T 1052/07 – Unfair Criticism

This decision also contains an interesting statement on the value of computer simulations:

[4.3] It is also undisputed between the parties that the condenser of granted claim 1 differs explicitly from [the] prior art only in the additional presence of the SICC duct. The parties have however disputed whether this explicitly defined distinguishing feature also implies the inevitable achievement of the advantageous technical effect of the invention identified above over the whole claimed range, and, thus, of the solution of the technical problem of an increase in yield vis-à-vis the prior art.

[4.3.1] The proprietor has argued in this respect that any technically reasonable realization of the features of claim 1 as granted implies sizing and arranging e.g. the SICC duct so that the entire circulation downwards only occurs through this duct and, thus, also inevitably implies that all of the condenser’s tubes are exclusively used for the carbamate condensation. Such exclusive use would then, for any given size of the condenser’s shell, necessarily correspond to an increase in the heat surface available for the condensation and, thus, in yield. The Board takes the view that such gain is substantial not only in the manifest case of the embodiments of the invention wherein the SICC duct is external, but also when such duct is arranged coaxially to the condenser shell. As also shown by the results of computer simulations reported in the grounds of appeal, in the latter case too the volume in the condenser’s intermediate section occupied by the coaxial SICC duct is significantly smaller than that occupied by the plurality of tubes required for the same circulation downwards in the condensers of the prior art.

[4.3.2] The opponent has refuted the relevance of such results because computer simulations are, in its submissions, no reliable source of information. Hence, in the opinion of this Party, neither the patent-in-suit nor these results make it plausible that simply retrofitting the condensers of the prior art with a SICC duct would necessarily turn the tubes in these condensers previously used for the flow downwards of the carbamate solution, into tubes for the flow upwards of the reagent mixture for the carbamate condensation. Hence, the claimed subject-matter would embrace condensers in which the heat exchange surface would remain unchanged. Accordingly, the technical problem solved over the whole of the claimed range would merely be the provision of an alternative to the prior art.

The Board then delves into the subject-matter and establishes that the technical problem put forward by the patent proprietor is indeed solved. It then continues:

[4.3.3] […] This conclusion of the Board is not based on the results of the computer simulations which were provided by the proprietor without details of how these simulations were made. Nevertheless, in the absence of any evidence to the contrary, the Board finds unjustified the criticism of the opponent to their meaningfulness. Indeed, computer simulations are a standard tool for the evaluation and design of industrial chemical reactors.

Moreover, it is apparent that these data only aim at quantifying the saving in volume obtainable when a single larger duct is used instead of a plurality of smaller tubes for fluid circulation, i.e. a saving in volume that the opponent itself has expressly acknowledged as self-evident.

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