Oldies But Goldies – Arbitrary Selection

T 939/92, one of the major decisions dealing with arbitrary selections was issued by Board 3.3.01 on September 12, 1995.

The underlying appeal was filed by the applicant whose application had been refused by the Examining Division (ED).

Claim 1 on file before the Board read:

The triazole sulphonamides of the formula:

and salts thereof, where:

R1 represents hydrogen, alkyl of 1 to 6 carbon atoms, phenyl, or substituted or unsubstituted pyrimidin-2-yl;

R2 represents hydrogen, alkyl of 1 to 6 carbon atoms, phenyl, amino, alkylamino of 1 to 4 carbon atoms, or 2,5-dimethylpyrrol-1-yl; and

R3 represents optionally substituted phenyl;

with the following provisos:

(a) R1 and R2 are not simultaneously hydrogen;

(b) when R1 represents hydrogen and R3 simultaneously represents phenyl or 4 methylphenyl, R2 does not represent phenyl;

(c) when R1 represents hydrogen, R2 does not represent amino.

[2.1] The Board is satisfied that Claim 1 […] meets the requirement of A 123(2), and that the claimed subject-matter is novel. Since the decisive questions in this appeal are those of clarity and support by the description (A 84) and of inventive step (A 56), under which the appeal fails for the reasons set out below, it is not necessary to give any reason for this finding.

[2.2] The first issue to be decided is whether the present claims are objectionable under A 84. The ED has raised this objection under two headings, the first being lack of clarity, and the second being lack of support by the description.

[2.2.1] As to the first heading, the ED held that e.g. the term “substituted” cannot be given its ordinary meaning, since the claim related to chemical compounds having a biological activity. However, the present independent claim covers certain chemical compounds per se, and not just those compounds having a particular biological activity. Hence the biological activity of these compounds is not an essential technical feature of the claimed subject-matter, and thus not part of the definition of the claimed subject- matter, so that there is no reason for the term “substituted” not to have its ordinary technical meaning, namely “substituted by absolutely anything” […]. This meaning is, moreover, the one that was clearly intended by the [applicant]. On this basis, Claim 1 is, in the Board’s judgment, clear in the sense of A 84.

[2.2.2] As to the second heading, the ED held that Claim 1 of the main request was an unreasonable generalisation of the examples contained in the description. However, in the Board’s judgment, it does not follow from A 84 that a claim is objectionable simply because it is “unreasonably broad”. In particular, this does not follow from the requirement that the claims must be supported by the description (which, pursuant to R 27(1)(e), need not include examples). Rather, the expression “support by the description” means that the technical features stated in the description as being essential features of the described invention must be the same as those used to define the invention in the claims (see decision T 133/85 [2] and T 409/91 [3.2]), for otherwise the claims would not be true definitions but mere descriptions. As was further pointed out in decision T 409/91 [3.3-4], a claim covering subject-matter which is not disclosed in the description in the manner required by A 83 is, in addition, not supported by the description within the meaning of A 84. In the present case, […] the ED had no doubts as to the possibility of preparing the claimed compounds. Furthermore, the ED did not find that the description mentioned technical features as being essential features of the claimed invention which were not part of the definition of the present Claim 1, nor could the Board find any such feature. Instead, the ED relied upon the fact that a skilled person upon reading the application documents would not have believed that all claimed compounds would or could be likely to possess the alleged herbicidal activity, which feature is, as already stated, not part of the definition of the subject-matter for which Claim 1 seeks protection. Therefore, the facts of the present case differ from those underlying decision T 409/91, so that an objection of lack of support by the description cannot, in the Board’s judgment, be validly raised in the present case.

[2.2.3] This does not mean, however, that the properties (or the technical effect) of the claimed subject-matter are irrelevant to the issue of the patentability of the claimed compounds, as was submitted by the [applicant]. In the Board’s judgment, this issue may not only arise under A 84, but is also intimately linked to the issue of inventive step under A 56, under which heading it will now be considered.

[2.3] It hardly needs re-stating that the question of inventive step can only be considered on the basis of the relevant state of the art, see A 56. However, A 54(2) does not limit the state of the art to written disclosure in specific documents; rather it defines it as including all other ways (“in any other way”) by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge (CGK), which, again, may or may not be in writing, i.e. in textbooks or the like, or be simply a part of the unwritten “mental furniture” of the notional “person skilled in the art”.

It is also clear that in the case of any dispute as to the extent of the relevant CGK this, like any other fact under contention, has to be proved, e.g. by documentary or oral evidence (see also T 766/91 [8.2]). As in the present case, during the oral proceedings (OPs), the [applicant] has abandoned his earlier contention that the starting materials and the synthetic methods necessary for preparing the claimed compounds were not available to those skilled in the art, taking into account the relevant CGK, it is no longer necessary to do this. It suffices to accept D9 as a fair representation of the CGK.

