[…] According to the principles developed in T 644/97, the technical problem arising from a “closest state of the art” disclosure which is irrelevant to the claimed subject-matter in the sense that it does not mention a problem that is at least related to that derivable from the patent specification has a form such that its solution can practically never be obvious, because any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. It follows that the respective claimed subject-matter is non-obvious in the light of such art (T 644/97 [2.6.3]). [4.3.9(c)]
This reasoning appears from time to time in the case law (see, for example, T 835/00). I have to admit that I do not find it straightforward. I therefore had a look at T 644/97 where one reads:
[…] E1 is concerned not so much with preparing a particular thermoplastic polycarbonate, as with isolating polycarbonates from their solutions, in particular in chlorine containing solvents. Furthermore, whilst E1 is concerned in general terms with obtaining high quality polycarbonates, having low colouration and a low residual chlorine content, the fact that all the products according to E1 have been prepared by a process which involves the use of phosgene, implies that the resulting products will necessarily contain some chlorine. This is in contrast to the products according to the patent in suit, which have been prepared without the use of phosgene. [2.4.2.2]
Whilst the polycarbonates referred to in E1 have certain features in common with those according to the patent in suit, the teachings of the two disclosures are at cross-purposes, in that the problem addressed is not closely oriented to that solved by the patent in suit. [2.4.2.9]
Following T 686/91, E1 is not an appropriate choice for the “closest state of the art” for the assessment of inventive step. [2.4.2.14]
[But even if one considered s]tarting from such a disclosure as E1, in which the problem is not closely oriented to the claimed subject-matter, an appropriate technical problem would need to reflect such lack of orientation, and consequently to be formulated along the lines of: “The provision of a further polycarbonate with a different spectrum of utility.” [2.6.2]
Quite evidently, the solution of such a problem can practically never be obvious, because the absence, from the statement of problem, of an identifiable convergent aim or goal means that there is no basis for proposing any relevant measure or combination of measures of modification of this “closest state of the art” to achieve such an aim. In other words, any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. Nor would the skilled person be led to combine with E1 a prior art disclosure more directly relating to the relevant problem than that of E1, say E6, since the relevance of such a disclosure would not be apparent (T 325/93). [2.6.3]
In summary, the technical problem arising from a “closest state of the art” disclosure which is irrelevant to the claimed subject-matter in the sense that it does not mention a problem that is at least related to that derivable from the patent specification has a form such that its solution can practically never be obvious, because any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. It follows that the respective claimed subject-matter is non-obvious in the light of such art. [2.6.4]
I remain unpersuaded. I believe that this reasoning is too much concerned with the problem stated in the potential closest prior art. The problem-solution approach as I understand it does not really depend on this problem. Otherwise prior art other than patent literature (such as, for example, a product on sale or an object disclosed in a prior use, which do not disclose any problem whatsoever) would never be able to qualify as closest prior art, which is nonsense. In order to know the objective technical problem (which is the only decisive problem within the framework of the problem-solution approach) one has to have determined the closest prior art already. Therefore, I much prefer what is stated in T 606/89 [2] : “Establishing the closest prior art requires that the claimed invention should be compared with the art concerned with a similar use which requires the minimum of structural and functional modifications.” I think that it is legitimate to consider the problem disclosed in the potential prior art – if there is any ! –, but this criterion alone cannot be decisive. T 989/93 [12] is quite balanced : “A document serving as the starting point for evaluating the inventive merits of an invention should relate to the same or a similar technical problem or, at least, to the same or a closely related technical field as the patent considered. A document belonging to a different technical field is much less likely to provide any sound reason why a person skilled in the art would (and not only could or might) have arrived at the subject-matter claimed.”
Irrespective of whether I am right or wrong, it is good to know that this argument has been made repeatedly in the case law. It might be of use in the defence of otherwise doomed patents or applications.
To read the whole decision, click here.
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