9.20. Envisageable products

In T 595/90 (OJ 1994, 695) at issue was the inventiveness of a product which could be envisaged as such but for which no known method of manufacture existed. In its Headnote, the board noted that a product which could be envisaged as such with all characteristics determining its identity including its properties in use, i.e. an otherwise obvious entity, might nevertheless become non-obvious and claimable as such, if there was no known way or applicable (analogous) method in the art for making it and the claimed methods for its preparation were therefore the first to achieve this and do so in an inventive manner (see also T 268/98, T 803/01, T 441/02, T 1175/14).

In T 268/98 the board found that the prior art did not comprise any technical information as to how to obtain the "pinning centers" according to claim 1. Therefore, even if the claimed product were to be considered highly desirable, there was no obvious method in the art to make it. Thus the average skilled person not even could, let alone would, have been able to arrive at the claimed product. The board, therefore, held that the product according to claim 1 involved an inventive step.

In T 233/93 the combination of properties defining the claimed products had been a desideratum which the skilled community had striven to achieve. These properties, however had been considered to be irreconcilable. The board stated that such a desired product, which may appear obvious per se, may be considered non-obvious and be claimable as such, if there is no known method in the art to make it and the claimed methods for its preparation are the first to produce it and do so in an inventive manner (T 1195/00).

In T 661/09 the board found the remaining features of claim 1 expressed no more than a set of desiderata, without any indication of a causal link between the desired properties and the constitution of the claimed device. Insofar as the claim did not define any concrete measures on how to ensure that the claimed properties were effectively obtained, the claimed properties remained at an abstract or conceptual level. The issue of inventive step boiled down to the question of whether or not the skilled person, in view of the available prior art and his/her common general knowledge, would in an obvious way have envisaged the claimed set of desiderata. The board found this question must be answered in the affirmative, concluding that claim 1 lacked an inventive step.