T 1373/23 - Result to be achieved as distinguishing feature

Key points

• This is an examination appeal. I think the decision is in line with the established case law. Still it could be interesting.
• III. Claim 1 of the main request reads as follows.
• "An aluminum alloy product comprising: a pair of outer regions and an inner region positioned between the outer regions; wherein a first concentration of eutectic forming alloying elements in the inner region is less than a second concentration of eutectic forming alloying elements in each of the outer regions; wherein the aluminum alloy product comprises an aluminum alloy selected from the group consisting of 2xxx, 6xxx, and 7xxx series alloys, wherein the aluminum alloy product has a delta r value of 0 to 0.10; ""
• " D1 does not disclose the delta r value. Paragraph [0082] of the application as originally filed discloses that a high Mg content increases the delta r value. This is consistent with the examples in the patent application, which generally show an Mg content well below 1%. Therefore, the inclusion of the delta r value in the subject-matter of claim 1 is a limiting feature that is not necessarily met for all 2xxx, 6xxx, and 7xxx series alloys according to claim 1, in particular for 1.4% Mg, as disclosed for alloy 6-3 in paragraph [0041] of D1. Therefore, the subject-matter of claim 1 is novel over D1."
• Inventive step: "on comparing claim 1 with D1 it is immediately apparent that claim 1 aims at providing an isotropic material.
• It is proposed to solve this technical problem by the features of claim 1, which differ from D1, alloy 6-3 (D1: paragraph [0041]) in the claimed range for the parameter delta r, which is equivalent to a high isotropy."
• "The objective of obtaining a low delta r value is a definition in terms of a result to be achieved. "
• Hence, the claims specify the result to be achieved.
• "according to paragraph [00082] of the application as originally filed, a high Mg content results in high delta r values. Therefore the skilled person is given clear instructions on how to achieve that desired value without undue burden."
• Claim 1 does not recite a specific Mg content.
• "the subject-matter [cannot] be defined more precisely without restricting the scope of the invention. Alloying elements may interact to mutually influence their behaviour. Specifying a particular Mg content would not necessarily ensure that the delta r value would be achieved, nor would it necessarily ensure that all the claimed delta r values resulting from adjustment of the Mg value would be covered by such a claim (T 499/02, point 3.1)."
• "Even if the skilled person were to attempt to provide an isotropic material, they would receive no guidance from D1 or any of the other cited documents as to what measure to apply to the alloy 6-3 (D1: paragraph [0047]) in order to arrive at the claimed delta r value with any prospect of success."
• The claim is inventive.
• The case is an (implicit) application of T 595/90 Kawasaki Steel.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t231373eu1