Brief outline of the case
The patent relates to recyclable thermoplastic insulation with improved breakdown strength.
Claim 1 relates to the processes for forming a polymeric composition.
Claim 4 relates to a process for producing a coated conductor.
Claim 16 relates to a coated conductor.
The opponent appealed the decision of the OD to maintain the patent according to a new MR and an adapted description.
Eventually the appeal was dismissed
Choice of the closest prior art
The case is interesting as often the discussion within the framework of the PSA is about the choice of the CPA for the subject-matter of claim 1 as maintained.
The documents at stake are D2 and D4.
D2 = Satkowski, Michael M. “The Crystallization And Morphology Of Polyethylene And Its Blends”, Doctoral Dissertation, University of Massachusetts Amherst (1990)
D4 = Lin, Y. et al. “Space charge distribution and crystalline structure in low density polyethylene (LDPE) blended with high density polyethylene (HDPE)”, Polym. Int., 54, p. 465-470 (2005)
The opponent’s position
The opponent held that D2 is the CPA for claim 1 of the main request because the only distinguishing feature is the step of quenching. Said step having no technical effect, the subject-matter of claim 1 is not inventive over D2.
For the opponent, a piece of prior art on the basis of which the claimed invention is considered non-obvious cannot be “closer” than a document on the basis of which the claimed invention appears obvious. Therefore D2 cannot be ruled out as closest prior art.
The opponent further argued that the process of claim 1 is not limited to a particular technical field. Therefore the technical field of the available documents is irrelevant for the selection of the closest prior art.
The opponent also pointed out that D2 is concerned with the question of recyclability which is a problem to be solved in the opposed patent.
The proprietors’ position
The proprietors were of the opinion that D4 is the CPA because, contrary to D2, it relates to insulating materials for cables and wires.
The board’s position
The board found that D2 was not a reasonable document to be taken as the CPA.
According to established case law, a central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the invention. Furthermore, a document cannot qualify as the CPA for an invention merely because of similarity in terms of technical features; its suitability for the desired use of the invention also has to be described (see Case Law of the Boards of Appeal, 10th edition 2022, I.D.3.2).
In the present case, the opposed patent pertains to insulating layers in wires and cables. Specifically, as shown in the examples of the patent (see table 2), compositions derived for a process according to claim 1 have interesting insulating properties, such as an improved alternative current breakdown strength.
D2 is however silent about any application in the field of insulating materials for cables and wires. In fact, D2 is a purely academic study having no recognisable industrial application.
Contrary to D2, documents exist, such as D4, which relate to polymeric compositions for use as insulation material in electric power cables. Already for that reason, the Board considered that the skilled person wishing to provide an insulating material, would have no reason to start from D2 as the CPA, but would consider documents such as D4 which pertain to the use of interest.
The opponent selected D2 as the CPA essentially because it requires the minimum of structural modifications to arrive at the subject-matter of claim 1.
For the board, this approach would be allowable if D2 were a realistic starting point for a further development in the field of insulating materials. However, D2 has no connection whatsoever to the technological field of the opposed patent. Hence, D2 cannot be considered to be a reasonable starting point and the choice of D2 as CPA is an inadmissible ex post facto approach which draws on knowledge of the invention.
Comments
This decision reminds us that the CPA has to at least have some connection with the subject-matter of the claim at stake.
Just an example: a hair curler with its openings looks very much like a drainage tube with its openings. Nobody, and certainly not a person skilled in the art, would consider a drainage pipe as CPA when a hair-curler is at stake and vice versa.
https://www.epo.org/law-practice/case-law-appeals/recent/t201188eu1.html
Comments
18 replies on “T 1188/20 – Choice of the CPA – The suitability for the desired use is more important than the number of features in common”
Daniel, when you have time, can I have your thoughts on my reaction set out below?
