regarded as having been achieved by the subject-matter claimed, the board sees no reason to differ. Indeed, as explained in more detail under point [3.5.1] below, the paste-like consistency of the claimed vehicle at room temperature could be expected to allow controlled mingling of droplets to occur on printing, thus improving image quality. Additionally, it can be accepted that larger amounts of curable material in the ink would increase the durability of print.

[3.4.5] Consequently, the board considers it to be plausible that the problem as defined above under point 3.4.1 has been successfully solved as far as the aspects of improved print quality and durability are concerned.

[3.5] It remains to be investigated whether the proposed solution would have been obvious to the skilled person in the light of the prior art.

[3.5.1] […] D0 already discloses the principle of combining the advantages hot-melt and radiation-curable inks by formation of inks comprising “wax and resin whose melting point is 40-70ºC” and “ultraviolet ray setting resin”. On heating, the inks become liquid and jettable, and at room temperature they return to their initial “solid or semi-solid” state […].

Through the reference to “semi-solid”, the skilled person would already derive the clear teaching that a range of consistencies may be tolerated in the inks according to document D0. Further confirmation thereof can be found in paragraph [0020], wherein it is suggested that the viscosity of the ink at room temperature may be adjusted, as need demands.

It must be emphasised in this context that, starting from the solid ink composition specifically exemplified in document D0 and faced with problem of improving image quality and durability, the skilled person would have had at his disposal the same CGK as that relied on above under point [3.4.4].

Thus, as outlined above under point [3.4.4], the skilled person would have been aware of the fact that a vehicle having a semi-solid or paste-like consistency would allow controlled mingling of droplets to occur. This is also derivable from document D0 itself, which discloses that liquid inks suffer from colour bleed […], whereas no spread of the ink droplets occurs in the exemplified solid inks […]. It follows that a substance having an intermediate viscosity behaviour, between that of a liquid and a solid, would be expected to provide the required intermediate extent of mingling of droplets, and thus provide a solution to the problem of image quality.

Moreover, the skilled person would have been aware of the properties imparted by the various components of the ink according to document D0. Thus, the known purpose of the radiation-curable component in ink-jet inks is to provide a hardened film when subjected to an external energy source […]. Therefore, as outlined above under point [3.4.4], greater amounts of curable material in the ink would be expected to increase the durability of print.

Similarly, the wax component in document D0 is known to impart the solid consistency of the ink at room temperature […].

In view of the above, it would be within the normal routine of a skilled person, and within the teaching of document D0, to adapt the exemplified ink composition in order to achieve the optimum balance of properties required for achieving image quality and durability, namely, by decreasing the amount of wax, in order to produce a product that was semi-solid at room temperature, and by increasing the amount of radiation-curable material, in order to improve hardening. […]

The [patent proprietor’s main request is rejected for lack of inventive step.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 412/09 – A Consistent Picture

This is an appeal against the refusal of an application. The decision contains a useful reminder on the link between patent documents and common general knowledge (CGK).

[2.1.3] In its letter of reply the appellant disputed that the image acquisition procedure referred to above belonged to the CGK and submitted that according to the established case law patents cannot be used to establish CGK.

While the Board concurs with the appellant that the CGK of the person skilled in the art is, as a general rule, established on the basis of encyclopaedias, textbooks and the like (see decision T 890/02 [2]), contrary to the appellant’s submissions this does not meant that a disclosure is automatically discarded as evidence in this regard for the mere fact of being disclosed in a patent specification. On the contrary, the case law contemplates exceptions to the general rule mentioned above and allows in particular circumstances the establishment of CGK on the basis of the content of patent specifications (see T 890/02 [2], and “Case Law of the Boards of Appeal” EPO, 6th edition, 2010, chapter I, section C.1.5 and last paragraph of section C.3.2.6), and in particular when a series of patent specifications provides a consistent picture that a particular technical procedure was generally known and belonged to the CGK in the art at the relevant date (see decisions T 151/05 [3.4.1, 4.1, 4.3] and T 452/05 [2.4.1, paragraph (b)(ii)]).

[… D]ocuments A1, A2 and A3 provide a consistent picture that setting the exposure time of a CCD camera to be identical to or an integer multiple of the display period of a rapidly varying periodic display to be captured by the camera constituted a common practice in the art. Therefore these documents constitute prima facie evidence that this practice constituted CGK at the priority date of the application in suit, and the appellant’s mere submission that patents cannot be used in establishing CGK is insufficient to rebut or displace this evidence or to cast doubts on the CGK under consideration.

The appellant submitted that documents A1 to A3 pertain to technical fields different from that of the claimed invention […]. The Board notes, however, that in the circumstances of the present case the question is not whether the skilled person would be expected to consult these documents when operating the apparatus of document D2, but whether the documents constitute evidence supporting the position that the common practice mentioned above was generally known to him. In documents A1 to A3 different value ranges of the exposure time of the CCD camera (in particular, “2 or more” periods in document A1 (paragraph [0058]), “a few tens” in document A2 (paragraph [0041]), and “the shortest [period] ... multiplied by an integer” in document A3 (paragraph [0176])) are selected in order to cope with the specific technical situations encountered in the respective technical fields; however, it is taken for granted in the disclosure of all these documents that, when capturing a periodic display with a CCD camera, the value of the exposure time of the camera is to be selected to correspond to the display period or to a multiple integer of the same. This procedure relates to the operation of the CCD camera itself and not to the specific technical field in which the camera is being used in each of documents A1 to A3.

[2.1.4] Having regard to the above considerations, the Board concludes that the apparatus defined in independent claim 2 of the main request does not involve an inventive step (A56).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here, and a French summary of the decision here.

T 689/11 – Overstretched

This decision deals with the refusal of an application claiming an interface between a packaging machine and a data storage storing a plurality of packaging specifications, for selecting at least one of them.

