T 0293/19 - Departing from Kawasaki Steel (?) - repost

Key points (repost for technical reasons)

•  "Claim 10 of auxiliary request 6 relates to an IgM preparation obtainable by the process of claim 8 or claim 9, in which at least 15% with respect to the total immunoglobulins is IgM, having a proteolytic activity of less than 8U/l and wherein the process provides a more than 3log10 removal of non-enveloped viruses."
• "In favour of the appellant-patent proprietor, the following examination assumes that the IgM preparation of claim 10 has less proteolytic activity than the IgM composition of example 3 of D18. The problem of providing an improved IgM preparation is thus considered credibly solved by a preparation having a proteolytic activity below the threshold set by claim 10."
• "It is known from the prior art that the proteolytic activity of an immunoglobulin preparation should be as low as possible "
• "There is no effect linked to the threshold set by claim 1, over and above what is known in the prior art, namely that the lower, the better. The prior art teaches using Sephadex columns to reduce it (D6, column 1, lines 44 and 45). A low proteolytic activity would thus have been an obvious option for a skilled person seeking an improved IgM preparation. "
• "The appellant-patent proprietor argued that the situation in the present case was comparable to that underlying decision T 595/90 [Kawasaki Steel]. There was no process in the prior art which could lead to a product having the required proteolytic activity. Even if said property were to be envisaged as an obvious aim, there was no process at the disposal of the skilled person which could provide said product, which was inventive for this reason alone. "
• " It is disputable whether other processes known from the prior art could lead to the preparation of a product having a proteolytic activity below the threshold set by claim 1. In favour of the appellant-patent proprietor, the board will nevertheless assume it not to be the case."
• "The standard for examination of inventive step by the Boards of Appeal is the problem-solution approach. At no point it includes the question of whether a product could or could not be obtained by a process known from the prior art for it to be inventive.

  A product which can be envisaged as an obvious improvement by a skilled person is not necessarily inventive for the reason alone that it cannot be prepared by the methods available at the filing date. The conclusion on this point would necessarily depend on the facts of the case and the claim's wording.

• In the present case, a low proteolytic activity is known to be advantageous. An IgM having such property is thus an obvious solution to the problem of providing an improvement. Even if at the filing date no process could have led to that product (i.e. the product is novel), the invention resides in developing such process (claim 1), not in the product, at least not in the terms of the distinguishing features chosen by the appellant-patent proprietor."

• Abolishing T 595/90 would be quite an upheaval. Though, the Board here seems to propose abandoning it. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t190293eu1