When we look at an invention and a claim, it is the claim that defines “the invention”. Here, the invention of claim 1 is a process of taking a specified polymer through a sequence of thermal processing steps. Just that. Nothing more. The Board says that D2 has “no connection” with the technical field, but neither does claim 1. As the Opponent points out, the process is not confined to any technical field, nor any physical form of the polymer nor any use of the polymer. Yet the Board dismisses D2 as candidate CPA because :
“its suitability for the desired use of the
invention also has to be described”
and in D2 it is not. I don’t see how the Board can divine from the claim in view what is the “desired use” of the claimed process.
Let’s think about novelty and obviousness. Suppose the feature “quenching” fails to confer novelty over D2. Is then this claim wider for Art 54 than it is when considering Art 56? Or is it that when considering Art 56 one must “read into” the claim limitations found in the description even though that would we wrong when examining the novelty of the claim. Could this lead to cases where any given claim lacks novelty but is nevertheless inventive?
What am I not understanding correctly, please?
Dear Max Drei,
You are right when you say that, strictly speaking, claim 1 defines nothing more than taking a specified polymer through a sequence of thermal processing steps. This however only part of the story.
I am inclined to consider that any claim has a given purpose, as it is the result of considerations of the skilled person wanting to solve a given technical problem. Even pioneering inventions, that is for those were no real prior art exists, have a clear purpose.
When it comes to novelty, the only criterion to be considered when denying novelty is to decide whether the piece of prior art is “suitable-for” the same purpose as that which underlies the whole application, even if the purpose is not defined as such in the claim. If it is not suitable it cannot be novelty destroying. I just remind you on our previous discussion on the crane vs. fishing hook.
Should the feature “quenching” fail to confer novelty over D2, then at least the teaching of D2 should be suitable for the intended use which is clearly defined in the whole application. I have also strong doubts when the opponent claims that quenching has no effect. Quenching occurs at a temperature lower than 90°C preceded by a controlled cooling of the heated polymeric composition.
I fail to see that a claim could be “wider” for novelty than for inventive step. The claim might define the granted monopoly in very general terms not linked to a specific use, but a claim is never just hanging in the air as I have just explained. A claim which lacks novelty cannot be inventive!
The teaching of a claim has also to be reproducible and at least for this reason one has to look at the description.
In the present case, all claims, process in general (claim 1), process for producing a coated conductor (claim 4) and the coated conductor define the same polymeric composition. Claim 1 and 4 define the quenching and claim 6 the resulting crystallinity of the polymeric coating of the conductor.
The board was not divining from claim 1 what the desired use of the claimed process was, but the intended use is clearly defined when looking at the disclosure as a whole. The quenched polymer is clearly to be used as recyclable thermoplastic insulation with improved breakdown strength.
This does not mean that any piece of prior art can be taken as CPA.
D2 is a purely piece of academic study without any link to the use envisaged use but a reference to recyclability. Recyclability is merely mentioned in the introduction of D2 and has not been discussed as such. D2 deals with morphology and crystallisation of polyethylene blends and does not suggest the use of certain blends of polyethylene for insulating cable and wires. D4 deals with insulating layers in wires and cables.
In my opinion there is no divination by the board and the skilled person would certainly not start from D2 as CPA in spite of having a lot of features in common. Without D4 may be, but then an explanation would be due as to why starting with D2 would lead to the invention.
By the way, not later than today, in T 1349/19 the board held that an inventive step objection is based on hindsight when arguments are such that starting from the claimed subject-matter it is necessary to work backwards in attempt to bridge the gap with the prior art. This would be the case when starting from D2.
In my perception, the board assumed that D2 is not CPA and, hence, assumed, that the lack of an inventive step has to fail.
I think it is correct, not to assume that D2 is a CPA, at least it is in line with the jurisprudence of the BOA. Even so, the reasoning is rather poor as one of the main reasons is the use as stated in the subjective task as written by the applicant. However, at least sometimes (i have not checked here) the written subjective task should have been rewritten due to substantial amendments or the written subjective is not even close to a task relating to the claimed invention.
However, I do not think, that the Board rightfully assumed, that because of that, the inventive step attack starting with D2 HAS to fail.
I just cannot get my head around about such strict procedure of checking the obviousness, without checking another approach. Here, I think T 967/97; T 261/19, as well as T 1742/12 and many more already established a line of procedures, which I do not see in the current decision.
