4.1. Determination of the objective technical problem in general
4.1.3 Whole scope of the claim
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
When defining the objective technical problem, an effect cannot be retained if it is not credible that the promised result is attainable throughout the entire range covered by a claim (T 626/90; T 583/93, OJ 1996, 496; T 25/99; T 71/09; T 824/07; T 447/10; T 1837/13, T 340/13). In T 939/92 (OJ 1996,309) the board concluded that a technical effect which justified the selection of the claimed compounds in the case in hand must be one which could be fairly assumed to be produced by substantially all the selected compounds (see also T 489/14 of 22 February 2019 date: 2019-02-22, OJ 2019, A86; T 41/16).
In T 161/18 the claimed method was distinguished from the prior art only by an artificial neural network; however, the training of this network was not disclosed in detail. The board was not convinced that the asserted effect was achieved by the claimed method across the whole scope of the claim. This effect therefore could not be taken into account as an improvement over the prior art when assessing inventive step.
In T 1841/11 the board held that a problem which is not mentioned in the application in relation to the claimed feature, and which would not arise over the whole ambit of the claim, or even for those embodiments described in detail in the application, cannot be considered to be a suitable choice.
In T 943/13 the board came to the conclusion that the causal relationship between the substance or composition on the one hand and the therapeutic effect achieved on the other hand was decisive for the assessment of inventive step of further-medical-use claims. This causal relationship constitutes the claim's contribution over the prior art. Accordingly, the inventive step of such a claim hinges on the question as to whether this causal relationship, and not just the substance or composition as defined in the claim, is obvious. Hence, in the case in hand the board considered that the objective technical problem was the provision of the claimed therapeutic effect by a different means.
- T 629/22
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.