T 1928/06 – Close As Close Can Be ?

This decision deals with the determination of the “closest prior art” for a claim comprising both technical and non technical features.

In the statement setting out the grounds of appeal the appellant argued essentially in the following way: The analysis by the examining division (ED) was flawed since it did not include the steps of i) determining what is the closest prior art, then ii) determining the difference between the invention and the prior art, then iii) determining what problem is solved on account of this difference. Instead, the ED had attempted to divide the individual steps of the claim into technical and non-technical aspects before carrying out steps i) to iii). The closest prior art was that disclosed in D1, but the ED had started out from clearly less relevant prior art, viz. a general-purpose computer system. [VI]

[…] In dividing the claim into technical and non-technical features the ED merely followed the standard examination technique for subject-matter referring to an aim to be achieved in a non-technical field (see T 641/00 ‘Comvik’). [1.3.1]

The ED was free to start out from a (notorious) general-purpose computer system. As the appellant itself recognises, an invention must satisfy the requirements of inventive step over any prior art. Thus, the ED was not in any way obliged to choose D1 as the “closest” prior art.

In any case, selecting as starting point prior art that comes “closer” to the invention in terms of its non-technical features (here: D1 anticipating aforementioned steps (a) and (b) of the claimed method) would not improve the prospects of patentability since these only depend on the technical aspects of an invention, which remain unchanged by such selection. [1.3.2] 

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