The decision [to refuse the application] was based on the claims as originally filed. Claim 1 reads as follows: “An ink composition […] containing an amorphously solidifying monomer compound, characterised in that the said compound shows a crystallinity of less than 1% when a melt of the compound is cooled at a rate of 5°C/min to past its solidification path and is then heated at a rate of 20°C/min to above its melting temperature.” [III]
[…] In claim 1, the amorphous solidifying monomer compound is characterised in that it shows a crystallinity of less than 1% when a melt of the compound is cooled at a rate of 5°C/min to past its solidification path and is then heated at a rate of 20°C/min to above its melting temperature. [3.1]
The only amorphous solidifying monomer compounds satisfying this parameter which are disclosed in the application as filed are 2,2’-biphenol esters of carboxylic acids having an aromatic character. [3.2]
The Appellant argued that other binders than the exemplified esters of 2,2’-biphenol [could] be identified by simple routine experimentation, following the procedure as described on page 3. [3.3]
However, this procedure only describes how to determine whether or not a compound meets the parameter defined in claim 1. It gives no indication how to select the “amorphous solidifying monomer compounds” to be tested according to that procedure.
Moreover, the examples of the present application show that many aromatic or non aromatic esters other than that of 2,2’-biphenol do not satisfy the parameter indicated in claim 1.
So, the present examples actually give the impression that - apart from the monomers defined by their chemical structures in the description […] - few, if any, further suitable monomers could be found. [3.4]
The Appellant confirmed this impression by pointing out that “it may be a lot of work to find compounds other than the exemplified ones, possibly because there are not too many compounds that show this behaviour, ...” [3.5]
Hence it has to be determined whether or not this “lot of work” means that the subject-matter of claim 1 does not meet the requirements of A 83, i.e. whether or not it imposes an undue burden on the person skilled in the art trying to perform the claimed invention in the whole area claimed (see T 409/91 [3.5]).
The person skilled in the art trying to trace monomers meeting the required parameter does not have at his disposal, neither by his common general knowledge nor by means of the disclosure in the application as filed, any information leading with a reasonable probability towards other monomers having the defined parameter other than those specifically disclosed.
Consequently, the person skilled in the art has to find out merely by trial and error as to which, if any, compound meets the parameter set out in claim 1, i.e. by proceeding on a lottery basis or by making own investigations without the shadow of any useful guidance, namely by performing a research program. This constitutes an undue burden (see T 516/99 [3.1]). [3.6]
That means that the fact that this can be done by routine experimentation is not sufficient for the subject-matter claimed to meet the requirements of A 83. [3.7]
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