EP 3 374 443 B1 relates to a non-aqueous stripping composition and to a method of stripping an organic coating from a substrate using this stripping composition.
Brief outline of the case
The patent was maintained according to a new MR filed in reply to the opposition.
The opponent appealed.
The board held that claim 1 as maintained lacked IS over D7.
Some of the proprietor’s submissions were not admitted in the procedure
Eventually the board decided revocation.
The proprietor’s point of view
The distinguishing feature over the CPA=D7 was “non-aqueous“.
At the OP before the board, the proprietor submitted for the first time in the appeal proceedings that the distinguishing feature over D7 was associated with two technical effects.
The stripping composition
(i) had a lower viscosity and, as a consequence of this, was easier to filter and
(ii) caused less damage to the substrate upon incorporation of water during use.
In other words, the stripping composition was more tolerant to water.
According to the proprietor, the word “water” was mentioned several times in the last two paragraphs on page 31 of the reply to the opposition. It was clear that this alluded to the additional distinguishing feature “non-aqueous“.
In order to show that the new submission was not an amendment to its appeal case, the proprietor further referred to statements made in opposition.
The proprietor argued that the skilled person would not have reduced the amount of the coupling agent in example 2 of D7.
The reason for this was that, according to D7, high concentrations of the coupling agent were essential for the stripping composition to have an appropriate tolerance to water.
Mainly because of this argument, the OD acknowledged IS based on D7 as the CPA.
The board’s decision
Under Art 13(1+2), the board did not admit the new submissions relating to further effects resulting from the absence of water in the stripping composition.
The board held that the distinguishing feature was not associated with any technical effect, and the OTP is therefore to provide an alternative stripping composition.
The board noted that arbitrarily varying the concentrations of components in a composition, including changing the concentration of one component in favour or to the detriment of the other components, is routine for the skilled person. Such a measure does not involve IS.
The board did not consider the argument relating to high concentrations of the coupling agent to be convincing, since it requires reformulation of the OTP as to provide a stripping composition with a poorer tolerance to water.
If reducing the concentration of the coupling agent necessarily worsens the tolerance to water in D7, from a logical point of view, the same deterioration must apply to the subject-matter of claim 1 of the MR.
The reason for this is that the lower concentration of the coupling agent, is the only feature that distinguishes the subject-matter of claim 1 of the MR from D7.
For the board, the solution to this problem by reducing the concentration of the coupling agent would have been obvious as nothing would have prevented the skilled person from reducing its concentration if only a lower tolerance to water had been required.
The mere fact that the claimed subject-matter excludes a technical feature disclosed in the CPA as being essential or advantageous for a technical effect, cannot in itself establish the existence of IS.
Rather, where the exclusion of the technical feature in question is the only feature distinguishing the claimed subject-matter from the CPA, it must be shown that the claimed subject-matter achieves said technical effect to an extent comparable to that of the CPA, even without this feature.
Without such proof, the claimed subject-matter merely results in an obvious deterioration of the technical effect described in the CPA.
Comments
In order to be inventive under the EPC, a claim does not need to show an improvement over the prior art. In this respect, the concept of IS is neutral. This is in contrast with the notion of “inventive height” as it was the rule in some contracting members in pre-EPC times.
The present decision is interesting as it shows that IS can be denied, when the claimed subject-matter is an obvious deterioration of the technical effect described in the CPA.
The present decision also shows that Art 13(1+2) RPBA are strictly applied by the boards. General references to statements made in opposition is to no avail in appeal. Both points should not be a scoop.
On the procedure
The ISR established by the EPO only mentioned two documents of category A.
D7=EP 0 860 479 B1 was not mentioned in the ISR, but bears the same IPC class as the patent and has a similar topic.
It can be concluded that the search result was sub-optimal and that the patent should not have been granted or maintained in the form it was.
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