The patent relates generally to gas turbine engines, and, more specifically, to turbine blade cooling.
Brief outline of the case
The ISR established by the EPO mentions 2 Y and 3 A documents.
The opponent appealed the OD’s decision to reject the opposition.
The board decided that the closest prior art was D1=EP 1 361 337 (1st Y in ISR).
The board held that claim 1 as granted was lacking IS over D1+ D2=JP 58 170 801 (2d Y in ISR). There was no synergistic effect between the features of the claim which differed from the CPA, and hence partial problems applied.
The original AR 1-7 were not admissible for lack of substantiation under Art 12(2+4) RPBA07. A new AR4 was not admissible under Art 13(2) RPBA20.
The board thus decided revocation of the patent.
The case is interesting in view of the proprietor’s argumentation about the choice of the closest prior art.
The choice of the CPA
The proprietor’s position
The proprietor argued during OP that due to the complexity and the efforts invested during the design of the cooling structure of a turbine blade, the invention should be judged from the point or prior art from which the patent started, instead of starting from the state of the art disclosed in D1.
The board’s position
There may indeed be different possible starting points from which the problem-solution approach may be conducted.
If the skilled person has a choice of several workable routes, i.e. routes starting from different documents, which might lead to the invention, the rationale of the problem-solution approach requires that the invention be assessed relative to all these possible routes, before an inventive step can be acknowledged.
Conversely this means that if the invention is obvious to the skilled person in respect of at least one of these routes, then an inventive step is lacking. The board referred to T 21/08, Reasons 1.2.3, and T 967/97, Catchword I.
Consequently, although it might be possible to assess inventive step also from the prior art mentioned in the patent, this would not alone be sufficient to conclude that the claimed invention meets the requirement of Art 56, if there is further prior art, like D1, from which the skilled person may start.
Absent any technical reason that could disqualify D1 as a starting point, the board rejected the proprietor’s argument.
In order to assess IS, it would certainly be the desire of all applicants to take as closest prior art the one he has started from when making its invention and drafting the application.
When assessing IS (and N), the person skilled in the art has at its disposal all what has been made available to the public before the effective date of the claim at stake anywhere over the world.
This is certainly a fiction, but this fiction has been in place since the beginning of the EPC/EPO. The proprietor’s argumentation would thus necessarily fail to convince.
In the present case, the board even noted that the CPA=D1 belongs to the proprietor.
Some inventions might cost a lot to develop, other might cost peanuts. IS has nothing to do with the money spent or the difficulty to arrive at the solution of the problem the applicant wanted to resolve. This might sound hard, but there is no other way to look at all inventions in a non-biased way.
I would like to quote here Me Mathely, a late French lawyer very active at its time in patent litigation and author of many books on IP:
“Assessing non-obviousness does not imply any judgement of value, be it about the creative effort of the inventor, or be it about the importance or the usefulness of the invention.
The judge cannot simply assert obviousness by merely saying what he is convinced of.
He must formulate the technical reasons which, by comparison of the invention with the prior art, lead to an objective finding of obviousness”.
This way of assessing IS was disclosed way before the problem-solution approach was introduced at the EPO.
One should also not forget that some applicants do not even quote any prior art or even claim that the prior art is “internal”.
When looking at the whole procedure, the conclusion to be reached was that the patent should never have been granted as the relevant documents were quoted in the ISR established by the EPO.
The ESO even mentioned the lack of synergy between the features differentiating the subject-matter of claim 1 as filed and D1. The amendment of the claims as filed consisted mainly of the combination of claims 1-3 as filed. IS has never been questioned after the filing of the new claims.
The number of decisions set aside by a board is increasing dramatically and is for 2023 well over 50%.
Those comments should not be taken a criticism towards the ED or OD. The divisions of first instance have actually to cope with an increasing production pressure.
Addendum on the choice of the CPA
I would like to bring the discussion to another topic, i.e. the so-called “internal” prior art.
Starting with T 22/83, there is a number of decisions considering that prior art acknowledged in the description ought to have been publicly available in order for it to be taken into account for the assessment of inventive step.
This is the case when the prior art has to be considered as „internal prior art“.
The applicant/proprietor is then allowed to amend the introductory part of the description in order to rectify an erroneous presentation of prior art by the applicant. See also G-IV, 7.3 (viii).
In T 22/83, the deletion of original Figure 4, coupled with amendments to the introductory part of the description serve to remove an objection to inaccuracy in representation of the state of the art are allowable amendments since they do not contravene Art 123(2).
Among the decisions following T 22/83 it is possible to quote T 2450/17, Reasons, Points 3.3.3 and 3.3.4., T 1123/09, Reasons, Point 7, last but one paragraph, T 889/93, Reasons, Point 2, 1st paragraph and T 524/90, Reasons, Point 2.1.
This line of case law has been challenged in T 1227/10. In line with T 22/83, the OD has decided that the deletion during examination of the original figure 1 and of the part of the description relating to this drawing, both of them indicating the illustrated embodiment as being part of the prior art removed an erroneous statement of the prior art in the original application.
These parts of the original application had to be ignored in assessing the invention disclosed in the original application and their deletion would not contravene Art 123(2).
In opposition appeal proceedings, the board held that the deletion of original figure 1 labelled as prior art and of the corresponding part of the description in the original application has modified the application in a way that the granted claim 1 includes subject-matter which was excluded from the originally filed invention as it would have been understood by a skilled person on reading the whole original application on the date of filing.
In other words, one could consider that what the applicant declared being part of the prior art is a kind of disclaimer. Removing this disclaimer does amount to an extension of object not allowable under Art 123(2). It is thus irrelevant whether the prior art was “internal” or not.
My question is thus whether the prior art acknowledged in the application as being known, even if it is allegedly “internal” prior art, can be taken as CPA. I would answer by the affirmative.
What do you think?