[2.3.1] D3 relates inter alia to a class of compounds having the following general formula

wherein R1 to R4 are selected from hydrogen or aliphatic substituents and wherein each substituent has at most eighth carbon atoms […]. R3 may also mean phenyl, which may be substituted by 1 to 3 halogen atoms. These compounds are said to have herbicidal activity […]. In addition, this document describes as starting material for obtaining the above compounds a class of compounds having the general formula

wherein R3 and R4 have the above meanings […]. If R4 is hydrogen, these compounds correspond to compounds of formula I of present Claim 1, wherein R1 and R2 are each hydrogen. Such compounds are excluded from present Claim 1 by proviso (a).

[2.3.2] D7 and D8 each relate to similar groups of compounds corresponding to the general formula

wherein the substituents of the phenyl ring as well as the substituents R4 and R5 contain at most four carbon atoms. These compounds may be used as herbicides […].

[2.3.3] These documents together with the now accepted CGK form the state of the art on the basis of which the issue of the inventive step of the claimed compounds needs to be decided in this appeal.

[2.4] During the OPs the [applicant] argued that the only question arising under A 56 in the present case was whether or not, in the light of the above state of the art, a skilled person would have prepared, or tried to prepare, the claimed compounds of formula I (see point IV above), wherein R3 was optionally substituted phenyl. A 56 did not expressly require, so he submitted, that the subject- matter of a patent application had to solve a technical problem, and that, accordingly, the issue of inventive step had to be decided without regard to the solution of any technical problem.

[2.4.1] Whilst the Board agrees with the [applicant] that the above question is the one which has to be answered under A 56, it does not agree with his inference that the existence of a technical problem and its solution, including the problem of proposing alternatives to known activities (e.g. chemical processes) or physical entities (e.g. chemical compounds), is irrelevant to answering this question and so deciding the issue.

[2.4.2] The reason for this is, that it has for long been a generally accepted legal principle that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art (see T 409/91 [3.3-4] and T 435/91 [2.2.1-2]). Now, whereas in both the above decisions this general legal principle was applied in relation to the extent of the patent protection that was justified by reference to the requirements of A 83 and A 84, the same legal principle also governs the decision that is required to be made under A 56, for everything falling within a valid claim has to be inventive. If this is not the case, the claim must be amended so as to exclude obvious subject-matter in order to justify the monopoly.

Moreover, in the Board’s judgment, it follows from this same legal principle that the answer to the question what a skilled person would have done in the light of the state of the art depends in large measure on the technical result he had set out to achieve. In other words, the notional “person skilled in the art” is not to be assumed to seek to perform a particular act without some concrete technical reason: he must, rather, be assumed to act not out of idle curiosity but with some specific technical purpose in mind.

[2.4.3] For this reason, the Boards of Appeal consistently decide the issue of obviousness on the basis of an objective assessment of the technical results achieved by the claimed subject-matter, compared with the results obtained according to the state of the art. It is then assumed that the inventor did in fact seek to achieve these results and, therefore, these results are taken to be the basis for defining the technical problem (or, in other words, the objective) of the claimed invention (which problem may, as already stated above, be to provide a further - or alternative - process or physical entity, here a group of chemical compounds). The next step is then to decide whether the state of the art suggested the claimed solution of this technical problem in the way proposed by the patent in suit (see e.g. T 24/81 [4]). If the state of the art consists of written disclosures, it is often convenient, for practical reasons (see T 439/92 [6.2.1]), to base this examination on one document which is most closely related to the claimed subject-matter as starting point, and to consider whether the other documents suggest to obtain the technical results which distinguish the claimed subject-matter from this “closest state of the art”.

[2.4.4] The Board of Appeal is aware of decision T 465/92. Although it was held in [9.1] of the reasons of this decision that the “problem and solution approach” is not a sine qua non for the determination of inventiveness by the EPO, it follows, in the Board’s judgment, from the detailed explanations given in the following points [9.2] to [9.6] of the reasons, that in that case the Board refrained from identifying a certain document as “closest state of the art” and formulating a “technical problem” on the basis of such a state of the art. In the present case, however, the question of selecting a particular document as “closest state of the art” is not at issue. However, in T 465/92 [5, and in particular, 5.3] the Board defined the results which had been objectively achieved by the claimed invention, and then proceeded, on that basis, to deciding whether or not the cited state of the art, as a whole, would have suggested to the skilled person to achieve these results in the way indicated in the patent under consideration. This is exactly the procedure set out […] above. Therefore, this decision cannot, in the Board’s judgment, support the [applicant’s] allegation that the examination of inventiveness should be performed without regard to any technical problem that the claimed invention sets out to solve.

