Filed: May 28, 2019
`
`Filed on behalf of Petitioner HemoSonics LLC by:
`Brian W. Nolan
`Reg. No. 45,821
`Ying-Zi Yang
`Reg. No. 52,381
`Mayer Brown LLP
`1221 Avenue of the Americas
`New York, NY 10020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HemoSonics LLC,
`Petitioner
`v.
`C. A. Casyso GMBH,
`Patent Owner
`
`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`I.
`
`II.
`
`Introduction ..................................................................................................... 1
`
`Patent Owner has not shown that it met the standard of 37 CFR §
`42.123(b) because it has not shown the information was not available
`sooner and that the interest of justice requires submission of this
`information ..................................................................................................... 2
`
`III. The attorney arguments presented in Europe were based upon a
`different patent disclosure supporting a different claim meaning
`reviewed under a different legal construct ..................................................... 3
`
`A.
`
`B.
`
`C.
`
`The arguments presented in Europe were under a different
`meaning of a key claim term ................................................................ 3
`
`The problem-solution approach of assessing inventive step
`differs from the obviousness standard .................................................. 5
`
`The statements unrelated to inventive step that Patent Owner
`cites show the consistency with Petitioner’s position in this IPR ........ 8
`
`IV. Conclusion .................................................................................................... 10
`
`i
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`CASES
`
`AIA Engineering Ltd. v. Magotteaux Intern.,
`657 F.3d 1264 (Fed. Cir. 2011) ............................................................................ 4
`
`Heidelberger Druckmaschinen AG, v. Hantscho Commercial Products, Inc.,
`21 F.3d 1068 (Fed. Cir. 1994) .......................................................................... 4, 7
`
`KSR International Co. v. Teleflex, Inc.,
`127 S.Ct. 1727, 550 U.S. 398 (2007)................................................................ 6, 8
`
`Lindemann Maschinenfabrik GMBH, v. American Hoist and Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) ............................................................................ 7
`
`Pfizer, Inc. v. Ranbaxy Laboratories, Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006) ............................................................................ 4
`
`STATUTES
`
`35 U.S.C. § 103 .......................................................................................................... 7
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.123(b) ............................................................................................ 1, 2
`
`77 Fed. Reg. 48,680 ................................................................................................... 2
`
`Guidelines for Examination in the European Patent Office (2018)
`(Exhibit 1) ............................................................................................................. 5
`
`Paul Cole, KSR and Standards of Inventive Step: A European View, 8
`J. Marshall Rev. Intell. Prop. L. 14 (2008) (Exhibit 2) ........................................ 6
`
`ii
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`I.
`
`Introduction
`
`
`
`Patent Owner’s motion to submit supplemental information is an attempt to
`
`salvage certain claims of United States Patent No. 9,915,671 after its expert argued
`
`a lack of motivation to combine upon alleged facts which were later proven
`
`inaccurate. See Paper 19 at 11-15. Patent Owner offers statements made by
`
`Petitioner, addressing an unrelated patent with a different claim construction under
`
`a different legal standard, to assert that the attorney arguments presented in the
`
`foreign proceeding differs from the evidence presented in the current IPR. When
`
`viewed in light of the different patent disclosures, the different claim constructions
`
`and the different legal standards, statements in the EP Response should be afforded
`
`little to no weight. Therefore, Patent Owner has not satisfied the interest-of-justice
`
`requirement of 37 C.F.R. § 42.123(b). Moreover, Patent Owner’s motion is also
`
`deficient because it states that it acted diligently in bringing the issue to the
`
`Board’s attention but does not explain why it could not have reasonably obtained
`
`the information earlier despite acknowledging that it has been available for
`
`months. The Board should deny Patent Owner’s motion to submit supplemental
`
`information.
`
`1
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`II.
`
`Patent Owner has not shown that it met the standard of 37 CFR §
`42.123(b) because it has not shown the information was not available
`sooner and that the interest of justice requires submission of this
`information
`
`37 C.F.R. § 42.123(b) requires a party seeking to submit supplemental
`
`
`
`information more than one month after institution of a trial to provide a motion that
`
`“show(s) why the supplemental information reasonably could not have been
`
`obtained earlier, and why consideration of the supplemental information would be
`
`in the interest-of-justice.” Patent Owner deals with the first element in perfunctory
`
`fashion by stating that it first learned of the publically available response on May
`
`10, 2019 and contacted the Board thereafter. Paper 23 at 2.