According to the Examining Division (ED), the claimed interface aimed at implementing a business scheme and amounted to no more than a notorious general purpose networked computer system linked to a generic packaging machine as a commonplace peripheral thereof. The description did not mention any technical detail but dealt with a scheme for doing business. Therefore, no prior art search had been carried out at any stage of the application.

Here is what the Board had to say:

Additional search

[2.1] The application was refused for lack of inventive step without a search having been performed. As set out in decision T 1242/04, an ED may raise an objection of lack of inventive step without documented prior art. That should be allowable where the objection is based on “notorious knowledge” or indisputable common general knowledge. Such cases, however are exceptional, and a search is otherwise essential.

[2.2] The Board concurs with the ED in considering a networked general-purpose computer as part of notorious knowledge. However, the Board judges that the ED overstretched the concept of a notorious networked general-purpose computer by alleging that a packaging machine constituted a commonplace peripheral of such a computer so that the notoriety of the computer system propagated to the packaging machine. Even though the application refers to packaging machines only in a generic way, the Board does not regard packaging machines as notorious components. A packaging machine is a technical device which is not a usual computer peripheral, such as a printer, keyboard, data storage, display, I/O modem or the like.

[2.3] An ED should not normally refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature which is not notorious (T 690/06). Therefore, it would have been necessary for the ED in this case to carry out a search into the documented prior art pertaining to packaging machines controlled by (networked) computers, and to take the result of that search into account during the examination of the application.

Request for reimbursement of the appeal fee

[3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

Thus, the appeal fee can only be reimbursed if a procedural violation has occurred. An error of judgement on substantive issues by the ED does not constitute a procedural violation (T 690/06 [12]).

[3.1] In the present case, the ED’s reasoning that a generic packaging machine might be considered as a notorious peripheral of a networked general-purpose computer constitutes an error of judgement on a substantive issue rather than an incorrect conduct of the procedure.

Therefore, the ED’s decision not to carry out a search into the prior art of the present application is not considered as a procedural violation.

3.2 Furthermore, and in contradistinction to case T 1287/04 [4.4-5], the reasoning in the refused decision is sufficient, i.e. existent in a form that can be examined by the Board and the appellant. Although prima facie containing no non-technical feature, claim 1 read in the light of the description, i.e. in the light of the objectives and advantages emphasised by the applicant itself […], can be seen to relate to an interface embedded in a commercial context. Therefore, again it was a matter of judgement for the examining division whether or not to base their reasoning on the case law developed for assessing mixtures of technical and non-technical features, e.g. T 641/00, as it is reflected in the Guidelines for Examination.

[3.3] In conclusion, the Board does not identify a substantial procedural violation and, thus, cannot order a reimbursement of the appeal fee.

To download the whole decision, click here.

The file wrapper can be found here.

T 1411/08 – Not Notorious

The present case concerns the refusal of a Euro-PCT application by the Examining Division (ED) for lack of inventive step. 

The EPO, acting as ISA, had found that no search was to be performed, because the claims related, essentially, to a method of doing business, and had issued a corresponding declaration, under Article 17(2)(a) PCT. The ED had not carried out an additional search.

Claim 1 of the sole request before the ED read :

A method comprising:

maintaining a database (106) of personal information relating to a consumer (102), the database (106) being a component of a system;

receiving a request initiated by a consumer (102) and transmitted over a global communication network to the system, wherein the system is associated with a plurality of domain names, wherein the request includes one of the plurality of domain names, and wherein each of the domain names includes a common domain name element, and an identification of a subject of the request without specifying a specific provider thereof;

identifying at least one provider (104a, 104b, 104c) of goods and/or services related to the subject matter of the request in response to the received request, based upon the received request and the personal information relating to the consumer (102) in the database (106);

forwarding information regarding the or each identified provider from the system to the consumer (102), wherein the consumer (102) is subsequently capable of choosing a provider from the or each identified provider (104a, 104b, 104c) to communicate therewith;

facilitating completion of a transaction between the consumer (102) and a provider selected from the or each identified provider; and

updating the personal information based on the completed transaction, wherein the updated personal information is accessible by the system (150) for use in connection with a subsequent request initiated by the consumer (102).

The Board finds the ED to have acted light-heartedly:

[1] The ED refused the application due to a lack of inventive step. No document was cited as evidence, but the decision identifies differences over the prior art in the following way […] :

In comparison with a normal http request-response sequence, the ED identified three differences:

1) When parsing a URL, it is usually the part that follows the actual resource which is parsed (a query, the content of a form), in this case it is the domain name that is parsed.

2) A central database containing information about the consumer.

3) The update of the information about the consumer based upon the transaction.

[2] The decision then goes on to discuss these three differences.

1) is said to result from a technically straightforward implementation of a business idea.

Of 2), it is said to be well known that websites store information about the user’s behaviour, and to do this using a central database is just one of two well-known alternatives, each with well-known advantages and disadvantages. The other alternative is to store the information in a cookie.

3) is, again, seen as a technically straightforward implementation of a business idea.

[3] The ED’s argument, then, relies on an understanding of the prior art. For the argument to work, it must be the case that the claimed invention actually does differ in the three points identified, and it must also be the case that there were websites which tracked the behaviour of users.

[4] In general, when a Search Division has found that no search is to be performed, it is not always necessary for the ED to carry out an “additional search” before raising an inventive step objection. T 1242/04 [9.2] explains it this way:

According to the established case law of the boards of appeal it is possible to raise an objection of lack of inventive step without documented prior art ? That should be allowable where the objection is based on “notorious knowledge” or indisputably forms part of the common general knowledge (CGK). Such cases, however, are exceptional, and a search is otherwise essential.

[4.1] Under the term “notorious”, the present Board understands, firstly, prior art which is so well known that its existence at the date of priority cannot be reasonably disputed. This is to be distinguished from the skilled person’s CGK, which is something that generally can be reasonably questioned.

