T 1422/12 – Change Of Character

This is an examination appeal.

Claim 1 of the request on file read:

A crystalline form of Tigecycline characterized by a powder XRD pattern having peaks at 6.8, 9.5, 9.8, 12.1, 12.6, 18.1, 20.2, 21.6, 23.3, and 26.8 ± 0.2 degrees 2-theta.

The Board made a noteworthy statement on the choice of the objective technical problem:

[2.1] The sole issue arising from this appeal is the inventiveness of the subject-matter of the claims of the main request on file.

[2.2] The Board considers, in agreement with the Examining Division (ED) and the appellant, that the closest prior art is document D2, more particularly, the product of Example 8 thereof, which is a solid form of tigecycline. According to the appellant […], repetition of Example 8 of document D2 resulted in amorphous tigecycline. A further repetition of the process of Example 8 performed by the appellant, the experimental details of which were provided in Annex B of letter dated 8 March 2013, confirmed said conclusion. With regard to the appellant’s submission to the ED in the letter dated 22 March 2010 that a repetition of the procedure of this example resulted in a crystalline form of tigecycline, the appellant subsequently provided the full experimental protocol which resulted in this assertion, namely Annex A accompanying its letter dated 8 March 2013. Said procedure was, however, not a true repetition of the prior art, since the requirements that the pH of the mixture obtained [… in] Example 8 of document D2 was adjusted to 7.2 to 7.4 and that the solution was stirred in a chill room overnight […], were not fulfilled. This divergence from the prior art procedure could have influenced the nature of the final product, such that this “repetition” is to be disregarded when assessing the nature of the product of Example 8 of document D2. Further confirmation that the product of Example 8 of document D2 is amorphous is also provided in the form of the declaration D5 submitted by one of the inventors cited in document D1 before the USPTO. The Board is thus convinced that the tigecycline product of Example 8 of document D2 is an amorphous material.

[2.3] In view of this state of the art, the appellant submitted that the problem underlying the present application is the provision of tigecycline which is more stable with respect to epimerisation.

[2.3.1] In the decision under appeal, the ED did not accept the formulation of the technical problem as the provision of tigecycline in more thermodynamically stable form, since there was no indication in the application as filed that this was indeed the problem which the invention attempted to solve. The reference in paragraph [0010] of the application to the chemical and physical stability of crystalline solids was very general and belonged merely to the background of the invention and thus could not form a basis for formulating the problem.

[2.3.2] According to the well established case law of the Boards of Appeal, the technical problem has to be determined on the basis of objectively established facts, since for the determination of the objective technical problem, only the effect actually achieved vis-à-vis the closest prior art should be taken into account (see T 13/84 [headnote 1; 10-11] and T 39/93 [5.3.1-4]). In this connection, any effects may be taken into account, so long as they concern the same field of use and do not change the character of the invention (see T 440/91 [4.1-2]).

[2.3.3] In the present case, it is indicated in the application in suit […] that the present invention relates to crystalline forms of tigecycline, tigecycline being a tetracycline antibiotic already marketed as lyophilised powder or cake for intravenous injection, namely in the amorphous form. The section concerning the background of the invention […] relates to improving the performance characteristics of pharmaceutical products, including tigecycline.

The formulation of the technical problem to be solved as the provision of tigecycline which is more stable with respect to epimerisation, said reduction in epimerisation resulting in improved biological activity, thus falls within the framework of the invention as disclosed in the application in suit, namely the performance characteristics of the antibiotic, tigecycline, regardless of whether these characteristics are relevant to handling, storage or formulation and/or to its pharmaceutical properties. That the more specific problem of improved stability with respect to epimerisation is not mentioned in the application as originally filed is irrelevant (see T 39/93 [5.3.5]), since improvement of stability by avoidance of epimerisation, and, as a consequence, improved biological activity, is clearly recognisable by the skilled person as a desirable effect for a tetracycline antibiotic.

As a consequence, the Board does not agree with the conclusions of the ED regarding the formulation of the technical problem and thus allows the definition given under point [2.3] above.

The Board finally issued an order to grant a patent.

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T 1212/11 – How To Treat Unsolved Problems

In this opposition appeal case, claim 1 before the Board read:

1. A process for producing metal powders comprising the steps of:

• providing a hydride powder of a first metal being selected from the group consisting of tantalum, niobium and alloys of said metals with each other or one or both of them with other metals, the hydride having an oxygen content of under 300 ppm;
• mixing said metal hydride with a metal having a higher affinity for oxygen, and heating the mixture;
• removing the metal having a higher affinity for oxygen from the metal, to form a powder of the first metal having an oxygen content of less than 100 ppm.

The Opposition Division (OD) had dismissed the opponent’s inventive step attack, which was based on a combination of documents D1 and D3, and then pursued:

The Board found the way in which the OD had assessed inventive step to be unsatisfactory, because the lack of inventive step was asserted without referring to any concrete prior art document:

[3.1] [The opponent] submitted that the alleged inventive effect of producing a powder with an oxygen content of less than 100 ppm cannot be achieved simply by following the steps defined in claim 1, and that it has not been shown that the effect is obtained for all the alloys covered by the claim, hence the requirements of A 56 have not been met. It was argued that, although the basic process steps are defined in claim 1, many specific details, such as quantities, particle sizes, temperatures, times etc., which influence the oxygen content, are not present. In particular, Examples 1 and 2 of the patent specification show that, despite following the steps defined in the claim, an oxygen content of below 100 ppm is not obtained. Even Example 3, which results in 75 ppm oxygen, fails to give details of the hydride starting material, which would be important for the desired effect.

[3.1.1] The board agrees that there are many parameters that influence the final oxygen content of the powder. Examples 1 and 2, which are not cited as examples of the invention, show that an oxygen content above 100 ppm is obtained when lower temperatures and shorter times are employed. This, however, does not mean that the technical effect underlying the invention is not achieved. Example 3 demonstrates that when heating takes place at a sufficiently high temperature and for a sufficient length of time, the claimed process leads to a powder having the required oxygen content.

[3.1.2] It may or may not be the case that there is insufficient information, such as details about the tantalum hydride starting material or about other process parameters, for the skilled person to achieve the required oxygen content, but this relates to sufficiency of disclosure (A 83), which is not an issue in these proceedings.

[3.1.3] [The patent proprietor] has shown that the decision under appeal regarding the ground according to A 76 is wrong. In addition, [the patent proprietor] can rely on Example 3 as demonstrating that the inventive effect is plausible, particularly as the skilled person is aware that the properties of tantalum and niobium are similar, as evidenced by D9, page 1, first four lines. Consequently, it was for [the opponent] to put forward reasons as to why the invention could not be worked over the entire scope of the claim. However, that the required effect cannot be achieved for all metals and alloys falling within the scope of the claim has not been substantiated. Hence the board sees no reason to conclude that the invention cannot be worked over the entire scope of the claim.

