Friday, 21 May 2010

T 2016/07 – Two Is Not A Magic Number

At the end of the oral proceedings before the Board, the patent proprietor requested that the following question be referred to the Enlarged Board of appeal:

Can inventive step be negated if more than two documents have to be combined [in order to come to this conclusion] and if one claim feature is not at all known from the state of the art?

[9.4] According to the established case law of the Boards of appeal, the assessment of inventive step is usually carried out in accordance with the methodology provided by the problem-solution approach.

In doing so, the first step is to determine the state of the art that is closest to the claimed subject-matter. Based on the effect of the features that distinguish the claimed subject-matter from the closest state of the art (distinguishing features) it has to be established whether and, if applicable, which technical problem is solved by the claimed subject-matter.

When assessing whether the claimed solution is obvious, prior art other than the closest state of the art, including the common general knowledge, may have to be taken into account.

In doing so, it has to be checked in each individual case to which extent there is an incitation to take into account such prior art in combination with the closest state of the art. Thereby it can be ensured that the assessment of inventive step is not based on hindsight resulting in further prior art being taken into consideration based on knowledge of the claimed subject-matter and combined with the closest prior art.

The number of documents to be taken into account when the problem-solution approach is applied is not limited and depends on the circumstances of the individual case. In addition to the complexity of the claimed subject-matter, one has to take into account, for instance, whether the claimed subject-matter solves one or several problems and whether these problems are independent with respect to each other. The same holds true for the features of the claimed subject-matter solving the corresponding problems. The same also applies to the prior art that is taken into account when providing evidence for the existence of alternative solutions.

[9.5] Therefore, the question formulated by the [patent proprietor] concerns an aspect that depends on the circumstances of the individual case under consideration, i.e. the combination of features of claim 1 under consideration and the prior art that is to be taken into account, which aspect concerns facts underlying the present proceedings only.

Thus the question to be referred can only be answered by taking into account the facts underlying the present proceedings. In contrast to the requirements laid down in A 112(1) it does not contribute to ensuring uniform application of the law, nor is it a point of law of fundamental importance.

[9.6] This is also true for the aspect of the question to be referred according to which a feature of the claim under consideration is not at all known from the prior art.

The abovementioned application of the problem-solution approach requires that also for such a feature – as a feature of the claim under consideration – it has to be established whether it has the alleged technical effect. Based on this it needs to be examined, taking into account the problem attached to such a distinguishing feature, to which extent this feature, in combination with the other features of the claim to be examined, can be considered to involve an inventive step.

Therefore such a feature has no special status for the assessment of inventive step. The same applies for the assessment of the request for referral under consideration.

In addition it should be noted that it is not unusual to consider claimed subject-matter as obvious although not all features are known from the state of the art to be taken into consideration and which contains several documents. For instance, the skilled person to be taken into account also possesses knowledge and know-how that is common in the technical field [under consideration].

Therefore, the request for a referral to the Enlarged Board is to be dismissed.

NB: This decision (see in particular point 6.5 of the reasons, 4th and 5th paragraphs) also contains some interesting statements concerning the use of industrial designs (Geschmacksmuster) as closest prior art. The patent proprietor argued that the outward appearance of the claimed container could not possibly be rendered obvious by the container disclosed in industrial designs O1 and O1’. The Board rejected this argument by pointing out that the skilled person knew that in an industrial design the outward appearance was prominent and that the industrial design precisely had the effect of making the skilled person aware that providing and arranging grooves was a possibility for obtaining an aesthetic design. In other words, the industrial design could be an incentive for creating and modifying the outward appearance.

To read the whole decision (in German), please click here.