[4.2] Further to that, the present Board understands “notorious” as implying that technical detail is not significant. The examination of a combination of features in relation to inventive step normally involves questions such as what advantages and disadvantages the combination is said to have, and in what technical areas it is used. This is the sort of information a search should uncover. On the other hand, a claim may be so drafted that such questions do not arise. It is prior art reflecting such generic features that the Board understands as “notorious”. Thus a “computer for sending a message” is notorious, whereas a “32-bit computer for sending a message” would not be, when, for example, questions of advantages and disadvantages of 32-bit computers arise.

[5] In the present case, the ED has not identified the prior art as “notorious” or an indisputable part of the skilled person’s CGK. In the Board’s understanding of those terms, neither the normal http request-response sequence, nor the websites which store information about the user’s behaviour falls within their meaning. The issue of what constituted the normal http request-response sequence at the priority date is certainly open to question, and it is certainly something towards which a search can be directed. The same goes for websites storing information on user behaviour.

[6] The Board, therefore, concludes that in the present case, the ED could and should have ensured that a search was performed before refusing the application for lack of inventive step.

[7] The Board considers that the failure to carry out an “additional search” constitutes a substantial procedural violation and that the reimbursement of the appeal fee must be ordered. The reasons are as follows.

[7.1] The consequence of the lack of search is that the decision is founded on prior art which cannot reasonably be assessed. It may be true that the invention defined in claim 1 differs from the normal http request-response sequence precisely as the ED states, but neither the appellant nor the Board can see whether that is the case. Nor can the appellant or the Board assess whether or not there were websites which stored information on user behaviour before the priority date. The appellant cannot prove that there were not, other than by providing all the previously published technical literature and saying that it cannot be found there. Such an assessment of the literature is what the search is supposed to provide.

[7.2] In T 1515/07 the Board found that the ED must be held to have committed a substantial procedural violation in the sense of R 103(1)(a) because it did not perform an additional search that was manifestly necessary.

[7.3] In the present case, the additional search was manifestly necessary since, as set out above, the invention claimed contained technical features which cannot be regarded as notorious. The Board, therefore, finds that a substantial procedural violation was committed. […]

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution, which should include an additional search.

3. The appeal fee is to be reimbursed.

Should you wish to download the whole decision, click here.

The file wrapper can be found here.

NB: There is a post on this decision on Laurent Teyssèdre’s blog.

T 1634/06 – Improve Your Figure

Auxiliary requests normally consist of amended claims. The present case is noteworthy because there were auxiliary requests that consisted in amendments to the drawings.

Here the applicant appealed against the decision of the Examining Division to refuse its application for lack of inventive step. 

Claim 1 before the Board read:

A method for use in an interactive television program guide implemented on user television equipment (22) for displaying programs and associated program data, the method characterised by:

storing on a digital storage device programs and program data that is associated with the programs using the interactive television program guide; maintaining on the digital storage device a directory of the program data for the stored programs using the interactive television program guide, and

providing to the user a list of selectable options, wherein a first selectable option is provided for allowing the user to access information for at least one broadcast television program and at least one recorded program stored on the digital storage device, and wherein a second selectable option is provided for allowing the user to access a list of currently stored programs from the directory.

During the appeal proceedings, on January 26, 2007, the applicant filed a new figure 5b

to replace figure 5b then on file:

In an annex to the summons to oral proceedings (OPs), the Board indicated that the new figure might be objectionable under A 123(2). The applicant then filed claims according to a new main request, a new figure 5b (“Auxiliary request #1”) and figure 5b as originally filed (“Auxiliary request #2”).

During the OPs, the applicant filed claims 1 to 8 and withdrew all previous requests. Its final requests were that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 8 filed in the OPs before the board with the description and drawings on which the decision under appeal was based, except for figure 5b, which according to the main request should be that filed with the letter dated January 26, 2007. As a first auxiliary request only figure 5b of the main request should be replaced by figure 5b filed as “Auxiliary Request #1” with the letter dated 4 February 2011. As a second auxiliary request only figure 5b of the main request should be replaced by figure 5b as originally filed.

The Board found the main request to lack inventive step. When coming to this conclusion, the Board made an interesting statement on converging fields of technology:

[2.1.2] [T]he invention concerns both television technology - in particular television program guides which allow digital storage of information - and computer and computer-interface technology. In this context the board takes the view that it was well known, before the priority date of the present application, that these two areas of technology were converging. Therefore, the common general knowledge of a person skilled in the art of television program guides included common general knowledge of computers and computer interfaces in so far as it related to television technology and television program guides.

This is indeed a (novel ?) alternative to construing teams of skilled persons.

The Board also made the following comments on the auxiliary requests:

[3.1] The interpretation of claim 1 is not dependent on the content of the respective version of figure 5b. In the present case, the different presentation of the program listings grid does not change the meaning of the selectable options as claimed and is merely a matter of allowability of the respective amendment made. Hence the above analysis concerning inventive step is not dependent on the particular version of figure 5b which is part of the documents forming the basis on which grant of a patent is requested. This has also been acknowledged by the appellant. From this it follows that the first and second auxiliary requests are not allowable because of lack of inventive step of the claimed subject-matter.

[3.2] Under these circumstances there is no need for a decision on whether the inclusion of figure 5b according to the main request and the first auxiliary request respectively meets the requirements of A 123(2).

To read the whole decision, click here. The file wrapper can be found here.

T 754/08 – Yes But

In the present decision the Board also deals with a nice attempt by the opponent to take advantage of the lack of precision of the patent under consideration.

[3.2] Starting from the device disclosed in D9, the object underlying the claimed invention has to be regarded as to provide a suitable tool for operating this device without the need to provide an element adapted to abut against a neighbouring stationary object […].