[3.2] The OD agreed with the above submission of [the opponent] that the claimed subject-matter does not meet the requirements of A 56. It reasoned […] that the claimed process was inventive over the disclosures of D1 and D3 but, citing T 939/92 (“the Agrevo decision”), concluded that the technical problem of reducing the oxygen content to below 100 ppm had not been solved over the whole ambit of the claim.

[3.2.1] As submitted by [the patent proprietor], the reasoning of the OD is incorrect. As set out in T 87/08 [6.3], T 306/09 [4] and T 2375/10 [2], the requirement of inventive step, as defined in A 56, is based on the “state of the art”. Hence the mere statement that the technical problem is not solved over the whole scope of the claim without reference to prior art amounts to insufficient reasoning for a lack of inventive step. If the conclusion was that the objective problem had not been solved, then the problem should have been re-defined and inventive step assessed on the basis of the re-defined problem.

[3.2.2] T 87/08, T 306/09 and T 2375/10 are consistent with T 939/92 which, despite saying that there was a lack of technical effect, analysed inventive step in light of prior art (points [2.5-6]). In T 939/92 the claim concerned a group of chemical compounds and, on the basis of the prior art, the problem to be solved was to provide alternative compounds having herbicidal activity; since the claim included compounds not having his property, it extended to compounds that were not inventive.

[3.2.3] In T 87/08, T 306/09 and T 2375/10 the opposition or examining divisions gave no analysis whatsoever of inventive step based on the prior art, but merely stated that the purported effect was not achieved over the scope of the claim. This is not quite the same situation as in the present case, where the OD considered the prior art before it, and concluded that the claimed process was inventive [...] but then went on decide that the claimed process nevertheless did not meet the requirements of A 56.

[3.3] So, in assessing inventive step correctly, the prior art must be taken into account, which in the present case means taking D1 into consideration.

As with the contested patent, D1 relates to the production of powders of tantalum, niobium and their alloys having low oxygen contents (column 1, lines 16 to 18). This is the same objective as the disputed patent, hence D1 is a suitable starting point for determining inventive step.

[3.3.1] According to the process of D1, metal powders are heated in the presence of an oxygen-active metal, i.e. a metal having a higher affinity for oxygen; this results in a powder having less than 300 ppm oxygen […].

[3.3.2] The process of claim 1 differs in that a metal hydride containing a lower amount of oxygen is used as the starting powder, and in that the resulting powder has a lower oxygen content (less than 100 ppm).

[3.3.3] [The opponent] argued that the first step in the claimed process is the reduction of the hydride to metal, which then reacts at a higher temperature with the metal having a higher affinity for oxygen, hence is indistinguishable from the process of D1. This may well be the case, but as argued by [the patent proprietor], a different starting material is used in the claimed process, and this has a different structure and morphology which, on the face of it, has an effect, namely it results in a lower oxygen content.

[3.3.4] Irrespective of the magnitude of the specific oxygen contents of the powders of the patent and D1, the oxygen content is defined in claim 1 as being less than 100 ppm, whereas the lowest oxygen content achieved by the process of D1 is 135 ppm […]. The problem to be solved starting from D1 is thus not merely to provide an alternative process, as argued by [the opponent], but to reduce the oxygen content yet further to below 100 ppm.

[3.3.5] According to [the opponent], this results in a powder having worse properties than that of D1. However, [the patent proprietor] has argued convincingly that the purpose of the invention is to produce a powder with a very low oxygen content, and this is itself desirable, irrespective of the fact that may have some disadvantages.

[3.3.6] [The opponent] submitted that the solution to the problem can be found in D3, which discloses a process for reducing the oxygen content of tantalum and niobium powders. [… I]t is said that any tantalum or niobium (columbium) containing material can be treated.

Although Examples 1 to 10 and 12 all concern metallic tantalum, Example 11 discloses a process in which tantalum hydride is used as the starting material. The tantalum hydride powder is heated in hydrogen gas, and the water vapour formed by the reaction of hydrogen with the oxygen in the powder is then “gettered” by a more oxygen-active metal than tantalum, in this example, zirconium. However, the oxygen content is not reduced to less than 100 ppm by the process; it is 1140 ppm in the hydride starting powder and present in a comparable amount in the tantalum powder end product […].

Unlike D3, the process of D1 does not involve heating a hydride powder in a hydrogen atmosphere, so the board agrees with the OD that D1 and D3 concern different processes and it is unreasonable to combine the teachings. Consequently, tantalum hydride is not an obvious alternative to tantalum metal as a starting material for the process of D1. Even if D1 and D3 were to be combined, there is no indication that use of a hydride starting powder results in an oxygen content below 100 ppm.

[3.4] Consequently, the subject-matter of claim 1 is not obvious in light of D1 and D3.

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T 1192/09 – What He Would Not Do

This is a revocation appeal.

Claim 1 of the main request before the Board read:

Magnetic thin film interference device, showing a viewing-angle dependent color appearance, comprising a multi-layer stack including at least one light-reflecting reflector layer (3, 3’) selected from the group consisting of aluminum, aluminum alloy, chromium, silver and gold, at least one light-transmitting dielectric layer (2, 2’), at least one light absorbing absorber layer (1, 1’) and one magnetic layer (4) of magnetic material, said magnetic layer being separated from a dielectric layer by a reflector layer, wherein one of said dielectric layer being deposited on one side of said absorber layer, one of said reflector layer selected from the group consisting of aluminum, aluminum alloy, chromium, silver and gold being deposited on said dielectric layer, and said magnetic layer being deposited on said reflector layer.

The Board found this claim to be novel and then examined its inventive step:

[3.1] The board agrees with the opposition division (OD) that the magnetic thin film interference device of D8 represents the closest prior art available.

The starting point for the development described in D8 is a thin film structure having only optical properties, e.g. chromaticity and angular colour shifting effects. It essentially comprises a semi-transparent first layer, an intermediate and transparent dielectric layer and a highly reflecting non-magnetic metal layer such as aluminium. In order to improve the security of the device, D8 proposes to add magnetic properties to the conventional thin film structure by exchanging the highly reflecting non-magnetic metal layer for a metal layer having magnetic and reflecting properties (see claim 1 and figures of D8).

[3.2] The claimed device differs from the thin film interference device of D8 in that

(i) a magnetic layer of magnetic material is deposited on a reflector layer and

(ii) the reflector layer is selected from the group consisting of aluminum, aluminum alloy, chromium, silver and gold.

[3.3] The technical effect of features (i) and (ii) is that, by virtue of the device comprising two distinct layers and of the reflector layer being made of one of the highly reflective materials set out in the claim, the device enables its magnetic and reflective properties to be adjusted independently of each other, without degrading its optical properties in comparison to devices having no magnetic feature […].

The invention thus solves the problem of improving the security level of the device known from D8 in that “different varieties of security-OVP [optically variable pigments] can be produced, all having exactly the same color appearance and color shifting properties, but different magnetic properties”, as indicated in the original description, page 9, first paragraph, whilst simultaneously improving its optical properties.

