EP 3 354 701 B1 relates to a method for preparing a cationic electrodeposition coating composition having excellent edge portion rust prevention property.
Brief outline of the case
The patent was maintained by the OD according to AR1.
AR1 differs from the granted patent in the deletion of claim 1.
Both proprietor and opponent appealed.
The board held that the patent as granted=MR, lacked IS over D5.
The board also held that AR1 lacked IS over D3.
The patent was thus revoked.
In a different blog entry we dealt with carry over requests and deletion of claims.
In the present blog we will deal with IS and the credibility of the alleged technical effect and burden of proof with respect to AR1.
The proprietor’s point of view
Claim 1 of AR1 differs from claim 1 of the MR in that it additionally requires the presence of a sequestrant component (G), which according to the claimed mixing method, is added to the metal compound (C) and the pigment dispersion resin (D) before the addition of more pigment dispersion (D) and the pigment (E).
The proprietor argued that the technical effects of the distinguishing features were improved colour evenness appearance properties and excellent edge portion rust prevention.
For the proprietor, the patent taught that the sequestrant improved the coating effect by preventing aggregation, thus improving dispersion stability and consequently, colour unevenness.
The proprietor further argued that the burden of proof lay with the opponent to demonstrate that the alleged technical effects were not present.
The board’s decision
It was not disputed between the parties that D3 was the CPA.
D3 concerns an electrodeposition paint composition capable of forming coating films excelling in corrosion resistance.
The subject-matter of claim 1 is distinguished from example 3 of D3 by
– the method of addition of the components
– the hydroxyl value of the amine-modified epoxy resin, which is chosen from within the range of 150 to 650 mg/KOH.
The board held that in order for example 3a of D13a=experimental data submitted by the proprietor to be suitable for demonstrating a technical effect, it must differ from example 1 only in the distinguishing features. This was by no means the case.
For the board, the comparison of example 1 of the patent and example 3a of D13a was not suitable for demonstrating that technical effects originate from the distinguishing features over claim 1. Hence, any such effects cannot be taken into account in the formulation of the objective technical problem.
For the board, despite the statements in the patent, there is no evidence that the problems with aggregation occur in the method described in example 3 of D3, and even if it did occur, there is no evidence that it would be solved by the claimed method.
The burden of proof
The legal burden of proof is the duty of a party to persuade the deciding body of allegations of facts on which the party’s case rests. In principle, a party must prove alleged facts from which it infers a legal consequence, i.e. which establish the basis for the party’s legal claims. Thus, the allocation of the burden of proof depends on a party’s substantive case.
In principle, the legal burden of proof does not shift.
However, once the party bearing the legal burden of proof has adduced sufficient evidence to support its allegations of facts to the required standard of proof, the onus is on the adverse party to rebut the asserted facts by adducing appropriate evidence.
Otherwise, the adverse party risks that the deciding body is persuaded of the existence of the facts and allows the claims. Thus, if the party having the legal burden of proof has made a “strong case” by filing convincing evidence, the onus of producing counter-evidence shifts to the adverse party.
However, this does not mean that the legal burden of proof is on the adverse party to prove the non-existence or the contrary of asserted factual allegations. It is sufficient that the adverse party raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.
In opposition and opposition-appeal proceedings, an alleged lack of IS, the burden is on the opponent to adduce appropriate prior art which – when following the established substantive test, i.e. the PSA – persuades the OD or the board of the obviousness of the solution provided by the subject-matter claimed.
On the other hand, if the proprietor asserts that, in comparison to the prior art, there is an advantage or effect giving rise to a more ambitious formulation of the OTP than that presented by the opponent and hence to an IS, the burden of proving this advantage or effect to the required standard of proof is on the proprietor.
The board cited here a series of decisions to support its point of view and concluded that the mere assertion in the patent specification of an advantage or effect cannot be regarded as evidence of such an assertion.
The above principles have been confirmed in a further series of selected cases in which the underlying circumstances were comparable to those of the present case.
The OTP underlying the subject-matter of claim 1 of AR1 is therefore the provision of an alternative method for forming an electrodeposition coating composition.
The board agreed with the opponent that the solution to this OTP would be obvious to the skilled person in view of D3 alone.
Comments
The present decision reminds us that in opposition, when the opponent alleges a lack of IS, or any other ground of opposition, it bears the burden of proof. But the burden of proof can be shifted to the proprietor.
However, this does not mean that the opponent has to prove the non-existence or the contrary of asserted factual allegations of the proprietor. It is sufficient that the opponent raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.
If the proprietor asserts an advantage or effect, the burden of proving this advantage or effect to the required standard of proof is on the proprietor. Mere assertions in the originally filed documents are not enough.
It is not infrequent that the experimental data submitted by the proprietor, be it in the application as filed or post-published, are not suitable for demonstrating that technical effects originate from the distinguishing features over the CPA in the claim at stake. Then the proprietor’s arguments are not convincing.
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