T 1688/08 – Language Skills

The home of the skilled person

This is an appeal against the refusal of an application by the Examining Division (ED).

According to the ED, the subject-matter of independent claim 3, which was directed at a 1 x N optical coupler, did not comprise an inventive step over the combined teachings of GB application D5 and Japanese application D6. A skilled person faced with the problem of determining how the device disclosed in document D6 worked, would seek a translation or, should this not be available, similar devices with a functional description. Document D5 discloses such a device excepting use of an annular mixer guide 45 in place of an annular core. Document D5 thus enabled a skilled person to understand that the function of a coupler according to document D6 had to be based on multimode interference.

The Board did not find this approach persuasive:

[3] In relation to claim 3, the division assumed that the skilled person knows that a device according to document D6 is based on the interference of different modes because it works with high efficiency, as set out in the corresponding English abstract, but did not explain how such knowledge relates to a number of features in the claim, for example, to the radial single mode. In fact, in the context of high efficiency, all that the abstract of document D6 discloses is simply

“To reduce the insertion loss, to equalize the photo coupling, and to execute it with high efficiency, by using a repeating rod having a cylindrical optical conductor part whose thickness is similar to the core diameter of an input/output fibre”.

Moreover, the division considered it not possible to determine scaling from the drawings of patent applications as they are typically schematic and of illustrative nature only. In other words, the division could determine neither core diameters nor fibre lengths from the drawing and did not show how, without knowledge of the subject matter claimed, the skilled person’s knowledge provides such features.

[4] Since the division did not find all the claimed features in Japanese-language document D6 and assumed that the skilled person did not understand Japanese, the division removed inconsistencies with the claimed subject matter by reference to the teaching of document D5. This approach is not very convincing because the language of a patent document alone cannot be decisive for the question of whether or not the skilled person considers the technical content of that document. Otherwise, there would be a differentiation between skilled persons according to the language(s) they speak. This would be against the objective assessment of the inventive step. (See, by analogy, T 426/88 [6.4]) In the board’s view, it is not credible either that the skilled person would have believed that another document, such as document D5, having only some features not dissimilar to those actually disclosed in document D6, would correspond to the disclosure of document D6 in relation to subject-matter claimed. This lack of credibility leads to a gap in the chain of reasoning of the ED, the gap then leading the board not to be persuaded by the case of the division.

[5] The board does not disagree with the case of the appellant on inventive step and is therefore satisfied that the subject matter of independent claims 1 to 3 can be considered to involve an inventive step.

[6] In view of the foregoing and since the board sees no other bar to grant of a patent, the board considers it appropriate to exercise powers within the competence of the first instance and order grant of a patent (A 111(1)).

NB: T 1157/06 is another relevant decision on this issue; a partial translation is available here.

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T 853/11 – Constantly Craving

This decision contains a useful statement on what the skilled person would do.

Claim 1 of the main request before the Board read:

A method of forming a polymer array comprising a substrate and 100 or more groups of polymers with diverse, known sequences coupled to the surface thereof in discrete, known locations, the density of said groups being at least 1000 per cm², wherein said discrete known locations are separated from one another by inert regions, and wherein said polymers are delivered to said locations by spotting.

When assessing the inventive step involved in the invention under consideration, the Board came to the conclusion that document D3 was the closest prior art and formulated the technical problem to consist in providing an alternative to photolithographic methods for producing high-density screening arrays.

[3.2.1] The [patent proprietor] has however argued that the person skilled in the art would have no motivation to search for an alternative to the method of document D3, i.e. would have no reason for departing from the pioneering and very successful photolithographic techniques which had allowed for the first time to obtain very high probe densities and, in particular, probe densities much higher than the lower limit of 1000 probes per cm² set in the granted claim […].

[3.2.2] The Board considers instead that it is inherently advantageous for the skilled person to also have at his disposal further ways for solving the same technical problems that have already been solved in the prior art. Thus, the fictional skilled person would normally search for and arrive at any obvious alternative to the prior art, independently as to whether the prior art presents or not particular disadvantages or difficulties, as well as independently on the public recognition of the pioneering nature and of the advantages of the prior art.

The Board incidentally notes that even the passage of paragraph [0010] of the description of the patent-in-suit […] appears to imply similar considerations.

The Board notes further that document D3 explicitly mentions the possibility of fabricating arrays with a density of probes of 1000 per cm² or even much less […], thereby proving to the skilled reader thereof that also the variants of this prior art methods resulting in somewhat less dense arrays with a probe density of about 1000 per cm²represent a realistic reduction into practice of the teaching in this citation.

[3.2.3] Hence, the Board concludes that the skilled person would actually attempt to solve the posed technical problem, i.e. would search for further methods for fabricating the arrays that were already delivered by the photolithographic methods, including those for fabricating arrays with a density of probes of about 1000 per cm².

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T 1911/08 – Not Accidental

This appeal was filed against the revocation of the patent under consideration.

Claim 1 of the main request before the Board was a Swiss-type claim for a medicament for treating a great variety of disorders stretching from migraine to schizophrenia, Parkinson’s and stroke.  Claim 48 was directed at a compound for use as medicament. It contained a disclaimer which is referred to as “disclaimer (vi)” in the following passage where the Board examined  the allowability of the disclaimer under A 123(2):

[3.2] Disclaimer (vi) […] was introduced in response to a novelty objection raised under A 54(2) EPC with respect to document D6.

It is not in dispute that this disclaimer relates to an “undisclosed disclaimer” in the sense of decision G 1/03 [2, 1^st §], that is, it does not have a basis in the application as filed. However, the parties disagree on whether document D6 can be viewed as being an “accidental anticipation” and, accordingly, as providing the basis for an allowable disclaimer under A 123(2), as set out in decision G 1/03 [hn2.1;2.2].