Dear BeM,
The important decision you quoted is T 967/97. Its catchword says the following (free translation):
If there are several viable ways of solving the problem open to the person skilled in the art which could suggest the invention, then the ratio of the problem-solution approach requires the invention to be examined with respect to all these ways of solving the problem before a judgement confirming the inventive step is made.
It was also added that if the inventive step is negated, no special justification is required for a preliminary selection of citations, even if several viable ways of solving the problem are available to the person skilled in the art; the object of the justification is solely to show that the invention results for the person skilled in the art in an obvious manner with respect to (at least) one way of solving the problem.
This is why in T 261/19 the subject-matter of various claims in various requests was denied IS when starting from D4, rather than from D1 as the OD did. The OD maintained the patent in amended form on the basis of AR1. The case was remitted for adaptation of the description of the basis of AR 18.
In T 1742/12 the applicant considered that D6 rather than D1 should be taken as CPA. D1 had been chosen by the ED. For claim 1 of AR3, D1 was no longer a “suitable” starting point for assessing inventive step. This was however the case for previous requests. The case was remitted to the ED for further prosecution of the basis of AR 3.
In the present case, there were two possible “starting points”: D2 and D4.
For the board D2 was not a reasonable document to be taken as CPA.
If I understand your comment, the board should have looked at D2 as CPA in view of T 967/97.
It is your right to consider the reasoning used by the BA to dismiss D2 as CPA as being rather poor. I do not necessarily agree with you.
D2 does not deal with processes of obtaining polymeric compositions, but only analyses polymeric compositions as such, irrespective of the process by which they were obtained and the use they could have.
There is no application to insulation of cables mentioned in D2 and recyclability is just mentioned “by the way” that is without any concrete example. Even according to the opponent, the only distinguishing feature between claim 1, which relates to a process of obtaining a polymeric composition, and D2 is the step of quenching.
Hence, the skilled person had no reason a priori to start with D2.
I have thus great sympathy with the position of the board. In my opinion the board rightly said that when starting with D2 we would manifestly end up in an ex-post facto analysis.
Dear DXThomas,
Thanks; I would not say, that the Board should have used D2 as a CPA, but rather as a possible starting point, and check whether there is a line of arguments with respect to IS, thus checking all the ways mentioned in T 967/97.
I do not like the term CPA, as it may imply, solely the prior art(s) closest to the intended use etc., is/are relevant for the issue of IS.
CPA certainly, is usually the best way to check IS, but it should not NECESSARILY end at these.
I also are of your opinion, that when starting from D2, there is no motivation to arrive at the claimed method of Claim 1. Nonetheless, I wished the board would have taken said path. At least within the reasons I do not see that said path has been checked.
In the reasoning the boards states:
Because D2 has no technological connection, (1) D2 CANNOT be considered being a reasonable starting point and (2) choosing D2 as CPA is an inadmissible ex post facto approach.
While I concur with the later (CPA), I disagree with the former (reasonable starting point).
D2 can be considered as a reasonable starting point or at least as a viable/possible starting point. As said above, in the end starting from D2 (which is dealing with the analysis of a composition) does not motivate per se to come up with a process of making such a composition. Thus, in the end the approach using D2 as a reasonable starting point will just simply fail in showing the lack of IS but should not be considered being inadmissible.
Consequently, the statement “For these reasons, the only objection of lack of inventive step raised by the opponent in appeal against claim 1, namely the one starting from document D2, fails.” seems to be correct but not reasoned, as the board did not gave any reason why the skilled person can or would not arrive at the invention of claim 1 starting with D2.
Dear BeM,
I can agree with you that the PSA and therewith the selection of the “CPA certainly, is usually the best way to check IS, but it should not NECESSARILY end at these”.
The PSA is nothing more than a tool devised by case law in order to help avoiding ex-post facto reasoning when deciding upon IS. By the way, as an examiner I never used the PSA as at this time it did not even exist.
However, nowadays, it is difficult to find a decision of a BA not using the PSA.
