EP 2 626 911 B1 relates to an encapsulating material for solar cell and a solar cell module.
Brief outline of the case
The OD rejected the opposition as it considered the commercial product ENGAGE® 8400 as not belonging to the prior art under Art 54(2), since it was not reproducible according to G 1/92.
The board referred three questions to the EBA, which issued G 1/23.
The EBA decided the following:
I. A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Art54(2) for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.
II. Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Art 54(2), irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.
In case T 438/19, leading to G 1/23, the board has, after publication of the EBA’s decision, now issued a communication under Art 15(1) RPBA.
Important aspects to be taken from the board’s communication
Without any surprise, the board considers that the commercial product ENGAGE® 8400 is part of the prior art under Art 54(2).
The commercial product ENGAGE® 8400 as CPA
In its communication, the board noted that the EBA did not rule out that a commercial product could be taken as CPA, even if its method of manufacture is not in the public domain.
The board provisionally considered that the non-reproducibility the commercial product ENGAGE® 8400 is thus not an exclusion criterion for its use as CPA,
Contrary to the proprietor’s allegation, it cannot be taken from the reasoning of the EBA, that where a modification of the non-reproducible product as such is necessary, then IS may be given, and the non-reproducible product cannot be taken as CPA.
This would imply that the CPA is selected after having assessed obviousness of the solution, which cannot have been meant by the EBA, as it would not be in accordance with the problem solution approach.
The opponent’s indication that “It can be argued that a skilled person would turn to some other starting point, purely as a question of identifying the theoretical “CPA”” is understood by the board to refer to the possibility to analyse IS from a different starting point.
The proprietor’s reasoning is based on the assumption that where a product (e.g. a polymer) needs to be modified as such, and this requires a change to the synthesis conditions, then first of all the synthesis conditions leading to said product need to be established before a modification even becomes possible, which would require an undue amount of experimental work and therefore not a promising starting point.
For the board, the starting point should be realistic or promising in the sense that the use, effects and properties described by the invention of a given prior art would be relevant for the subjective problem addressed in the patent under examination in order for the skilled person to consider that an object which is structurally sufficiently close to that starting point can be expected after modification of that starting point to solve the subjective problem.
What needs to be modified 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.
The difference over the CPA
The subject-matter of claim 1 as granted seems to differ in the Al content. In the claim as granted the Al content is from 10 to 500 ppm whereas, according to the proprietor, in the commercial product ENGAGE® 8400 the Al content is 4.4 ppm.
The OTP
The board adopted the OTP defined by the OD, namely the provision of a further encapsulating material for solar cells, i.e. of a further material suitable as an encapsulating material for solar cells.
The board held that the formulation of the problem successfully solved vis-à-vis the generic disclosure of D1 which is proposed by the proprietor does not appear to be appropriate when Example 3 comprising ENGAGE® 8400 is taken as the CPA. For the board, the proprietor’s problem is seemingly defined in absolute terms, i.e. without reference to the corresponding product property obtained with the formulation of Example 3 of D1 comprising ENGAGE® 8400.
Obviousness of the solution
It seems that the skilled person faced with the problem of providing a further material suitable as an encapsulating material for solar cells would have found it obvious to repeat the teaching of Example 3 of D1 by replacing ENGAGE®8400 used in that example by a similar material.
In this respect, the board noted that the opponent brought forward that using his/her skills and the teaching in D1 and D18, the skilled person would be led to catalysts and conditions that enable the formation of a polymer with the density, MFR, shore hardness and comonomer content required for ENGAGE®8400. These would be features of a polymer that any skilled person could control with ease. It would not be a challenge for the skilled person to prepare an ethylene octene copolymer with the density and MFR defined for ENGAGE®8400.
For the board, it seems therefore that the skilled person searching for a homogeneously branched, substantially linear ethylene/α-olefin polymer material similar to ENGAGE®8400 would be prompted to consult D18.
The proprietor’s argument that D18 discusses the Al content not in the context of encapsulating materials for solar cells does not appear relevant. This is because D1 teaches not only in general, but also with the particular embodiment constitutive of the CPA, that substantially linear ethylene copolymers whose description is given in D18 and for which ENGAGE® materials are given as examples are suitable for the preparation of encapsulating materials for solar cells.
For the board, it seems that faced with the problem of providing a further material suitable as an encapsulating material for solar cells the skilled person would have found it obvious with the help of Example 24 of D18 to repeat the teaching of Example 3 of D1 by replacing ENGAGE® 8400 by a similar copolymer meeting the requirements of claim 1.
Comments
It should not be forgotten that the communication under Art 15(1) RPBA only expresses the provisional opinion of the board.
It is however interesting to note that the non-reproducibility of the commercial product ENGAGE® 8400, can be circumvented by using ENGAGE® 8400 as CPA, and at the same time to see whether it appears obvious to devise a polymer having the same characteristics.
If this is a case, then the claim at stake lacks IS.
It will be interesting to see what the final decision of the board will look like. It does not appear to look to ggo for the proprietor.
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