Therefore, in the present instance, it has to be decided whether document D6 is an accidental anticipation as defined in decision G 1/03, that is, whether “it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention” (see [hn2.1]).

[3.3] The patent in suit relates heterocyclic compounds of general formula (I) that are effective as NMDA NR2B antagonists, and accordingly are disclosed as being useful in the treatment of a number of diseases associated with this pharmacological activity, namely, pain, migraine, depression, anxiety, schizophrenia, Parkinson’s disease, and stroke […].

Document D6 also relates to heterocyclic compounds of overlapping general formula (I), and a number of the specific compounds listed in Table 1 fall within this area of overlap. The compounds according to document D6 are disclosed as being well tolerated by plants and having favourable toxicity to warm-blooded species, and being highly suitable for controlling animal pests, for controlling endoparasites and ectoparasites in the field of veterinary medicine, and for controlling harmful fungi […]. Further details of the use in the field of veterinary medicine are disclosed […], including the possibility of oral administration to animals.

[3.4] The appellant argued that the biological pathway by which compounds acted should constitute the boundary between accidental and non-accidental anticipation, since, in modern mechanism-based research, the skilled person, that is, the medicinal chemist, would only take into account compounds interacting with the same receptor as a starting point for drug development.

The board cannot agree with this analysis for the following reason:

The ultimate aim of the pharmaceutical industry is the development of drugs capable of treating specific diseases. Therefore, in the present instance, where the patent in suit relates to the field of pharmaceuticals, the skilled person cannot merely be defined as being a medicinal chemist, but rather as being made up of a team covering the full range of disciplines required for drug discovery and development. High-throughput screening may be an important and integral part of this process. However, it will be equally important to establish whether candidate drug compounds have potentially favourable properties with respect to safety, toxicity, pharmacokinetics and metabolism. Therefore, the disclosure in document D6 that specific structures under consideration have favourable toxicity properties and are suitable for oral administration to animals would be considered to be valuable information to be taken it into consideration by the skilled person when making the present invention.

The board therefore agrees with the conclusion reached in T 134/01 [2.3], namely, that a further document belonging to the field of pharmaceuticals is not to be considered as being an accidental anticipation within the meaning of the decision G 1/03, that is, even if it does not relate to the same illness or biological pathway as the patent or application in suit.

In decisions T 739/01 [3.5], T 580/01 [2.4] and T 639/01 [3.2], the relevant prior art documents related to the treatment of the same illness as the patent or application in suit and were considered to be non-accidental anticipations. However, it does not follow that, had they related to a different illness, they would have been regarded as being accidental. Indeed, decisions T 739/01 [3.4-5] and T 580/01 [2.3-4] emphasise that “the patent in suit relates to the technical field of medicaments”, as does the relevant prior art.

[3.5] The further arguments advanced by the appellant are also not considered to be persuasive:

It is true that, for the purpose of patent protection of a medical application of a substance, a pharmacological effect observed in vitro may be accepted as sufficient evidence of a therapeutic application. However, this is only true if this observed effect directly and unambiguously reflects such a therapeutic application (cf. e.g. T 241/95 [4.1.2]). Indeed, as is further stated in decision T 241/95 [hn1], “the discovery that a substance selectively binds a receptor ... still needs to find a practical application in the form of a defined, real treatment of any pathological condition in order ... to be considered as an invention eligible for patent protection”.

Moreover, the appellant’s narrow problem-based approach to defining accidental disclosure focuses on an analysis of the problem to be solved. However, this was specifically rejected in decision G 1/03 [2.2.2]:

“Even less decisive, as an isolated element, is the lack of a common problem, since the more advanced a technology is, the more the problem may be formulated specifically for an invention in the field. Indeed, one and the same product may have to fulfil many requirements in order to have balanced properties which make it an industrially interesting product. Correspondingly, many problems related to different properties of the product may be defined for its further development. When looking specifically at improving one property, the person skilled in the art cannot ignore other well-known requirements. Therefore, a “different problem” may not yet be a problem in a different technical field.”

Finally, the appellant questioned the relevance of the disclosure of document D6 to pharmaceutical applications. As outlined above under point [3.3], the use in the field of veterinary medicine is disclosed in this document as one of three fields of application. Moreover, a whole section is devoted to dosages and formulations suitable for this use […], and an example is included relating to antiparasitic use […]. Therefore, it cannot be accepted that the disclosure of a veterinary use only qualifies as “a passing reference”. Moreover, since document D6 envisages oral administration to animals, there seems no basis for the contention of the appellant that the reference to a favourable toxicity in warm-blooded species was not of relevance to pharmaceutical applications. Finally, […] the diseases claimed in the patent in suit cannot be seen as being exclusively human-specific. Moreover, animal models are frequently used in research into human diseases. Therefore, information derived from the former is also of relevance to the latter.

[3.6] Accordingly, the main request […] must be rejected, since the incorporation of disclaimer (vi) into the respective claims 48 to 50 contravenes the provisions of A 123(2).

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T 1037/09 – He Loves Redundancy

This decision is not particularly noteworthy but it contains a statement on the attitude of the skilled person that might come in handy from time to time.

[3.5] […] Nor is the Board convinced that the skilled person is generally disinclined to combine measures with the same effect. Combination often offers useful redundancy, or combined effects may complement each other. As for the increased costs of combining similar measures this is a routine economical concern that can hardly be equated to a generally existing technical prejudice.

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T 1126/09 – What Would My Robot Do?

The patent proprietor appealed against the decision of the Opposition Division revoking its patent.

Claim 1 before the Board read:

Method for manufacturing concrete products on at least one casing table, characterized by

(A) the use of at least one program-controlled robot (48) which

(B) on said casing table (20),

(C) picks up, from a store (30),

(D) edge forming profiled casing elements (10) that can be magnetically fixed

(E) by means of integrated permanent magnet elements (14);

(F) precisely positions them on said casing table (20); and

(G) then activates the permanent magnet elements (14).