To achieve this object, claim 1 proposes a fluid-operated ratcheting tool exhibiting the features according to the characterising portion of the claim. The rotatable outer projection is connected with the rotatable tool element to rotate it. The inner non-rotatable projection is connected with the non-rotatable tool element and provides the necessary reaction force without the need for an element adapted to abut against a neighbouring stationary object.

[3.3] D26 shows a hydraulic ratcheting tool (ULC-type with auto-back-up wrench) which, in operation, has an element (an arm with a rectangular opening) which holds a bolt stationary while another element (a rotatable element with a hexagonal opening) applies a rotation to the nut surrounding the bolt. Therefore, the movement realised is, from a kinematic point of view, the same as that required by D9, i.e. the rotation of a tool element surrounding a non-rotatable element.

[3.4] However, as acknowledged by the [opponent] itself, the tool of D26 cannot be used as such to operate the device of D9, but needs to be modified for this purpose.

Contrary to the submission of the [opponent], said modifications cannot be considered minor. Not only had both the rotatable and the stationary elements of the tool to be modified to project from the housing of the tool; also the way in which the tool engages with the elements to be held stationary and to be rotated had to be changed, since the inner part 4 and the outer part 3 of the device of D9 are engaged with on their inner surface, while the bolt and the nut shown in D26 are engaged with on their outer surfaces.

Moreover, these modifications, changing the way of engaging the different rotatable and stationary elements, imply a different way of applying the torque. Since the tool shown in D26 is designed for applying high torques, the person skilled in the art would be dissuaded from changing the application of the torque in a way which might impair the tool’s functioning.

Therefore, it was not obvious for the person skilled in the art to try to achieve the given object by selecting the ULC-type tool with auto-back-up wrench shown in D26 and modifying it according to claim 1.

[3.5] This finding cannot be challenged by the [opponent’s] argument according to which the alleged lack of detail of the patent in suit proved that the common general knowledge of the person skilled in the art enabled him to modify the tool shown in D26 to operate the device of D9.

It is not disputed that the person skilled in the art was in a position to perform these modifications. However, the relevant question when examining inventive step is not whether the person skilled in the art could have carried out the claimed invention, but whether he would have done so in the hope of achieving the object underlying it.

For the reasons explained above, in the present case this question is to be answered in the negative. […]

[3.8] In view of the above, the subject-matter of claim 1 of the main request involves an inventive step.

Should you wish to download the whole decision, just click here.

T 1625/06 – Gimme More

The present decision comprises some interesting statements on an affidavit which was filed by the applicant whose application had been refused, in order to establish sufficiency of disclosure (click to enlarge):

(Click to enlarge)

The Board does not consider this document persuasive:

[7.1] With respect to the signed affidavit […] referred to by the appellant as “Annex 4” the following observations are made.

[7.2] In the board’s communication, it was noted that when assessing the sufficiency of disclosure in the light of common general knowledge, the relevant knowledge is that of the average skilled addressee and the question was raised as to whether the deponent might not be too highly qualified to be regarded as a notional, i.e. average, skilled addressee. The appellant did not make any submissions or provide any further information which would have helped to clarify this matter.

[7.3] As far as the content of the affidavit is concerned, the board finds that it essentially comprises a series of assertions to the effect that various technical requirements of the invention, in particular the identification of spectrum use and availability and the placement of subcarriers throughout a span of frequencies, could have been realised by the notional skilled person without undue burden. No further evidence has been offered in support of these assertions. As such, the content of the affidavit does not go beyond the mere expression of an opinion by the deponent that the application provides a sufficient disclosure for the invention to be put into effect […].

[7.4] Even if it were to be accepted for the sake of argument that the deponent could properly be regarded as a person of average skill in the relevant technical field, the board takes the view that an affidavit which merely expresses the opinion of a single person concerning matters of general knowledge and sufficiency of disclosure cannot, under the given circumstances, be regarded as a satisfactory proof that specific technical information which would have to be read into the application to make it complete would have been readily available to those of ordinary skill in the art.

[7.5] The board further notes that reference is made to “methods and systems for identifying spectrum use and availability” in the third paragraph of the affidavit. The techniques referred to are effectively limited to the determination of channel occupancy in the frequency domain. Thus, even if it were to be accepted for the sake of argument that such techniques were generally known at the priority date of the application, the board judges that they would not have been sufficient to enable the sensing of spectrum holes over multiple dimensions of the signal space as required by the present invention […].

[7.6] In view of the foregoing, the board concludes that the submitted affidavit lacks any probative value for the purpose of establishing compliance with the requirements of A 83.

If you wish to download the whole decision, just click here.

T 27/07 – How To Shoot Oneself In The Foot

Remember R 7/09? This petition for review was the first (and, as far as I can see, the only) petition to succeed so far. The patent proprietor, whose patent had been revoked, obtained that the decision under review be set aside and the proceedings before the Board of Appeal re-opened. The present decision shows what happened afterwards.

Claim 1 of the main request on file read:

An endoscope capable of being autoclaved, comprising: an insertion unit having a soft member; an internal endoscope space including the internal space of said insertion unit that is sealed at a first sealing level at which the internal space is sealed in a watertight manner relative to an outside; and contents all or part of which are arranged in said internal endoscope space; wherein said contents include at least one hermetically sealed unit composed of a plurality of airtight partition members and formed at a second sealing level higher than the first sealing level by joining the sealing surfaces of said airtight partition members using an airtight joining means; wherein even when high-pressure high-temperature steam permeates through said soft member of said insertion unit which is made of a soft polymeric material as at least part of an insertion unit casing, and invades into said internal endoscope space formed at the first sealing level, the high-pressure high-temperature steam will be hindered from invading into the hermetically sealed unit included in said contents and formed at the second sealing level; and wherein said hermetically sealed unit includes at least one of optical members and electronic parts or both the optical members and electronic parts.

The Board considers document D3 to be the closest prior art.