`
`After failing to provide any facts to address the first element, Patent Owner
`
`launches into a discussion of various parts of the Federal Regulations that deal with
`
`sections unrelated to 37 C.F.R. § 42.123(b). Instead, the regulations discussed by
`
`Patent Owner relate to § 42.224 and appropriate discovery. See 77 Fed. Reg.
`
`48,680 at 48963 [col. 2-3] and 48,719 [col. 3] respectively. Patent Owner does not
`
`discuss the portions of the regulations that address § 4.123(b). See 77 Fed. Reg.
`
`48,680 at 48682, 48690, 48707-08. These portions explain the rationale for
`
`requiring that the movant show that it reasonably could not have obtained the
`
`information earlier. Id at 48707. In large part, Patent Owner seeks to sidestep
`
`these requirements by suggesting that Petitioner was obligated to submit the EP
`
`2
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`
`Response as part of an earlier submission. But that is not the case. A review of the
`
`EP Response shows that it does not include facts that contradict any positions
`
`presented by Petitioner, its expert or the other evidence.
`
`III. The attorney arguments presented in Europe were based upon a
`different patent disclosure supporting a different claim meaning
`reviewed under a different legal construct
`
`A. The arguments presented in Europe were under a different
`meaning of a key claim term
`
`In the present IPR, Patent Owner appears to admit that the teachings of
`
`United States Patent No. 5,629,209 (Ex. 1004) combined with Lang 2006 (Ex.
`
`1006), or the teachings of United States Patent No. 7,674,616 (Ex. 1011) combined
`
`with Lang 2006 (Ex. 1006), render most of the claims invalid as obvious. Patent
`
`Owner has limited its defense to claims 11, 12, 15, 19, 34 and 37. Paper 13 at 1.
`
`Patent Owner defended these claims based upon factual assumptions offered by its
`
`expert that were proven wrong. Paper 19 at 14. Patent Owner seeks to resurrect its
`
`defense by pointing to the statements made in Europe about claims that are
`
`supported by a different patent specification and that, as shown by Patent Owner’s
`
`previous admission in this IPR, apply a different meaning to the term “viscoelastic
`
`property.”
`
`In its present motion, Patent Owner takes a different position on the meaning
`
`of “viscoelastic property” than earlier offered in this IPR, presumably because its
`
`3
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`
`
`earlier definition shows that the EP Response presents arguments based upon a
`
`narrower definition of “viscoelastic property.” In its motion, Patent Owner states
`
`that “IPR2017-00855 left unresolved a claim construction issue of whether
`
`viscosity measures a ‘viscoelastic property.’” Paper 23 at 6, n. 2. Earlier, Patent
`
`Owner stated “[f]or the purpose of this Response, Patent Owner uses the term
`
`‘viscoelastic property’ as used in the ’855 IPR and applied by the panel there – that
`
`is, applicable to measurements of viscosity ‘as a result of the onset or occurrence
`
`of a coagulation activity’ – as made in Baugh ’672 and Braun ’209.” Paper 13 at 7.
`
`By comparison, the EP Response states that “a measure of viscosity change is not a
`
`measurement of at least one viscoelastic property of a test sample, as recited in
`
`claim 1, because it is not a measurement of both viscous and elastic components of
`
`the test sample.” Paper 23, Exhibit A at 3 (emphasis in original). The difference
`
`between the construction that Patent Owner advances in this IPR and the
`
`construction that forms the basis of the EP Response shows that the matters deal
`
`with a different claim scope. The Federal Circuit has acknowledged on numerous
`
`occasions that oftentimes the differences between European and US patent law
`
`makes statements in one jurisdiction of little use in the other. Heidelberger
`
`Druckmaschinen AG, v. Hantscho Commercial Products, Inc., 21 F.3d 1068, 1072
`
`n.2 (Fed. Cir. 1994); AIA Engineering Ltd. v. Magotteaux Intern., 657 F.3d 1264,
`
`1279 (Fed. Cir. 2011); Pfizer, Inc. v. Ranbaxy Laboratories, Ltd., 457 F.3d 1284,
`
`4
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`1290 (Fed. Cir. 2006). The narrower claim scope could affect the arguments
`
`
`
`concerning the motivation to combine.