If you are candidate to the EQE, if you do not want to increase your chances of getting a ticket for the next year, you better apply the PSA according to the book.
As for the board it was manifest that D4 was not allowing to question IS, as it was from the same domain as that of the patent, the board simply took a short-cut in dismissing D2 as CPA as it was even further away.
Daniel thanks for all your time but despite the length of your answer I am still uneasy.
Let’s focus on claim 1, the process. Let’s think about what acts infringe. In the claim, there is no mention of coating a conductor. The end product of the claim 1 process is a piece of polymer material that has been quenched. Are you suggesting that only when the accused infringer uses the claim 1 process to make a coated conductor can that be an infringement of claim 1? Are you saying that to decide the infringement issue the court will be obliged to add into the claim additional features taken from the description because that is how the novelty issue is decided?
As to crane hooks and fishing hooks, what if the invention had been a contribution to the technical field of hooks and the claim had been directed to a hook (as such). I mean, any hook. Never mind what you are going to use it for.
Is such a claim infringed only when the accused infringer uses the hook for his crane or his fishing rod (depending on what hook examples are given in the description and drawings)?
As we see, again I am boring into the issue of consistency between claim construction for validity and claim construction for infringement. Do we want them to be the same? I do.
Dear Max Drei,
I will try an attempt to dissipate your worries.
Let’s take claim 1 as it stands. We should not forget that the subject-matter of claim 1 is a processes for forming a polymeric composition, not the polymeric composition as such.
The end product of the process protected by claim 1 is indeed a piece of polymer material that has been quenched, no more but no less. Under Art 64(2) if the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.
If there is infringement, then only the process of manufacturing the polymer composition can be infringed and not the resulting product as such. The proprietor has to bring the proof that the alleged infringing polymer has been obtained by the claimed process.
If this proof cannot be brought, then there is no infringement.
By no means am I suggesting that only when the accused infringer uses the process to make a coated conductor that claim 1 is infringed.
This is the purpose of claim 4.
By no means am I saying that to decide the infringement issue the court will be obliged to add into the claim additional features taken from the description because that is how the novelty issue is decided.
Consistency between claim construction for validity and claim construction for infringement are certainly important.
However, even if at a glance they can be considered as the two faces of the same coin, both sides do not have exactly the same value.
When it comes to infringement, Art 69 and its protocol of interpretation play an important role.
During examination or opposition, Art 69 is in principle not to be used.
This should not be forgotten.
OK, Daniel. We are making progress. Let’s go back to my first comment, and the “hypothetical” that the quenching step fails to confer novelty on claim 1. Now let’s think about an accusation of infringement of that claim, by the act of making the piece of quenched polymer. If I understand you right, the claim is infringed. The only reason that it cannot be enforced against the infringer is because it is invalid because it lacks novelty.
But in those particular circumstances, what about obviousness? When the validity of the claim was put in dispute at the EPO, the obviousness attack failed. Yet, in the context of that attack, the quenching step was irrelevant. For the obviousness attack, whether or not there was a quenching step made no difference at all.
Reverting to the infringement and validity litigation, in respect of the act of making a piece of quenched polymer, the outcome is therefore:
Infringement? Yes
Novelty? No
Obvious? No.
The claim is not novel, but not obvious. Is that what you are saying? If so, how often do you expect such a bizarre outcome to a patent dispute between patent owner and patent infringer? If not, forgive me, for still not understanding your viewpoint.
Dear Max Drei,
Contrary to you, I do not think that we make any progress.
I also do not think that discussing “hypothetical” situations will bring us very much further.
I am prepared to discuss situations which have for basis not just a claim but a corresponding description.
My line of thought:
If a claim lacks N or IS there cannot be infringement, as the patent cannot be deemed valid.
If the claim is not novel, how on Earth can it be obvious.
N is the condition sine qua non for a claim to be possibly inventive.
I hope you can at least agree on those basic concepts.
For the rest I am at a loss in trying to follow your reasoning and what you are after.
It reminds me of an old French say: “avec des “si” on peut metre Paris en bouteille”.