[3.2] […] D3 does not disclose the feature of claim 1 in suit according to which the soft member of the insertion unit is made of a soft polymeric material and that the internal space of the insertion unit is sealed relative to the outside in a watertight manner at a first sealing level, whereas the hermetically sealed unit is sealed in an airtight manner, i.e. at a second sealing level higher than the first watertight sealing level.

The technical problem presented in the contested patent […] of providing an endoscope capable of avoiding high-pressure high-temperature steam invading into the interior of the endoscope and the optical system during autoclaving has already been addressed in D3 […]. It is solved in this document by the provision of an endoscope entirely sealed in an airtight manner […].

However, even if the outside fitting parts of the endoscope are made airtight, there is still a risk of high-pressure high-temperature steam entering the interior of the endoscope during sterilisation […]. If the device of D3 was really entirely airtight, as it is supposed to be, the above-mentioned risk would not be present any more. Therefore, it is likely that the outer tube 152, 157 shown in Figures 29 and 30 might only be watertight, as is generally the case in conventional endoscopes.

Moreover, as explained in the patent itself […], for endoscopes known as airtight endoscopes and having a bending ability (as in the case in D3), the steam given off during autoclaving can barely be prevented from invading into the interior of the endoscope.

Furthermore, it is well known from the state of the art presented in the application itself that conventional endoscopes have a soft, bendable insertion unit comprising a tube made of soft polymeric material, thus providing a watertight sealing level […]. Additionally, D2 […] discloses an example of rubber used as a suitable material for the bending portion, as recited in […] the contested patent concerning the soft polymeric material.

Starting from the disclosure of D3, even if it is assumed that the outer tubes 152, 157 are such as to provide an airtight sealing level, the skilled person would indeed consider lowering this level to a still acceptable watertight sealing level, on the basis of his common general knowledge as given in the application as filed, the more so since lowering the sealing level of the internal space of the insertion unit from airtight to watertight has no bearing on the level of protection of the internal hermetically sealed unit, which remains airtight anyway. In fact, the plurality of airtight partition members such as optical members and electronic parts are all formed at a higher airtight sealing level and are sufficiently protected against high-pressure high-temperature steam entering the interior of the endoscope during autoclaving.

It is true that, as submitted by the respondent, common general knowledge needs to be substantiated if challenged by a party. In the present case, however, the information emerges from the applicant himself in the application as originally filed. It is not the responsibility of the Board or the other party to provide evidence whether the state of the art presented in the application as filed, now no longer acknowledged by the respondent-proprietor, is correct or not. On the contrary, it is the proprietor’s responsibility to provide the EPO with a text ready for grant, i.e. agreed by him (A 113(2)).

It results therefrom that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of A 56 with respect to the disclosure of D3, having regards to the general knowledge of the person skilled in the art.

The first auxiliary request having been found to lack inventive step and the second auxiliary request having been refused as belated, the patent was revoked, for the second time. So the only successful petition for review finally led to a confirmation of the Board’s verdict. Vanity of vanities ...

If you wish to download the whole decision, just click here.

T 811/06 – A Matter Of Judgment

NB: All articles and rules refer to the EPC 1973.

[4.1] The examining division (ED) asserted in the refusal of claim 1 of the main request that the division of a memory in two interchangeable separate areas according to the characterising portion of claim 1 was known in many fields, for instance as a “ping-pong” memory architecture and was thus common general knowledge.

[4.2] The appellant argues that the ED, by not providing a prior art document in support of this assertion, failed to sufficiently reason its decision, and prevented him from formulating a cogent response. The question arises as to whether the behaviour of the ED in the proceedings up to refusal deprived the applicant of the right to be heard (A 113(1)), and whether the decision was sufficiently reasoned (R 68(2)).

[4.3] Decision T 939/92 referred to by the appellant in the statement of grounds of appeal (followed for instance in T 1242/04 [9.2]) sets out that A 54(2) does not limit the state of the art to written disclosure in specific documents. Rather it defines it as including all other ways (“in any other way”) by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge, which, again, may be in writing, i.e. in textbooks or the like, or be simply a part of the unwritten “mental furniture” of the notional “person skilled in the art”.

It is true, and the board agrees with the appellant in this respect, that in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, for instance by documentary or oral evidence (see also T 329/04 [45]).

[4.4] According to the minutes of the oral proceedings (OPs) held before the ED, the applicant accepted that conventional structures known as “double-buffering” or “ping-pong” memory architecture might be used to increase the throughput of data streams. The board thus deduces that the applicant did not dispute that a ping-pong memory architecture and its benefit were common general knowledge. By contrast, the appellant stated that he was unaware of an example in the context of look-up tables […].

[4.5] Claim 1 of the refused main request sets out separate (active and pending) tables for selecting packets and does not expressly set out look-up tables. The last paragraph on page 4 of the decision under appeal refers to examples of ping-pong memory architectures with separate memory areas in general and also does not specifically refer to the use of such areas as look-up tables.

[4.6] The device of D2 uses a memory containing a single table (operating indeed in practice as a look-up table) to select data packets […]. This was not contested by the appellant. The question whether a person skilled in the art would have combined the teaching of D2 with the (uncontested) common general knowledge of a ping-pong architecture having two interchangeable memory areas is a matter of judgment. Documentary evidence for the feature of ping-pong architecture “in the context of look-up tables” was thus not necessary, and the ED was not required to provide documentary evidence for their argumentation.

[4.7] In view of the above, and since the reasoning in the decision only reflects issues which have been debated in the OPs (which the appellant did not contest), the appellant was not deprived of an opportunity to present comments on the issues relevant to the outcome of the case in the proceedings up to refusal (cf. A 113(1)).