`
`B.
`
`The problem-solution approach of assessing inventive step differs
`from the obviousness standard
`
`The EP Response discusses patentability of the claims in light of the
`
`inventive step problem-solution approach used in Europe. Paper 23, Ex. 4 at 4; see
`
`Ex. 1, excerpts from Guidelines for Examination in the European Patent Office
`
`(2018), Part G, Chapter VII-2 (“In order to assess inventive step in an objective
`
`and predictable manner, the so-called ‘problem-solution approach’ is applied”).
`
`The problem-solution approach requires (1) determining the “closest prior art,” (2)
`
`establishing the “objective technical problem” to be solved, and (3) considering
`
`whether the invention starting from the closest prior art and the objective technical
`
`problem would be obvious. Id. at VII-2-VII-3. The Guidelines explain that the
`
`third step asks “whether there is any teaching in the prior art as a whole” that
`
`would have prompted the skilled person to modify the teaching of a reference to
`
`solve the specific technical problem identified. Id at VII-5 (Section 5.3) (emphasis
`
`added). In order to meet the obviousness requirement, the skilled person must
`
`have modified the teaching “because the prior art incited him to do so in the
`
`hope of solving the objective technical problem.” Id. at VII-6 (emphasis added).
`
`The Guidelines go on to explain that the consideration of whether the skilled
`
`5
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`person would combine two references is driven by the content of the prior art
`
`disclosure. Id. at VII-17 (Section 6(i) (“whether the content of the disclosure
`
`(e.g. documents) is such as to make it likely or unlikely that the person skilled in
`
`
`
`the art, when faced with the problem solved by the invention, would combine
`
`them”) (emphasis added). Each direction provided by the EPO emphasizes that
`
`there must be something within the prior-art documents that directs the skilled
`
`artisan to combine the teachings. This is similar to the teaching, suggestion and
`
`motivation (TSM) test that the United States Supreme Court described as overly
`
`rigid for the assessment of obviousness in the U.S. KSR International Co. v.
`
`Teleflex, Inc., 127 S.Ct. 1727, 1739, 1741, 550 U.S. 398, 415 (2007) (“We begin
`
`by rejecting the rigid approach of the Court of Appeals. Throughout this Court’s
`
`engagement with the question of obviousness, our cases have set forth an
`
`expansive and flexible approach inconsistent with the way the Court of Appeals
`
`applied its TSM test here.”) When discussing KSR in comparison to the problem-
`
`solution approach of inventive step, commentators have recognized that KSR
`
`provides an easier path to finding something obvious. Ex. 2, Paul Cole, KSR and
`
`Standards of Inventive Step: A European View, 8 J. Marshall Rev. Intell. Prop. L.
`
`14 (2008) at Abstract (“Experience in the EPO is that where an applicant can
`
`demonstrate a credible technical problem that he has solved, he will almost always
`
`be granted a patent.”), 39-40.
