The application relates to a viscoelastic plastic interlayer for vibroacoustic damping between two sheets of glass to form a laminated pane.
Brief outline of the case
The ED refused the application for lack of sufficiency.
The applicant appealed the decision.
The board decided that sufficiency was given and remitted to the ED for further processing.
The case is interesting in that the board acknowledged sufficiency on the basis of prior art which was not disclosed in the description, but in prior art cited in the ISR established by the EPO.
The ED’ point of view
The relevant information relating to the manufacture of the viscoelastic plastic interlayer according to the invention can be found in particular in the passage on page 5, lines 4 to 13 of the application, from which the person skilled in the art deduces that the desired acoustic damping can be obtained by suitably adjusting the stiffness of the interlayer.
It is also specified that the level and nature of the plasticiser and the degree of acetalisation of the polyvinyl butyral (PVB) make it possible to influence the rigidity of a “component” based on PVB and plasticiser in a known way.
It is also mentioned that the viscoelastic plastic interlayer with vibro-acoustic damping properties according to the invention is less rigid than the outer layers 4, 5.
It is therefore clear to the skilled person that the interlayer according to the invention can be obtained by modifying the rigidity of the said central layer, for example by varying the level of plasticiser.
The ED concluded that sufficiency was not given, as the application did not disclose either the starting interlayer whose rigidity was supposed to be adjusted, or the quantity, let alone the type, of plasticiser to be used. Furthermore, it does not indicate whether, compared with a known acoustic interlayer, the quantity of plasticiser should be reduced or increased.
Moreover, the thickness of the spacer and of the layers surrounding it would also have an influence on the rigidity of the spacer, but no information in this respect appears in the application, so that all this lack of information would imply an excessive effort for the skilled person in charge of reproducing the invention.
The board’s decision
To start with, the board agreed with the ED that the application lacks certain details, whereby R 42(1)(e) states in this respect that the description is supposed to indicate in detail at least one embodiment of the claimed invention. In the present case, however, there is no explicit indication in the application of the starting PVB, the thickness of the interlayer and of the individual layers, and even less of the type and quantity of plasticiser used in the latter.
However, the board was not convinced that a person skilled in the art would not have been able to carry out the invention at the filing date of the application.
First of all, as indicated on page 1, lines 26-27 and page 6, lines 17-23 of the application, and arising moreover from the state of the art known at the date of filing of the application, in particular from the documents D1=WO 2006/102049, D2=US2009/087669, D9=EP 2 399 875 and D12=EP 2 153 989 cited, the person skilled in the art had at the date of filing of the application multiple interlayers improving the sound absorption of automobile windscreens.
Since the invention relates to the improvement of such acoustic spacers, the board shared the applicant’s view that the person skilled in the art would at least have chosen one of them as a starting point for the development of his invention, and that this interlayer would thus have provided him with a certain amount of information on the materials (PVB, plasticiser) used as well as on the thickness of the PVB and the quantity of plasticiser used in the latter.
On the basis of such an interlayer of the state of the art, the person skilled in the art can then easily vary its rigidity in one of the ways indicated on page 5 of the application. According to page 5 of the description, the acoustic properties of the interlayer are determined by measuring the mechanical impedance MIM according to the standard ISO 16940.
In this respect, as indicated by the applicant, it is also clear from documents D15 (Declaration on the honour of J. Rebuta, dated 22 May 2018, explaining the background to MIM measurement as developed in 1959 by Ross, Kerwin and Ungar, from which the name RKU method derives) and D16 (Illustration of a model bar and presentation of the equations for applying the RKU method and calculating its viscoelastic behaviour, undated document) that, according to the RKU model, the parameters f2 and eta2 depend on the effective stiffness EI* of the interlayer, so that the person skilled in the art deduces that these two parameters can be adjusted by varying the stiffness of the spacer. The RKU model therefore confirms the claim that the claimed parameters can be adjusted by varying the stiffness of the spacer.
It therefore appears plausible that a person skilled in the art could produce a spacer as claimed, in particular by varying the amount of plasticiser in the acoustic PVB layer of any interlayer known at the date of filing of the application.
In the absence of proof to the contrary, the benefit of the doubt is therefore given to the applicant on this point.
