9.21.7 Enhanced effect

According to the case law of the boards of appeal enhanced effects could not be adduced as evidence of inventive step if they emerged from obvious tests (T 296/87, OJ 1990, 195; T 432/98; T 926/00; T 393/01).

In T 308/99 the claimed use was based on a thoroughly obvious property of known substances. The slightly enhanced effects associated with the claimed use in comparison with substances used in prior art emerged from obvious tests.

In T 104/92 the board held that work involving mere routine experiments, such as merely conventional trial-and-error experimentation without employing skills beyond common general knowledge, lacked inventive step. It would be obvious for a skilled person to use varying proportions of known polymers for outer layers with a reasonable expectation of obtaining better shrink or shrink and heat-seal characteristics for the laminate of the invention. See also in this chapter I.D.7.2 "Try and see situation".

In T 253/92 the subject-matter of claim 1 related to a process for the manufacture of a permanent-magnet alloy. In the board's view, a skilled person would have regarded it as obvious to try out a variety of alloys known from the prior art to be of similar composition to those of the better examples and to measure their magnetic properties.

In T 423/09 the board stated that the enhanced effect did not emerge from routine tests but from the practice to be followed according to the rules and recommendations of the handbook. The skilled person following the recommended practice prescribed in this handbook, and thus acting only routinely would inevitably obtain this enhanced effect, which therefore could not be taken as an indication of inventive step.

In T 237/15 the technical problem was the provision of a treatment regimen for human patients based on oral administration of suberoylanilide hydroxamic acid. The board found that the determination of the optimum dosage regimen required to achieve the therapeutic effect in the (human) patient was a matter of routine experimentation for the skilled person. It held that such routine tests did not require inventive skill and could consequently not establish an inventive step. See also in this Chapter I.D.9.21.12 "Animal testing and human clinical trials".