T 0119/82 (Gelation) du 12.12.1983

I. The effect of a process manifests itself in the result, i.e. in the product in chemical cases, together with all its internal characteristics and the consequences of its history of origin, e.g. quality, yield and economic value. It is well established that analogy processes are patentable insofar as they provide a novel and inventive product. This is because all the features of the analogy process can only be derived from an effect which is as yet unknown and unsuspected (problem invention). If, on the other hand, the effect is wholly or partially known, e.g. the product is old or is a novel modification of an old structural part, the invention, i.e. the process or the intermediate therefor, should not merely consist of features which are already necessarily and readily derivable from the known part of the effect in an obvious manner having regard to the state of the art (cf. also "Cyclopropane/Bayer", T 65/82, OJ 8/1983,327).

II. Obviousness is not only at hand when the skilled man would have seen all the advantages of acting in a certain manner, but also when he could clearly see why he should not act in the suggested manner in view of its predictable disadvantages or absence of improvement, provided he was indeed correct in his assessment of all the consequences.

III. Appellants who wish to rely on a prejudice which might have diverted the skilled man away from the alleged invention have the onus of demonstrating the existence of such prejudice.