`
`6
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`The statements that Petitioner offered in the EP Response concerning
`
`
`
`inventive step must be viewed in light of the standard on which patentability is
`
`judged in Europe. Paper 23 at 1, 6-7 (each referencing Ex. A at 4). Based upon a
`
`standard that requires the content of the document to support the combination of
`
`the references, the EP Response states that “the skilled person starting from D9
`
`would have found absolutely no motivation” to solve the specific technical
`
`problem of providing a system that measures “all the components of hemostasis”
`
`and “[t]here is absolutely no suggestion that the skilled person reading D9
`
`would have considered adapting the system . . . .” Paper 23, Ex, A at 4 (emphasis
`
`added). These responses focus on whether D9 itself provides a motivation or
`
`suggestion to combine. That is not the obviousness law of the United States. This
`
`difference between the inventive-step analysis and U.S. obviousness analysis is the
`
`type of difference that caused the Federal Circuit to caution against using
`
`statements in foreign prosecution as evidence of patentability or the lack thereof in
`
`the United States. Heidelberger Druckmaschinen AG, 21 F.3d at 1072 n.2 (“[w]e
`
`take notice of the fact that the theories and laws of patentability vary from country
`
`to country, as do examination practices. Caution is required when applying the
`
`action of a foreign patent examiner to deciding whether the requirements of 35
`
`U.S.C. § 103 are met under United States law, for international uniformity in
`
`theory and practice has not been achieved”); Lindemann Maschinenfabrik GMBH,
`
`7
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`v. American Hoist and Derrick Co., 730 F.2d 1452, 1458 n. 2 (Fed. Cir. 1984).
`
`
`
`These differences highlight that, while an argument can be presented in the United
`
`States that shows a motivation to combine references with an expectation of
`
`success, leading to a conclusion that a claim is obvious under U.S. law, a different
`
`conclusion may result if the motivation must come from the references themselves.
`
`This is precisely why the Supreme Court reversed the Federal Circuit’s conclusion
`
`of non-obviousness in KSR—because US law does not require the reference
`
`provide the motivation. KSR, 127 S.Ct. 1727 at 1741-1742, 550 U.S. 398 at 419-
`
`420.
`
`C. The statements unrelated to inventive step that Patent Owner
`cites show the consistency with Petitioner’s position in this IPR
`
`Patent Owner points to statements responding to clarity and novelty
`
`rejections to assert that HemoSonics has presented inconsistent positions. These
`
`concepts are further removed from the US obviousness analysis discussed above
`
`that this Board is addressing. But a review of statements that Patent Owner failed
`
`to include shows consistency with Petitioner’s position here. Patent Owner cites
`
`that “[n]one of the available prior art documents discloses a system that employs a
`
`cartridge to take a viscoelastic measurement of a blood sample,” but excludes
`
`Petitioner’s explanation that other prior art shows that concept. Paper 23 at 9-10,
`
`Ex. A at 3. Also conspicuously absent from Patent Owner’s citation is Petitioner’s
`
`8
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`acknowledgment that “[t]he person skilled in the art would understand from the
`
`
`
`common general knowledge that various systems and methods are available
`
`for measuring of viscoelastic properties of a sample.” Id. (emphasis added).
`
`This is absolutely consistent with Petitioner’s arguments in this IPR. What differs
`
`is the relevance of this “common general knowledge” when considering
`
`obviousness in the United States and the problem-solution approach in Europe.
`
`When discussing the problem-solution approach, Petitioner highlighted that this
`
`common general knowledge may fall short of showing lack of inventive step.
`
`Patent Owner copies a statement discussing a novelty rejection. Paper 23 at
`
`6. In the statement, Petitioner explains that Braun teaches a device focused on
`
`measuring viscosity and not viscoelasticity. That position is in fact consistent with
`
`Petitioner’s position in this IPR, because Petitioner asserts that Braun in
`
`combination with another reference showing a viscoelastic measurement system
`
`renders the claims obvious. Petitioner does not assert that Braun anticipates the
`
`claims of the ’671 patent.
`
`When finally returning to the EP Response’s discussion of inventive step,
`
`Patent Owner purposefully takes language out of context to support its point.
`
`Paper 23 at 10. Patent Owner includes the quote “[t]he skilled person . . . would
`
`not have recognized the need to simplify and speed up the process of the testing
`
`overall hemostasis without hindsight.” The removed text states “starting from
`
`9
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`D2.” This has nothing to do with the arguments Petitioner presents in this IPR.
`
`
`
`The D2 reference is described as a benchtop experiment setup, and the EP
`
`Response is addressing a technical problem described differently for this art. Paper
`
`23, Ex. A at 3, 4. Patent Owner’s willingness to present a quote out of context
`
`shows that it is grasping at straws to try to salvage the failing defense of its patent.
