The patent relates to a method of controlling the rate of oxygen transfer from the atmosphere into wine.
The case is interesting as it deals with the definition of the objective technical problem and how the notion of long-felt need can support inventive step.
Brief outline of the case
The ISR/AU revealed 4X documents. The SESR revealed no less than 8 further X documents and 1A document.
The prior art taken into account by the OD and the board, i.e. D1=AU 715897 related to a plastic container permeable to oxygen and the liquid to be oxidised was sherry and not table wine. D1 was the 1st X document in the ISR/AU.
The proprietor appealed the revocation of its patent.
Claim 1 as granted lack of IS over D1=AU 715897 [1st X in ISR/AU] and common general knowledge. This was already the conclusion of the OD.
Therefore, the patent should not have been granted on the basis of the MR.
Claim 1 of AR 1, 2, 5 and 6 lacked of clarity.
Claim 1 of AR3, 4 and 7-10 lacked IS.
The board thus confirmed the revocation of the patent.
The discussion on the Objective Technical Problem
The OD considered that the subject-matter of claim 1 as granted differed from the disclosure in the two following aspects:
- (i) the wine is stored in the container for a period ranging between 4 months and 36 months, and
- (ii) the total rate of oxygen transmission into the wine is less than 55 mg/litre of wine/year.
In the proprietor’s favour the board added two further differences:
- (iii) the plastics material of the walls has an intrinsic oxygen permeation rate of 13 mg to 65 mg of atmospheric oxygen per square metre of the wall area for each 1 millimetre of the walls thickness per 24 hour period at room temperature, and
- (iv) the container is self-supporting and the walls of the container comprise a rigid plastics material.
The following effects resulted from the various differences
- the distinguishing features (i) and (ii) have the consequence that one litre of wine will be in contact with less than 3·55 mg, i.e. less than 165 mg, of oxygen during the entire storage period, and
- the distinguishing features (iii) and (iv) were not linked to a surprising technical effect.
For the board, the objective technical problem was to provide a method which yields a wine with a lower degree of maturation than the sherry wines in D1.
The applicant argued that an objective technical problem, if any, could only be formulated inadmissibly.
If at all, for the applicant it was to be considered that of changing the properties of the container in D1, which was suitable for the production of sherry, in such a way that it was suitable for producing table wine.
The board disagreed and held that it is the storage period and the total rate of oxygen transmission which determine the total amount of oxygen to which the wine is exposed during storage and these features and their effect have been taken into account by the board in formulating the objective technical problem.
Long felt-need – The applicant’s position
With regard to obviousness, the appellant referred to the long period between the publication year of D1 (1974) and the filing year of the patent (2004). The patent therefore satisfied a long-felt need. This was an indication of inventive step.
Long felt-need – The board’s position
The board concurred with the view expressed e.g. in T 605/91 (point 4.4.1 of the Reasons).
The mere fact that a long period of time has elapsed between the publication of a prior-art document and the patent is not sufficient to prove the existence of a long-felt need. Such a “need” would appear to have persisted only if various and repeated attempts to obtain the invention of the patent starting from an embodiment such as those disclosed in D1 could be identified. This is not the case here.
The definition of the objective technical problem
The objective technical problem defined by the applicant was not related directly to the differences found by the board but were of much more general nature. After all sherry is also a wine like the table wine which is considered in the patent.
Stating that the objective problem can only be formulated inadmissibly is quite daring and against the well established problem-solution-approach.
The way the applicant defined the objective technical problem was not based on the precise differences established by the board according to the problem-solution-approach.
Long felt need
A long felt need is at best a secondary indicator of inventive step, cf. Guidelines G-VII, 10.3. It does not justify on its own inventive step.
In T 617/06, the board held that the age of document D2 (1975) alone is – in the absence of further evidence – not sufficient to demonstrate a long-felt need or the blindness of the persons skilled in the art.
A similar conclusion can be drawn from T 179/18. In this decision, the board added that the application of the problem-solution approach has led to the clear result that the subject-matter of claim 1 does not involve an inventive step.