While it is nevertheless true that the application does not indicate either the type or the level of plasticiser required to obtain the spacer claimed, the board agreed with the applicant’s argument that a person skilled in the art would start from a known or even marketed starting interlayer and would, for example, modify the amount of plasticiser used.
If the latter is not known, a simple chemical analysis should enable him to identify it. Alternatively, the person skilled in the art can use another of those known in the art as being suitable for stiffening PVB, such as those disclosed in documents D1=WO 2006/102049, cf. page 12, line 27-page 13, line 9 or D12=EP 2153989, cf. paragraph [0023].
The Board concluded that the application contained sufficient information to enable a person skilled in the art to reproduce the invention, at least without excessive effort but by carrying out simple routine tests, and that therefore the conditions of Art 83 appeared to be fulfilled.
Comments
Although one can be pleased for the applicant that the decision of the ED has been set aside by the board, the present decision is somehow surprising.
None of the documents cited by the board in its decision, i.e. D1=WO 2006/102049, D2=US2009/087669, D9=EP 2 399 875 and D12=EP 2 153 989 were cited in the description. They all are documents cited in the ISR established by the EPO. Those documents are all of category X. The ISR mentions no less than 12 documents of category X.
The acoustic properties might determined with reference to a standard, ISO 16940. As standards can change with time, it is worth noting that the date of the standard is unknown. Even if the acoustic properties can be determined, the description does not disclose the starting interlayer whose rigidity was supposed to be adjusted, or the quantity, let alone the type, of plasticiser to be used. For the board those can apparently be determined by reference to D1, D2, D9 and D12.
I would have thought that sufficiency of disclosure is to be appreciated starting with the information contained in the description as filed, possibly taking into account common general knowledge. The description is rather silent on the starting interlayer.
It is also an established line of case law that patent documents do not represent common general knowledge.
It is thus difficult to follow the board when it considers that sufficiency is given.
Let’s hope that this decision does not represent a change of paradigm, allowing to compensate lacking information by reference to prior art cited in the search report.
As information is clearly missing in the original disclosure, it could only be brought in with added matter. It is thus even more difficult to follow the board when it considers sufficiency to be given.
That the benefit of the doubt can be given to the applicant when it comes to IS, I haver never seen that the benefit of the doubt can be given to the applicant when it comes to sufficiency. I do however accept that I can be wrong.
https://www.epo.org/fr/boards-of-appeal/decisions/t221160fu1
Comments
6 replies on “T 1160/22 – Can sufficiency be decided taking into account prior art cited in the search report?”
The point about the “benefit of the doubt” is interesting for me. Once the patent is granted, the claim is presumed to be not invalid and the opponent (Opp) carries the burden of proof, to prove that it is invalid. Suppose that the patent owner (P) puts up a reasonable defence to the validity attack under Art 100(b), that for a person skilled in the art would possess enough knowledge to put the claimed subject matter into effect, a defence with an OD or TBA finds more than plausible. Can Opp destroy that defence completely, simply by showing that less than 100% of the knowledge imputed to the skilled person is cgk (common general knowledge)? In other words, can an OD or TBA impute to the skilled person more knowledge than just the cgm?
I suspect that Boards from now on will we wary of prescribing iron Rules and will instead argue that each case must be decided on its invividual facts. As ever, allocating too much wiggle room to judges prejudices legal certainty (how can I give a client a confident opinion on validity) but too little can frustrate the over-riding objective of doing justice between the parties.
Dear Max Drei,
I would be inclined to say that an OD or a TBA cannot impute to the skilled person more knowledge than just the cgk. It is its exactly its cgk which characterises the skilled person.
That each case must be decided on its individual facts is nothing new and is not to be challenged. This is the reason why a party quoting a previous TBA decision in a later case, has to show that what was valid in the previous case applies to the present, at least by analogy. This is often forgotten by parties. Quoting a stream of previous TBA decisions is in general not helpful, as the link with the present situation is often missing.
In case of contradictory assertions by the parties, whereby the Office is not in a position to decide, then the benefit of the doubt goes to the proprietor. See for instance T 72/04 or T 1076/21.