[3.4] The board in this respect first notes that neither D8 nor any other available prior art deals with the problem of raising the security level of thin film interference devices by hiding different magnetic properties behind a same visual appearance of the devices. The achievement of this particular technical effect, as confirmed by experimental data filed by the patentee with a letter of 28 July 2011, and its importance for the claimed device have not been contested.

[3.5] The board further notes that the solution as claimed, i.e. adding a reflective layer on top of the magnetic layer, goes against the general teaching in D8 for the following reasons:

• D8 […] teaches the abandonment of the highly reflecting but non-magnetic aluminium layer. Re-introducing a highly reflecting metal layer which this time must be non-magnetic in order to solve the problem of decoupling magnetic and optical properties thus constitutes an exact reversal of the original teaching of D8, which the skilled person would not undertake without good reason or the expectation of substantial advantages, for which there is no evidence. On the contrary, the arrangement proposed in D8, a cobalt nickel alloy layer replacing an aluminium layer, was explicitly “found satisfactory” […] and said to achieve “highly reflecting properties” […].

• An objective of the invention of D8 is to provide a device “which can be readily manufactured” […]. Adding an additional layer to a device always increases manufacturing complexity and, hence, goes against the declared objective of straightforwardness.

[3.6] Accordingly, in the board’s view, the skilled person would not readily envisage the addition of a separate reflecting layer to the structure of D8, because he would not realise that it would be beneficial in terms of the security level of the device.

[3.7] For these reasons, the board cannot endorse the approach of the OD which also started from D8 as closest prior art and considered the claimed subject-matter to be an obvious solution to the more broadly formulated technical problem of optimising the optical properties of the known device, the resulting improvements in terms of security being considered as mere bonus effects which did not confer an inventive step on the claimed subject-matter […]. Even though degraded optical performance is mentioned in the original application […] as being one of two problems with the closest prior art of D8, this broad formulation of the objective technical problem, which in effect conceals the substantial contribution of increased security, is not considered appropriate in the present case. 

Indeed, the technical effect of the differing feature (i) goes beyond the mere improvement of the optical performance. The board concurs with the view expressed in T 1019/99 [3.3] according to which “the correct procedure for formulating the problem is to choose a problem based on the technical effect of exactly those features distinguishing the claim from the prior art that is as specific as possible without containing elements or pointers to the solution”. In this respect, the provision of two separate magnetic and reflecting layers makes it possible not only to enhance optical performance but also to achieve the more specific effect of enhancing optical properties independently of the magnetic properties.

[3.8] In addition, even starting from this broader problem statement, in the board’s view it would not be obvious to the skilled person to arrive at the claimed subject-matter, because, as convincingly submitted by the patentee, other ways of improving the optical performance of the device of D8 were available which would not go against the overall teaching of D8 […], such as optimising the materials, thicknesses or deposition conditions and/or techniques of the various layers of D8.

For instance, in his statement of grounds of appeal, the patentee demonstrated credibly that at least the two following additional approaches for increasing the reflectivity of the reflector layer were well known in the art:

• Approach A) Optimising the deposition conditions of the chosen magnetic material.
• Approach B) Choosing a different magnetic material with higher reflectivity.

Especially approach B) allows for a substantial increase of the reflectivity (0.3) of the magnetic material in D8, i.e. Ni-Co alloy, by replacing it, for instance, by an Ni-Fe alloy having a reflectivity of 0.6. Neither the former opponent nor the board sees any reason to challenge the technical sensibleness of the alternative approaches A) and B).

Therefore, the board agrees with the patentee’s statement in his notice of appeal that “the skilled person would have to choose from a variety of known approaches and the OD’s assumption of a one-way street situation is not correct”.

Furthermore, both approaches A) and B) have the advantage over the approach used in the patent that no additional layer is required, which is consistent with the declared goal of D8 of a straightforward manufacturing process.

This advantage of ease of producibility is all the more relevant because the corresponding improvement of chromaticity appears to be limited. It is not evident that the mere increase of the initial reflectivity of 0.3 of the Ni-Co alloy layer would represent a sufficient incentive for the skilled person to increase the manufacturing costs by adding an additional, highly reflecting layer.

The board is of the view that only the awareness of the additional technical effect of increasing the security level by hiding magnetic properties behind the same visual appearance of the devices would have led the skilled person to consent to the higher manufacturing costs caused by the additional reflecting layer.

Thus, in order to arrive at the claimed additional reflector layer, the skilled person would have to select, out of at least three possible approaches, that particular approach which appears to be the one least consistent with the declared goal of ease of manufacturing.

[3.9] In the board’s view, the actual developments in the relevant technical field, as evidenced by the documents on file, provide additional support in favour of an inventive step.

It is noted in this respect that D8 was published about 12 years before the filing date of the present patent. The recommendation made therein to provide a layer having both highly reflective and magnetic properties not only was not called into question until the effective filing date of the present patent but was even confirmed in document D1 published just two months before that date. Then, less than two months after the effective filing date of the present patent, an application was filed for a magnetic thin film interference device which gave rise to European patent D10, of which the designated inventors are in part the same as those of documents D8 and D1.

D10 discloses the same multilayer set-up as claimed (see e.g. figures 13 and 14 of D10) and acknowledges that it presents a significant improvement in terms of achieved chroma and brightness together with the provision of a covert magnetic security feature (see paragraph [0023] of D10).

The facts that the very inventors of D8 did not propose the claimed structure, with its uncontested advantages, until 12 years after the publication of D8, and that this structure was later praised in D10 and made the subject of a granted European patent is considered by the board as an additional indication of the non-obviousness of the concept which forms the basis of the claimed invention.

[3.10] In view of the above findings, the board comes to the conclusion that the subject-matter of claim 1 according to the main request on file fulfils the requirements of A 56 EPC 1973.

[3.11] The same conclusion applies to the subject-matter of the remaining independent claims 5 and 10 for corresponding reasons and also to the dependent claims 2-4, 6-9 and 11 which recite the limitations of the claims on which they depend.

[4] For the above reasons the board is satisfied that the patent as amended according to the present main request and the invention to which it relates meet the requirements of the EPC and gives a ruling pursuant to A 101(3)(a).

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T 783/10 – Excellent

In this appeal the Board examined the inventive step of claim 1 of the main request, which read:

1. Use of an oil-soluble dimercaptothiadiazole compound or derivative thereof as a copper corrosion inhibitor in a tractor hydraulic fluid when in contact with a copper-containing metal wherein the oil-soluble dimercaptothiadiazole compound or derivative thereof is employed in an amount of from 0.01 to 0.2 weight percent, based on the weight of the tractor hydraulic fluid, to protect the copper-containing metal against loss of copper when the tractor hydraulic fluid contains at least 0.25 weight percent water, and wherein the oil-soluble dimercaptothiadiazole compound or derivative thereof has the formula

wherein R¹ and R² are hydrogen or hydrocarbyl, n is 0 or 1, x is 1 or 2, y is 1 or 2 and z is 1 or 2.