`
`IV. Conclusion
`
`Patent Owner is required to provide evidence as to why it could not have
`
`presented this publicly available information sooner and as to why the interest-of-
`
`justice requires the Board grant this motion. Patent Owner has not addressed the
`
`first element, providing grounds to deny the motion. More importantly, Patent
`
`Owner has failed to meet the interest-of-justice requirement, because the EP
`
`Response carries little to no weight considering that it is offered in the context of a
`
`different claim meaning and responding to different patentability requirements.
`
`The Board should deny Patent Owner’s motion to submit the supplemental
`
`information.
`
`10
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`
`Dated: May 28, 2019
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`By: /s/ Brian W. Nolan
`Brian W. Nolan (Reg. No. 45,821)
`
`
`
`Brian W. Nolan
`Ying-Zi Yang
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: (212) 506-2500
`E-mail: bnolan@mayerbrown.com
`yyang@mayerbrown.com
`
`Attorneys for Petitioner HemoSonics LLC
`
`
`11
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`Exhibit
`No.
`
`Description
`
`
`
`1
`
`2
`
`
`
`
`Excerpts from Guidelines for Examination in the European Patent
`Office (2018)
`
`Paul Cole, KSR and Standards of Inventive Step: A European View,
`8 J. Marshall Rev. Intell. Prop. L. 14 (2008)
`
`
`
`

`

`Case IPR2018-00950
`U.S. Patent No. 9,915,671
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 35 CFR §§ 42.6(e) and 42.105, I hereby certify that true and
`
`correct copies of the foregoing Petitioner's Opposition to Patent Owner’s Motion to
`
`Submit Supplement Information was served pursuant to Patent Owner’s consent to
`
`electronic service at the following email addresses on May 28, 2019:
`
`
`
`Stephen Y. Chow
`Hsuanyeh Law Group PC
`11 Beacon Street, Suite 900
`Boston, MA 02108
`Stephen.Y.Chow@hsuanyeh.com
`
`Gabriel Goldman
`Ronda Moore
`BURNS & LEVINSON
`125 Summer Street
`Boston, MA 02110-1624
`ggoldman@burnslev.com
`rmoore@burnslev.com
`
`
`
`
`
`Dated: May 28, 2019
`
`
`
`/Brian W. Nolan/
`Brian W. Nolan, Reg. No. 45,821
`Attorney for Petitioner HemoSonics LLC
`
`
`
`
`

`

`
`
`Exhibit 1
`Exhibit 1
`
`
`
`
`

`

`Guidelines for
`Examination in the
`European Patent Office
`
`November 2018
`
`ISBN 978-3-89605-214-8
`
`

`

`November 2018
`
`Guidelines for Examination in the EPO
`
`Part G – Chapter VII-1
`
`Chapter VII – Inventive step
`
`1. General
`An invention is considered as involving an inventive step if, having regard
`to the state of the art, it is not obvious to a person skilled in the Art. Novelty
`(see G-IV, 5) and inventive step are different criteria. The question – "is
`there inventive step?" – only arises if the invention is novel.
`
`Art. 56
`
`2. State of the art; date of filing
`The "state of the art" for the purposes of considering inventive step is as
`defined in Art. 54(2) (see G-IV, 1). It is to be understood as concerning
`such kind of information as is relevant to some field of technology
`(see T 172/03). It does not include later published European applications
`referred to in Art. 54(3). As mentioned in G-IV, 3, "date of filing" in
`Art. 54(2), means date of priority where appropriate (see F-VI). The state of
`the art may reside in the relevant common general knowledge, which need
`not necessarily be in writing and needs substantiation only if challenged
`(see T 939/92).
