Can An Apparent Failed Synthesis Still Be An Enabling Disclosure?

In decision T 0719/12, an EPO Board of Appeal was asked to consider whether or not the disclosure of a compound by name, together with an apparent failed attempt at its synthesis, constituted a novelty-destroying disclosure of that compound.

The patent at issue included two claims relating to compounds containing an amine group. The respondent to the appeal (who had successfully argued for revocation of the patent at opposition) claimed that the invention according to these claims lacked novelty in view of an academic journal article from 1942 (D1). For an invention to lack novelty, two criteria need to be fulfilled. Firstly, the invention must be disclosed in a single prior art document. Secondly, that disclosure of the invention must be enabling – that is, a skilled person must be able to put the invention into practice on the basis of the disclosure and their common general knowledge. A secondary amine that falls under the general formulae of the claims was indeed