Approximate translation: with a succession of “ifs” we could end up squeezing Paris into a bottle.
Now we do agree, Daniel. We are no longer making progress.
My fault. I’m just not as good as Socrates at teasing out the position of my interlocutor. I have failed to get across to you the point in the PSA-CPA reasoning of the Board that still troubles me. Bring on the next thread, eh?
By the way, I’m sure that the second line of your four lines of thought is (with or without its comma) NOT what you are thinking. It does, however, serve to illustrate the perils of using the word “not”.
Dear Max Drei,
I do not think that you are at fault. I am sorry if you feel like this. It was never my intention.
What I can agree with you is that next to its advantages, the PSA has made the choice of the CPA a key issue.
This is I think one of the reasons why the PSA is not used much outside the EPO.
On the other hand there is enough case law in order to find what is a reasonable as CPA.
Whilst some decisions say that any document will do as CPA, the majority of them require a link with the subject-matter claimed.
The PSA is nothing more than a tool devised by case law in order to help avoiding ex-post facto reasoning when deciding upon IS.
As an examiner I never used the PSA as at this time it did not even exist.
However, nowadays, it is difficult to find a decision of a BA not using the PSA.
If you are candidate to the EQE, if you do not want to increase your chances of getting a ticket for the next year, you better apply the PSA according to the book.
When using the PSA to decide upon validity, infringement is not something which immediately comes into the mind of an examiner. This might be the problem you encounter.
I agree with the boards reasoning regarding the cpa. But it is interesting how novelty and IS are treated differently in some aspects.
For a successful lack of novelty attack, “the cpa” is merely the document disclosing all features of the claim, regardless of the technical field (I know cpa is not a concept used for novelty, but I hope you agree with the analogy).
Of course, the novelty destroying doc should be suitable for as claim 1, but it’s technical field is in principle irrelevant.
For a successful IS attack, we need to consider the CPA as being on the same or similar field or for a similar use (which I agree).
The pool for catching novelty destroying documents is thus much bigger than the pool for Is.
Anyway, if the parameters for selecting prior art for novelty and IS were the same, we could end up in a situation where D2 could be considered the CPA, and the claim would be obvious. But that is not the case since the skilled person would expect to find a solution for the problem in the same or similar field, not in a theoretical thesis.
Actually, I would say that having to rely on D2 as the CPA to find the claim obvious is in fact a clear evidence of inventive step, since it would required a higher inventiveness to start from D2 to solve the technical problem, and without relying on hindsight.
Do you agree with the reasoning? By the way, I am an eqe candidate learning a lot by following this blog and it’s comments!
Southlander, the nice compliment makes me want to reply. Here my two knee-jerk off-the-cuff thoughts.
One might think that a novelty requirement for patentability is superfluous, because the requirement for inventive distance away from the state of the art would subsume any requirement for novelty and render it otiose. Fact is though, that the two patentability requirements are different and complement each other. The word “obvious” comes from the Latin ob Via (lying in the road) and Art 56 EPC is for keeping clear of patent rights the road ahead in technological development. The novelty filter is to stop people re-patenting the prior art (or any subject matter already derivable from an earlier patent filing).
Under EPO-PSA, to be fair to the inventor, the prior art starting point MUST be one that is reasonable (I want to say “plausible” but given that word’s intimate relationship with Art 56 and 83, that would only confuse matters). What I mean is: reasonable for the skilled person in the field declared in the specification and what the specification reports as the technical problem the inventor was struggling with. This idea of fairness to a real life inventor filters out many candidates for starting point that opponents (blessed with hindsight knowledge of the inventor’s solution to the problem) urge on the EPO. As you say, having to start from a document that is outside the area of the inventor’s researches of the prior art, how to solve their subjective problem, is often an indicator of non-obviousness. As opponent, one should be careful about one’s choice of CPA, lest you render your obviousness attack easy for the patentee to discredit.
But Daniel Thomas will have a different viewpoint and, hopefully, some good comments for you here, in reply. Unless, that is, he’s too busy writing exciting new posts for this blog,
Dear Max Drei,
You might be surprised, but I do not have a different viewpoint than yours.
