T 2530/16 - Routine modifications

Key points

• The Board finds the technical effect to be not credible and then turns to the question whether the claimed device (a lamp) is an obvious alternative.
• “ In the same way, starting from a commercially available triphosphor low pressure mercury vapor discharge lamp, if the problem is merely to find alternative lamps regardless of their likely useful properties, all lamps which could be arrived at by routine modifications (such as using well-known equivalent phosphors or adjusting phosphor weight ratios) would be obvious, irrespective of their number, and this would include embodiments falling within the ambit of claim 1 ” (underlining added).
• The Board extensively cites T 939/92. 

EPO T 2530/16  - https://www.epo.org/law-practice/case-law-appeals/recent/t162530eu1.html

3.10 Consequently, the Board is not persuaded that the problem of providing improved colour rendering is solved over the breadth of claim 1, and, as a result, this problem cannot serve as the objective problem within the context of the problem-solution approach. In the absence of any other specific problem plausibly solved across the entire breadth of the claim, the problem can only be seen as merely providing an alternative low pressure mercury vapor discharge lamp.

3.11 In the light of such a general requirement, essentially any conventional modification of the prior art could be seen as an obvious solution to the problem, for example, using different or additional known phosphors, or changing the phosphor weight ratios.

In making these obvious modifications, the skilled person would arrive, without exercising an inventive step, at a wide variety of alternatives, including lamps lying within the ambit of claim 1, for example, lamps which are the same as, or similar to, examples 5 and 6 of the present application.

3.12 In this regard, the Board concurs with the principles established in T 939/92. In that case, the technical effect which, according to the appellant, conferred an inventive step on the claimed subject-matter was herbicidal activity. The deciding Board concluded, however, that it was not satisfied that substantially all the chemical compounds being claimed were herbicidally active (Reasons, point 2.7).

Where the claimed compounds did not (all) have any technically useful property, the Board judged that the technical problem solved by the claimed compounds "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" (Reasons, point 2.5).

3.13 The appellant argued that a particular selection from an "unlimited number of possibilities should be regarded as inventive, even if it was arbitrary, unless there was a direct pointer to the preparation of [the claimed] compounds in the state of the art" (Reasons, point 2.5.2).

The Board, however, dismissed this argument, on the grounds that, if the result which the skilled person was aiming to achieve was only obtaining further chemical compounds, then, whatever starting point the skilled person selected:

"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" (Reasons, point 2.5.3).

3.14 In the same way, starting from a commercially available triphosphor low pressure mercury vapor discharge lamp, if the problem is merely to find alternative lamps regardless of their likely useful properties, all lamps which could be arrived at by routine modifications (such as using well-known equivalent phosphors or adjusting phosphor weight ratios) would be obvious, irrespective of their number, and this would include embodiments falling within the ambit of claim 1 (for example, the embodiments of examples 5 and 6).

3.15 The Board therefore concludes that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of Articles 52(1) and 56 EPC.