tag:blogger.com,1999:blog-5574479.post1705174638319984901..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: Lord Justices Floyd and Arnold disagree on the inventiveness of expandable hoses [2020] EWCA Civ 871Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-5574479.post-76279231918509177092020-07-27T16:18:15.535+01:002020-07-27T16:18:15.535+01:00If the claim is directed to a water hose, the clos...If the claim is directed to a water hose, the closest prior art can only be a water hose. Starting with an aerospace hose would be blatant hindsight.<br /><br />If the claim is not limited to a water hose, then any hose, can be taken as closest prior art.<br /><br />It is worth noting that the IPC, cf. F16L 11/.., only relates to hoses in general irrespective of the fluid transiting trough the hose. Mac Donald was classified by the USPTO in A61B or A61M, as it dealt with a breathing tube. However within the EPO Mac Donald was also classified in F 16L 11/... <br /><br />In order not to inject cold air into the lungs of a patient during artificial ventilation, a flexible breathing tube contains a heating spiral wound around it. If in the prior art, a flexible pipe carrying water is equipped with a heating spiral so that the water is tepid or does not even freeze, I would consider that the water pipe is novelty destroying for the breathing tube and vice versa.<br /><br />T 176/84 relates to a pencil sharpener comprising a movable closing so that the shavings would not fall from the box. At the time the board considered that the skilled person would not have looked at the closure system of a money box which also hinders the money falling out of the box. It is possible to say that T 176/84 corr4sponds to the position of Floyd LJ. <br /><br />The discussion was centred on whether the skilled person building a pencil sharpener would be looking at a money box or not. The decision was heavily commented, some approving it, some not.<br /><br />In spite of this very old decision, I am of the opinion that the majority decision is fully justified. <br /><br />Even if the claims would have originally been limited to water hoses, the patentee would not have had a stronger stance.<br /><br />In that he envisaged himself other uses as just water hoses, shows that it is acceptable to also take into account hoses not only carrying water.<br /><br />Most of the hoses disclosed as background art in the introductory part of the original description and in the patent do not relate to water carrying hoses.<br /><br />It is a pity that during the supplementary European search Mac Donald was not found as it bears the same classification unit, F 16L 11/12 as the patent.Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-48091081825459376302020-07-27T09:41:36.670+01:002020-07-27T09:41:36.670+01:00In this case the skilled person was taken as a hos...In this case the skilled person was taken as a hose designer, with knowledge of both garden hoses and other hoses (based on evidence that in the field of hose design there was no separate skilled person who would only look at garden hose design). Once it was accepted that the skilled person was in a technical field of hoses (rather than specific to garden hoses) the starting point appears to be more fair? I wonder if the possible unfairness of the decision is simply due to the breadth of prior art available - sometimes you just have to be unlucky that a similar idea was identified but not successfully commercialised earlier?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-17380939057022951362020-07-27T08:33:58.954+01:002020-07-27T08:33:58.954+01:00Thanks to Rose Hughes for making a tantalizing con...Thanks to Rose Hughes for making a tantalizing contrast of the approaches.<br /><br />In Floyd LJ's analysis, he was bound by law to start with McDonald, which he then heavily discounted (and thereby creating a bigger gap between McDonald and the invention in question) for the reason that in his views McDonald was a "mere paper proposal".<br /><br />I would say that this case points to a flaw under the problem / solution approach, in that the choice of the CPA may not be straightforward and can make a material difference (like in relation to the present invention). <br /><br />For reference, the EPO Guideline states: <br />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.<br /><br />These guidelines aren't the clearest and they do not have express statutory basis. Instead of arguing what McDonald has disclosed to the skilled addressee, the real fight should be over whether McDonald may be the CPA.Chong Yuannoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33627245447230356532020-07-24T09:53:32.305+01:002020-07-24T09:53:32.305+01:00May I draw your attention to the publication of th...May I draw your attention to the publication of the case in Kluwer Patent Blog and the comments to be found there.<br /><br />http://patentblog.kluweriplaw.com/2020/07/21/aerospace-to-garden-hoses-differing-opinions-in-the-english-court-of-appeal-as-to-obviousness-over-obscure-prior-art/?doing_wp_cron=1595580172.9746179580688476562500#comment-37212<br /><br />That a garden hose is the proper closest prior art appears not suffering any discussion. <br /><br />The only question left is whether the skilled person would take into consideration Mac Donald which deals with a breathing apparatus. <br /><br />In my humble opinion it does not matter for the pipe whether it forwards water or air as both are fluids. In the cooperative classification the EPO has also classified Mac Donald in F 16L 11, which deals with hoses without any limitation to the fluid transported by the hose. <br /><br />The OD sides with Floyd LJ, but I would slide with Arnold LJ. <br /><br />Let's see what the Board of Appeal will make out of it. Attentive Observernoreply@blogger.com