Tuesday, 22 September 2009

T 5/06 - Inventive step - Insufficiency : 0-1

The Examining Division (ED) refused the application on the grounds of lack of inventive step based on the fact that “the underlying problem is not solved over the whole scope of the claimed subject matter” because it encompassed non-working embodiments. [3]

In that respect, the board observes that A 56 requires that “an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. Thus, when it comes to inventive step, the ED remains obliged by A 56 to issue a decision presenting all the legal and factual reasons for refusing the application having regard to the prior art and to the assessment of obviousness vis-à-vis the said prior art. In the present case, the ED’s decision is totally silent on these issues, so that the rejection under A 56 is not reasoned, contrary to the requirements of R 111(2). [4]

For the further prosecution of the application attention should be paid to G 1/03 [2.5] which stipulates that “if a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances. [...] If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step.”

In the present case, as the effect is part of the claim, it appears from the above that only an objection for insufficiency can be raised under certain circumstances; these circumstances being that the application as filed would not contain sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. [7]

This decision is also discussed here.

To read the whole decision, click here.