The Board found this claim to lack inventive step:

*** Translation of the German original ***

[2] It is undisputed that, as discussed during the oral proceedings (OPs), the skilled person to be taken into account in this case, where a program-controlled and, therefore, programmable, robot interacts with edge forming profiled casing elements (EPE), is to be considered to be formed by a team comprising a person that is skilled in the field of the manufacture of EPE, and another person skilled in the use of program-controlled robots of the kind under consideration. Therefore, the team to be considered, which will be referred to as the skilled person, has to be deemed to have technical knowledge and to be familiar with standard practices both in the field of plant construction (Anlagenbau) and in the field of programming of robots to be used in such plants.

[3] Claim 1 according to the main request concerns a method for manufacturing concrete products on at least one casing table.

In this method a program-controlled robot having features (A) to (G) is used. This robot picks up EPE that can be magnetically fixed (feature D), precisely positions them on the casing table (feature F) and then activates the permanent magnet elements (PME; feature G).

The EPE that can be magnetically fixed (feature D) used in this method have integrated PME (feature E) that can be activated according to feature G.

Thus the method according to claim 1 comprises the use of at least one program-controlled robot for handling EPE each of which has integrated PME.

Closest prior art

[4.1] it is undisputed that […] the method for manufacturing concrete products disclosed in D1 is the closest prior art for the subject-matter of claim 1 of all the request s on file.

[4.2] The known method concerns the manufacture of concrete products on at least one casing table wherein, as in feature A, at least one program-controlled robot is used […]. This robot positions EPE that can be magnetically fixed on the casing table, as in features B and D.

In the known method the PME are distinct from the EPE. The robot first positions them on the casing table and then positions EPE on top of the corresponding PME […].

Distinguishing features

[5] It is undisputed that the method according to claim 1 […] differs from the method according to D1 in that the EPE have integrated PME (features D and E) and, as far as the use of program-controlled robots is concerned, in that it is the EPE which can be magnetically fixed that are picked up from a store and precisely positioned (features A and C to F). A further distinguishing feature results from the fact that the integrated PME of the EPE are activated by the robot (feature G).

Problem

[6] The above mentioned distinguishing features have the following effects:

On the one hand, the method is improved by increasing the precision of the positioning of the EPE. As EPE having integrated PME are used, the number of elements that have to be handled is reduced and the EPE and the PME are maintained in a constant relative position.

On the other hand, the reduction of the number of elements that have to be handled also leads to the effect that the set-up times (Rüstzeit) are shortened and that the handling of the EPE is simplified.

Based on these effects, the problem underlying the method according to claim 1 […] can be formulated to consist in providing an improved method wherein the set-up times are significantly shortened and wherein the handling of the EPE is perceptibly simplified.

Solution

[7] It is apparent that the above mentioned problem is solved by the interaction between the robot and the EPE that can be magnetically fixed and which have integrated permanent magnets, as defined in claim 1 […].

Consideration of further prior art D2

[8.1] According to the impugned decision, starting from the method using a program-controlled robot according to D1, document D2, which discloses an edge forming profiled casing element having integrated PME, is to be taken into account. […]

[8.2] The [patent proprietor] considers this view to be wrong. It contests that document D2, which has been cited in the application that has resulted in the opposed patent […], is to be considered as further prior art together with the method according to D1 when the presence of an inventive step is to be assessed.

[8.2.1] The [patent proprietor] is of the opinion that there is no indication for using the edge forming profiled casing element known from D2, which is disclosed only in the context of manual handling, in a method such as that of D1, where EPE are handled using a program-controlled robot.

[8.2.2] This was also supported by D10 which presents the actual development. This document explains that it was already known to use EPE having integrated PME such as those of D2 in a method for manufacturing concrete products. However, in this method, the EPE had deliberately been handled manually because apparently serious difficulties were to be expected when using a program-controlled robot […].

[8.3] The Board believes the reasons for the impugned decision to be correct and cannot endorse the opinion of the [patent proprietor].

The Board is of the opinion that the skilled person starting from the method according to D1, wherein EPE and PME are handled separately, is almost obliged to take into account the use the EPE having integrated PME from D2, e.g. in order to improve the degree of automatisation and the precision of the method or to solve the problem mentioned above […]. The advantage resulting from the reduction of the number of the elements to be handled (EPE with separate PME according to D1 vs. EPE with integrated PME according to D2) is manifest.

It may be added that the serious difficulties encountered when using EPE according to D2 in a method using a program-controlled robot according to D1 have not found any expression in a feature of claim 1 […] nor does the opposed patent report measures that have allowed to overcome these problems.

Consequently, as these difficulties have no basis in claim 1 to be assessed, they cannot be taken into account. It is not possible to consider that they prevent the skilled person from using the EPE according to D2. Moreover, such difficulties would not be insurmountable because the skilled person to be considered here is part of a team comprising a person skilled in the field of robots […]

For this reason alone (lack of corresponding features in claim 1) the argument that such difficulties are reported in D10, which presents the actual development, cannot succeed.

For the sake of completeness, the Board would like to add that this argument is not persuasive. In this context, it is not necessary to discuss whether D10 as a single document can be representative for the actual development of the field under consideration. Even if one assumes, in favour of the [patent proprietor] that this is the case, it is necessary to take into account the whole disclosure of D10 concerning the technical development. When doing so, one finds, as has been pointed out by the Board during the OPs, that D10 mentions a lack of experience in the use of a casing robot as a particular circumstance justifying the manual handling disclosed therein. The possibility of retrofitting with a casing robot is expressly mentioned in this context […]. Therefore, the disclosure of D10 does not allow to draw any conclusion that technical difficulties would have prevented the skilled person from improving the method according to D1 by using the EPE having integrated PME known from D2.

