T 0469/19 - Putting the problem first

Key points

• Board 3.3.10 on inventive step, in a chemistry case: "Document D1 discloses a method silent on the amount of water fed to the reactor. The parties agreed with the opposition division's conclusion that D1 was a suitable starting point for examining inventive step. The board sees no reason to differ.' 
• The Board analyses the patent in suit and holds that "Inventive step will thus be examined in the following considering the technical problem underlying the claimed invention to be the provision of a method for the hydrogenation of phenol with enhanced phenol conversion" 
• "The solution to this technical problem is the claimed method of continuous catalytic hydrogenation of phenol over a palladium catalyst, characterised in that water is fed ..." 
• "The respondent [patentee] relied on the experimental evidence on file to show that the problem of providing a method with enhanced conversion was credibly solved by the features of claim 1." 
• The  Board then studies the (experimental) evidence submitted by the parties.
• "Having regard to the available evidence, it is not credibly shown that the problem of providing a hydrogenation process with enhanced conversion has been credibly solved by the method of claim 1." 
• The Board reformulates the problem. "In accordance with the case law, alleged but unsupported advantages cannot be taken into consideration in determining the problem underlying the invention (see e.g. decision T 20/81, OJ EPO 1982, 217, Reasons 3, last paragraph). 
• "As the alleged improvement in terms of better conversion has not been proven, the technical problem as defined above needs to be reformulated as to provide an alternative method for preparing cyclohexanone, cyclohexanol or a mixture of these."
• "The claimed solution is the method of claim 1, characterised by the relative amount of water added to the reactor."
• "This problem is credibly solved by the claimed method. Having regard to the available evidence, the hydrogenation of phenol can be carried out if the required relative amount of water is fed to the reactor."
• " It thus remains to be decided whether the proposed solution to the objective problem defined above would have been obvious for the skilled person in view of the prior art.
• As a comment, the Guidelines indicate that first the distinguishing feature is determined, then the technical effect provided by that feature, and that "  the [objective] technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects".
• This Board first identifies the technical problem, then the claimed solution (distinguishing feature), then checks whether the technical problem is solved by the claimed solution, and if not, reformulates the technical problem. See G. Raths, epi Information 2/2014 p.68; and footnote 7 of my article in epi Information 2/2021

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t190469eu1.html