[4.8] R 68(2), first sentence, aims to put the appellant in a position to ascertain the reasons for the decision in order to defend his rights, in particular by setting out grounds of appeal, and the board to exercise its power of review of the legality of the decision. As explained in the foregoing, the reasoning in the decision under appeal […] built on facts disclosed in D2 and uncontested common general knowledge to conclude that the subject-matter of claim 1 lacked an inventive step. The argument qualified by the appellant as a bold assertion of “common general knowledge” did not prevent him from understanding the reasoning in the decision and from formulating counter-arguments in the statement of grounds of appeal. Therefore, the decision is also considered to be sufficiently reasoned.

[4.9] As a result, the ED did not commit a substantial procedural violation and the appellant’s request for reimbursement of the appeal fee is not allowable.

If you wish to download the whole decision, please click here.

T 1312/08 – The Devil’s In The Detail

Claim 1 of the main request read:

1. A detergent composition comprising

(a) 15 to 40% by weight of an anionic surfactant,

(b) 0.5 to 5% by weight of a chlorine scavenger,

(c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10^–3 μg/mPU·min and

(d) a protease whose α-keratin-hydrolyzing activity at 10°C is less than 0.09x10^–3 μg/mPU·min,

wherein (c)+(d)=0.01 to 0.5% by weight (as powdered enzyme product), (c)/(d)=1/5 to 5/1 and [(c)÷(d)]/(b)=1/100 to 1/2 (weight ratio as powdered enzyme product), and a polyoxyalkylene alkyl or alkenyl ether whose HLB (Griffin’s method) is 11.5 to 17.

The Board first deals with the validity of the priority claim:

[1.1.1] It is established jurisprudence of the Boards of Appeal of the EPO that the priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98 [headnote]).

It is undisputed that claim 1 as granted reads as the combination of claims 1 and 3 of document D20, which is the certified English translation of the Japanese priority document of the patent in suit.

However, it is also undisputed that PU, one of the units contributing to the value of the α-keratinhydrolyzing activity expressed as μg/mPU·min, which characterizes in claim 1 both proteases (c) and (d), is defined differently in the patent in suit and in document D20. Precisely, the patent in suit defines 100PU as the amount of protease that produces acids-soluble peptides equivalent to one micromole of Ltyrosine per minute in the measurement of caseinhydrolyzing activity of the description whilst document D20 defines for the same measurement 1 PU as the amount of enzyme that produces acid-soluble peptides equivalent to one millimole of L-tyrosine per minute.

Therefore, because of this different definition of PU, the α-keratin-hydrolyzing values of a protease measured by using the respective definition of PU differ of the factor 10^5, i.e. the limits of the α-keratin-hydrolyzing activity which characterize proteases (c) and (d) in each claim 1 of the patent in suit and of the priority document, even though numerically apparently identical, differ in reality of a factor 10^5 because of the different definition of PU.

Since the [patent proprietor] submitted that the definition of PU in the patent in suit is correct and that the definition in the priority document is erroneous and should have been the same, it should be evaluated if the skilled person would have derived the definition of PU used in the patent in suit directly and unambiguously, using common general knowledge, from the whole content of document D20 as a whole.

[1.1.2] It has not been contested by the [patent proprietor] during oral proceedings that the skilled person would not have been able to notice that the definition of PU in document D20 is erroneous by simply reading the content of this document. In fact, the Board remarks that both the measurements of the α-keratin-hydrolyzing activity and of the casein-hydrolyzing activity of the description in which the definition of PU is used are not recognized standard methods but are methods set up by the [patent proprietor] for the specific needs of the present invention. Moreover, there did not exist at that priority date any widely recognised standard values for the α-keratin-hydrolyzing activity or the casein-hydrolyzing activity or a recognised standard definition for the PU belonging to the common general knowledge of the skilled person. Therefore, the skilled person, even considering his common general knowledge, would not have been able to recognise any error in the definition of PU or in the values of α-keratin-hydrolyzing activity simply by reading document D20.

[1.1.3] The [patent proprietor] submitted that the skilled person, in applying his common general knowledge to the teaching of document D20, for example by repeating the examples of the priority document and controlling the α-keratin-hydrolyzing activity of the proteases used in these examples, would have noticed that the values of α- keratin-hydrolyzing activity measured by means of the method indicated in the description of document D20 making use of the definition of PU given hereinabove do not correspond with the values indicated in the examples and would not satisfy at once the requirements of the claim for both proteases (c) and (d). Moreover, by comparing the measured results with those of the example, he would have found that the value had to be corrected by a factor of 10^5 in order to comply with the requirements of the claim for both proteases (c) and (d) and that the error could arise from the erroneous definition of PU.

However, the Board remarks that according to the established jurisprudence of the Boards of Appeal of the EPO the common general knowledge of a skilled person is normally represented by encyclopaedias, textbooks, dictionaries and handbooks on the subject in question or even patent specifications and scientific publications in the case that the field of research is so new that technical knowledge was not available from textbooks (see case law of the Boards of Appeal of the EPO, 5th edition 2006, I.C.1.5). Therefore, it cannot encompass the application of tests like the measurement of the α-keratin-hydrolyzing activity of document D20 which is an integrative part of the invention itself and relates to parameters which are not standard in the prior art as explained hereinabove.

Therefore, the reworking of an example and especially of a method which is not a standardized one and is not reported in encyclopaedias, textbooks, dictionaries and handbooks cannot be considered to be the application of common general knowledge.

As a consequence, the mere fact that it is necessary to carry out a test, which is not part of common general knowledge, in order to find out whether the definition of PU in document D20 is erroneous makes clear that the different definition of PU used in the patent in suit is not derivable directly and unambiguously, using common general knowledge, from the whole content of document D20.

Therefore, the Board concludes that claim 1 of the patent in suit relates to an invention which is different from that disclosed in document D20 and cannot benefit from the claimed priority date of 17 March 1999.

I shall come back on this decision tomorrow.

To read the whole decision, you may click here.

