T 0119/82 - Disadvantageous modification of the prior art ("Gelation") - #98

Rank: 98
Number of citations: 55

This appeal is against a decision of the examination division refusing European patent application 79 301 547.0. Although T 119/82 has not been cited in other BoA decisions in 2016 and 2017, its citation frequency was relatively stable over the past three decades.

Claim 1 was directed to a process for forming a polymeric solution or gel having a high viscosity. The process included a number of steps, i.a., the step of "adding 5 to 500 volume% water based on the volume of organic liquid plus polar cosolvent to a solution". It was clear that the added water was a by-product and did not have any advantageous effect on the polymeric solution or gel produced. The applicant, however, argued that the process differed from the prior art in that the prior art did not disclose the addition of water.

The claim was regarded by the Board to be an "analogy process" (see Case Law Book, chapter I.D.9.17). The Board recalled that analogy processes are patentable insofar as they provide a novel and inventive product. With respect to novelty of the composition produced by the process (of which the applcant claimed that it was novel by virtue of the [undesired] water present) the Board stated:

"The appellants have argued that the products obtained according to the claimed process are novel and not identical with those suggested in the state of the art, since there is also an aqueous phase present. It is evident, however, that the aqueous phase is inessential and useless, and should, even if entrapped in the gel, lessen the overall viscosity of the result. In larger amounts, it would even defeat the purpose of the exercise if left around the product and this is why the specification recommends its removal by conventional "liquid extraction" methods (page 4, line 2) which obviously mean appropriate separation techniques. Alternatively, the aqueous phase may be simply evaporated (page 2, line 36 to page 3 line 7, and claim 2). The temporary aggregation of a known article with functionally superfluous and unrelated other known components is representing a mere collocation of objects, which should not impart novelty to the same unless there are reasons to the contrary suggesting some further effect. An increased amount of an undesirable contaminant would not, for instance, render an old compound new. In the present context, the aqueous phase is a by-product of no technical relevance."

On the issue of inventive step of the process, the applicant also argued that the process would be inventive, because it would be so odd and the skilled person would be aware of the disadvatages. Here the Board states:

"16. The argument that alternative routes should be considered to be the less obvious the odder, or perhaps even the more disadvantageous, they are, cannot be sustained. The rhetorical question why the skilled man should have contemplated such detour at all, would equally apply, if someone tried to patent the least attractive further analogy processes for the making of a known compound. 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."

In summary, a solely disadvantageous modification of the prior art is not patentable.

T 119/82 is also frequently cited for its statement that, if a party relies on an alleged "prejudice in the art", which would keep the skilled person from going into the direction of the invention, then this party bears the onus of proof that the prejudice indeed exists (see Headnote III).

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Headnote:

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.

The full text of the decision can be found here.