[8.4] D2 discloses, as duly considered in the impugned decision and mentioned in the application underlying the opposed patent, that an EPE that can be magnetically fixed (according to features D, E, and G) can be activated by a release button.

As far as the disclosure of D2 regarding the handling of the EPE that can be magnetically fixed is concerned, the Board is of the opinion that the [patent proprietor] is right in pointing out that this document only gives indications concerning the handling of EPEs in general […] and provides details only for manual deactivation […] of the integrated PMEs.

Obviousness

[9.1] According to the opinion expressed in the impugned decision, which the Board endorses, the method of claim 1 does not involve an inventive step when starting from the method according to D1 and taking into account the EPEs known from D2 […].

[9.2] The Board is of the opinion that when the problem-solution approach for assessing inventive step is applied, which the [patent proprietor] has not objected to, one has to assume that the skilled person to be considered […], based on the method for manufacturing concrete products according to the closest prior art D1 […] and trying to solve the problem […] of improving (e.g. regarding the precision of positioning of the EPEs on the casing table) and simplifying the method and of reducing the set-up times, would replace the two elements to be handled in D1 (the EPE and the separate PMEs) by the single element of D2 (i.e. the EPE with integrated PMEs) and would activate the PMEs with the existing robot.

Therefore, the method according to features A to F of claim 1 is to be considered obvious over documents D1 and D2, as discussed in the OPs.

[9.3] The [patent proprietor] is of the opinion that, irrespective of the above statement, which it has not objected to any more in the end, the method of claim 1 involves an inventive step.

The main argument of the [patent proprietor] is based on the fact that neither D1 nor D2, nor their combination (Gesamtschau) gives an indication for proceeding along features A to F taking into account feature G, according to which the PMEs are activated by the at least one program-controlled robot.

According to the [patent proprietor] the purpose of the robot used in the method of D1 is to position the PMEs and, in a distinct step, the EPEs (which do not comprise PMEs). Leaving aside the serious difficulties to be expected […], this known method may encompass the possibility that when EPEs according to D2 are used, they are picked up from a store and are precisely positioned on the casing table by using the at least one program-controlled robot (according to features A, C, and F). However, there was no indication in D1 for subsequently activating the PMEs according to remaining feature G of claim 1.

The same was true for D2 because this documents only refers to manual handling of EPEs with integrated PMEs. Consequently, there was no hint in this document tat the integrated PMEs were to be activated by means of a robot.

[9.4] The Board is of the opinion that the impugned decision has correctly addressed this argument by stating

“… that in principle robots are used in industry for replacing human activities, which allows to save time and costs. In the present case, it is unthinkable that the skilled person, which already uses a robot in all steps of the casing method would not at least try to have the PMEs activated by the robot.”

The Board is of the opinion that the last sentence of this citation is crucial in the present case. The skilled person, who is familiar with the idea expressed in D1 to use “a robot for all steps of the casing method” will at least consider having the PMEs according to features A and G activated by the robot, be it only to keep the degree of automation known from D1. When doing so, the skilled person cannot ignore the need for activating the PMEs after having positioned an EPE on the casing table (according to feature G), which is inherent to the PMEs of D2 because of the integrated PMEs.

The Board finds the [patent proprietor’s] argument, according to which the skilled person would provide a manual actuation by pressing a release button 18 for activating according to D2, to be unpersuasive.

Rather, the Board is of the opinion that the skilled person would provide that all the steps of the method, and, therefore, also the activation of the PMEs, are carried out by the existing program-controlled robot, thereby following the method of D1. The Board believes that this is all the more true as, according to the manual procedure of D2, the activation of the PME can be obtained by simply exerting pressure on the release button of the corresponding PME by the program-controlled robot.

[9.5] Regarding the use of the program-controlled robot known from D1 for handling the EPEs according to D2, the [patent proprietor] was of the opinion that the skilled person would expect serious difficulties which could only be overcome through development work that was considerable both from a temporal and from a financial point of view […]. This was particularly true for the activation of the PMEs according to feature G of the invention.

These difficulties would have prevented the skilled person from extending the use of the program-controlled robot in the method according to D1 to the activation of the PMEs according to features A and G.

The [patent proprietor] has not substantiated the difficulties he had invoked, nor provided evidence for them, although the Board had requested him to do so. As the Board is of the opinion that the facts of the present case do not indicate such difficulties and as neither a feature of claim 1 nor an indication of the opposed patent provide an indication that such difficulties had to be overcome, the argument based on them cannot be taken into consideration when assessing inventive step.

As far as this argument is concerned, the Board can only endorse the opinion expressed in the impugned decision according to which the use of the robot as defined in claim 1 may not be trivial but that problems arising in this context and corresponding solutions are not mentioned in claim 1 or in the rest of the patent […].

Regarding the suitability of integrated PMEs according to D2 for activation by robots according to features A and G, it is undisputed that the requirements for an activation by use of a robot are fulfilled even without any modification of the robot because each integrated PME of the EPE according to D2 has a pull-off element (Abziehorgan) 10 for manually deactivating by pulling up this element […], which means that the activation is obtained in reverse order by pushing down this element.

[9.6] Therefore, the method according to claim 1 […] does not involve an inventive step when starting from the method according to D1 and taking into account the EPEs known from D2 (A 56).

[9.7] This holds true even when the remaining arguments of the [patent proprietor] are taken into account.

[9.7.1] One of the arguments is based on the opinion that when inventive step is to be assessed, one has to take into account that, according to the “could-would approach” it is not sufficient for denying the presence of an inventive step that the skilled person, starting from the closest prior art (here: D1) and taking into account further prior art (here: D2) could arrive at the method according to claim 1. Rather, [it has to be examined] whether he, starting from the method according to D1 and taking into account document D2 would indeed arrive at the method according to claim 1. This was not the case because neither D1 nor D2 contained an indication pointing towards such a result based on the combination (Gesamtschau) of documents D1 and D2.

