T 0116/18 - After G 2/21 - Original examples and narrower claims

Key points

• This decision is old (July 2023). I will still provide my summary and analysis. 
• Claim 1 is directed to a composition of comprising thiamethoxam and a compound according to a Markush formula. Inventive step is the issue to be decided. The individual compounds were known as insecticides at the priority date. The patent asserts that a synergy was found. The Board referred questions to the Enlarged Board in G2/21, and the Enlarged Board gave an answer. 
• The Board: " the focus on the application as filed and the filing date (G 2/21, point 93 of the Reasons) is intended to prevent the filing of applications directed purely to speculative (armchair) inventions made only after the filing date."
• " What matters is that when deciding whether a patent applicant or proprietor may rely on a purported technical effect for inventive step, it is the requirement(s) defined by the Enlarged Board in order no. 2 that has (have) to be applied, rather than simply using any rationale developed in the previous plausibility case law. "
• The Board analyses the holding of G2/21 semantically.
• " Requirements (i) and (ii) use the terms "technical teaching" and "invention". The EPC does not contain the concept of technical teaching, while a tautological definition of the term "invention" is considered to be formulated at Rule 42(1)(c) EPC, namely as a solution to a technical problem."
• " In the case law the term "invention" has been defined by the Enlarged Board only indirectly by adopting the reasoning in the "Rote Taube" decision by the German Federal Court of Justice (BGH 27.3.1069, X ZB 15/67: "Lehre zum planmäßigen Handeln unter Einsatz beherrschbarer Naturkräfte zur Erreichung eines kausal übersehbaren Erfolges"; translation given in G 1/19 (point 75 of the Reasons): "a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result"). According to G 2/07 and G 1/19, the "Rote Taube" decision stated that the term "invention" required (G 2/07, point 6.4.2.1 of the Reasons) or implied (G 1/19, point 75 of the decision) a technical teaching. In the present board's view, this definition of the term "invention" does not reveal any difference from the term "technical teaching" which would justify the assumption that the two terms have a different meaning."
• Note, the claim in the Red  Dove decision was a method of breeding a red dove (link). The point was whether (controllable) biological forces can "support" an invention, in addition to the traditionally used chemical, physical, and mechanical forces.
• In G 1/19, it was about software inventions. In G 2/07, the point was that methods of plant breeding can be inventions.
• "in the board's view G 2/21 seeks to prevent speculative inventions. In turn, the broader the application as filed, the more likely it is that the invention defined in it was speculative from the outset. Hence, in order to fulfil this purpose of G 2/21, the assessment as regards requirements (i) and (ii) of order no. 2 has to be made based on the broadest technical teaching of the application as filed contained in it with regard to the claimed subject-matter."
• Regarding requirement (ii): the question to be asked is: "would the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter?"
• I don't think the Enlarged Board prescribed the threshold as "legitimate reason to doubt" in G 2/21.  
• "Requirement (ii) is met unless the above question is to be answered in the affirmative."
• The Enlarged Board did not formulate requirement II as an unless-clause in G 2/21.
• I understand requirement II to seek to prevent shift support, e.g., wherein embodiment B is claimed, but the examples for embodiment A are used as support for the technical effect in cases wherein the skilled person would consider the link between the two embodiments insufficient. 
• G2/21 "speak'[s] of "derivable"/"derive" but not of e.g. "directly and unambiguously derivable". 
• The Board then turns to the examples of the application as filed and common general knowledge.
• "test example 3-a demonstrates a synergistic effect against Chilo suppressalis for a compound of formula Ia in combination with clothianidin. As submitted by the respondent and not disputed by the appellant, clothianidin and thiamethoxam are structurally very similar. Therefore, the board agrees with the respondent's argument that the skilled person would have no legitimate reason to doubt that the synergistic effect against Chilo suppressalis would be maintained when replacing clothianidin with thiamethoxam in the insecticide combination in test example 3-a."
• This reasoning seems to align with the Enlarged Board's suggestion to focus on the technical facts and the technical field at issue (in r.95).
• The Board: "test examples 1 to 5 of the application as filed show a synergistic effect for eight different insecticide combinations, each against one of three insect species (Spodoptera litura, Chilo suppressalis and Plutella xylostella). The insecticide combinations in question each comprise one of three different insecticides of general formula II (clothianidin, thiamethoxam, dinotefuran) and one of six different insecticides of general formula I (compounds I-1 to I-6). Therefore, in the board's judgement, these test examples exhibit a reasonable degree of variation with respect to the insecticides and insect species, and it is not apparent to the board why the skilled person, based on the application as filed, should have legitimate reason to doubt that the combination of insecticides of formulas I and II do not act synergistically against at least those insect species which are the object of the test examples, i.e. also Chilo suppressalis. A fortiori this must also apply to subsets of formulas I and II, such as the insecticide combinations in claim 1 as granted, which are based on compounds of formula Ia and thiamethoxam."
• In other words, the limiting amendments made to the claims (possibly for novelty) do not diminish the technical teaching of the application as filed. 
• I think the Board could also have found this technical teaching to be credible based on the application as filed. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t180116eu2