T 0334/92 (Benzodioxane derivatives/EISAI) vom 23.03.1994

Inventive step (yes) - closest prior art - determination of the technical problem

I. The question of inventive step can only be objectively answered if an unrealistic approach is avoided. This implies that it is not appropriate to formulate an artificial and unrealistic technical problem which a skilled person, in practice, would not have considered (following T 495/91 and T 741/91). Therefore, a document that has been disregarded by those skilled in the art for more than 20 years and which has never been used during this period as a basis for further development, and which, moreover, is completely silent about the extent of the promised activity, which document, finally, does not even mention, let alone discuss, the relevant state of the art, so that the person skilled in the art is not in the position to recognise any technical advantage of these compounds in respect of that state of the art, does not represent the closest state of the art and cannot, therefore, be used for defining a realistic technical problem (No. 4.2 of the Reasons).
II. It is not permissible to ignore, for the purpose of defining the technical problem, technical evidence establishing technically useful properties of the claimed compounds, including the obtained level of activity (see No. 4.6 of the Reasons).