[9.7.2] The Board is of the opinion that according to the “could-would approach”, when inventive step is to be assessed, it has to be examined, in each individual case, to which extent the skilled person, starting from the closest prior art and taking into account the effect of the features that distinguish [the claim] from this prior art, or the objective technical problem that can be derived from [this effect], respectively, had good reason (Veranlassung) to adduce further prior art and to apply its teaching to the method / the device of the closest prior art, or, in other words, whether there is any apparent indication (Anhaltspunkt) pointing towards a combination of the teachings of the documents under consideration.

As mentioned during the OPs, the Board does not share the point of view of the [patent proprietor] according to which such an indication had to arise from one of the documents D1 or D2. As also mentioned during the OPs, and contrary to the opinion expressed by the [patent proprietor], this also holds true for method steps which the skilled person to be taken into account in the present case may be expected to carry out when using EPEs according to D2 in the method according to D1, using the existing program-controlled robot.

In the present case, where the teachings of documents D1 and D2 are combined when inventive step is assessed, the Board is of the opinion that the examination according to the “could-would approach” at first concerns the question whether the skilled person, starting from the method according to D1 with EPEs and permanent magnets which are arranged separately, can be expected, within the framework of his technical know-how and in order to solve the objective problem, to replace these two elements, which are to be handled separately by means of the robot in the known method, by a single element, i.e. the EPE having PMEs according to D2. This question is answered in the affirmative for the reasons mentioned above in section [9.2].

The indication that leads the skilled person to taking into account the EPE according to D2 in the method according to D1 results from his fundamental endeavour to simplify the existing method within the framework of the problem to be solved, for instance, as here, by reducing the number of elements that are to be handled by the robot (D1: EPEs and separate PMEs; D2: EPEs with integrated PMEs) and, as a consequence, the set-up time needed for the handling. The same holds true for the part of the problem that concerns the improvement of the method; it is apparent that the reduction of the number of elements to be positioned contributes to say improving the method by means of an increased positional precision.

The further question raised by the [patent proprietor] in this context, to which extent, when starting from the combination of the teachings of D1 and D2, there was an indication to activate the PMEs according to features A and G by means of the program-controlled robot is also to be answered in the affirmative for the reasons given above in section [9.4]. The indication – in this case for taking into account the technical knowledge of the skilled person, see section [2] above – is found in the fundamental endeavour of the skilled person to (further) automatize, here at least with the goal of reducing the set-up times according to a part of the problem.

[9.7.3] According to a further argument of the [patent proprietor] the economic success that was due to the solution according to the invention, should not be disregarded when assessing inventive step.

In the present case, this argument cannot lead to another conclusion, because the result of the examination using the problem-solution approach does not leave any doubt. For the sake of completeness it may be added that this argument cannot be taken into account also because there are no concrete and established facts that would support it.

Finally the appeal was dismissed.

NB: If you find the English translation cumbersome here and there, it might just be that it is faithful to the original :-).

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T 157/08 – Gobbledygook?

This decision shows what happens when an invention is not explained in sufficient detail. It will perish – and it will be of no avail to invoke a skilled person that comes close to an intellectual superhero.

The applicant appealed against the refusal of his application by the Examining Division (ED) on the ground that the claimed method could not be carried out (Nichtausführbarkeit).

Claim 1 before the Board read (in English translation):

Method for separating speech from noise (Geräusche), comprising the following steps:

the speech signal to be isolated from jamming (Störungen) is decomposed into its elementary tones (sounds) (Einzelklänge (Laute)) by means of an envelope method;

the speech signal is transformed from a representation “Intensity over time” into a representation “Amplitude over frequency” by means of integral transformations;

in the representation “Amplitude over frequency”, the frequency space, a sound has a plurality of frequencies;

intervals defining harmonic relationships between frequencies of speech are calculated by means of number-theoretic functions;

the proper separation of speech and noise is obtained in the following method steps:

the frequencies within a sound are compared with each other by pairs, by means of appropriate loop methods (Schleifenverfahren), wherein intervals are formed from the pairs of frequencies, wherein the intervals are equal to the ratio of the two frequency values;

the intervals determined in this way are compared with the calculated intervals of speech in order to check whether there are harmonic relationships between the corresponding frequencies;

only frequencies that are harmonically related with each other are transferred into the speech file.

In his statement of grounds of appeal, the applicant pointed out that the complexity of the subject-matter required a high-level skilled person. The skilled person to be taken into account could not be a normal graduate of a technical college (Fachhochschulabgänger) having experience in the field of speech recognition. Rather, the skilled person was a graduated physicist having many years of experience in the field of speech recognition but also a comprehensive knowledge of mathematics and in particular in group theory. Moreover, this skilled person had to have experience in musicology and in particular in the field of harmonics.

The applicant also submitted that an objection of lack of feasibility (Ausführbarkeit) could only be raised when there were corroborated doubts based on reproducible facts. The ED had not provided such facts.

*** Translation of the German original ***

Feasibility of carrying out the claimed invention (A 83 EPC 1973)

Qualification of the average skilled person

[3.1] The appropriate average skilled person does not have the qualifications which the appellant would want him to have […]. According to the established case law of the Boards of appeal, the skilled person is a practitioner having the usual knowledge in his technical field at a given time (i.e. the date of filing or the priority date) and having at his disposal normal means and abilities for routine work. He may also be expected to consider neighbouring fields and a more general field which he is familiar with in order to look for known solutions to similar problems.

