T 0772/24 - Analysable properties for inventive step

Key points

• My big post on G 1/23 is still a work in progress.
• G 1/23 said that: "It also follows from the correct interpretation of G 1/92 that all analysable properties of the product put on the market will belong to the state of the art, i.e. they will represent technical information that the skilled person is aware of and will consider relying on when looking at technical solutions."
• The present case is admittedly not about commercial products as prior art, but still.
• "there is nothing in D11 [a patent application] that suggests that the three primer coatings disclosed therein would perform differently in terms of adhesion to a coating applied thereto. Fully in agreement with this, the coatings according to D11 are only assessed in terms of their non-fouling properties in the example section; they are not assessed with respect to their adhesion to underlying surfaces or coatings. Accordingly, while experiments testing these three primers for a given property such as adhesion might have been routine for the skilled person, the fact remains that there is no incentive to be found in D11 to perform this testing. The targeted testing and comparison of these primers with respect to their adhesion to a coating applied thereto in order to determine which primer performs best in this regard, would not have been obvious, contrary to the appellant's argument. In other words, on the basis of D11 alone, the skilled person would not have had a reasonable expectation that an epoxy primer would have solved the objective technical problem."
See also G 1/92: "The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240772eu1