As far as comments are concerned, I invite you to look at what I have said to Southlander.
I hope you can agree.
If you find my posts exiting, beware.
You encourage me to continue!
When there is a comment coming in, I am informed.
Sometimes I cannot reply immediately as I have some other duties, not only in the patent world, but also outside it, for instance to be a good grandfather.
Daniel, thanks for the laugh as to the word “viewpoint”. I had not realised how much ambiguity there is, in that one word. When I used it, I was thinking about your career as an EPO Examiner and as a teacher of candidate EPA’s, and how different it is from mine, as a patent attorney in private practice, representing applicants and patent owners one day, an opponent the next. I think that our respective answers to Southlander illustrate our different outlooks but no difference in our respective understanding of how novelty and obviousness objections/attacks run, or should run, within the EPO.
We often disagree but, I hope, not on our desire to see maintenance of good quality in the jurisprudence of the Boards of Appeal of the EPO. Long may it flourish!
Dear Max Drei,
I am not sure that we fundamentally disagree. As you point out quite correctly, we might have different points of view as we see the matter from a different perspective. And this is what I appreciate as it fosters a healthy debate.
The “truth” does not exist, and those who claim it does, are charlatans.
I cannot see any difference in our respective understanding of how novelty and obviousness objections/attacks run, or should run, within the EPO. On a technical point opinions can diverge, but that is the rule of the game.
We have certainly a mutual desire: maintenance of good quality in the jurisprudence of the Boards of Appeal of the EPO. But quality is something different from quantity and timeliness…. Even at the boards!
I know by experience that having a good/very good production is not an obstacle to good/very good quality.
But this aim is only achievable with proper training!
Training is not just looking at figures, it is looking at the content.
And only if there is a good balance between quantity and quality that people can be satisfied and enjoy their job in the long term.
This is valid for both representatives and EPO staff.
Dear Southlander,
Thanks for the comment about the usefulness of the blog and its comments. I have been training candidates for Papers A, B and C of the EQE since 1993. I am thus aware of the fact that candidates for the EQE need some guidance, not to say certainty. Otherwise they are at a loss.
I agree with your analogy with a “kind of CPA” for novelty. Although a novelty destroying piece of prior art can, in principle, come from “any” technical field, I have nevertheless strong reservations about such a sweeping statement.
The prior art although stemming, in principle, from “any” technical field should nevertheless, as you correctly state, be “suitable for” the intended purpose. This clearly gives some limits to the technical field from which the novelty destroying document stems.
Let’s take a tube with some holes in it. Such tubes can for instance be used as a drain pipe or in an exhaust pipe as muffler. The claim relates to an exhaust pipe. If the know drain pipe is made out of stoneware or plastic, it is, in my opinion, not suitable to be used in an exhaust pipe. If it is made of steel, then it appears prima facie suitable to be used in an exhaust pipe.
Conversely, if the claim relates to a drain pipe, a steel pipe used in an exhaust can be considered suitable for a use as drain pipe.
My message is the following: it is not if a piece of prior art can be read on the subject-matter of a claim, that it is necessarily novelty destroying. Some further thoughts are absolutely necessary.
As far as IS is concerned, never justify the choice of the CPA by being the document having the most features in common with the subject-matter of a claim.
At the EQE it is often the first step for a ticket to the next year.
As a summary why not, but never as a justification.
When it comes to IS, the technical domain and the suitability for the intended use are even more important. If the claim relates to an exhaust pipe, the CPA cannot be a drain pipe made out of stoneware or plastic. I hope you can agree on that. If the drain pipe is made out of metal, it could do, but there again, some justification is needed.
To come back to your question: in my opinion, D2 cannot only by taken as CPA in full knowledge of the invention.
The argumentation of the board could be better, but that is the nub of it.
I would go as far as to claim that deciding on a lack of IS on the basis of D2 would be a perfect example of ex-post facto reasoning.
I take bets that in Paper C you would get no marks for such an attack, but you would have lost precious time putting it together.
Good luck for the EQE!