Therefore, in the present case, the average skilled person cannot have a superior qualification than a physicist who is used to dealing with the separation of speech and noise, or perhaps a sound engineer. Such a skilled person has to have knowledge in the fields of signal processing, acoustics and audio technology. He is familiar with standard mathematical methods of spectral analysis, such as for example integral transformations. However, he cannot be attributed special knowledge in technical fields which are not significant for his routine work and which, as in the present case, are brought into view not because of the problem to be solved but because of the solution underlying the present invention. Therefore, the relevant skilled person cannot be attributed significant knowledge in the field of musicology in general and harmonics in particular. Nor does he have above-average knowledge in special fields of mathematics such as group theory and number-theoretic functions as well as their practical application in technology.

[3.2] The present application suffers from a lack of precision of the terminology used, non-uniform terminology, deficient or even inexistent definitions of mathematical expressions and over-all insufficient explanations of the mathematical/technical concepts that ensure a successful separation of speech and noise. The feasibility of steps D, F and G of claim 1 in view of A 83 is particularly problematic. […]

[3.2.1] A first problem concerning the feasibility of step D consists in the breadth of the claim wording regarding the number and nature of the number-theoretical functions to be used. It is not obvious, and the appellant has not made it credible, that comparative intervals suitable for speech separation can as a rule be calculated with any number-theoretical function that can be imagined, as encompassed by claim 1. As a matter of fact, the statements in […] the application as published indicate that the number-theoretical functions to be used are part of particular “groups” and that there are functions that are not suitable for the desired separation method. However, the identity of those “groups” is not explained. Nor are there criteria in the application documents that would allow to decide which number-theoretical functions would be suitable for the purpose of speech separation, and which would not. Paragraphs [0057] to [0074] do indeed exemplify some suitable number-theoretical functions but they do not provide any hint let alone rules for finding further functions that might be suitable.

Moreover, it is not clear from the application what is meant by the expression “number-theoretical function” and how one could use them to calculate “intervals defining harmonic relationships between frequencies of speech.” The indications of the application regarding this topic are vague or incomprehensible. For instance, in the part of the description […] entitled “target intervals” it is stated that the “interval values” or “target intervals” are “very particular elements of the body of prime numbers” and the “result of complicated number-theoretical functions” and that they are calculated “from the number-theoretical functions of the body of prime numbers”. The list of preliminary calculation steps […] contains the statement “A number of number-theoretical functions calculates intervals of speech and generates the space of equivalent classes of tones of speech”; the explanation of the expression “equivalent classes” does not go beyond the indications “Speech intervals are calculated by means of number-theoretical functions and a space of equivalent classes is generated” […] and “Number-theoretical functions of prime numbers and powers of two constitute fields for equivalent classes” […]. [Another] paragraph mentions a “reference tone from the equivalent class of number-theoretical functions of the body of prime numbers”. There is no concrete embodiment allowing to concretely understand the execution of the required mathematical steps for generating the “fields” and the “space” of “equivalent classes” and of their elements, i.e. “tones of speech” and/or “reference tones”. Therefore, it is not clear how to calculated the needed comparative intervals and the “target intervals”, respectively, are to be calculated even when using the concrete exemplary functions provided in […] the application as published. It is indeed shown how the degree of consonance of a number n is obtained for Euler’s Gradus function, but it is left open how comparative intervals are determined with this function. It also remains unclear how such intervals are obtained from the Gamma function, i.e. the function

Moreover, it is to be noted that the indications in the [application] are mathematical terms but not functions stricto sensu.

The appellant’s reference to annex B1 to the statement of grounds of appeal rather contributes to confusion than to clarifying the matter because it is not clear how the intended determination of “harmonic” frequency intervals relates to functions which, as defined in annex B1, connect an element of the set of positive, natural numbers with an element of the set of complex numbers.

[3.2.2] As far as steps F and G of claim 1 are concerned, the corresponding explanatory parts of the description allow to understand the underlying idea of how the signal is analysed and the speech part separated from noises but not how this is concretely carried out from a process point of view.

For instance, it is not apparent how “appropriate loop methods” according to step F are to be carried out, in view of the fact that [the description] points out that the order of frequencies is never to be inverted when intervals in an envelope are to be determined but that there is no more precise indication of what the correct order would be. Instead of that the “summary” of […] the application as published refers to “astute combinatory operations of comparison” by which “systematically all tones of a sound, i.e. all frequencies of a wave packet, are divided by the adjacent frequencies until all elements (frequencies of a wave packet) have been compared with each other”, and it adds: “The intervals obtained from the wave packets of the speech sample by combinatorics and comparison are then inserted into mathematical formulae which take into account, inter alia, the particularities of the physics of hearing”. The application documents remain silent on which formulae and which particularities are meant.

Regarding the comparison (according to step G) of the intervals determined in steps D and F, the summary of […] the application mentions the “confrontation of a specific formula structure” and [notes] that “thereby group-theoretical structures expressing symmetry laws can be taken into account (in Ansatz gebracht)”, wherein “the separation [can] obviously take place when the tones of a speech sample exactly correspond to the calculated congruence groups of the tones in the form of intervals”. There is no explanation of the “specific formula structure” or of the “symmetry laws”. [Two] paragraphs refer to “symmetry relationships” and “symmetry operations”, respectively:

“All frequencies of the frequency space of the transformed speech signal have to be examined as to whether they have symmetry relationships with other frequencies of the same envelope. There are invariant properties of speech encrypted in the symmetry relationships of the elements.”

“The separation of speech and non-speech is carried out by means of a series of several symmetry operations”

However, none of these expressions is explained. The expression “congruence groups” reappears once more […] together with the expressions “equivalence class” and “equivalence relations”, without there being any explanation. The corresponding instructions

“The equivalence classes are related to the speech signal in the form of equivalence relations”.

and

“Inversions of elements are specified by a double- or multi-digit relation on the set of all sounds of a pitch space (Tonsystem)”

are equally incomprehensible as […]

“A two-digit relation of the intervals is defined such that a reference tone exactly corresponds to the element of the signal to be examined within several coordinates of the space of equivalence classes.”

and

“The elements of the existing set of equivalence relations (Faktormenge) of frequency intervals from equivalence classes are now defined as harmonies.”