The Board found document D7 to be the closest prior art and then pursued:

[3.3] As the next step according to the problem-solution approach, it is necessary to determine the problem which the claimed invention addresses and successfully solves in the light of the closest prior art.

[3.3.1] The [patent proprietor] defined the problem to be solved in view of document D7 as lying in the provision of a tractor hydraulic fluid with excellent protection against the loss of copper in the presence of at least 0.25 weight percent of water.

[3.3.2] The board regards this definition of the problem to be unclear, since the term “excellent” could be interpreted in a relative or absolute sense. Indeed, during the course of the proceedings the [patent proprietor] employed this term in each of these senses.

Thus, on the one hand, in the patent in suit, the following is stated ([…], emphasis added):

“It has now been discovered that when an oil-soluble dimercaptothiadiazole compound or derivative thereof is employed in functional fluids that contain water, copper containing metals in contact with the functional fluid are protected from copper loss. This discovery was quite surprising since other compounds known to be copper passivators or copper corrosion inhibitors do not perform nearly as well as the dimercaptothiadiazole compounds or derivatives thereof of this invention.”

Moreover, the patent in suit designates the results pertaining to “Nalco VX 2326” as being a comparative example […], and the [patent proprietor] also argued in written appeal proceedings that this was to be seen as a fair comparison in the sense of decision T 197/86 […].

On the other hand, the [patent proprietor] argued with reference to […] document D29, that the results obtained for the present DMTD derivatives in the JDQ 84 test were below an “absolute” threshold value of 53 ppm disclosed therein, and should therefore be regarded as being “excellent”.

Before each of these uses of the term “excellent” are discussed in more detail below, in points [3.3.4] and [3.3.5], the experimental results relied on by the parties will be outlined under point [3.3.3].

[3.3.3] The following table summarises the data provided for additives according to present formula (I). In all these examples, n is 0, and x and y are 2.

In addition, data was provided for further copper corrosion inhibitors, which is summarised in the following table […].

The data reproduced above were obtained in the JDQ 84 test, according to which a hydraulic pump is operated with a functional fluid contaminated with 1% water, and flow rates and copper levels measured at specified intervals […].

For the sake of completeness, the board wishes to note that, in the patent in suit, the remaining components of the formulations used in the examples are identified in terms of function rather than precise structure […]. Consequently, although indicated as being “formulated according to the formulation of Example 1 of the patent”, the compositions used by the [opponent] in Annexes J, K and I are likely to differ from those employed in the patent in suit in more respects than only the copper corrosion inhibitor. This may explain the different results obtained by the [patent proprietor] and the [opponent] for the compound wherein R¹/R² are C₁₈. Similarly, under point 17 of its statement of grounds of appeal, the [patent proprietor] indicated that the formulations used in Annexes F and G differed with respect to several components from those used in the patent in suit. Consequently, it must be concluded that entries may only be reliably compared within the three sets of data (i.e. that provided in the patent in suit, and by the [patent proprietor] and [opponent], respectively).

[3.3.4] In so far as “excellent protection against the loss of copper” implies an improvement over the closest prior art […], the board is not convinced that the data outlined under point [3.3.3] provide adequate experimental support that this has successfully been achieved.

It is the established case law of the boards of appeal that, in order to be relevant, comparative tests have to meet certain criteria. These include the proper choice of the structurally closest comparative compound to be taken from the closest state of the art (T 181/82 [5]).

As outlined above […], document D7 relates to the field of tractor fluids and specifically discloses corresponding functional fluids in Table II comprising a DMTD additive, namely, “DMTD/formaldehyde/heptyl phenol”. Such an additive would clearly have greater structural resemblance to those claimed than the benzotriazole additives reproduced above in the second table of point [3.3.3]. The [patent proprietor] asserted that the exact structure of said DMTD derivative was unclear, but did not provide any evidence that the skilled person would not be able to obtain this product based on the information provided in […] document D7, in combination with common general knowledge, if required. Therefore, in the absence of any evidence to the contrary, the board regards the examples of document D7 to represent an appropriate starting point for assessing inventive step. However, no comparative tests were provided with respect to these examples.

It is additionally noted that document D7 specifically discloses further DMTD-based metal passivator components B-5, as outlined above in point [3.2] (cf. formula (XXIV), R’ = isopropyl, hexyl, decyl). The [patent proprietor] argued in this context that there was no example in document D7 of specific functional fluids containing these compounds. However, it is noted that present claim 1 is also completely open as to the nature of the further components in the tractor hydraulic fluid. There was therefore nothing to prevent the [patent proprietor] from designing comparative tests within the meaning of decision T 197/86, such as to demonstrate that any effect had its origin in the distinguishing feature of the invention.

In any case, Comparative Example A provided in the patent in suit is not considered to be pertinent since the compound identified above as “Nalco VX 2326” is neither specifically disclosed in document D7, nor does it accurately reflect the disclosure therein with respect to the structurally closest DMTD-based corrosion inhibitors, as explained in the previous two paragraphs. This comparative example cannot therefore be used to support any improvement with respect to the closest prior art.

Finally, the additional data submitted by the [opponent] demonstrate that compounds falling within present formula (I) are no more effective than the metal passivator according to document D7, tolytriazole […].

Consequently, the data provided, as summarised under point [3.3.3], cannot support the superiority of the additives according to present formula (I) with respect to the closest prior art.

[3.3.5] In a second line of argument, the [patent proprietor] submitted that “excellent protection against the loss of copper” should be seen as defining a result lying below a particular threshold value in the JDQ 84 test […]. However, in this case, the concept of “excellence” can have no other purpose than as a criterion for assessing the suitability of an additive for use as a corrosion inhibitor in a tractor hydraulic fluid contaminated with water.

The [patent proprietor] cited document D29 as disclosing that copper levels of 53 ppm are “not uncommon for a good fluid in this test”. However, this statement is made within the specific context of comparative tests between borated and non-borated calcium sulfonate additives. It cannot be concluded therefrom that values below the level of 53 ppm are by definition “unexpectedly good” regardless of context.

Therefore, the board considers that the inclusion of “excellence” as an absolute concept in the definition of the problem is redundant and, as such, can only lead to confusion as to its meaning.

[3.3.6] Consequently, the problem as defined above by the [patent proprietor] […] requires reformulation.

In the light of document D7 and in view of the fact that the present claims relate to a use rather than a composition, the problem to be solved can be defined as lying in the provision of an alternative method for protecting tractor hydraulic fluids against copper corrosion.

The solution as defined in claim 1 relates to the use of a DMTD derivative of formula (I) in an amount of from 0.01 to 0.2 weight percent in the presence of at least 0.25 weight percent water.

Having regard to the data reproduced above in the first table of point 3.3.3, the board is satisfied that this problem has been solved.