`
`3. Person skilled in the art
`The "person skilled in the art" is presumed to be a skilled practitioner in the
`relevant field of technology, who is possessed of average knowledge and
`ability and is aware of what was common general knowledge in the art at
`the relevant date (see T 4/98, T 143/94 and T 426/88). He is also presumed
`to have had access to everything in the "state of the art", in particular the
`documents cited in the search report, and to have had at his disposal the
`means and capacity for routine work and experimentation which are normal
`for the field of technology in question. If the problem prompts the person
`skilled in the art to seek its solution in another technical field, the specialist
`in that field is the person qualified to solve the problem. The skilled person
`is involved in constant development in his technical field (see T 774/89 and
`T 817/95). He may be expected to look for suggestions in neighbouring and
`general technical fields (see T 176/84 and T 195/84) or even in remote
`technical fields, if prompted to do so (see T 560/89). Assessment of
`whether the solution involves an inventive step must therefore be based on
`that specialist's knowledge and ability (see T 32/81). There may be
`instances where it is more appropriate to think in terms of a group of
`persons, e.g. a research or production team, rather than a single person
`(see T 164/92 and T 986/96). It is to be borne in mind that the skilled
`person has the same level of skill for assessing inventive step and sufficient
`disclosure (see T 60/89, T 694/92 and T 373/94).
`
`3.1 Common general knowledge of the skilled person
`Common general knowledge can come from various sources and does not
`necessarily depend on the publication of a specific document on a specific
`date. An assertion that something is common general knowledge need only
`be backed by documentary evidence (for example, a textbook) if this is
`contested (see G-IV, 2).
`
`
`
`

`

`Part G – Chapter VII-2
`
`Guidelines for Examination in the EPO
`
`November 2018
`
`A single publication (e.g. a patent document, but also the content of a
`technical journal) cannot normally be considered as common general
`knowledge (see T 475/88). In special cases, articles in technical journals
`can be representative of common general knowledge (see T 595/90). This
`applies in particular to articles providing a broad review or survey of a topic
`(see T 309/88). For the skilled person addressing the problem of bringing
`together certain starting materials, the conclusions of research on these
`materials carried out by only a very few manufacturers form part of the
`relevant general technical knowledge, even if the studies in question have
`only been published in technical journals (see T 676/94). Another exception
`is that it can also be the information contained in patent specifications or
`scientific publications, if the invention lies in a field of research which is so
`new that the relevant technical knowledge is not yet available from
`textbooks (see T 51/87).
`
`Basic textbooks and monographs can be considered as representing
`common general knowledge (see T 171/84); if they contain references
`which direct the reader to further articles dealing with specific problems,
`these articles
`too may be counted as part of such knowledge
`(see T 206/83). Information does not become common general knowledge
`because it has been published in a particular textbook, reference work, etc.;
`on the contrary, it appears in books of this kind because it is already
`common general knowledge
`(see T 766/91). This means
`that
`the
`information in such a publication must have already become part of
`common general knowledge some time before the date of publication.
`
`4. Obviousness
`Thus the question to consider, in relation to any claim defining the
`invention, is whether before the filing or priority date valid for that claim,
`having regard to the art known at the time, it would have been obvious to
`the person skilled in the art to arrive at something falling within the terms of
`the claim. If so, the claim is not allowable for lack of inventive step. The
`term "obvious" means that which does not go beyond the normal progress
`of technology but merely follows plainly or logically from the prior art,
`i.e. something which does not involve the exercise of any skill or ability
`beyond that to be expected of the person skilled in the art. In considering
`inventive step, as distinct from novelty (see G-VI, 3), it is fair to construe
`any published document in the light of knowledge up to and including the
`day before the filing or priority date valid for the claimed invention and to
`have regard to all the knowledge generally available to the person skilled in
`the art up to and including that day.
`
`5. Problem-solution approach
`In order to assess inventive step in an objective and predictable manner,
`the so-called "problem-solution approach" is applied.
`
`In the problem-solution approach, there are three main stages:
`
`(i)
`
`determining the "closest prior art",
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`Part G – Chapter VII-3
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`(ii)
`
`establishing the "objective technical problem" to be solved, and
`
`(iii)
`
`considering whether or not the claimed invention, starting from the
`closest prior art and the objective technical problem, would have
`been obvious to the skilled person.
`
`5.1 Determination of the closest prior art
`The closest prior art is that which in one single reference discloses the
`combination of features which constitutes the most promising starting point
`for a development leading to the invention. In selecting the closest prior art,
`the first consideration is that it must be directed to a similar purpose or
`effect as the invention or at least belong to the same or a closely related
`technical field as the claimed invention. In practice, the closest prior art is
`generally that which corresponds to a similar use and requires the minimum
`of structural and functional modifications to arrive at the claimed invention
`(see T 606/89).
