4. The technical problem

Catchword: 

Purported technical effect not derivable from the application as filed in the sense of G 2/21 (points 3.5 to 3.5.3 of the Reasons)

Catchword:

The undesired phenomena observed in the patent with the use of the prior art compositions would not inevitably manifest themselves upon the practical implementation of the teaching of the prior art. The recognition of the relevance of these phenomena should therefore be considered to form part of the technical contribution described in the patent. A specific reference in the formulation of the objective technical problem to the avoidance of these phenomena risks to unfairly direct development towards the claimed solution, which is not permissible in line with the principles as developed in the established jurisprudence (see reasons section 4.2.3).

Orientierungssatz:

Berücksichtigung einer in nachveröffentlichten Dokumenten gezeigten technischen Wirkung im Lichte der Entscheidung G 2/21 (Punkt 3.3 der Entscheidungsgründe).

Catchword:

Since the problem and solution approach defines the problem based on the effect of the differences from the closest prior art, and the effect is derived primarily from the disclosure of the invention, the effect documented in the present documents alone is taken as the basis for the problem formulation. The Board concluded that any further, undocumented effects would be speculative and should not be additionally included in the problem formulation (reasons 5.3.2)

Catchword: 

- Binding effect of a referring decision (see Reasons, points 9 to 9.4.5) - Interpretation of order no. 2 of G 2/21 (see Reasons, points 10 to 11.14, in particular points 11.10 and 11.14) - Submissions based on earlier decisions of the boards of appeal - admittance into the appeal proceedings (see Reasons, points 32 to 32.4, in particular point 32.3)

Headnote: 

I. Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date.  II. 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 derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.

Abstract

In T 629/22, concerning the inventive step of the subject-matter claimed in auxiliary request 1a-p-s, the board identified D12 as the closest prior art. The claimed subject-matter of a cheese analogue differed from the teaching of D12 at least on account of the type and amount of starch: 10 to 24 wt.% of non-modified root or tuber starch or of a waxy root or tuber starch instead of 7 wt.% modified starch.

The board was satisfied that the tests in the patent and in D27 and D29 made it credible that cheese analogues prepared using non-modified tuber and root starch had melt-stretch characteristics. Appellant 1 noted however that example 28 of D38 showed that no stretchable cheese analogue could be obtained using 10 wt.% waxy potato starch, 0.5 wt.% potato protein and 35 wt.% sunflower oil. This demonstrated that the claims were overly broad and that melt-stretch characteristics could not be achieved across the entire scope claimed.

The board did not agree with these conclusions. The amounts of potato protein (0.5 wt.%) and starch (10 wt.%) used in example 28 of D38 were the lowest foreseen in the patent whereas the amount of fat (35 wt.%) was the highest. This meant that the allegedly non-working embodiment in example 28 related to a rather peculiar case.

The patent and the experimental reports D27 and D55 described cheese analogues comprising different amounts of waxy starch, potato protein and fat. The amount of these ingredients was varied substantially across the entire scope claimed: that of the potato proteins from 0.5 to 5 wt.%, that of the starch from 10 to 24 wt.% and that of oil from 10 to 35 wt.%. All these cheese analogues exhibited melt-stretch characteristics. This made it credible that the claimed effect could be obtained substantially across the entire scope claimed.

The board noted the findings of the Enlarged Board in G 1/03 (OJ 2004, 413), point 2.5.2 of the Reasons, that where "…there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort […] the inclusion of non-working embodiments is of no harm."

The board found that in the case in hand the patent indeed described a large number of conceivable alternatives and sufficient information for finding appropriate alternatives over the claimed range, with reasonable effort. If a skilled person failed to prepare a stretchable cheese analogue using the amounts of ingredients in example 28 of D38, they would: realise that the conditions used are extreme because the amounts of the ingredients are at the edge of each of the ranges foreseen in the patent; find in the patent, and in particular in the examples, the teaching that compositions having the desired properties could be obtained by increasing the amount of potato protein and/or decreasing the amount of the oil. The tests in the patent and in D27 and D55 made it credible that if a skilled person followed the teaching in the patent, they would obtain a cheese analogue having the relevant stretch properties.

The board concluded the claimed effect could be obtained substantially across the entire scope claimed. Therefore, the presence of a single non-working embodiment was of no harm.

Abstract

In T 1994/22 the respondent (patent proprietor) inter alia had relied on post-published data D32 and submitted that Form II (according to claim 1 of the main request) as claimed had an improved photostability over Form III (comparative).

