Monday, 7 December 2009

T 815/04 - Give A Problem – Or You'll Have One

[…] The board notes that the application as filed contains no express indication of a particular technical problem underlying the invention. [3]

The appellant argued that the method of D2 carried the risk that some of the hydrogen trapped by the adsorbing material would be catalytically oxidised to water rather than simply be adsorbed and trapped upon contact with such a material. The so-formed water would then be adsorbed by the adsorbent material, and would remain adsorbed even upon regeneration of the adsorbent. Hence, at some stage, some of this water would [lead] to problems in a subsequent cryogenic distillation. [3.1]

The appellant thus considered that starting from a process as disclosed in D2, the technical problem consisted in providing an effective and safer process, and that this problem was effectively solved by a process according to present claim 1, which entailed removing any residual hydrogen not by adsorption, but by contacting the stream with a catalyst for oxidising hydrogen to water. [3.2]

The board however notes that it is expressly stated in D2 that using the regeneration methods described therein the removal of hydrogen to the degree required e.g. for cryogenic distillation over repeated hydrogen adsorption and adsorbent regeneration cycles, and that water and carbon dioxide are also removed to the required extent. The appellant did not provide any evidence to the contrary in order to corroborate its assertion concerning the alleged disadvantage of the process according to D2.

Moreover, although D2 is mentioned as prior art in the present application as originally filed, a technical problem to be solved with respect to D2 is not expressly formulated therein. The risk allegedly associated with the hydrogen adsorption taught by D2 is not at all addressed in the application as filed. [3.4]

The technical problem as formulated by the appellant is thus based on a disadvantage of the closest prior art which was only alleged after the filing date of the present application. Further, said technical problem cannot be deduced either from the application as filed, not even when considering the content of document D2 cited therein. In accordance with established case law the appellant’s formulation of the technical problem is thus not accepted. [3.4]

In the light of document D2, the technical problem underlying the application as amended can however be seen in providing a further process for removing the four mentioned impurities from an air stream. [3.5]

As always in such cases, the claim was finally found to lack inventive step.

It is risky not to explicitly state a problem solved with respect to each of the prior art documents cited in an application. If one cannot do so, one has to provide evidence to the EPO that such a problem is indeed solved. Mere allegations will not do.

To read the whole decision, click here.