T 0665/24 - Non-obviousness of arbitrary values (?)

Key points

• Inventive step is at issue. The claim is directed to a drill component and recites: "characterised in that: the quotient Ls/Dy is equal to 0.4 or 0.45". This is a ratio of some length to a diameter.
• The TBA: "the appellant [opponent] has still not convincingly demonstrated that the second distinguishing feature, namely the quotient feature, is obvious. The board accepts that paragraph [0010] of the patent in suit does not associate a specific technical advantage with the claimed values 0.4 and 0.45 over other values. However, this merely serves to determine the formulation of the objective technical problem as the provision of an alternative percussion drill component."
• "The appellant argues that the quotient feature constitutes a mere arbitrary selection from a host of possible solutions or a selection from obvious alternatives [including ] those obtainable through trial and error."
• "The board disagrees because the case law cited by the appellant operates on the premise that a defined host of solutions or obvious solutions, all of which equally suitable candidates for solving the objective technical problem, are available to the skilled person. This premise is not satisfied here. The appellant has not identified any piece of prior art in which the claimed quotients (Ls/Dy = 0.4 or 0.45) are disclosed or suggested."
• "In the absence of any such disclosure, there is no basis for treating these specific values as members of a defined host of alternatives or obvious solutions accessible to the skilled person.
• "The appellant's arguments that the host of possible choices includes those obtainable through trial and error and that any modification to the drill bit of D8 would be obvious due to the minimalistic objective technical problem of providing an alternative drill component remain a mere unsubstantiated allegation."
• "Accordingly, the board concludes that the appellant has not demonstrated that the distinguishing quotient feature is obvious in the light of the available prior art."
• For completeness' sake, the opponent argued that the CPA  document, D8, disclosed a quotient Ls/Dy of 0.568. The application as filed disclosed a range of 0.4 - 1.0.
• "paragraph [0010] of the description of the patent in suit, according to which no particular technical effect is associated with the quotient Ls/Dy being equal to 0.4 or 0.45, as now claimed, in comparison with the other quotients of the range 0.4 to 1.0 disclosed in the said paragraph"
• Compare: "Another aspect of obviousness which is not readily answered by the PSA is illustrated by the 5¼ inch plate paradox. This runs like this. Suppose the patent claim is for a plate of diameter 5¼ inches. And suppose no-one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so", to cite Lord Justice Jacob "having a lengthy stab at the EPO-style problem-solution approach" in Actavis vs Novartis, and "and arguably getting it wrong", according to David Pearce, IPKat 17.02.2010."
• I wonder what the commercial value of the patent is. Perhaps there is a kind of "must fit" situation for the drill bits at issue such that any "generic" drill bit must exactly match the Ls/Dy ratio specified in the claim, even if the recited value is otherwise an arbitrary choice. Evidently, patent law has no exception for "must fit" spare parts (compare Regulation (EU) 2026/715 , article 9(2) for registered EU designs).
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• EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240665eu1