`
`In some cases there are several equally valid starting points for the
`assessment of inventive step, e.g. if the skilled person has a choice of
`several workable solutions, i.e. solutions starting from different documents,
`which might lead to the invention. If a patent is to be granted, it may be
`necessary to apply the problem-solution approach to each of these starting
`points in turn, i.e. in respect of all these workable solutions.
`
`However, applying the problem-solution approach from different starting
`points, e.g. from different prior-art documents, is only required if it has been
`convincingly shown that these documents are equally valid springboards. In
`particular in opposition proceedings the structure of the problem-solution
`approach is not that of a forum where the opponent can freely develop as
`many inventive step attacks as he wishes in the hope that one of said
`attacks has the chance of succeeding (T 320/15, Reasons 1.1.2).
`
`In the event of refusal or revocation, it is sufficient to show, on the basis of
`one relevant piece of prior art that the claimed subject-matter lacks an
`inventive step: there is no need to discuss which document is "closest" to
`the invention; the only relevant question is whether the document used is a
`feasible starting point for assessing inventive step (see T 967/97, T 558/00,
`T 21/08, T 308/09 and T 1289/09). This is valid even if the problem
`identified in a problem-solution reasoning may be different from the one
`identified by the applicant/patentee.
`
`As a consequence the applicant or proprietor cannot refute the argument
`that the claimed subject-matter lacks inventive step by submitting that a
`more promising springboard is available: a piece of prior art on the basis of
`which the claimed invention is considered non-obvious cannot be "closer"
`than a document on the basis of which the claimed invention appears
`obvious, because it is evident in this situation that the former does not
`represent the most promising springboard from which to arrive at the
`invention (T 1742/12, Reasons 6.5; T 824/05, Reasons 6.2).
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`Part G – Chapter VII-4
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`Guidelines for Examination in the EPO
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`November 2018
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`The closest prior art must be assessed from the skilled person's point of
`view on the day before the filing or priority date valid for the claimed
`invention.
`
`In identifying the closest prior art, account is taken of what the applicant
`himself acknowledges in his description and claims to be known. Any such
`acknowledgement of known art is regarded by the examiner as being
`correct, unless
`the applicant states he has made a mistake
`(see C-IV, 7.2(vii)).
`
`5.2 Formulation of the objective technical problem
`In the second stage, one establishes in an objective way the technical
`problem to be solved. To do this one studies the application (or the
`patent),
`the closest prior art and
`the difference (also called "the
`distinguishing feature(s)" of the claimed invention) in terms of features
`(either structural or functional) between the claimed invention and the
`closest prior art,
`identifies
`the
`technical effect resulting
`from
`the
`distinguishing features, and then formulates the technical problem.
`
`to make any contribution, either
`Features which cannot be seen
`independently or in combination with other features, to the technical
`character of an invention cannot support the presence of an inventive step
`(see T 641/00). Such a situation can occur for instance if a feature only
`contributes to the solution of a non-technical problem, for instance a
`problem
`in a
`field excluded
`from patentability
`(see G-II, 3 and
`sub-sections). For the treatment of claims comprising technical and
`non-technical features, see G-VII, 5.4.
`
`In the context of the problem-solution approach, the technical problem
`means the aim and task of modifying or adapting the closest prior art to
`provide the technical effects that the invention provides over the closest
`prior art. The technical problem thus defined is often referred to as the
`"objective technical problem".
`
`The objective technical problem derived in this way may not be what the
`applicant presented as "the problem" in his application. The latter may
`require reformulation, since the objective technical problem is based on
`objectively established facts, in particular appearing in the prior art revealed
`in the course of the proceedings, which may be different from the prior art
`of which the applicant was actually aware at the time the application was
`filed. In particular, the prior art cited in the search report may put the
`invention in an entirely different perspective from that apparent from
`reading the application only. Reformulation might lead to the objective
`technical problem being less ambitious than origin