[2.5] Using the above approach of the Boards, and having regard to the cited state of the art, in this case the Board considers that, if the claimed compounds were to be assumed not to have any technically useful property, then it could be postulated that the technical problem which is solved by the claimed compounds (or, in other words, the technical result achieved by them, on the basis of which the question of inventive step has to be decided), would be the minimalist one in such a situation, namely the mere provision of further (or alternative) chemical compounds as such, regardless of their likely useful properties.

[2.5.1] Although the Board is not convinced that, in the absence of any technically useful properties, the claimed compounds could be regarded as being a technical invention at all (see decision T 22/82 [6], where it was held that a chemical compound was not patentable merely because it potentially enriched chemistry, and that structural originality had no intrinsic value or significance for the assessment of inventive step as long as it did not manifest itself in a valuable property in the widest sense, an effect or an increase in the potency of an effect), the Board has nevertheless examined whether the notional person skilled in the art would have considered the claimed compounds as a solution of such a hypothetical “technical problem”.

[2.5.2] In this context, the [applicant] submitted that the skilled person would have faced thousands of possibilities of solving this problem, since even on the basis of known starting compounds and known synthetic methods, a practically unlimited number of chemical compounds would have had to be considered, and that a particular selection from this unlimited number of possibilities should be regarded as inventive, even if it was arbitrary, unless there was a direct pointer to the preparation of just these very compounds in the state of the art.

[2.5.3] This argument must, however, fail, since in the Board’s judgment the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain, as explained […] above. If this result is only to be seen in obtaining further chemical compounds, then all known chemical compounds are equally suitable as the starting point for structural modification, and no inventive skill needs to be exercised in selecting, for instance, the compound of formula XIV of D3 for this purpose. Consequently, all structurally similar chemical compounds, irrespective of their number, that a skilled person would expect, in the light of the cited prior art, to be capable of being synthesised, are equally suitable candidates for solving such a hypothetical “technical problem”, and would therefore all be equally “suggested” to the skilled person. It follows from these considerations that a mere arbitrary choice from this host of possible solutions of such a “technical problem” cannot involve an inventive step (see also e.g. T 220/84 [7]). In other words, the Board holds that, in view of the underlying general legal principle set out […] above, the selection of such compounds, in order to be patentable, must not be arbitrary but must be justified by a hitherto unknown technical effect which is caused by those structural features which distinguish the claimed compounds from the numerous other compounds. This consideration is also in line with a number of previous decisions of the Boards of Appeal of the EPO, such as for example decision T 1/80 [6-8]. In the case T 119/82 [16], where in considering the argument that a person skilled in the art would neither consider nor propose an alternative process for preparing a known product which is “exotic” or even disadvantageous, the deciding Board reached a similar conclusion, holding that a chemical process was not obvious only when the skilled person would have seen all its advantages, but also when he could clearly see its disadvantages or would not expect any improvement, provided that his assessment of the totality of the consequences was indeed correct.

[2.5.4] It follows directly from these considerations that a technical effect which justifies the selection of the claimed compounds must be one which can be fairly assumed to be produced by substantially all the selected compounds (see also e.g. T 131/87 [8], T 742/89 [7.4], T 626/90 [4.3.2], and T 741/91 [4.2-3]).

[2.6] Therefore, the Board holds that, contrary to the [applicant’s] submission, the assessment of the technical contribution to the art must take account of the actual technical reason for providing the very compounds now being claimed, as distinct from the host of other theoretically possible modified chemical compounds. In this respect, the description [...] asserts that all claimed compounds do have herbicidal activity. Herbicidally active chemical compounds which are structurally similar to the claimed ones, since they are also triazole derivatives, are known from D3, D7 and D8 [...]. Any one of these documents may therefore serve as the “closest state of the art” in the present case.

In view of this state of the art the technical problem which the present patent application asserts to solve is the provision of further (alternative) chemical compounds with herbicidal activity.

However, in the light of the Board’s finding [...] above, this technical problem could only be taken into account if it could be accepted as having been solved, i.e. if, in deciding the issue under A 56, it would be credible that substantially all claimed compounds possessed this activity [...]. Accordingly, the Board has examined whether this requirement is fulfilled.