[3.3] The arguments invoked by the appellant do not deal with the above mentioned deficiencies of the application and are not persuasive for this reason alone.

[3.4] For the reasons given above, a method for separating speech from noise, as claimed in present claim 1, cannot be carried out by the skilled person on the basis of the pieces of information contained in the application documents, as required by A 83 for the grant of European patents.

Therefore, the request of the appellant for the grant of a patent cannot be allowed. […]

The appeal is dismissed.

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T 1312/09 – Let’s Be Objective

The problem-solution approach is intended to be as objective as possible : subjective aspects have to be ignored. Inventors may sometimes have the impression that this is unfair, because subjectively, they have indeed made an invention. The present case corresponds to such a situation.

The opponent filed an appeal against the decision of the Opposition Division to reject the opposition.

Claim 1 before the Board read (in English translation):

1. Milking cup (1) comprising a cup sleeve (2), a teat rubber (3) inserted in the cup sleeve (2) with a head piece (4) and an intake socket (5) connectable with a milk discharge conduit, and comprising an air inlet valve (13) provided on the milking cup (1) and connected with the interior space of the intake socket (5) via a first conduit (14), which lets atmospheric air penetrate into the intake socket (5) in response to a relief phase, during which a higher pressure causing a folding-in of the intake socket (5) relative to the milking vacuum pending in the milk discharge conduit is generated in a clearance (12) between the cup sleeve (2) and the intake socket (5), characterized in that an opening (25) toward the interior space of the teat rubber (3) is provided in the head piece (4) of the teat rubber (3), wherein the opening (25) can controllably be supplied with atmospheric air in response to the relief phase, and a second conduit (24) is provided in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air.

 The Board found this request to lack inventive step:

*** Translation of the German original ***

[2.1] It is undisputed that D5 is the closest prior art.

This document discloses […] a milking cup (1) comprising a cup sleeve (2), a teat rubber (3) inserted in the cup sleeve (2) with a head piece (4) and an intake socket (5) connectable with a milk discharge conduit, and comprising an air inlet valve (13) provided on the milking cup (1) and connected with the interior space of the intake socket (5) via a first conduit (14), which lets atmospheric air penetrate into the intake socket (5) in response to a relief phase, during which a higher pressure causing a folding-in of the intake socket (5) relative to the milking vacuum pending in the milk discharge conduit is generated in a clearance (12) between the cup sleeve (2) and the intake socket (5).

[2.2] The subject-matter of claim 1 according to the main request […] differs from the milking cup disclosed in D5 in that an opening toward the interior space of the teat rubber is provided in the head piece of the teat rubber, wherein the opening can controllably be supplied with atmospheric air in response to the relief phase, and a second conduit (24) is provided in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air.

[2.3] According to the opposed patent, the problem underlying the invention […] consists in providing an improved milking cup that has a simple structure, is easy to clean and which has properties that increase the well-being of the animal during milking.

[2.4] The features known from D5 ensure that the udder of the domestic animal to be milked is handled in a gentle way; the handling and the cleaning of the milking apparatus is easy. This is indeed acknowledged in the opposed patent […]. Moreover, D5 […] discloses that the teat is massaged and injections of milk back into the teat are avoided by letting atmospheric air flow into the intake socket.

Starting from D5, the objective technical problem can be seen in further improving the well-being of the animal that is being milked during the milking.

[2.5] The [patent proprietor] has asserted that in the present case the appropriate skilled person is an agrobiologist having little mechanical engineering knowledge. The Board cannot endorse this opinion. For developing a milking cup as the one claimed what is needed is not only in-depth knowledge of the anatomy and the behaviour of domestic animals that are to be milked, and in particular of cows, but also extensive knowledge in the filed of milking cups and of pneumatic milking installations, in order to be able to constructively implement the animal-specific requirements. A milking cup is a technically complex object, as also follows from the submissions of the inventor to this effect.

Therefore, in the present case, the “skilled person” consists in a “team of skilled persons” comprising an agrobiologist and a mechanical engineer having experience in the field of milking cups and pneumatic milking installations.

[2.6] From D2 […] it is known to provide an opening toward the interior space of the teat rubber in the head piece of the teat rubber, wherein the opening can controllably be supplied with atmospheric air in response to the relief phase, and to provide a conduit in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air.

This results in massaging the teat and circulatory problems of the teat are avoided […].

As improved blood circulation and massaging the teats can only improve the well-being of the domestic animal to be milked, it is obvious for the skilled person to introduce atmospheric air also into the head piece of the teat rubber known from D5, as taught in D2.

[2.7] The [patent proprietor] has submitted that both D5 and D2 have been invented by the same inventor as the opposed patent and that the inventor already knew D2 when he was developing D5. Therefore, it could not be obvious to combine D5 and D2. In other words, what is not obvious for the inventor cannot be obvious for the skilled person. The Board cannot endorse this view. According to the established case law, the skilled person within the meaning of A 56 is a normal expert who is active in the field of the invention and who has an average knowledge and average skills. He is not an outstanding or smart (gewieft) skilled person, and in particular, he is not an inventor (see Schulte, PatG, 8th edition, § 4, marginal numbers 39-41 and T 39/93).

D2 and D5 disclose different measures each of which contributes to the well-being during milking of a domestic animal that is to be milked. As there was no prejudice against it, there is no reason why a skilled person should not use both measures simultaneously.

The [patent proprietor] also asserted that the skilled person could not have found any incentive in D2 to further develop a milking cup known from D5 because D5 already solved the problem underlying the invention. Again, the Board cannot agree, because, as explained above, the problem to be solved in respect of the closest prior art D5 is to “further improve” the well-being during milking of the domestic animal that is to be milked, i.e. to provide a better solution for a problem that has already been solved in D5.

