EP 3 666 950 B1 relates to water-dispersible nonwoven substrates.
EP 3 666 950 B1 results from a divisional application of EP15829469.4 / EP3 177 760.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board decided that claim 1 as granted lacked IS over D2=US 2008/0 233 382 and D6=US 6 753 063, both documents classified as Y,A in the ESR.
At stake is merely feature M1.9 which reads: “wherein the average fibre densities of the protrusions (120) and connecting regions (130) are substantially the same”.
As far as the AR were concerned, the OD was of the opinion that only D2 could come into consideration as “starting point”. The board disagreed and remitted the case to the OD in order to decide IS also on the basis of D6.
In this thread we will discuss the choice of D6 as “starting point”.
The OD’s decision
The OD did not take a decision on the AR at all, as it had already considered the MR to be allowable; however, in the context of the MR, it decided that document D2 was the only prior-art document to be used as a starting point in the assessment of IS
The opponent’s position
In the appeal proceedings, and based on Art 56, the opponent only raised objections against claim 1 of the AR with D6 as the starting point.
The opponent argued that in T 1742/12, the deciding board endorsed the findings of T 0967/97 and T 0021/08, notably that an IS must be present over any feasible starting point, see T 1742/12, Reasons 8.
The proprietor’s position
Citing the corresponding passage in T 1742/12, the proprietor argued that some prior art might be so remote from the claimed invention, in terms of intended purpose or otherwise, that it could be argued that the skilled person could not conceivably have modified it so as to arrive at the claimed invention. Such prior art might be referred to as “unsuitable“.
With reference to T 0824/05, the proprietor further argued that a document was a “suitable” starting point if it was concerned with a similar use and required minimal structural and functional modifications.
The opponent argued that D6 had fewer features in common with the present invention and/or addressed different problems.
The board’s decision
The board considered the OD to have made a conceptual error when, in the context of the MR, it categorically ruled out any starting points other than D2 because this document seemingly had more features in common with claim 1 of the patent, or had a purpose that came closer to the claimed subject-matter than other documents.
It is well established in the case law of the boards, that if IS is to be acknowledged, the claimed subject-matter must be inventive starting from any starting point in the prior art, see also T 0749/23, Reasons 46.
Furthermore, the board considered that, if the skilled person has a choice of several workable routes, i.e. routes starting from different documents, which might lead to the invention, the rationale of the PSA requires that the invention be assessed relative to all these possible routes, before an IS can be acknowledged, see also T 2591/22, Reasons 2.2.
The quotation in T 1742/12; does not imply that D6 was an “unsuitable” starting point, nor does it mean that only a document with the most features in common with, or relating to the same purpose as, the claimed invention may be used as the starting point. On the contrary, such a conclusion was not drawn in T 1742/12 either.
For the present board, the finding in Reasons 5.2.1 of T 0824/05, cannot be used to conclude that, a contrario, a document not fulfilling the latter conditions is necessarily “unsuitable” for being used as a springboard in the assessment of IS.
In a situation in which several starting points are feasible, each of these must, as a matter of principle, be examined as to whether the skilled person would have arrived at the claimed invention when starting from them.
From the considerations above it follows that there is not necessary to discuss which document is “closer” or “closest” to the invention; the only requirement is that the document in question is a suitable starting point. The Board considers this to be the case, at least, for D6.
None of the proprietor’s arguments were decisive for the question of whether a document is a suitable starting point for the assessment IS These arguments are based on the false basis that suitability as a starting point was a relative standard. In order to be considered suitable, one document does not need to be more suitable than another document. In other words, if it turns out that a second piece of prior art comes even closer to an invention than a first piece of prior art, this alone does not render the first piece of prior art unsuitable.
Whether a piece of prior art is suitable for being used as a springboard thus instead depends on whether it would generally have been of interest to the skilled person, in particular in view of the features or purpose it has in common with the claimed invention, and whether it would have been technically realistic for them to modify its disclosure in such a way as to arrive at the claimed invention.