[2.6.1] According to the [applicant’s] submission, in a case such as this one, where the credibility of the alleged herbicidal activity is at issue, the burden of proof that the presence of the alleged herbicidal activity is not credible rests on the EPO, here upon this Board of Appeal. This submission is clearly contrary to the legal principle that any one who alleges a fact has the onus of proving his allegation (in these proceedings to the standard of the balance of probabilities) by appropriate evidence (see T 219/83 [12, fourth paragraph], and T 20/81 [3, last paragraph]. Thus, if neither the ED nor the Board of Appeal is in the position to discharge this burden to the above or to any other standard, and if it is evident that the number of compounds claimed is such that it is inherently unlikely that all of them, or at least substantially all of them, will possess the promised activity, then the burden of proof of that fact, i.e. the possession of that activity, can indeed rest only upon the shoulders of the person alleging it.

[2.6.2] In the present case, the [applicant’s] submission that the test results contained in the description show that some of the claimed compounds are indeed herbicidally active, cannot be regarded as sufficient evidence to lead to the inference that substantially all the claimed compounds possess this activity. The reason for this is that there is no proven CGK to show that the type of substituent that may be present in the claimed compounds would be irrelevant to the existence of the alleged herbicidal activity. On the contrary, the Board accepts the [applicant’s] own submission that the structural differences between the compounds disclosed e.g. in D3, D7 and D8 on the one hand, and the claimed compounds on the other hand, are such that a person skilled in the art would have been unable to predict on the basis of his CGK that the claimed compounds would have herbicidal activity [...], and that it can therefore be accepted as undisputed CGK that even small structural modifications may cause major differences in biological activity. Nevertheless, it is also well accepted that the properties of chemical compounds do indeed largely depend on their chemical structure, and that a skilled person would therefore normally expect that the properties of two compounds would become the more similar the more similar their chemical structures became (see decision T 181/82 [5]). In view of all the above considerations, the Board finds that reasonable predictions of relations between chemical structure and biological activity are in principle possible, but that there is a limit beyond which no such prediction can be validly made.

[2.6.3] In the Board’s judgment, this limit has to be established on the basis of the available facts and the evidence submitted for this purpose in each particular case. However, if the only evidence available is the CGK, then this CGK must be the same as that applicable to the question as to whether or not the skilled person would have expected a certain biological activity in view of the existence of structurally similar chemical compounds having the same biological activity (see also T 964/92 [2.8]). Therefore, if additional evidence is necessary in order to establish that an alleged prediction of a relationship between activity and structure is not obvious, but nevertheless reasonable, then such evidence cannot form part of the undisputed CGK, but must specifically relate to a particular case.

[2.6.4] For this reason, the [applicant’s] general statements that sometimes structural modifications were of little influence on biological activity, for example, if a part of the compound would be eliminated during an intended application based on the alleged biological activity [...], cannot help the Board to answer the question as to the reasonable predictability of the biological activity in the present case. This could have been remedied by evidence that the alleged elimination did actually occur during the application of the claimed compounds. However, such evidence was not submitted. It also follows from the above considerations that even if some other patents, as submitted by the [applicant] during the appeal proceedings, had been granted with claims containing broad definitions such as “optionally substituted”, this is of no relevance to the present case.

[2.6.5] In the tests which are reported [in] the description a great number of compounds were used. However, in all these compounds R1 was always either unsubstituted phenyl or 2-pyrimidinyl optionally substituted by methyl groups and R3 was always phenyl substituted by halogen atoms or methyl groups. Thus, despite of the number of tested compounds, these test results do not support the alleged herbicidal activity of compounds in which e.g. the phenyl ring in position R3 may be substituted by absolutely everything, having regard to the CGK relied upon by the [applicant] himself, namely that the influence of structural modifications on the desired herbicidal activity is unpredictable.

[2.6.6] Such an allegation is likewise not supported by the content of documents D3, D7 and D8, which all disclose classes of herbicidally active compounds with limited substitution possibilities [...].

[2.6.7] The [applicant] had been informed about the insufficiency of the evidence submitted by him in the present case, and had also been given ample opportunity either to restrict his claims to such a group of compounds for which the Board was prepared to accept the credibility of their alleged herbicidal activity [...], or to provide further evidence, either by test results or by other means, that in the present case the kind of substitution of the phenyl ring R3 is not relevant to the herbicidal activity. Despite these clear and helpful leads, which the Board was not obliged to afford, neither appropriate amendments nor further evidence were forthcoming.

[2.7] For these reasons, and on the basis of what evidence there is in the case, the Board is not satisfied that substantially all compounds now being claimed are likely to be herbicidally active. Since, as set out above [...], only those of the claimed chemical compounds could possibly involve an inventive step which could be accepted as solutions of the technical problem of providing further herbicidally active compounds, the subject-matter of the main request extends to compounds which are not inventive and therefore does not meet the requirement of A 56.

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