EP 3 133 650 B1 relates to a four junction solar cell for space applications.
Brief outline of the case
The new MR filed after opposition was considered lacking IS over a document not mentioned in the ESR.
The OD decided maintenance according to AR1. The opponent appealed.
The appeal was dismissed.
The case is interesting in that it deals with what can be considered as CGK.
The opponent’s point of view
Documents “Reference 1“, “Reference 2” and “Reference 3” should be admitted into the proceedings since they demonstrated that the skilled person was aware that ternary substances were easier to produce and more stable than quaternary substances. This made replacing the quaternary substance in the second sub-cell with a ternary substance obvious to the skilled person.
The search to find these documents was time-consuming and cumbersome, which was the reason why these documents were not submitted earlier in the proceedings.
Reference 1: “Chapter 7 – Gallium Indium Arsenide Phosphide (GaxIn1-xAsyP1-y)”, Y. A. Goldberg and N. M. Shmidt, Handbook Series on Semiconductor Parameters (Vol. 2), World Scientific, Singapore, New Jersey, London, Hong Kong, 1996
Reference 2: “Ortsaufgelöste Charakterisierung von Entmischungsphänomenen in GaxIn1-xAsyP1-y-Halbleiter-Heteroschichten im Raster-Transmissionselektronenmikroskop”, C. Mendorf, Dissertation, Fachbereich Elektrotechnik der Gerhard-Mercator-Universität, Gesamthochschule Duisburg, 7. Dezember 2001
Reference 3: “Strained In1-xGaxAsyP1-y/InP quantum well heterostructures grown by low-pressure metalorganic vapor phase epitaxy”, W. de Carvalho Jr et al., Materials Research, Vol. 2, No. 2, 49-57, 1999
The board’s decision
Proof of CGK-timeliness of the submission
The board was not convinced that these documents demonstrate the skilled person’s CGK or that they merely support arguments already put forward by the opponent which could not be provided earlier.
The opponent had already put forward this line of argument of exchanging the quaternary substance by a ternary substance during first instance proceedings.
Therefore, the allegation relating to the replacement of the quaternary substance by a ternary substance was already discussed during the opposition proceedings.
However, written evidence proving allegations should be submitted as early as possible. Therefore, the search for documents “Reference 1” to “Reference 3” could and should have been carried out at the latest shortly after the OP before the OD, hence prior to the appeal proceedings. The three documents could and should then have been submitted with the statement setting out the grounds of appeal.
Proof of CGK-Type of document
These documents cannot be regarded as evidence of the skilled person’s CGK.
They go far beyond to what is normally considered to be part of the CGK.
In the board’s view “Reference 1” relates to a handbook compiling a plurality of scientific articles. The selection of a specific article dealing with a substance defined in claim 1 cannot be regarded as CGK but is rather based on hindsight.
Similarly, the dissertation “Reference 2” dealing with the particular substance is a technical teaching going far beyond CGK. Dissertations are normally focused on new research and should, at least in the case at hand, not be used for indicating CGK since they report on a rather specific technical development.
Finally, the research article “Reference 3” relates to a very specific technical teaching which should not be considered to represent the CGK of the skilled person.
As an aside, the board was of the opinion that the fact that the search to find these documents was so time-consuming and cumbersome, as alleged by the opponent, is already a strong indication that the outcome of the search is not representative of the skilled person’s CGK, which should in general not be difficult to be proven.
Comments
CGK is in principle to be found in standard books and reference works, see T 1641/11, Reasons 3.6, T 263/12, Reasons 2, and not in patent documents, with the exception of very new techniques, e.g. T 1117/14, Reasons 3.
Patent literature is not representative of CGK, cf. T 1819/14, Reasons 1.1, T 263/12, Reasons 2,b), or T 1782/21, Reasons 16.1.
“A” documents in the search report are not representative of common general knowledge, cf. T 336/21, Reasons 1.3.
This also applies to specialized journals, cf. T 1997/11, Reasons 2.2.1, or scientific papers, cf. T 1651/13, Reasons 2.4.
A doctoral thesis is not representative of CGK, cf. T 1832/14, Reasons 1.4, or T 1815/19, Reasons 2.1.
There are thus ample reasons why the documents Reference 1-3, could not be considered representative of CGK.
The board was also very pragmatic when it considered the search to find CGK should neither be time-consuming nor cumbersome.
On the other hand, in principle, CGK is not late as it does not change the legal and factual framework of the proceedings, cf. T 144/06, Reasons 1.1, or T 758/09, Reasons 2.2.
Whether those decisions are still valid under the present RPBA is anything but certain, cf. T 1356/21, Reasons 1.2.4, or T 1357/21, Reasons 1.2.4, both referring to T 758/09. At least, they should be considered valid before ODs.
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