T 0465/19 - A non-obvious alternative solution

Key points

•  " The [opponent] cited the decision T 939/92 for the present situation. The appellant argues that, since all cited documents relate to compounds useful in optoelectronic devices and show the structural elements of the claimed compounds the fact that the claimed ones also have such properties was by no means particular or surprising." 
• " It is correct that T 939/92 held the provision of compounds without any particular properties, just for the enrichment of chemistry, to be routine work of a chemist and thus not to require any inventive activity." 
  
• " However, in the present case the claimed compounds do have useful properties and are not just provided for the enrichment of chemistry. This situation is different to the situation underlying T 939/92. Unlike there, the present compounds need to be suitable for the claimed use. Thus, inventive step may not already be denied for the only reason that the compounds have the same, or similar, properties as the compounds disclosed in the prior art. Alternative solutions for the same technical problem may still be validly claimed, provided that they do not obviously result from the teaching of the prior art." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t190465eu1.html

3.5.3 The appellant cited the decision T 939/92 for the present situation. The appellant argues that, since all cited documents relate to compounds useful in optoelectronic devices and show the structural elements of the claimed compounds the fact that the claimed ones also have such properties was by no means particular or surprising.

It is correct that T 939/92 held the provision of compounds without any particular properties, just for the enrichment of chemistry, to be routine work of a chemist and thus not to require any inventive activity.

However, in the present case the claimed compounds do have useful properties and are not just provided for the enrichment of chemistry. This situation is different to the situation underlying T 939/92. Unlike there, the present compounds need to be suitable for the claimed use. Thus, inventive step may not already be denied for the only reason that the compounds have the same, or similar, properties as the compounds disclosed in the prior art. Alternative solutions for the same technical problem may still be validly claimed, provided that they do not obviously result from the teaching of the prior art.

3.5.4 Thus, starting from D1 the claimed compounds are a non-obvious solution to the stated problem.