T 0115/18 - Obvious and non-obvious alternatives

 Key points

• This opposition appeal decision deals with various interesting points.
• Oral proceedings took place on 30.07.2020, physically, despite a request for postponement. “The respondent requested postponement of the oral proceedings. The reasons indicated were a very general reference to the ongoing COVID-19 pandemic and expected travel restrictions. However, the board was not presented with information on travel restrictions between The Netherlands, where the representative for the respondent was located, and Munich or Munich and The Netherlands in force at the time the request was filed or up to the date of the oral proceedings. Therefore the request was not allowed and the oral proceedings were not postponed.”
• About inventive step of alternatives: “It is established case law of the boards of appeal of the EPO that, when the objective technical problem addressed is the provision of an alternative, as in the case at hand, an arbitrary selection from amongst a number of known possible solutions cannot be considered to involve an inventive step (see for example decision T 939/92, reasons 2.5.3).”
• For inventive step of the auxiliary request: “Thus the [] objective technical problem that can be derived from the [amended distinguishing feature remains the provision of an alternative method for purifying [a compound].”
• The inventive step attack was based on D4 as the closest prior art, adding a 'virus inactivation step' as taught by D8 (which was obvious, as decided for the main request) and further changing the compound Tween 80 used in D8 into Tween 20 (as now specified in the claim) based on e.g. D24.
• “In the board's view, in the absence of any identified pointer to Tween 20 [as now specified in the claim], the claimed solution was not obvious to the skilled person unless, as was argued by the [opponent] with reference to document D24, Tween 80 [used in the prior art document D8] and Tween 20 were known to the skilled person as being equally suitable for virus inactivation in protein production processes. ... Document D24 is [] silent on the [opponent's] allegation that the detergents are equivalent for the purpose they serve in the method claimed, i.e. virus inactivation. .... In view of the above, the board has come to the conclusion that the skilled person seeking to provide an alternative to the method disclosed in document D4 [the closest prior art] had no reason to modify it by introducing virus inactivation by the use of Tween 20. Thus the claimed solutions were not obvious to the skilled person when starting from the disclosure in document D4.”

T 0115/18 -  link

(decision text omitted)