Key points
- This is a rather run-of-the-mill decision, but serves as a reminder that a technical effect needs to meet more requirements than those of G 28/21 to support inventive step.
- In particular, the post-published evidence can still be late-filed and therefore inadmissible.
- In addition, the evidence (post-published or in the application itself) can be insufficient or insufficient for the full scope of the claims.
- Finally, the technical effect as such can be invoked late, e.g. if a proprietor first argues one technical effect and only in appeal argues a second technical effect (even if only using the examples in the application as filed as evidence). This third possibility is not illustrated by the present decision.
- "Document D13 [experimental report filed before the OD] presents a comparison of four compositions I to IV. ... However, composition I is also not a composition according to the closest prior art, example 2 of D2, which comprises 2-chloro-6-ethylamino-4-nitrophenol. Therefore, the results shown in document D13 can not demonstrate a technical effect caused by the differing technical feature."
- "The appellant [proprietor] submitted document D15 [further experimental report] with its statement setting out the grounds of appeal and requested to admit the document into the proceedings. The appellant argued that filing of the document at this stage of the proceedings was justified, because of a completely new line of argumentation brought forward during the oral proceedings before the opposition division. ... The board comes to the conclusion that that document D15 should have been submitted during the opposition proceedings. ... The board does therefore not admit document D15 into the proceedings".
- "In conclusion, no technical effect has been shown related to the feature which distinguishes the claimed compositions from the closest prior art. The objective technical problem can thus, in line with the impugned decision, only be seen in the provision of alternative colouring compositions for keratin fibers."
- The appeal is dismissed.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2024/01/t-322419-technical-effect.html
