Zusammenfassung von Article 056 EPC für die Entscheidung T1865/22 vom 21.10.2024

In T 1865/22 the board determined that the objective technical problem was to provide an alternative stripping composition. Considering obviousness, the board found that arbitrarily varying the concentrations of components in a composition, including changing the concentration of one component in favour or to the detriment of the other components, was routine for the skilled person. Such a measure did not involve an inventive step. The respondent (patent proprietor) had also argued that the skilled person would not have reduced the amount of the coupling agent monoethylene glycol in example 2 of D7, because according to D7 high concentrations of the coupling agent were essential for the stripping composition to have an appropriate tolerance to water. Mainly because of this argument, the opposition division had acknowledged an inventive step based on D7 as the closest prior art. The board stated that the mere fact that claimed subject-matter excluded a technical feature (here: the higher concentration of the coupling agent monoethylene glycol) disclosed in the closest prior art as being essential or advantageous for a technical effect (here: the advantageous effect of the higher concentration of the coupling agent monoethylene glycol on the tolerance to water) could not in itself establish the existence of an inventive step. Rather, in situations such as the present one, where the exclusion of the technical feature in question was the only feature distinguishing the claimed subject-matter from the closest prior art, it must be shown that the claimed subject-matter achieved said technical effect to an extent comparable to that of the closest prior art, even without this feature. Without such proof, the claimed subject-matter merely resulted in an obvious deterioration of the technical effect described in the closest prior art. It followed that the subject-matter of claim 1 of the main request was not based on an inventive step over D7 alone and that the main request was not allowable. At the oral proceedings before the board, the respondent had also submitted for the first time in the appeal proceedings that the distinguishing feature was associated with technical effects. The stripping composition (i) had a lower viscosity and, as a consequence of this, was easier to filter and (ii) caused less damage to the substrate upon incorporation of water during use. In other words, the stripping composition was more tolerant to water. The board decided not to admit these submissions (Art. 13(1) and (2) RPBA). The respondent's submissions at the oral proceedings constituted an amendment to its appeal case and there existed no exceptional circumstances in the case in hand (Art. 13(2) RPBA). The change of representative approximately three weeks before the oral proceedings does not qualify as an exceptional circumstance. The board also noted that the respondent’s submission raised a complex issue. The application as filed did not mention anything about a reduction in viscosity or an improvement in filterability raised by the respondent in its submission. Against this background, the complex issue arose as to whether the respondent could rely on these effects at all for the assessment of inventive step (in light of G 2/21). In the board's view, this and a further complex issue also clearly spoke against the admittance of the respondent's submissions (Art. 13(1) RPBA). Lastly, the respondent should have filed its submissions on the additional distinguishing feature "non-aqueous" and the two technical effects much earlier and not only at the oral proceedings before the board, i.e. at the latest possible stage of the appeal proceedings. Admitting these submissions would clearly have been contrary to procedural economy (Art. 13(1) RPBA). In addition to the above, the board found that none of the auxiliary requests were allowable. The board ordered that the decision under appeal be set aside and that the patent be revoked.