The respondent relied on the statements made in T 116/18 as regards G 2/21 and submitted that referring to the provision of a novel crystal of compound A (selexipag) and to a pharmaceutical product of "high quality for which constant effect can always be shown and a form which is handled easily industrially", the skilled person would have understood that the effect of improved photostability was implied by or at least related to the technical problem initially suggested in the originally filed application. Therefore, requirement (i) [in T 116/18], as encompassed by the technical teaching, was met. Furthermore, the respondent claimed the skilled person would not have had any legitimate reason to doubt that the improved photostability could be achieved with the claimed polymorphic form of selexipag. Therefore, requirement (ii) [in T 116/18], as embodied by the same originally disclosed invention, was also met in the present case.

In line with T 116/18, the board in the present case acknowledged that the mere fact that photostability or improved photostability was not contained in terms of a positive verbal statement in the application as filed and that the application as filed did not contain any data as regards photostability, as such, did not imply that the effect of improved photostability could not be relied on in terms of G 2/21 or T 116/18.

However, the board did not consider such a sweeping statement regarding "high quality" and "easy industrial handleability", which covers a plethora of potential advantageous properties, to encompass photostability, let alone improved photostability. If such a sweeping statement were sufficient, a reference to high quality would be sufficient to invoke whatever technical effect as being encompassed by an application as filed in the sense of G 2/21. This would essentially render the first criterion of order no. 2 of G 2/21 meaningless. In the present case, the application as filed was in fact directed to particle size, residual solvent content and amount of impurities, properties which are entirely unrelated to photostability. Therefore, based on these properties, having the common general knowledge in mind, the skilled person would by no means have recognised that (improved) photostability was relevant to the claimed subject-matter. Going from these specific properties to the effect of photostability would also clearly change the nature of the invention, contrary to what is required by T 116/18. Hence, the board found the effect of photostability was not encompassed by the teaching of the application as filed.

Furthermore, even if it were wrongly concluded in the respondent's favour that the technical teaching of the application as filed were to encompass photostability in the sense of T 116/18, it would not do so "together with the claimed subject-matter", as required by this decision.

The respondent submitted during the oral proceedings that the present case was also in line with T 1989/19 and that it was not a requirement that the application as filed disclosed improved photostability. In that case, the board held that once the criterion of the derivability of a technical effect in the sense of G 2/21 was fulfilled, this applied equally to the improvement in this effect. The board agreed with the view expressed in T 1989/19; however in the present case, photostability was not encompassed and thus not derivable from the teaching of the application as filed in the sense of G 2/21. Furthermore, unlike in T 1989/19, the application as filed in the present case referred to three polymorphic forms in equal terms, and the present case was not one in which the purported improvement was asserted to be present for the subject-matter of the application as filed over the subject-matter disclosed in the prior art.

It followed that improved photostability of Form II as demonstrated in D32 could not be taken into account in the assessment of the technical effects achieved by the distinguishing feature.

Abstract

In T 1602/21 the opposition division had decided that the provision of a method according to claim 1 of the patent as maintained involved an inventive step. One of the differing features to closest prior art D1 was seen in the nature of adsorbent, i.e. an OH-type basic ion-exchange resin (alternative "a" in the impugned decision) or an adsorbent selected from zeolite, silica-alumina, and alumina (alternative "b" in the impugned decision), or mixtures thereof.

In the case of alternative "a", a surprising technical effect based on the disclosure of documents D30 and D32 was acknowledged – D32 being experimental data provided by the respondent during the opposition proceedings. The appellant argued, by reference to G 2/21, that D32 should not be considered for the purposes of inventive step, since it was published after the filing date of the contested patent, and since the technical effect allegedly shown therein was not mentioned in the patent. The technical effect could thus not be relied upon, and the technical problem could only be seen in the provision of an alternative, which had been solved in an obvious manner.

The board was not convinced by the appellant's above argument. The application as filed disclosed that the use of an OH-type strongly basic ion-exchange resin led to improved removal of sugar or sugar alcohol. Document D32 disclosed experimental data showing a link between the use of an OH-type strongly basic ion-exchange resin and the effect of improved removal of sugar or sugar alcohol. The board thus concluded that the effect was derivable from the application as filed, and as such the respondent could rely upon it for inventive step, even if D32 had been filed after the filing date of the contested patent (see G 2/21, headnote II).

The board further observed that the condition stated by G 2/21 that "the skilled person ... based on the application as originally filed, would derive said effect as being encompassed by the technical teaching" (board's emphasis) was not equivalent to the "gold standard" disclosure required normally for Art. 123(2) EPC. It was sufficient that the skilled person was satisfied that the advantageous technical effect was indeed achieved by the claimed solution, on the basis of the teaching of the application, and once the technical effect had been brought to its attention, possibly from another source as the application. It was not required that the technical effect relied on was also disclosed so explicitly and clearly that the skilled person would recognise it only on the basis of the application and without knowing the later evidence.