T 149/07 – Sophisticated Obviousness

The present decision gives a useful reminder concerning “common general knowledge”. It has also retained my attention because it concludes on lack of inventive step based on a rather sophisticated combination of documents. In a recent post, we have seen that the Boards do accept demonstrations of lack of inventive step based on more than two documents. Here the claim (effective date: 1995) was rejected as obvious over a combination of prior art D1 (1979) and D3 (1988), complemented by common general knowledge (for which D7 (1985) was considered to provide evidence). The fact that D7 also disclosed the drawback of the claimed alternative (its complexity) was considered to have been made obsolete at the date of the claim as a result of ongoing technical progress.

[...] D1 discloses a Fairchild-Automatic-Intercept-and-Response-System (FAIRS) which comprises a central command station controlling fixed or mobile transportable remote sites. The system is intended for carrying out signal surveillance, monitoring, direction finding and accurate location of hostile transmitters.

It was not disputed that D1 represents the closest state of the art showing a system of surveillance according to the precharacterising part of claim 1. [3.1]

The [opponent] considered claim 1 as including a mere aggregation of features independent from each other. In particular, the group of features concerning activation/deactivation and operation mode of the cells ([h], [j] and [k]) could be regarded separately from that pertaining to TOA measurement ([l] and [m]).

This view is convincing. A combination invention would imply a functional relationship between features or groups of features resulting in a combinative effect beyond the sum of the individual effects. Such a combinative effect cannot be identified in the present case at least with regard to the groups of features referred to above. In particular, claimed characteristics of a cell concerning activation, deactivation, communication with the information centre and loading of parameters, on the one hand, and features for determining the bearing of a phenomenon on the basis of a time-of-arrival measurement, on the other hand, are functionally not so linked together that a synergistic effect results from their combination. Thus, when assessing inventive step, each group of features may be considered per se. The [patent proprietor] objected that this approach resulted in a mosaic combination of different features out of their context. This objection, however, is not conclusive in view of the foregoing. [3.2]

[…] D1 is considered to disclose not only the precharacterising part but also feature [i] of claim 1. [3.4]

[…] D3 discloses feature [h] of claim 1.

In the Board’s view, D3 also discloses feature [j] of claim 1. [3.5]

[…] With regard to feature [k] of claim 1, D1 […] discloses that the receivers at each remote site are commanded from the command centre to scan particular portions of the RF spectrum wherein a threat transmitter is thought likely to operate. As soon as a threat signal is detected, signal recognition is carried out, an alarm is registered, a bearing is taken and the alarm is transmitted to the command centre. Thus, the receiver at a remote site operates in an active mode in response to a command from the command centre and reports to the command centre upon detection of a threat signal in accordance with given criteria.

In the light of this disclosure, the Board finds convincing the [opponent’s] submission that a standardized protocol is necessary for the communication between remote receiver and command centre. Thus, the feature concerning the standardized protocol is either implicit to the disclosure of D1 or trivial for a skilled person. [3.6]

Features [l] and [m] of claim 1 concern a TOA measurement on the basis of two cells with synchronised internal time.

In its interlocutory decision […], the opposition division (OD) considered that documents D1 and D3 did not render obvious the use of two different cells for a TOA measurement. In its view, although TOA measurements were known in the art at the priority date of the present patent, a skilled person got no incentive from the prior art to apply this technique to the system of D1. Even if the skilled person tended to introduce this technique, he/she would not consider the claimed solution of providing the bearing of a phenomenon by comparison of signals of two distant cells. On the contrary, the more straightforward way would be to introduce the TOA technique in the setup shown in D1 […], i.e. to rely on a measurement based on two antennas of the same cell, which could be placed far enough to give sufficiently accurate results. Indeed, the use of antennas of two different cells had the drawback that an accurate time determination in both cells was needed. Such a feature, however, was not disclosed, either explicitly or implicitly, in D1. Rather, the arrangement of D1 was based on a single cell and had the advantage that the accurate time determination was not necessary.

The Board would agree with this argumentation on the basis of the disclosure of D1 only. The OD, however, had no knowledge of textbook D7 filed with the notice of appeal.

D7 […] is concerned with the interception of radar signals, in particular with the issue of how to use various receivers in interception applications. Other major topics concern direction finding and location. Chapter 5, which deals in extenso with the issue of emitter location techniques, presents two major approaches. Emitter location estimation using multiple angle-of-arrival (AOA) measurements is the classic approach, the basic idea of which changed little since the 1940s. The time-difference-of-arrival (TDOA) technique is more complex, and its use is more recent and much less widespread. According to the leading-edge (LE) TDOA technique, the arrival time of the leading edge of a radar pulse is determined at a receiver. The difference between the arrival times of the same pulse at two widely separated ground-based sites gives the TDOA with respect to the baseline between the two receivers. This TDOA measurement establishes an iso-delay line on the surface of the earth that passes through the emitter location. A similar TDOA measurement with respect to another baseline establishes another iso-delay line. The intersection of these iso-delay lines determines the location of the emitter (Figure 5-8).

The [patent proprietor] contested that document D7 reflected common general knowledge […]. Moreover, in its view, the outcome of the present case would not be changed by the consideration of D7 […].

Thus, two issues need to be considered. First, whether D7 reflects common general knowledge. Second, whether a skilled person would consider introducing the leading-edge TDOA technique according to D7 into the system of surveillance known from D1.

With regard to the first issue, the jurisprudence of the boards of appeal has defined the common general knowledge of a skilled person working in a particular technical field as being normally represented by the content of encyclopaedias, textbooks and dictionaries on the subject in question (T 890/02 [2]).

