T 0220/83 (Grounds for appeal) 14-01-1986

Reasons for the Decision

1. The appeal complies with the requirements as to admissibility set out in Articles 106, 107, 108, first and second sentences, and Rule 64 EPC. However, there still remains the question of whether the grounds advanced in support of the appeal can be regarded in terms of content as having met the time limit laid down in Article 108, third sentence, EPC or whether the appeal should be dismissed in accordance with Rule 65(1) EPC as inadmissible because this was not so.

2. The Board takes the view that any passages either in the literature showing the state of the art or in the Guidelines for Examination to which sufficiently precise reference is made in the grounds for appeal may be considered as much part of the latter as though contained therein. Accordingly, the passages quoted from US-A-3 507 891 have to be looked at with a view to establishing the technical message they convey. First comes a description of individual conditions, such as pressure and temperature that have to be adhered to in catalytic hydrocarboxylation (carbonylation) reactions, both in general and in that particular case (column 3, lines 40 to 53). The influence of the reaction temperature on the degree and duration of 1- dodecene conversion and on the selectivity of the ester formation is demonstrated (column 6, Example IV, Table 4), and finally, it is shown how, using 1-dodecene and internal dodecene, hydro- carboxylation (carbonylation) may be carried out with a comparable result with both terminal and internal olefins (column 7, Example VI, Table 6). A technical relation between this process and the contested patent is readily discernible in that both processes are concerned with catalytic hydrocarboxylation.

3. The references to passages in the Guidelines concerned with inventive selection and inventive step (prejudice) (Part C, Chapter IV, section 9.8, (C2) and (d)) are intended to demonstrate that the contested patent represents vis-à-vis US-A-3 507 891 a selection invention with unexpected effects which could only be arrived at by overcoming a technical prejudice.

4. However, the appellants gave no explanation within the appeal period of the kind of technical selection criteria involved, of what were to be regarded as the unexpected effects or of the facts giving rise to the alleged prejudice. Nor in the Board's view are facts evidencing an inventive selection that involved overcoming a prejudice at all obvious; they may at most be conjectured. Consequently, it is left to the Board and the parties to the appeal to ascertain for themselves any facts substantiating the claim to inventive step. This, however, is just what the requirement that grounds for appeal be filed is designed to prevent. If, as is here the case, US-A-3 507 891 played a crucial role in the decision under appeal, the appellants invoking this document are obliged to analyse it in detail when setting out the grounds for their appeal and cannot merely content themselves with asserting that the contested decision is incorrect and requesting that the patentability of the subject-matter denied by the department of first instance be reconsidered. Instead they must state in their grounds the legal or factual reasons why the contested decision should be set aside so as to ensure that the appeal may be assessed objectively. This was not done in the present case.

5. The department of first instance did not ignore the fact that examination as to inventive step has to establish whether a selection invention is involved. However, it did not in its comments - as brief as those of the appellants - accept that the selection of a range involved overcoming a prejudice and achieved an unexpected result. In order effectively to contest the first decision, therefore, the appellants would have had to state in their grounds for appeal the legal or factual reasons why they consider the invention being defended nonetheless to possess the quality not conceded. This would have required a comparative presentation showing which parameters were selected, what were the unexpected effects it was claimed were achieved and in what the alleged prejudice had consisted. The best way of doing this would have been to apply the passages quoted from the Guidelines to the invention being defended in specific terms, stating the facts regarded as relevant. Since the appellants did not adopt this approach their statement of grounds for the appeal cannot be accepted as substantively adequate grounds within the meaning of Article 108, third sentence, EPC, despite the recognisable technical relation between the subject- matter of the revoked patent and the content of the document quoted in its defence.