Although the milking cup disclosed in D5 already ensures gentle handling of the udder of the animal, its first objective is to avoid wetting of the air inlet valve by milk, as well as obtaining an improvement of the milk outflow. In contrast, the teaching of D2 provides improvements of the health of the udder […] because it reduces the constriction of the teat region and thereby improves the blood circulation […]. Therefore, it was advantageous to simultaneously implement both measures.

Finally, the [patent proprietor] has submitted that it was not obvious to implement the control of the conduit letting air into the head peace and into the suction-side end of the teat rubber by means of a single valve, because the valves of D2 and D5 were different and this [implementation] was technically too complicated for an agrobiologist.

Although the valve of D5 is a valve that is closed when it is in its idle position (Ruhestellung) and the valve of D2 is open when it is in its idle position, their way of functioning is the same, i.e. both supply the conduit connected to them with atmospheric air during the relief phase (when the annular space is brought to atmospheric pressure). Therefore, it is obvious for the mechanical engineer who is familiar with milking cups and pneumatic milking installations – who is part of the “team” defined above) – that the valve provided in D5 is sufficient for implementing the teaching of D2 and that he only has to provide a second conduit.

[2.8] Consequently, the subject-matter of claim 1 of the main request […] does not involve an inventive step.

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T 743/07 – Acceptable Danger

One more post on the skilled person ...

In a recent post we have seen that the skilled person is a rather conservative and cautious person. This does not mean, however, that he/she cannot face danger at all.

[3.7.9] Finally, the [patent proprietor] argued that the skilled person would have been deterred from using a methanol solution of hydrogen peroxide in view of the teaching in document D2 that the handling of anhydrous or near-anhydrous organic solutions of hydrogen peroxide is unsafe.

[3.7.10] The Board is not convinced by the [patent proprietor’s] arguments. The passage in document D2 on which the [patent proprietor] relies is merely a warning for the skilled person that when using potentially dangerous organic solutions of hydrogen peroxide he has to act with care and may have to take precautionary measures. It does not suggest in any way that these solutions would be unsuitable for the oxidation reaction or detrimental to its outcome. This passage therefore does not deter the skilled person from using these solutions.

Furthermore, the Board notes that despite this disadvantage, anhydrous or near-anhydrous solutions of hydrogen peroxide have been used before in the oxidation of olefins, as indicated in document D2 […].

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T 1741/07 – He Knows It All

The present decision deals with the decision of the Examining Division to refuse a patent application for lack of inventive step over a combination of documents D1 and D2.

Claim 1 of the main request read:

A railway monitoring system (100), comprising:

an optical fiber (101) having a plurality of parts spaced apart along the length of the optical fiber, each part of the plurality being attachable to a respective portion of one of a pair of rails (103,105) of a track,

an optical signal emitter (107) connected to the optical fiber (101) for emitting an optical signal into the optical fiber, and

an optical signal analyzer (111) connected to the fiber for receiving and analyzing altered optical signals;

characterised in that the plurality of parts comprises a first plurality of Bragg gratings (S), each Bragg grating (S) having a distinct reflected wavelength which is altered upon a change in strain arising from a respective portion of the rail, and said optical signal analyzer (111) receives altered optical signals in the form of reflected signals and is adapted to detect shifts in the reflected wavelengths of the Bragg gratings, a shift being indicative of a change in strain at a respective portion of the rail.

The appellant argued, inter alia, that the relevant skilled person, a railway engineer with experience in the field of network monitoring systems, was of a very conservative nature, and would not have considered introducing new unproven technologies.

[2.1] The document D1, like the present application, to railway monitoring systems based on optical sensors, and is the only available prior art document relating to such systems. Thus it is considered to represent the best starting point for the assessment of inventive step.

[2.1.1] It is noted that the appellant has argued extensively, in particular with reference to the two “witness statements” […], that the person skilled in the art is a railway engineer with experience in the field of network monitoring systems, and that such persons are of a very conservative nature, and would thus not consider it obvious to introduce new unproven technologies (contrasted to the conventional systems using electro-magnetic sensors).

In the present case, the implication of this argument is that the skilled person would not consider replacement of the conventional system using electro-magnetic sensors with a system based on optical fibres, since these have not previously been used in the railway network, and would thus not consider D1.

[2.1.2] This argument appears to the board to be based on the assumption that the skilled person is starting from a situation in which only electro-magnetic sensors were known. However, it is part of the established case law of the boards of appeal that the skilled person is aware of all of the prior art in the relevant technical field.

Thus, in the present case he would be aware of the teaching of D1, and for the reason indicated in paragraph [2.1] above, the skilled person would adopt this document as his starting point and hence assume the use of optical fibres in a railway monitoring system.

Unsurprisingly, the request was rejected for lack of inventive step.

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NB: This decision has already been reported on Kluwer Patent Blog.

T 479/09 – Skilled, Not Stupid

The skilled person may not be the brightest person in the world (you might remember that T 60/89 [2.2.4] had found that “the skilled person in the field of genetic engineering in 1978 [was] not to be defined as a Nobel Prize laureate, even if a number of scientists working in this field at that time were actually awarded the Nobel Prize”), but he/she is not a dummy either.

[2] The [opponent] argued that “all disclosure in the patent specification relating to the claimed pad gives the weight of the cigarette paper in the units gm² or g m². The dimension expressed by this unit is … the dimension of a moment of inertia” and that therefore, the skilled person would be completely confused and unable to carry out the invention.

This point of view cannot be shared. Any skilled person in the paper industry will have no problem in understanding the units involved as the units gm2 or g m2 are well understood and commonly used to mean grams per square metre, all the more, because as indicated inter alia in D5 which is a glossary defining paper print terms “gm2” is a way of expressing the weight of paper in grams per square metre.

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