T 2690/16 - The arbitrary imposition of a limitation

Key points

• This is a case about inventive step of polymers.
• “Under these circumstances where the claim defines a desideratum in terms of a combination of properties and it is shown that the achievement of the required outcome as expressed by the SCL is to an extent arbitrary and not associated with the other features of the claim, or any particular method of manufacture, the objective technical problem can be formulated only as the provision of further polymers.”
• “The arbitrary imposition of a limitation in order to provide a definition of subject-matter thus deemed as belonging to the claim is trivial and an obvious solution to the problem of providing merely further polymers.”
  

EPO T 2690/16 -  link

2.5 The objective technical problem

Under these circumstances where the claim defines a desideratum in terms of a combination of properties and it is shown that the achievement of the required outcome as expressed by the SCL is to an extent arbitrary and not associated with the other features of the claim, or any particular method of manufacture, the objective technical problem can be formulated only as the provision of further polymers.

2.6 Obviousness

Polymers of the general type as defined are known from D2, and D6 provides details of how different catalyst influence the structure of the polymer in terms of regio- and stereoerrors. In addition the examples in the patent show that polymers according to claim 1 can be obtained by operating within the teaching of D2 (point 2.4, above).

The arbitrary imposition of a limitation in order to provide a definition of subject-matter thus deemed as belonging to the claim is trivial and an obvious solution to the problem of providing merely further polymers.

Thus for the skilled person seeking to provide further polymers based on those known from D2 it would be obvious in the light of the teaching of this document alone, or possibly with further reference to D6 to identify manners in which further polymers according to claim 1 could be produced. Similarly D14 provides teachings relating to the effect of the same category of catalysts on the microstructure and crystallisation behaviour of the polymers. Once this was done, the step of carrying out a series of trials and on the basis of the results thereof arbitrarily defining some of the resulting polymers as belonging to "the invention" whilst excluding others on the basis of certain properties, was trivial, in particular in the light of the evidence that polymers with the required properties were accessible by all of the polymerisation methods investigated.