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T 535/10 – Do Not Cross Tracks

Claim 1 of the patent as granted read:

A mirror (1) comprising a first transparent glass plate (4) at least partly provided on the rear side with a reflecting coating (2) as well as at least one integrated electrical means (6), wherein

• the first glass plate (4) comprises transparent and/or half-reflecting portions (8),
• the first glass plate (4) is bonded to a second glass plate (10) with the aid of a transparent adhesive layer (12) in the form of a laminated glass pane, and
• electrical means (6) are mounted on an electrically conducting coating (14) of the second glass plate (10) in portions opposite the transparent and/or half-reflecting portions (8) of the first glass plate (4).

In what follows the Board examines whether this claim involves an inventive step:

*** Translation of the German original ***

[5.1] D1 […] discloses a mirror comprising a first transparent glass plate (2) provided on the rear side with a reflecting coating as well as integrated electrical means (7-10), wherein the first glass pate (2) is bonded to a second glass plate (1) with the aid of a transparent adhesive layer (5,6) in the form of a laminated glass pane and the electrical means (7-12) are mounted on an electrically conducting coating of the second glass plate (1).

The mirror according to claim 1 differs from the one known from D1 in that

• the first glass plate comprises transparent and/or half-reflecting portions,
• the adhesive layer bonding the two glass plates is transparent,
• the electrical means are mounted in portions opposite the transparent and/or half-reflecting portions of the first glass plate

The [patent proprietor] has submitted that in D1 the coating was at the same time the electrical means and that, consequently, there was no electrical means within the meaning of claim 1 on the coating. However, the electrical means comprises not only the coating itself but also collectors that are distinct from the coating, such that even on the coating there are collectors and electrical means, respectively.

[5.2] Starting from D1 as closest prior art the problem underlying the invention can be considered to be the design of a mirror suitable for use in a damp room (Feuchtraumnutzung) that can possess various integrated electric functions […].

[5.3] The [opponent] has referred to D11, D12, or D13 for solving this problem.

D11 […] discloses a rear-view mirror wherein a monitor (6) in the form of an LCD display is arranged behind a reflector (Spiegelscheibe) (4) that is half-silvered in this zone.

D12 […] discloses a a rear-view mirror wherein a camera (14), in particular a CCD-camera, that is arranged behind a reflector (4) that is half-silvered in this zone […].

D13 […] discloses an interior rear-view mirror for a vehicle comprising half-silvered zones in which symbols can be made apparent by illumination by means of illuminating means (Leuchtmittel) […]. The illuminating means can be LEDs (72-78) that are mounted in a housing that is glued onto the back of the mirror opposite the half-silvered zones […].

[5.4] First of all the Board notes that the skilled person has no reason to combine these teachings, which all concern rear-view mirrors for vehicles, with the teaching of D1 concerning mirrors that are mainly used in damp rooms […].

Moreover, as is well-known, the electrical devices that are disclosed in D11 to D13 have a depth such that they cannot be integrated between two glass plates; therefore, a skilled person would not consider the incorporation of the electrical means known from these documents between the two glass plates of a mirror according to D1.

[5.5] The [opponent] has expressed the opinion that the skilled person knew from D16 […] that electrical means, and in particular illuminating means that implement LEDs, may have such small overall size (Baugröße) that they may very well be incorporated between two glass plates. However, the overall size of LEDs is not comparable to that of an LCD display or a CCD-camera. Thus a combination of D1 and D11 or D12 can be ruled out, even taking account of D16, because of the required overall size.

[5.6] Moreover, D13 does not disclose a second glass plate that is bonded to a first glass plate in the form of a laminated glass pane and that comprises an electrically conductive coating on which the electrical means are mounted.

Even if the skilled person understood from D16 that LED illuminating means may be made much more flat than what is shown in D13, this does not alter the fact that D13 teaches to provide the illuminating means behind the mirror plate and only opposite the symbols that are to be illuminated. However, if the skilled person proceeded according to D16 when providing an LED module between the two glass plates of D1, then he would provide the LEDs together with the conductive layer on the front glass rail (vordere Glasbahn) 2, as disclosed in D16 […]. The teaching of D13 would not lead him to mount the electrical means directly on the second rear glass plate of D1, which already comprises an electrically heatable layer. Even if the skilled person tried to combine D1 and D13, the resulting combination would not lead in an obvious way to the claimed subject-matter, even taking account of D16.

[5.7] The [opponent] also explained that a combination of D13 with D16 would make the claimed subject-matter obvious.

First of all, it has to be noted that the claimed subject-matter is a mirror for use in a damp room. D13 does not disclose such a mirror. Thus the Board is of the opinion that D13 is not a suitable starting point for the claimed invention.

It is true that D16 […] discloses that the first glass substrate, which carries the LEDs, may be protected by a second substrate, which might also be made of glass. The document does not disclose how the second substrate is deposited onto the first. Neither document suggests connecting the substrates by means of a transparent adhesive layer in the form of a laminated glass pane.

Moreover, [the Board] does not understand why the skilled person wishing to replace the illuminating means known from D13 by an LED module as known from D16, would provide a carrier substrate for the LEDs that would be greater than the housing for the illuminating means shown in D13.

In this context, the [opponent] has explained that the skilled person would proceed in this way in order to make the mirror suitable for use in a damp room. However, this argument cannot be endorsed. There is no reason to make an interior rear-view mirror suitable for use in a damp room. This would lead to rebuilding said mirror for a completely different use. Such a way of proceeding cannot be obvious.

Although the skilled person is completely free in the choice of a starting point, he is later bound by this choice. If a skilled person choses a specific interior rear-view mirror for a car as starting point, he can pursue its development, but the normal outcome of this development will in the end still be a rear-view mirror for a car and not a mirror suitable for use in a damp room (see T 570/91 [4.4]). A conscious choice, i.e. a choice made in full awareness of the advantages and drawbacks of the different species (Gattungen), not only determines the subject-matter serving as starting point but also the framework of the development, i.e. a development within this species. In the course of the development a change from the consciously chosen species to another, which was known before but which had not been chosen, is unlikely and, as a rule, not obvious (T 817/94).

The [opponent] has also explained that the claimed subject-matter was obvious over a combination of D16 with D13.

However, as already explained above, a document belonging to another species (here: an LED module) normally cannot be considered as a realistic starting point for creating a mirror (T 870/96).

[5.8] Moreover, [the opponent] based an attack on a combination of D5 and D8.

D5 […] discloses a mirror comprising a transparent glass plate (12) partly provided on the rear side with a reflecting coating (14) as well as at least one integrated electrical means (30), wherein the glass plate (12) comprises transparent portions  and the electrical means (switch and lamp) are mounted on an electrically conducting coating (30) on the back of the first glass plate in the transparent portions.

These means are fixed onto the glass plate with through-holes (22, 24) and protrude from the glass plate.

D8 […] discloses a surface display (Flächendisplay) for illuminating background surfaces. This document does not disclose that the transparent conductor plate (Leiterplatte) (12) should be a mirror, nor that it is a glass plate. The housing (10) is filled with sealing compound (Vergussmasse) made of transparent materials. It is the conductor plate (12) that carries the electrical means. There is no second glass plate.

