T 2174/22 - Putting pointers in the OTP

Key points

•  The technical problem should contain no pointers to the claimed solution. So, can you never use the distinguishing features of the claim in the formulation of the objective  technical problem?
• This decision illustrates that sometimes, using the distinguishing features in the formulation of the OTP is fine. 
• Claim 1 reads: ""1. A composite oxide consisting of cerium, silicon, oxygen, and at least one element selected from yttrium and rare earth metal elements other than cerium, wherein a mass ratio of said cerium to said at least one element is 85:15 to 99:1 in terms of oxides, wherein a content of said silicon is 5 to 20 parts by mass in terms of SiO2 with respect to 100 parts by mass of a total of said cerium and said at least one element in terms of oxides, wherein said composite oxide has properties of exhibiting a specific surface area of not less than 40 m**(2)/g as measured by BET method [], and a reducibility represented by a percent of trivalent cerium in the composite oxide reduced from tetravalent cerium of not lower than 40% as calculated from measurement of temperature-programmed reduction from 50°C to 900ºC after calcination at 1000ºC for 5 hours.""
• " The subject-matter of claim 1 at issue thus differs from D4 in that the composite oxide is doped with yttrium or rare earth metals other than cerium in a mass ratio of cerium to the other element of 85:15 to 99:1 and in the achievement of the above mentioned parametric values."
• "The invention therefore solves the problem of providing an alternative doped ceria with high specific surface area and reducibility after calcination."
• "In view of the above considerations, the board concluded that a skilled person starting from document D4 and seeking to find an alternative ceria composite with high specific surface area and reducibility after calcination would, in view of the teachings in D4 and common knowledge, contemplate incorporating rare earth metals into the silica-doped ceria of this document. The subject-matter of claim 1 is therefore obvious in view of document D4. The requirements of inventive step under Article 56 EPC are therefore not met."
• "even though D4 does not specify the specific surface area and reducibility after calcination under the conditions defined in claim 1 at issue, the values disclosed in this document (i.e. a specific surface area of 168 m**(2)/g (not clear if after calcination or in the fresh material) and 80% reducibility after calcination at 923K), as well as those achieved in D8, clearly show that both the specific surface area and the reducibility after calcination in D4 are within the ranges defined in claim 1 at issue (specific surface area of not less than 40 m**(2)/g after calcination at 900°C for 5 hours and reducibility not lower than 40% after calcination at 1000°C for 5 hours)."
• "Since none of the requests submitted by the proprietor is allowable, the patent shall be revoked."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222174eu1