T 913/09 – The CW Problem

The so-called « could-would » approach has some limits but they are reached only in very particular cases, such as situations of arbitrary choice.

The patent proprietor filed an appeal against the revocation of its patent by the Opposition Division. Claim 1 of the main request before the Board read :

A medium for detecting Campylobacter in a sample comprising

(a) a substrate for an L-alanine aminopeptidase;

(b) a conditionally detectable marker, wherein said marker is capable of providing a detectable signal when in contact with a viable microorganism;

(c) a signal moiety linked to the substrate, said moiety providing a detectable signal when cleaved by said aminopeptidase from a microorganism; and

(d) a growth supporting medium for Campylobacter wherein said growth supporting medium contains antibiotics to suppress the growth of non-target microorganisms.

The Board found this claim to be novel and found the objective technical problem to consist in the provision of improved means and methods for the detection of Campylobacter.

It then went on to say:

[21] Based on its definition of the technical problem as the provision of an alternative method for detecting Campylobacter, and referring to the Case Law (T 631/06, T 879/05, T 931/04, and T 12/07) the respondent argued that the correct approach in the assessment of inventive step was not whether the skilled person would have arrived but merely whether it could have arrived at the claimed solution. It was thus sufficient to verify if the skilled person could have selected an additional compound, in this case a substrate for an L-alanine aminopeptidase linked to a cleavable signal moiety, from the prior art and added it to the medium disclosed in document D16.

The board disagrees with the respondent for two reasons. First, the technical problem consisted of providing an improved medium […], a situation to which the cited decisions do not apply. Second, in the cases underlying the cited decisions, the available prior art contained lists of compounds known or suggested to be suitable for the intended purpose. Selecting compounds from these lists was considered to lack an inventive step. In the case at issue here, the prior art documents cited by the respondent (D6, D9, and D18) refer to the use of several compounds for a purpose different from that of the claimed invention. This represents an entirely different situation.

[22] Therefore, the question to be answered is whether the skilled person would have combined the prior art teachings to arrive at the claimed solution with a reasonable expectation of success but not whether it merely could have done so. Furthermore, it is established case law that when assessing inventive step, an interpretation of the prior art documents as influenced by the problem solved by the invention, where the problem was neither mentioned or even suggested in those documents, must be avoided, such an approach being merely the result of an a posteriori analysis (cf. Case Law of the Boards of Appeal, 6th edition, 2010, I.D.5).

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