Neither document shows two glass plates that are bonded in the form of a laminated glass pane or that the electrical means are mounted on an electrically conducting coating of the second glass plate in portions opposite the transparent and/or half-reflecting portions of the first glass plate.

Thus the combination of both documents cannot have these features either and cannot, therefore, lead to the claimed subject-matter in an obvious way.

[5.9] As none of the attacks submitted [by the opponent] lead to the subject-matter of claim 1 in an obvious way, [the Board found] the opponent’s assertion that the subject-matter of claim 1 did not involve an inventive step unpersuasive.

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T 2245/10 – Contradiction

In this case the Board spent quite some time on the definition of the problem solved and reminds us of some limits to re-formulation.

Object of the invention

[2.1] The present invention concerns the provision of a composition for administering a taxane to patients suffering from a proliferative disease, in particular malignant melanoma, wherein the toxicity of the taxane should be reduced […].

Closest prior art

[2.2.1] At the oral proceedings before the board, the [applicant] initially defined document D15, which discloses the use of DTIC for treating malignant melanoma, as closest prior art. In contrast thereto, the examining division started from document D3, which discloses the use of protein coated taxane particles such as CapxolR (protein coated paclitaxel), which are identical to the particles according to the present invention, for the treatment of diseases such as prostate cancer, orchidectomy, pancreatic cancer and brain tumour […].

[2.2.2] The board, however, notes that in the present case a document should be selected as closest prior art which discloses the use of a taxane for the treatment of malignant melanoma. As a consequence, document D5 constitutes the closest prior art.

Document D5 concerns a study in which 25 patients with metastatic melanoma who were previously untreated received Taxol, which contains paclitaxel as active agent […] at a starting dose of 250 mg/m² delivered as a continuous intravenous infusion over 24 hours, at 3-week intervals […]. In contrast to the protein coated taxane particles of the present invention, Taxol according to document D5 was a conventional formulation in which the active agent was stabilised by Cremaphore. As was correctly pointed out by the [applicant] […], the results did not live up to the high expectations of the physicians carrying out this study because of a response rate of below 20% despite a very favourable patient population […]. The authors of document D5 did, however, not conclude therefrom that treatment of such melanoma with Taxol should be discontinued. On the contrary: taking into account the “paucity of other drugs with similar or better activity against melanoma” […], it was recommended to use a Taxol dose of 200 mg/m² as a single agent for the treatment of patients with metastatic melanoma […]. This statement was followed by the conclusions that “Taxol is an interesting drug which, besides showing activity against melanoma, has also shown activity against refractory carcinoma of the ovary” and that “there is considerable potential for Taxol to be a drug with good future”. As a consequence, document D5 qualifies as closest prior art.

Problem to be solved

[2.3.1] When formulating the problem to be solved with regard to document D5, it has to be evaluated what further effects, if any, are achieved by the selection of protein coated taxane in addition to the reduced toxicity. One direct consequence of the reduced toxicity consists in the possibility to administer higher taxane doses. According to […] the application, the dose administered is “typically larger than doses administered as part of conventional formulation”. This teaching is confirmed by example 27 which concerns a phase I clinical study in which 17 patients suffering from metastatic malignant melanoma are treated with CapxolR. In this study the maximum single dose administered was 375 mg/m², which is much higher than the approved dose of 175 mg/m² for paclitaxel, when administered as Taxol […], and higher than the dose of 250 mg/m², administered in the study according to document D5. However, this aspect cannot be taken into consideration for the definition of the problem to be solved, as claim 1 of the main request does not define the concentration of the taxane to be administered to the patient. As a consequence, the problem to be solved would have to be defined as provision of a taxane composition for treating melanoma, which is characterised by less unwanted side effects.

[2.3.2] The [applicant], making reference to post-published document D11 alleged an increased drug efficacy as a further effect that had to be taken into consideration for the assessment of inventive step. In document D11 previously treated patients and CN patients were treated with 100 mg/m² and 150 mg/m² Abraxane (= protein coated paclitaxel corresponding to CapxolR), yielding an overall response of 38% for pretreated patients of 49% for CN patients. This was much higher than the response rates in document D5, which had been achieved with 250 mg/m² of Taxol. It could not be predicted that the same or even lower doses of taxanes would lead to such a significant increase in efficacy of the therapy, in particular with regard to the previously treated patients, who usually showed limited response. Similar results were shown in documents D9 and D10 for docetaxel as active agent. As a consequence, the problem to be solved with regard to document D5 concerned the provision of a less toxic and more efficient taxane composition for treating melanoma.

[2.3.3] In this context, the question arises whether this aspect is encompassed by the technical teaching of the original application, which in a primary aspect is concerned with methods for the in vivo delivery of substantially water insoluble pharmacologically active agents in general as well as the provision of dispersible colloidal systems containing water insoluble pharmacologically active agents […]. The treatment of melanoma is a marginal point of the broad and general teaching of the original application and is first mentioned on page 36, where the treatment of proliferative diseases such as psoriasis, multiple sclerosis, vascular restinosis […] or cancers such as malignant melanoma […] can be treated with suitable pharmacologically active agents including taxanes such as paclitaxel or docetaxel […]. It is important to note that this passage also contains the information that the protein coated particles of the present invention reduce myelosuppression and neurotoxicity […], so that the dose of suitable pharmacologically active agent administered to the patient is “typically larger than doses administered as part of conventional formulations” […], which means that this aspect of the original teaching, i.e. treatment of melanoma by administration of protein coated taxane, is linked to the administration of higher than the usual doses.

This teaching is put into practice in example 27, which is the only example relevant for the treatment of melanoma by administering protein coated taxane. The board notes in this context that examples 28 and 29, though also mentioning treatment of melanoma, are not relevant for the following reasons: example 28 primarily concerns intra-arterial administration of CapxolR for the treatment of liver tumours and/or solid tumours with local-regional involvement […]. Although the long list of patients suffering from various types of cancers includes patients suffering from melanoma […], these patients do not figure in the list of patients for which a response to the treatment had been observed […]. As a consequence, example 28 is not relevant for the subject-matter claimed in the main request. Example 29 is not relevant, as it relates to a combination therapy of CapxolR with IL-2.

Example 27 concerns a phase I clinical study in which 17 patients exhibiting advanced matastases were treated with CapxolR (containing the taxane paclitaxel). Six patients were suffering from malignant melanoma, the remaining 11 subjects from breast cancer. Starting from an initial dose level of 135 mg/m², the subsequent doses were increased to the next higher paclitaxel single dose level if there were no significant adverse effects in the subject. The maximum single dose administered in this study was 375 mg/m², for which no significant adverse effects were noted. Administration of paclitaxel as protein coated particle at single dose levels as high as from 500 mg/m² or 2000 mg/m² and beyond are contemplated in example 1.

[2.3.4] To summarise:

the teaching of the original application, which is put into practice in example 27, tells the skilled person to use as high as possible doses of protein coated taxane for the treatment of melanoma. These doses are higher than the doses used for the administration of taxane in conventional galenic forms.

