EP 2 833 415 B1 relates to an encapsulating material for solar cell and a solar cell module.
The parties are the same as in T 438/19 having led to G 1/23.
Brief outline of the case
The patent was maintained by he OD according to a new MR.
In its decision, the OD only used D11/D11t=JP 2012-38856 as CPA and considered that D4=WO 2008/036708 was not enabled according to G 1/92. In T 438/19, WO 2008/036708 was quoted as D1.
In D1 and D4 all turns around the product ENGAGE® 8400 disclosed in Example 3.
The opponent appealed.
What was important, was to obtain a good volume resistivity of the polymer in order to allow the use of the latter as encapsulating material for solar cells.
The key aspect starting from D11 or D4 was the fluorine content which originates from the catalytic system used to synthesize the ethylene/alpha-olefin copolymer.
We will concentrate on D1/D4 and the famous example 3 in it relying on ENGAGE® 8400.
The board confirmed maintenance according to AR2, after all other requests on file were withdrawn by the proprietor during OP. The board remitted to the OD for the adaptation of the description.
The proprietor’s point of view
Before the issuance of decision G 1/23, the proprietor had contested the choice of Example 3 of D4 as starting point for assessing IS, on the grounds that following the interpretation of G 1/92 in decisions T 23/11 and T 1833/14, the commercial product ENGAGE® 8400 used for the preparation of the encapsulating material in Example 3 of D4 was not enabled and for this reason should not be considered to have been made available to the public within the meaning of Article 54(2).
Based on the Reasons for decision G 1/23, the proprietor, submitted that the EBA expressed serious concerns whether a product such as ENGAGE® 8400 could represent the CPA, despite the fact that this product and its analysable properties belonged to the state of the art within the meaning of Article 54(2).
In the proprietor’s opinion, even after the clarification given in G 1/23, a composition comprising ENGAGE® 8400 could not be the CPA, because ENGAGE® 8400 and therefore the encapsulating material containing it could not be reproduced.
It would be unrealistic and necessarily contaminated by hindsight to assume that a skilled person would start from a non-reproducible polymer, spending considerable resources on establishing the synthesis conditions leading to ENGAGE® 8400, especially where the prior art also provides many related polymers for which synthesis and details are known.
The board’s decision
The board did not agree with the proprietor’s interpretation of G 1/23.
In view of G 1/23, ENGAGE® 8400 and all its analysable properties and structure belong to the state of the art. This is because the product was physically accessible, irrespective of whether or not particular reasons could be identified for analysing its composition and structure, also if the skilled person would not have been in the position to reproduce it on their own, cf. G 1/23, Reasons 91.
The EBA expressly rejected the position that a non-reproducible, but otherwise existing and commercially available product, does not belong to the state of the art, as this interpretation leads to an absurd result and therefore cannot hold.
Therefore, the present board did not understand the passages quoted by the proprietor as indicating that the EBA excluded that a commercial product could be taken as the CPA, if its method of manufacture is not in the public domain.
To the contrary, not only the EBA maintained that readily available products cannot be excluded from the CGK of the skilled person, hence also not from the state of the art within the meaning of Art 54(2), but it also expressly confirmed that the technical teaching relevant to the skilled person must always be determined in the light of the circumstances of each case and, thus, also a non-reproducible product may be considered to represent the CPA.
While the EBA gave in Reasons 96 two different examples of how a non-reproducible but publicly available product can be taken into account when IS is examined, the EBA specified at the end of that section that the relevant technical teaching that a skilled person would take from such a product is always case specific – it depends both on the product in question and on the invention under examination.
Contrary to the proprietor’s position, it cannot be taken from the reasoning of the EBA that where a modification of a non-reproducible but commercially available product as such is necessary, then the non-reproducible product does not form CPA.
Such a reasoning would imply that the CPA, i.e. the starting point in the PSA, is selected after having completed the assessment of obviousness of the solution, including the identification of the distinguishing features, the formulation of the OTP and the analysis of the modification needed, which cannot have been meant by the EBA.
Considerable efforts in reproducing a commercially available product cannot prevent its selection as the CPA, but could rather come into play after such a selection in the context of obviousness of the solution.
The Board did also not agree with the proprietor’s assumption that a non-reproducible, but commercially available, product or a product difficult to reproduce could not constitute a promising starting point.
What needs to be modified, however, is part of the inventive thinking of the skilled person in order to solve the problem addressed, but not a consideration concerning the selection of that starting point. This is all the more the case when various possibilities for modification of that starting point exist.
In the analysis of IS, there is no reason for the skilled person to consider a priori, before having identified the differences and established the OTP, that the solution would necessarily require a modification of the exact synthesis conditions used for preparing the commercial product.
This applies in particular to the present case, as other solutions might for example consist in the replacement of that polymer by another commercially available polymer, the preparation of another polymer having similar properties without the need to find out the exact synthesis of the commercial product or modification concerning other aspects of the encapsulating composition, in particular the nature of other components.
The Board was satisfied that, also taking into account the considerations of the Enlarged Board in G 1/23, the encapsulating material of Example 3 of D4 which comprises the commercial product ENGAGE® 8400 represents a realistic starting point for the invention set out in claim 1, irrespective of whether the skilled person knows how to reproduce the commercial product.
Comments
Any board, like any deciding body of first instance, has to apply a decision of the EBA.
The present decision actually shows the difficulty experienced when applying G 1/23. As the EBA has decided that a commercial product is part of the prior art, irrespective whether the product is reproducible or not, the board had no choice but to stick to this postulate.
This postulate is however in clear contradiction with a long line of case law according to which a non-enabled product cannot be opposed to a claim, see CLBA, 11th edition 2022, I-C, 4.11.
This is why, the present board came with the idea that what needs to be modified, is part of the inventive thinking of the skilled person in order to solve the problem addressed.
It can be agreed with the board, that all disclosed properties, as well as all analysable constituents of a commercial product belong to the prior art.
It remains however that if the commercial product cannot be reproduced or replaced by a similar product, it is difficult to consider it as belonging to the prior art and thus to be a starting point in the assessment of IS.
According to T 1044/23, commented in the present blog, obviousness hinged on whether the skilled person would have been able to reproduce the commercial DMDA resins or obtain materials having comparable properties. This was not sufficiently demonstrated by the opponent and hence the lack of IS was not demonstrated.
In the board’s communication under Art 15(1) RPBA in T 438/19, IS would not be given if the product ENGAGE® 8400 could be replaced by a similar product with the help of the teaching of a further document. This is the also what has been considered a practicable route in the present decision.
If a commercial product has to be replaced by a similar product in order to assess IS, it is difficult to consider the actual commercial product as CPA, even if, according to the postulate of the EBA it has to be considered as belonging to the prior art.
Comments
1 reply on “T 1719/21-Commercial product (ENGAGE® 8400) as CPA”
Your remark that a commercial product which cannot be reproduced is a difficult starting point for the PSA is what I was trying to indicate in my comment on the T 1044/23 decision. Looking at that once again, it appears that what the Board was taking as the CPA was not the pre-sold product itself but the technical disclosure about the pre-sold product, using that information to adapt the resin produced in a known process. This information was available to the public. Why they then needed a referral to the Enlarged Board is beyond me.