Key points
- The OD found claim 1 to be obvious in view of D3. The patentee submits comparative results with the Statement of grounds allegedly showing an improvement.
- “As D3 was not acknowledged in the application from which the patent at issue was granted, this prior art document was not considered when formulating the technical problem to be solved originally. ”
- “Thus, the technical problem invoked by the appellant [patentee] in its statement and at the oral proceedings has been formulated for the first time in appeal proceedings. ”
- “The board notes that it is established case law (see e.g. T 1188/00 of 30 April 2003) that a formulation of a more ambitious technical problem first alleged in the opposition/appeal proceedings cannot be used to substantiate inventive step unless it is plausibly demonstrated that the alleged improved effect could be achieved across the whole scope of the claim. The burden of proof however lies with the proprietor in this respect.”
- After considering the facts and evidence, “ the board has strong reservations that the problem is effectively solved across the breadth of claim 1 at issue”. In the end the claims are found to be obvious.
T 0987/17 -
https://www.epo.org/law-practice/case-law-appeals/recent/t170987eu1.html
2.3 Technical problem
In its grounds of appeal, the patent proprietor formulated the technical problem to be solved over D3 as "to provide multilayer tubes having improved mechanical properties and improved (inter-layer) adhesion" in particular in view of the results in the comparative tests D9.
At the oral proceedings, on the basis of the results shown in D9, the appellant invoked only "good (inter layer) adhesion" in addition to "improved mechanical properties".
2.4 Solution
As a solution to the problem underlying the alleged invention, the patent as granted provides the multilayer tube according to claim 1, which is in particular characterised by the presence of
[...]
2.5 Success of the solution
2.5.1 As D3 was not acknowledged in the application from which the patent at issue was granted, this prior art document was not considered when formulating the technical problem to be solved originally. As apparent from [0003] and [0006] of the patent, as well as from the comparison in the original examples over a tube made of two layers of PA-11, the technical problem was simply formulated as to provide a multilayer tube having good mechanical properties such as pressure resistance, vibration resistance, and flexibility, with good impact behaviour when cold and at high temperature, as well as good resistance to engine lubrication oils and fuels. There is however no mention of an improvement, let alone of an improved adhesion.
source http://justpatentlaw.blogspot.com/2021/08/t-098717-burden-of-proof-technical.html
