Tuesday, 20 June 2017

T 2456/12 & T 0059/13 - Interpretation by the skilled persion

In two recent decisions in opposition appeal, the Board addressed how the skilled person interprets the claims. In interpreting the claims for assessing novelty and inventive step, the Board refers to established case law and emphasizes that "the patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding" and that "the skilled person should try with synthetical propensity, to arrive at an interpretation which is technically sensible and takes into account the whole of the disclosure of a patent". 

Monday, 19 June 2017

T 519/12 Technical standard similar to common general knowledge?

Using common general knowledge as a secondary document in the problem-solution approach usually requires a bit less argumentation compared to using a normal publication, e.g. it needs hardly to be argued why such content would be consulted. In this decision, the Board seems to take a similar approach for a technical standard (in this case on credit cards). 

Catchwords: It is expected from the skilled person that he would exercise his skills in the framework of technical Standards in force in his field of activity. No inventive activity can thus be derived from a feature that simply reflects the content of such a technical prescription (cf. point 3.5).

Tuesday, 13 June 2017

T 648/12 - New document introduced by Board

Non-electronic exercise equipment

The application concerned a training device which receives an electronic training script that defines a workout sequence in which a user is instructed to perform a plurality of activities. The user is prompted for a next activity when a defined quantity of a previous activity is detected. 
The application was rejected on the basis of document D1 which is an electronic system to monitor and train an individual on proper motion during physical movement. The Board agrees with the applicant that this is not relevant for the application. Unfortunately for the applicant, the Board knows from its own experience of other trainings systems, and send the case back for further investigation. 

Friday, 9 June 2017

T 688/13 - Bonus effect or main effect to be achieved?

One way street to obviousness?

This opposition appeal concerns an invention which provides an emulsion for coloring foodstuff, which is said to be more transparent and provide a more vibrant coloring ("stärkere Leuchtkraft").

This advantageous effect appears to be achieved by a reduced droplet size, which is also the sole distinguishing feature over D7 as closest prior art.

The opponent as appellant argues that the objective technical problem is to be formulated as how to obtain an emulsion which is more transparent and provides a more vibrant coloring.

According to the appellant, it is known from D5 and common general knowledge that a reduced droplet size improves the transparency of an emulsion, and that the more vibrant coloring would be obtained inherently, and thereby as a bonus-effect, when the skilled person reduces the droplet size of D7 to obtain the desired improvement in transparency.

The patent proprietor of course disagrees, and argues that the actual objective technical problem solved by the invention is how to obtain this more vibrant coloring and not the improved transparency. However, as a seemingly precautionary measure, the patent proprietor decides to 'eliminate' the technical effect of improved transparency by submitting an auxiliary request in which the emulsion is limited to application in Yogurt (which is non-transparent).

Does the latter strategy work? Yes. Although the Board concurs with the appellant with respect to the main request, the Board agrees that the 'transparency' effect is not achieved anymore by the auxiliary request. Accordingly, the improved vibrancy is now the sole technical effect of the distinguishing feature, by which the distinguishing feature is not rendered obvious anymore by the cited prior art.

Tuesday, 6 June 2017

T 2333/11: What exactly does "divided into smaller objects" mean?

Another case showing the dangers of Art. 123(2) EPC: an amendment going beyond the original disclosure seals the fate of this patent application. Dividing configuration information into smaller objects and dividing content metadata into smaller objects are not considered to be the same thing.

Friday, 2 June 2017

T 1818/12 - On evidence, sufficiency, and effect

This pencil cracked under the pressure

The main claim in this opposition appeal concerns an E. coli host cell sample subjected to non-lysing pressure. According to the opponent the examples in the patent are the only known cell systems that do not lyse under the conditions of the claim, or that give the effect of increased yield. As a result, the claim is neither workable nor inventive over the entire scope claimed. 
The Board has problems with the evidentiary value of the documents cited by the opponent. Furthermore, that there exists an embodiment falling under the scope of the claim that does not show the effect is in itself not enough to deny inventive step. 

Tuesday, 30 May 2017

T 260/14 - Partial priority for a working example of a generic claim feature

The opposition division did not allow the main request as it considered  the priority application to be prior art pursuant Art. 54(3) EPC and the generically worded claim 1 of the main request to be anticipated by an examplary dental impression material disclosed in the priority application ('poisonous priority'). The proprietor appealed and argued that partial priority should have been recognized, following the principles of G 1/15. In the opponent's view, the claim was not entitled to partial priority and the working example of the priority document (also present in the granted patent) destroyed the novelty of the claim. In the decision , the Board carefully explains how G 1/15 is to be applied, and confirmed partial priority for the part of claim 1 concerning the working example. Consequently, the claim was novel.