The board could not see any technical obstacle to modifying the disclosure of D6, which relates to disposable wipes, to make it fall within the ambit of claim 1, notwithstanding the question of whether or not such a modification would have been obvious to the skilled person.
If an IS is to be acknowledged in inter-partes proceedings, it may be necessary to apply the PSA several times, each time using a different piece of prior art cited by the opponent as a starting point and considered suitable by the deciding body.
It follows that D6 was a suitable starting point for assessing the IS of the subject-matter claimed in the proprietor’s AR.
Comments
Whilst the decision of the present board on the application of G 1/24, raises legitimate doubts, in the present case its position on the choice of the starting point, best springboard, or CPA is to be endorsed.
The OD has attempted to justify its preference for D2, but the reasons are not convincing, or at least do not tie up with the Guidelines G-VII, 5.1, 2d and 5th §, the latter citing T 1742/12, Reasons 6.5; T 824/05, Reasons 6.2.
In T 320/15, Reasons 1.1.2, the board held that the structure of the PSA is not to be seen as a forum where a party can develop various attacks at will from various prior art documents in the hope that one of them would have a chance of success.
In presence of a plurality of equally available starting points, best springboards, or CPA, IS has to be assessed from each of those.
In order to deny IS, it is sufficient to show that one of those starting points, best springboards, or CPA, the subject matter of the claim at stake is obvious. It is not possible to skip all other equally available starting points, best springboards, or CPA.
For instance in T 1438/24, commented in the present blog, G 1/24 helped deciding which was the CPA.
In T 1078/23, commented in the present blog, the board decided not to follow T 2057/12, Reasons 3.2.2, T 2759/17, Catchword, and UPC_CFI_1/2023, Reasons 8.6 (Sanofi/Amgen), of the Central Division Munich. In those decisions it was held that no specific justification for the choice of a starting point for the assessment of IS is necessary if IS is to be denied, since the claimed subject-matter must be inventive over any state of the art according to Art 56,It followed T 0787/17, Reasons 5.1, T 0967/97, Reasons 3.2, T 1112/19, Reasons 2.1.3, or T 0449/23, Reasons 1.1.7.
Further decisions on the choice of the CPA are T 0610/24, T 553/23, T 1888/21, T 1564/22, T 2324/18, T 1188/20 or T 0262/19. All those decisions were commented in the present blog.
In view of the existing case law on the choice of the starting point, the Guidelines might need adaptation.
Comments
2 replies on “T 0307/24-How to define the starting point or CPA when assessing IS”
The OD ruled out D6 as a starting point because D6 discloses disposable wipes. This seems reasonable since the problem as stated in the description of the patent relates to flushable wipes. Thus D6 does not have the same purpose as the claimed subject matter.
There may be several starting points, several lines of reasoning, but it seems to me there is a need for a compass. I do not quite understand that the Board paid no attention to the fact that D6 is not directed to the same purpose.
Mr Hagel,
Whilst I agree with you that D6 discloses disposable wipes, you seem to have missed the point the board made. Prior art which apparently is further away can also be a become a valid starting point. Having the same purpose is a good criterion for deciding the which document can be a starting point or CPA, but regularly the boards have said that any reasonable starting point is also to be envisaged as CPA.
This is also what the Guidelines G-VII, 5.1 say. The compass lies in the case law of the boards, and for divisions of first instance, in the Guidelines.
What matters is not applying the CPA like a kitchen receipt and limit yourself to one CPA. Just have a look at T 591/04. Even with the same purpose, a handheld vegetation trimmer, there are two equally valid starting points.
What is worrying in this decision, and you appear to take it for granted. is not the choice of the CPA, D2 od D6, is that the board has, in applying G 1/24, read something in the disclosure which is clearly not directly and unambiguously derivable from it. To a certain extent, and with due respect to board, the latter has somehow perverted G 1/24.