Key points
- “ According to established jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, I.D.4.4.1), where a specific problem is identified in the description, the patentee, here the respondent, may be allowed to put forward a modified version of the problem if the issue of inventiveness has to be considered on an objective basis against a new prior art that comes closer to the invention than that considered in the original patent application or granted patent specification. ”
- “Since the problem objectively solved is the result actually achieved in relation to the closest state of the art, there is nothing to prevent the problem as first formulated from being modified as long as the spirit of the original disclosure of the invention is respected. A reformulation of the problem may be appropriate if an alleged effect of a described feature can be deduced by the skilled person from the application in the light of the prior art or if new effects submitted subsequently during the proceedings were implied by or related to the technical problem initially suggested.”
- “ Before turning to this question, it is however appropriate in the present case to consider the experimental evidence and technical arguments submitted by the parties in relation to free flowing.” [follows a discussion]
- “Turning now to the question whether the original disclosure of the patent in suit hinted at the achievement of free flowing particles when the pastilles are subjected to a temperature of 50°C, the original disclosure of the patent in suit, or even the patent in suit itself, is not concerned with any storage issues, let alone under certain time and temperature conditions associated as alleged by the [patentee] ... In any event storage of PEG based pastilles in relation to temperature has also not been shown to be an issue mentioned or implied by the teaching of [the CPA document] D19."
- “It is therefore concluded that the flowability of the claimed pastilles after storage at 50°C or temperatures around that value is not implied by or related to the technical problem initially suggested. It cannot be deduced from the original disclosure of the patent in suit alone or in the light of the closest prior art. Under these circumstances, the flowability of the claimed pastilles after storage at 50°C cannot be taken into account for the formulation of technical problem solved over the closest prior art.”
- Later, when discussing obviousness, the Board also recalls that " the answer to the question as to what a person skilled in the art would have done in the light of the state of the art depends on the technical result the skilled person had set out to achieve (see T 0939/92, OJ EPO 1996, 309, reasons Nrs 2.4.2 and 2.5.3)."
T 2532/17 -
4. The parties were also in agreement that the definition of the product of granted claim 1 differs from that of substrate III in that:
(i) it is in the form of a unit dose consisting of 13 to 27 g of pastilles,
(ii) each pastille has a mass in the range from 0.95 mg to 2 g,
(iii) the molecular weight of the PEG is selected to be in the range of 5000 to 11000 and
(iv) the pastilles comprise 2 % to 12 % by weight of free perfume.
source http://justpatentlaw.blogspot.com/2022/01/t-253217-reformulation-as-long-as.html
