Zusammenfassung von EPC2000 Art 056 für die Entscheidung T0681/21 vom 30.10.2023

In T 681/21 the board noted that the formulation of the technical effect differed from that identified in the patent, and thus it was important to verify whether such a formulation was in accordance with the conclusion of the Enlarged Board of Appeal in G 2/21 (point 94 of the Reasons) that "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention". It was not in dispute that the application as filed did not relate to a synergistic effect arising from the combination of a silicone with CPP or any other component. Also, the fact that the application as filed indicated the CPP to be a preferred cationic polymer without explaining the reason for this preference could not foreshadow that the claimed combination would provide any type of synergism. The respondents (patent proprietors) also did not file any evidence that it was common general knowledge that silicone and cationic polymers might provide a synergism in terms of improved softness. Therefore, the board concluded the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and had to be disregarded. The board considered the data available from the respondents in relation to the alleged invention and closest prior art. In the board's view, it was obvious for the skilled person faced with the technical problem posed to try as an alternative to the composition of example E4, one comprising any combination of the softening agents suggested by the description such as one comprising the silicone of example E4 with any cationic polymer disclosed in the description, for example a CPP. Subject-matter of claim 1 according to the main request thus lacked an inventive step. Auxiliary requests 2, 3, 5 and 6 also lacked an inventive step. As to auxiliary request 4, the respondents relied on post-published experimental data D7 and submitted that a combination of anionic silicone with CPP provided unexpectedly better softening than a similar combination comprising a cationic polymer which was not a CPP. In the board's view, a skilled person reading the application as originally filed and having the common general knowledge in mind would derive therefrom as a technical teaching that the addressed improved silicone softness was especially obtained by using a combination with the components indicated as preferred, such as a CPP and an anionic silicone. Therefore, said alleged technical effect could be considered to be encompassed by the technical teaching and embodied by the same originally disclosed invention and could thus be considered in view of G 2/21. The appellant (opponent 2), relying especially on data contained in D16 filed with its statement of the grounds of appeal in reaction to D7, contested the validity of the alleged technical effect at least across the entire scope of claim 1 at issue. In view of the diverging results in D7 and D16 the respondents also invoked the benefit of the doubt in their favour. However, the board noted that it was established case law (see for example T 570/08 and T 1182/15) that the benefit of the doubt cannot be granted if the other party provides experimental data convincingly casting doubts on the effect allegedly achieved as it was also in the present case. It followed that it could not be established that the claimed combination provided the alleged improved softness at least across the entire scope of claim 1. The objective technical problem solved thus had to be again formulated as the provision of a further fabric treatment composition comprising silicone as it was with regard to the main request. However, the board found it was obvious for the skilled person faced with the above technical problem to modify the composition of D1/example 4 by using the anionic silicone of D2 as a promising alternative for PDMS in combination with CPPs and to add thereto a small amount of CPP as taught in D1. The board therefore concluded that claim 1 of this request lacked an inventive step.