T 1950/23 - Plausibility and generic statement of advantages

Key points

• The Board has to decide on inventive step.
• "Claim 1 of the main request is distinguished from the composition of example 23 of D1 solely in the presence (in claim 1) of "a detergent selected from sulfonate, phenate, or a mixture thereof"."
• "It is undisputed that the patent does not disclose a technical effect specifically linked to this distinguishing feature."
• " The respondent [proprietor] submitted that the effect of the distinguishing feature was an improvement in extreme pressure performance. Evidence of this effect was provided by the appellant's experimental tests D16, submitted in opposition proceedings."
• " The appellant [opponent] did not contest that this effect was demonstrated in D16 as described above, but rather argued that it could not be derived from the application as filed. Therefore, in view of Enlarged Board of Appeal decision G 2/21, it could not be relied upon for inventive step, and hence also not in the formulation of the objective technical problem underlying claim 1."
• "Page 20, lines 15 to 22 ... states that the lubricating oil compositions may further comprise additives that can impart or improve any desirable property of the lubricating composition. Such additives are listed on page 20, lines 22 to 27 and include detergents. Detergents are mentioned in this list as one of many possible additives." In addition, "page 1, lines 20 to 22 states that the lubricating compositions of the invention exhibit both improved friction characteristics and extreme pressure performance"
• "However, further disclosures in the application as filed point to the specific importance of detergents in the claimed lubricating compositions: claim 7, which is dependent on claim 1, stipulates that the composition further comprises a detergent selected from sulfonate, phenate, or a mixture thereof. Claim 8 is the only other claim dependent on claim 1 and related to a further additive, namely a friction modifier. Since dependent claims are generally directed to preferred embodiments of the invention (Rule 43(3) EPC), this indicates a higher ranking for detergents and friction modifiers as additives over other additives listed in the application as filed. "
• "Furthermore, the lubricant compositions of all examples (table 1, page 31) comprise either a sulfonate or phenate detergent, and it is demonstrated for the inventive examples that adequate extreme pressure performance can be achieved ... . Therefore there is a link in the application as filed between the compositions of claim 7 and the effect of extreme pressure performance set out on page 1 as stated above.
• "it is not reasonable to expect patent applicants, at the time of drafting the application, to safeguard against the citation of then unknown prior art, for example in opposition proceedings, by providing comparative data showing an improvement for all potential distinguishing features over all potentially later cited closest prior art documents. Not only would this be unreasonably burdensome, it would also suffer from the shortcoming that not knowing the nature of the disclosure of the newly cited closest prior art, the information required to set up appropriate comparative tests representative thereof would not be at hand."
• " it would be an overly strict interpretation of G 2/21 to require that the application as filed demonstrate that the improvement of a technical effect disclosed in the application as filed and relied on by the patent proprietor is specifically attributed to the distinguishing feature. In such a situation, it would suffice for opponents to cite new prior art differing in the distinguishing feature compared to the prior art known when the application was drafted to invalidate the patent. More specifically, since relying on post-published data would be excluded under such a strict interpretation of G 2/21, such patents would be likely to face revocation."
• "Hence, this effect may be relied upon for inventive step, and consequently in the formulation of the objective technical problem underlying claim 1."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231950eu1