[2.3.5] The board notes that redefinition of the problem to be solved is usually permissible, it is even necessary in cases in which prior art is found which is closer to the claimed invention than the prior art cited in the application as filed. Usually, it is also possible to base such a newly defined problem on post-published evidence provided that it is linked to and in line with the original technical teaching. Such a redefinition is, however, not acceptable in cases where the teaching of post-published evidence is used for defining a new technical problem which is in contradiction to the original teaching of the application as filed (T 155/85 [12] and T 115/89 [4, 4th §]). This being the case in view of the fact that the original teaching does not foresee the use of conventional taxane doses for the treatment of melanoma, the problem to be solved concerns, as previously indicated, the provision of a taxane composition for treating melanoma, which is characterised by less unwanted side effects.

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T 1009/12 – No Effect At All

This is an examination appeal.

Claim 1 of the auxiliary request read:

1. A process for plating silver onto a surface, wherein the silver is immersion plated from a composition comprises:

a) a soluble source of silver ions;

b) an acid;

c) an imidazole of the following formula:

wherein R1, R2, R3 and R4 are independently selected from the group consisting of substituted or unsubstituted alkyl groups, substituted or unsubstituted aryl groups, halogen, nitro groups and hydrogen; and

d) an oxidant selected from nitro aromatic compounds.

In what follows the Board discusses whether this claim involves an inventive step:

[2.1] The Board comes to the conclusion that process claim 1 of the […] auxiliary request lacks inventive step over the teaching of the uncontested closest prior art D1 for the reasons that follow.

[2.2] The English abstract of the Japanese application D1 discloses a process for forming a silver plating on the surface of copper or copper alloy by contacting the surface with an aqueous immersion plating solution. This solution according to D1 has a pH of 3.0 to 4.5 and contains 0.01 to 1.0 %, more preferably 0.05 to 0.5 % silver nitrate (this percentage “%” is interpreted as meaning “wt.%” so that these ranges correspond to 0.1-10 g/l and preferably 0.5-5.0 g/l silver nitrate; thus corresponding to 0.06-6.3 g/l or preferably 0.32-3.2 g/l Ag**(+)-ions), 2-alkylimidazole (see below) as an alkyl imidazole compound in combination with an organic acid, e.g. acetic acid (preferably in the form of the salt). The treating liquid is usually kept at 20-60°C and is brought into contact with the copper or copper alloy for 30 seconds to 5 minutes to form the silver film (see English abstract of D1).

[2.2.1] The aqueous immersion plating silver solution of D1 is thus a simple aqueous composition containing silver nitrate, an organic acid (or salt thereof) and e.g. a 2-alkylimidazole.

Taking account of the structural formula of the imidazole given in D1, which comprises the two substituents R**(2) and R**(4), and the imidazole description in the English abstract it is clear that the imidazole can be substituted by alkyl groups in the imidazole positions 2 and 4, i.e. R**(4) or R**(2) can be hydrogen:

[2.2.2] The composition described in the English abstract of D1 does not contain any surfactant or chelating agent.

[2.3] The process for plating silver onto a surface according to claim 1 of the first auxiliary request - wherein the silver is immersion plated from a composition which comprises a soluble source of silver ions, an acid, an imidazole of the given formula with either R1, R2 and R4 being selected from hydrogen and R3 being selected from substituted or unsubstituted alkyl groups, or R1, R3 and R4 being selected from hydrogen and R2 being selected from substituted or unsubstituted alkyl groups, or with R1 and R4 being selected from hydrogen and R2 and R3 being selected from substituted or unsubstituted alkyl groups (see points VII and 2.2.1 above) - is thus distinguished from the process according to D1 only by an oxidant being selected from nitro aromatic compounds.

[2.3.1] The divisional application as originally filed is silent with respect to any effect of this distinguishing feature […], and in the parent application it is presented only as an optional feature of the composition […], also without any effect.

[2.3.2] According to the examples I to III of the divisional application the silver plating solution consisted of the four components silver nitrate (1 g/l), methane sulfonic acid (20 ml (70%)/l), 3,5-dinitrohydroxy benzoic acid (1 g/l), l-histidine (1 g/l) and water and copper was plated with it at 100°F (= 37.8°C) for 5 minutes (see examples I-III).

This imidazole compound “L-histidine” (IUPAC name) used in the examples I-III can also be designated “2-Amino-3-(1H-imidazol-4-yl) propanoic acid”, and thus represents an imidazole of the claimed specific formula wherein R1, R2 and R4 are hydrogen and R3 is a substituted alkyl group, i.e. -CH2-CH(NH2)-COOH.

[2.3.3] On the other hand, process claim 1 defines a process for plating silver onto a surface which uses a composition which “comprises” the four specified components in unspecified amounts.

According to this open definition the presence of a very small amount of e.g. 5 ppm of said oxidant is sufficient to meet the condition of claim 1 of the first auxiliary request. However, the Board considers that such a low concentration will not cause any effect in view of the common general knowledge of a chemist and the intended purpose of an oxidant. Particularly in the light of the most general range of the oxidant of from 0.1-25 g/l (corresponding to 100-25000 ppm) disclosed in the present application […] it is not reasonable to expect any effect of the nitro aromatic compound in such a low concentration.

Therefore claim 1, which does not specify any concentration ranges of the four components at all, is considered to cover embodiments where the mere presence of the nitro aromatic oxidant compound will not produce any effect at all.

The appellant’s arguments to the contrary cannot hold for the following reasons.

[2.4] First of all, the appellant argued that the skilled person would comprehend the claims as encompassing only effective amounts of the specified components to achieve the technical effects including immersion silver plating as disclosed in the application; he would construe the claims by “building up” and not by “tearing down”, to arrive at an interpretation of the claims which is technically sensible and takes account of A 69 (T 190/99 [2.4]).

However, taking account of A 69 cannot be accepted since that decision relates to an opposition case where an interpretation of the claim which is technically sensible takes into account the whole disclosure of the patent (A 69) and therefore does not apply to the present examination case. In such a case, like the present one, the claims have to make sense as they stand. Since none of the independent claims of both requests defines “an effective amount of the oxidant” it is evident that the scope of these claims is not restricted to effective amounts but, to the contrary, encompasses ineffective amounts of said nitro aromatic oxidant.

In this context it is further considered that the immersion silver plating composition per se used according to process claim 1 – as described on page 6, second and third paragraphs of the parent application as originally filed (the oxidant was an optional component of the immersion silver plating composition of the parent application; see point [2.3.1] above) – even without the nitro aromatic oxidant provides brighter, smoother and more cohesive silver deposits than baths not containing imidazoles. The same conclusion would be valid for a bath according to process claim 1 which comprises an ineffective amount of e.g. 5 ppm of the nitro aromatic oxidant. Therefore also the appellant’s argument that an effective amount of the oxidant is necessary to obtain a bright silver deposit cannot hold.

