EP 3 010 382 B1 relates to a grill and wood-charcoal chamber (20).
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that on the basis of D1 as CPA, claim 1 as granted lacked IS when applying partial problems.
The patent was thus revoked.
The proprietor’s point of view
In a first line of defence, the proprietor argued that all claimed features had a synergy effect and partial problems would not apply.
The proprietor further argued that there was no reason to further develop the table grill known from D1.
In the proprietor’s opinion, in view of the statement in the penultimate paragraph on page 4 of D1, the sieve is suitable for sufficiently long use, and in the absence of any disadvantages mentioned in the document, there is no reason at all for the skilled person to modify the charcoal chamber known from D1.
The board’s decision
We will concentrate on the part of the board’s decision dealing with the proprietor’s second line of argument.
The board agreed with the proprietor that, when assessing IS according to the “could-would approach”, it must be asked whether the skilled person would arrive at the subject-matter of claim 1 on the basis of the table grill shown in D1, taking further account of his common general knowledge, or one of the table grills discussed by the parties from the prior art, but not relevant to the present decision.
In the board’s view, the skilled person also needs a reason to do so. However, the absence of disadvantages expressly mentioned in D1 does not mean that there is no such reason.
Otherwise, a previously known object, for instance a table grill public object of a public prior use, could never form the starting point for an attack on IS, since no explicitly formulated advantages or disadvantages can be inferred from it in the absence of any further description.
Instead, the motivation arises from the fundamental endeavour of a person skilled in the art within the scope of the problem to be solved, to improve the previously known table grill or, as in the present case, to make it more durable by increasing its stability.
The proprietor’s second line of argumentation could not lead to a different conclusion with respect to IS.
Comments
The board’s comment about the possible prior public use boils down to common sense.
In T 0428/23, commented in the present blog, the board made clear that it is a conceptual error to consider that the CPA must provide an incentive to modify the same in order to justify an absence of IS.
The motivation to modify (if any) can also be – and usually is – found in the secondary teaching consulted by the skilled person when looking for a solution to the OTP.
The present decision is on the same line.
In the present case, the board considered that it is the skilled person’s normal endeavour to improve a known device. For this there is no need that disadvantages are mentioned in the CPA.
In T 0428/23, the board made clear that a motivation can be found in a secondary teaching consulted by the skilled person.
As explained in the blog on T 0428/23, this position of the EPO’s boards differs with the position of the German Federal Court (BGH), for which it needs an incentive to modify the chosen PA in the CPA itself. This is also the position taken by first instance divisions of the UPC.
On the procedure
D1 was classified as A in the ISR established by the EPO. One wonders why a patent had been granted in the first place and maintained as granted in opposition.
Comments
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