T 2697/16 - Inventive alternative

 Key points:

• The Board: “Although the case law defines the skilled person as being cautious and having a conservative attitude, it also acknowledges that furthering the state of the art belongs to the normal tasks of the skilled person and that routine adaptations as well as the use of known alternatives do not go beyond what may be normally expected from a skilled person (cf. [T 1715/15 and T 688/14).”

T 2697/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t162697eu1.html

24.5 Thus, the board agrees with the findings of the opposition division and considers that the objective technical problem needs to be formulated in the terms used by the opposition division and the appellant, namely the provision of an alternative method for the production of IgG1 antibodies.

25. It remains to be assessed whether, starting from the closest prior art document (2) and the above formulated less ambitious technical problem, a skilled person would have arrived at the claimed subject-matter in an obvious manner. For carrying out this assessment, the so-called "could-would approach" followed by the opposition division is appropriate (cf. "Case Law", supra, I.D.5, 197). In this context, the appellant referred to documents (20) and (1) as leading the skilled person, when starting from document (2), to the claimed subject-matter in an obvious manner.

25.1 Although the case law defines the skilled person as being cautious and having a conservative attitude (cf. "Case Law", supra, I.D.8.1.3, 205), it also acknowledges that furthering the state of the art belongs to the normal tasks of the skilled person and that routine adaptations as well as the use of known alternatives do not go beyond what may be normally expected from a skilled person (cf. inter alia, T 1715/15 of 27 February 2020, point 18 of the Reasons, and T 688/14 of 24 July 2019, point 25.1 and the case law cited therein).
Indeed, even though the method described in document (2) is said to provide a high yield of recombinant antibody, document (2) itself refers to an alternative for ensuring even higher levels of antibody expression. Thus, a skilled person would certainly be motivated by document (2) to look for possible alternatives. However, the alternative mentioned in document (2), namely the introduction of genomic introns or a genomic leader sequence (cf. page 85, left-hand column, penultimate paragraph), would not lead the skilled person to the method of claim 1, nor is there any other suggestion or indication in document (2) that would have led the skilled person thereto.