[2.5] The appellant’s arguments that the experiments of D2 would represent acceptable comparative examples with respect to D1 and would prove an effect of the nitro aromatic oxidant – i.e. to decrease the plating rate and to brighten and improve the silver deposit – cannot hold either.

[2.5.1] Regarding the declaration D2 of Ms Toscano, the Board considers unusual that it is neither dated nor that it states that the described experiments have been made in agreement with the present application and/or in agreement with the closest state of the art D1. In substance, D2 discloses the examples A, B and C.

Example B repeats example A with the difference that no imidazole was present in the plating composition. Example C repeats example A with the difference that no dinitrosalicylic acid (i.e. the nitro aromatic oxidant) was present (see D2, paragraph 3).

The immersion silver plating bath of example A does not specify the silver ion concentration nor that it is aqueous. It comprises besides 10 g/l imidazole (since not further specified it has to be interpreted that all substituents R1, R2, R3 and R4 are hydrogen), 11.3 g/l of hydroxyethylenediaminetetraacetic acid (HEDTA), 5 g/l Chemeen T-15, 5 g/l Igepal Co-730, 0.75 g/l of 3,5-dinitrosalicylic acid (which is the trivial name for the compound “3,5-dinitrohydroxy benzoic acid” disclosed in the present application as the preferred oxidant) and said bath has a pH of 2 adjusted with nitric acid. The copper parts are plated in the bath for 6 minutes at 35°C (see D2, page 1, point 3A).

D2 does not contain any explanation of Ms Toscano why said chelating agent HEDTA and said two surfactants (Chemeen and Igepal) have been added to the immersion silver plating solution. They clearly do not figure in the plating solution of D1.

[2.5.2] Although the definition “comprising” of claim 1 does not exclude such additional components the present application is absolutely silent with respect to an optional addition of such a chelating agent like HEDTA, or of surfactants such as said Chemeen T-15 or Igepal Co-730 (compare point 2.3.1 above), let alone that such components should be added in such considerable amounts.

From a comparison with the components of the composition, temperature and treatment time of example A and the composition and corresponding parameters of examples I-III of the present application (see point [2.3.2] above) it is evident that more than 7 parameters (additional components HEDTA and surfactants, different imidazole in a 10-times higher concentration, lower concentration of nitro aromatic oxidant, longer treatment time and somewhat higher temperature) are modified.

[2.5.3] D1 is likewise silent with respect to the addition of the chelating agent HEDTA and surfactants (compare points [2.2.2] and [2.2.3] above) as admitted by the appellant at the oral proceedings. From a comparison between the components of the composition, temperature and treatment time of example A and the composition and corresponding parameters of the abstract of D1 it is evident that at least 3 parameters (additional components HEDTA and surfactants, different imidazole and longer treatment time) are modified.

[2.5.4] Taking account of these modifications, both in comparison with the parent application and the closest prior art D1, it is evident that the experiments A, B and C according to D2 do not represent comparative tests as required by the established jurisprudence to demonstrate an alleged effect.

According to this established jurisprudence, if comparative tests are chosen to demonstrate an inventive step on the basis of an improved (or surprising) effect, the nature of the comparison with the closest state of the art must be such that the alleged advantage or effect is convincingly shown to have its origin in the distinguishing feature of the invention compared with the closest state of the art (see Case Law, 6^th edition 2010, section I.D.9.9; see T 197/86 [6]; T 234/03; T 378/03).

The appellant argued by reference to T 35/85, mentioned in the same section of the “Case Law of the Boards of Appeal”, that it should benefit from the qualification that decision applied to this “established jurisprudence”. Its variants lay close to the invention so that the advantageous effect attributable to the distinguishing feature was more clearly demonstrated. This cannot be accepted since the comparison remains executed with more than one parameter different from either the examples of the present application or the comparison of the abstract of D1. The decisions cited in that part all have in common that it is only the distinguishing feature which is different in the “closest variant” as allowed by the cited decisions. Having, 7 respectively, 3 parameters different can hardly qualify as a “closer variant”.

[2.5.5] Since D2 cannot be accepted as a comparative test the alleged effect of the nitro aromatic oxidant vis-à-vis the closest prior art D1 has not been proven and all the appellant’s arguments based thereon, including the problem to be solved, need not be considered.

[2.6] Furthermore, even if these experiments A, B and C according to the declaration D2 would be considered, they do not prove that a technical effect may be achieved “across the breadth of the claim” as alleged by the appellant.

[2.6.1] D2 discloses a single example, i.e. example A which composition comprises all four components specified in claim 1, made with a concentration of 0.75 g/l (corresponding to 750 ppm) of the preferred oxidant, i.e. 3,5-dinitrosalicylic acid (which is the trivial name for the compound “3,5-dinitrohydroxybenzoic acid” disclosed in the present application). This concentration is thus within the preferred range of from 0.5-2 g/l (corresponding to 500-2000 ppm) specified in the first paragraph at page 7 of present application as originally filed.

An example containing 750 ppm of the nitro aromatic oxidant represents, however, no proof at all that a non-de minimis concentration of 5 ppm thereof would be effective.

[2.6.2] The declaration D2 of Ms Toscano is totally silent with respect to a minimum threshold concentration of the nitro aromatic oxidant.

The appellant’s argument that Ms Toscano does not see a minimum threshold as necessary cannot hold since one of her conclusions based on the three experiments A, B and C as drawn in the fourth bullet point of paragraph 4, quoted by the appellant in support, merely and non-specifically states

“In optimizing an immersion silver plating bath, the presence and concentration of these additives can be manipulated in various ways to achieve good results”.

This non-statement with respect to a minimum threshold concentration, however, does not allow to conclusively derive that such a minimum threshold does not exist, particularly when considering her conclusions in the first and second bullet points of paragraph 4 that neither imidazole nor organic nitro compounds are necessary to achieve an acceptable silver plate.

[2.7] According to the established case law, features which do not contribute to the solution of the problem set in the description are not considered in assessing the inventive step of a combination of features (see Case Law, 6^th edition 2010, section I.D.8.4, in particular T 206/91 [5.5]).

Since process claim 1 includes silver plating compositions including unspecified, therefore also ineffective concentrations of the nitro aromatic oxidant (see points [2.3.3] and [2.4] above) this feature can only be considered as an arbitrary feature, because it is not credible that it contributes to the solution of the underlying technical problem. The Board therefore does not further consider it. Moreover, in a case like the present one it considers that for the same reason the formulation of a less ambitious problem, i.e. to provide an alternative solution with the same effect, based on this alleged distinguishing feature cannot hold either.

Since there are no further distinguishing features it is not feasible to identify the technical problem to be solved.

Therefore, since no technical problem can be identified which is solved by the subject-matter of process claim 1, the Board considers that claim 1 of the first auxiliary request lacks inventive step (A 56). The first auxiliary request is therefore not allowable.

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NB: This decision has also been presented on Le blog du droit européen des brevets.