Three aspects have been identified for assessing the common general knowledge of the skilled person (T 890/02 [3]). Firstly, the skills of such a person include not only basic general knowledge of a particular field of technology, but also the ability to look up such knowledge in encyclopaedias, textbooks and dictionaries. Secondly, it cannot be expected that, in order to identify this common general knowledge, the skilled person will carry out a comprehensive search of the literature covering virtually the whole state of the art. No undue effort in such a search can be required from the person skilled in the art. Thirdly, the information found must be unambiguous and usable in a direct and straightforward manner without doubts or further research work.

In the present case, the Board does not have any reason for diverging from this jurisprudence that would lead to the conclusion that textbook D7 represents common general knowledge. In particular, it may be expected that the skilled person, designing systems of surveillance such as the one known by D1, would be aware of a textbook like D7 dealing inter alia with radar emitter location by a TDOA technique that represents an embodiment of the present invention covered by the claimed subject-matter. Thus, contrary to the [patent proprietor]’s view, the Board considers that D7 represents background knowledge.

With regard to the second issue mentioned above, the [opponent] submitted in the grounds of appeal […] that D1 described an operational system. At the publication date (1979) of this document and a fortiori at the time the described system was designed, computers with a computational power sufficient for making TDOA measurements on the basis of two cells with synchronised internal time were not yet available. For this reason, the system of D1 relied on AOA measurements. At the priority date of the present patent (1995), however, a skilled person, knowing from D7 that the TDOA technique could be used in systems like the one known from D1, would immediately consider that such a technique represented an obvious alternative to the AOA measurements on which the system of D1 relied. D7 itself prided support for this conclusion. Indeed, AOA and TOA/TDOA measurements were disclosed as two viable alternatives […] that might even be combined […].

The [patent proprietor] did not dispute that the TDOA technique per se was known. What was relevant, however, was its application in a system of surveillance as claimed. No document on file suggested such an application. On the contrary, the complexity of the TDOA technique, which was acknowledged in D7, played an essential role against its application and should be duly considered when contemplating the combination of D1 and D7.

The [opponent]’s submissions are substantially based on the approach that the skilled person was led by the technical progress to consider alternatives to the AOA technique disclosed by D1. This view is not invalidated by the [patent proprietor]’s argument concerning the complexity of the TDAO technique. Indeed, this drawback would be compensated by the ongoing computer progress, on the one hand, and by the improvement in location accuracy that may be achieved […], on the other hand. The former aspect is clearly at the basis of the development of the more recent TDOA approach […], which may regarded as an alternative to the classic AOA approach, as the [opponent] convincingly submitted. It should also be taken into consideration that D7 […] points out that, in an operational emitter location system, the AOA approach will be needed along with the TDOA approach. In a dense environment of emitters, it will be difficult to determine which pulse is coming from which emitter at separated receiver platforms. By using the AOA approach, only those pulses having appropriate bearings need be considered in the TDOA processing. In the Board’s view, this disclosure gives the skilled person a hint at integrating the TDOA processing in the system of D1 rather than replacing the disclosed AOA technique.

Therefore, D7 represents common general knowledge of the skilled person, discloses features [l] and [m] of claim 1, and incites the skilled person to complement the system of surveillance of D1 with these features. [3.7]

In conclusion, keeping in mind the aggregation character of the features of claim 1 of the maintained patent, as mentioned above, the subject-matter of claim 1 at issue lacks inventive step (A 56) in view of documents D1, D3 and D7. [3.8]

To read the whole decision, click here.

T 759/08 – Known Things Can’t Surprise

[…] Documents D4 to D10 cited against the patent have been filed after expiration of the time limit for filing an opposition.

According to A 114(2), the EPO may disregard such evidence. It is in its discretion to introduce late filed documents cited against the patent into the opposition or appeal proceedings or to refuse them. However, according to the established case law, such documents are to be taken into account if they are prima facie relevant because they are very likely to be prejudicial to maintaining the European patent. Moreover, it is in the discretion of a Board of appeal to introduce relevant documents into the proceedings of its own motion. However, this does not establish the entitlement [to introduce] documents that have been cited against the patent during the examination proceedings or which have been filed belatedly during the opposition or opposition appeal proceedings. [2.1]

In the present case the parties have discussed arguments concerning the common knowledge of the relevant skilled person. In order to provide evidence for this commonly known technical knowledge the manuals D4 and D5 have been filed during the opposition proceedings and manual D10 was referred to in the appeal proceedings.

According to the definition of the Boards of appeal the content of encyclopaedias, manuals and dictionaries normally represents the common general knowledge (see Case Law of the BA of the EPO, 5th edition 2006, I.C.1.5, page [48]). Manuals D4, D5 and D10 were cited as evidence for generally known effects of alloy elements in Al-alloys on their properties (D4), the composition of known standard Al-alloys (D10) or their application and product forms according to DIN EN 573-4 (D5). Therefore they represent the general knowledge of the person skilled in the art of Al-alloys. As a rule, the general knowledge cannot be considered as a complicated or surprising fact because it is sufficiently known to the skilled person. The introduction of the cited documents cannot be considered to be abusive, even it they have been filed after the expiration of the time limit for filing an opposition, i.e. belatedly, because they only confirm a fact that is commonly known to the skilled person.

Therefore, documents D4, D5 and D10 are taken into account. [2.2] 

I find this decision useful because it clearly states that the late introduction of evidence for common general knowledge should in principle always be possible.

Another minor remark: The Boards tend to refuse late filing of documents and/or amendments when the late filing would come as a surprise to the other parties and/or the Board itself. In the present decision there is an almost imperceptible shift towards the skilled person: the argument appears to be that the skilled person could not be surprised by the documents because they reflect the common knowledge of the skilled person. This may be true but it should not be forgotten that the skilled person is a legal fiction: it is as difficult to surprise the skilled person as it is to shake its hand. Neither the parties nor the members of the Board qualify as skilled persons within the meaning of the provisions of the EPC. Therefore, the introduction of a document could come as a surprise to them even though the skilled person would not be surprised.

To read the whole decision (in German), click here.