Dear Mr Thomas,
Compliance with Art 83 and the scope of the CGK are typically fact-intensive. It takes specialised expertise to be able to have an opinion.
As to your critical comment regarding the applicant’s reliance on specific patent documents not cited in the original application, I tend to agree. In the term « common general knowledge », there is « common ». The scope of the CGK does not therefore seem to encompass specific patent documents retrieved by patent searches carried after filing (i.e. based on the foreknowledge of the claimed invention). The same can apply to assess whether the invention can be carried out by a skilled person without undue efforts.
I wonder, however, if the applicant would be able to prove the contrary by describing an easy path enabling the skilled person to spot specific patent documents relevant to the issue by a keyword search in a patent database based on the words used in the original application. This takes for granted that the skilled person has the skills to perform patent searches, which is likely true in certain technology areas, but not in others.
The recent advances in generative IA technology will need to be taken into account as they may make it much easier for skilled persons to spot relevant documents, without resorting to patent searches.
Dear Mr Hagel,
I can only but agree with your position that CGK does not encompass specific patent documents retrieved by patent searches carried after filing. This is why the position taken by the board in the present instance is not tenable.
CGK is in principle to be found in standard books and reference works, see T 1641/11, T 263/12 and not in patent documents, with the exception of very new technologies. See for example T 1117/14, for a biodegradable material in form of a sintered ceramic.
Other decisions stating that patent literature is not representative of common general knowledge, are e.g. T 263/12, T 1819/14 or T 1540/14.
Documents classified A in the search report are not representative of common general knowledge, cf. T 336/21.
This also applies to specialized journals, cf. T 1997/11, T 1727/14 or scientific papers, cf. T 1651/13.
A doctoral thesis is as well not representative of common general knowledge, cf. T 1832/14 or T 1815/19.
In T 1092/12, T 1370/15 or T 2526/19, the respective boards surprisingly held that a board is allowed to introduce ex officio CGK without evidence supporting this CGK. It is enough that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. In other words, CGK introduced ex-officio by a board can be left unproven.
Should a party refer to CGK without an once of proof, the boards will be prompt to tell that party that what it claims as belonging to CGK is no more than a unsubstantiated allegation. Why are the board allowing themselves to do so?
I do however agree that an applicant/proprietor can be able to prove the contrary, by referring in the original disclosure to some specific patent documents. The reference should however be specific and not general as it is often the case with US originating applications in which the reference is general. I refer here to the Guidelines H-IV, 2.2.1 and to e.g. T 689/90, T 1306/08 or T 857/11.
As the information needed to support sufficiency has to be present in the original disclosure, I do not think that the applicant/proprietor can abide to the requirement of sufficiency by describing an easy path enabling the skilled person to spot specific patent documents relevant to the issue.
If recent advances in generative IA technology may make it much easier for skilled persons to spot relevant documents, without resorting to patent searches, this should be done prior to filing. It is only if the corresponding information is duly incorporated in the application from its priority/filing date that it can be taken into consideration. Anything else would amount to added matter.
We should also not forget that the result of generative IA technology depends a lot from the training data and of the correlation algorithm. Even if it would be allowed to do as you propose, the training data and the correlation algorithm should have been set up before the filing priority/filing date. To bring this proof is quasi not possible. Resorting to generative IA technology after the filing priority/filing date, is thus, in my opinion a no-go.
Very strange decision. It is very hard to even rely on reference to a document in the application as filed, unless you specifically state which paragraphs you refer to.
However, according to this decision, it is fine to rely on (patent) documents cited in a isr. That makes little sense to me.
Dear Trainee,
I can only but agree with you that the board has gone way too far and actually ignored the basics of sufficiency.
Whatever the board might have had in mind, relying on documents from the ISR is tantamount of introducing added matter in the original specification.
The board not only referred in general to documents from the ISR, but even to specific passages in those. Although boards are not bound by the Guidelines, the present board has at least ignored e.g. T 689/90, T 1306/08 or T 857/11.
As an OD is not bound by a decision of a board taken in examination, should the patent be opposed, it might be very easy to show the lack of sufficiency. Then the patent would have to be revoked. In case of an appeal in opposition, the composition of the board would have to be different, so that a repetition of the present decision is unlikely.