T 1126/09 – What Would My Robot Do?

The patent proprietor appealed against the decision of the Opposition Division revoking its patent.

Claim 1 before the Board read:

Method for manufacturing concrete products on at least one casing table, characterized by

(A) the use of at least one program-controlled robot (48) which

(B) on said casing table (20),

(C) picks up, from a store (30),

(D) edge forming profiled casing elements (10) that can be magnetically fixed

(E) by means of integrated permanent magnet elements (14);

(F) precisely positions them on said casing table (20); and

(G) then activates the permanent magnet elements (14).

The Board found this claim to lack inventive step:

*** Translation of the German original ***

[2] It is undisputed that, as discussed during the oral proceedings (OPs), the skilled person to be taken into account in this case, where a program-controlled and, therefore, programmable, robot interacts with edge forming profiled casing elements (EPE), is to be considered to be formed by a team comprising a person that is skilled in the field of the manufacture of EPE, and another person skilled in the use of program-controlled robots of the kind under consideration. Therefore, the team to be considered, which will be referred to as the skilled person, has to be deemed to have technical knowledge and to be familiar with standard practices both in the field of plant construction (Anlagenbau) and in the field of programming of robots to be used in such plants.

[3] Claim 1 according to the main request concerns a method for manufacturing concrete products on at least one casing table.

In this method a program-controlled robot having features (A) to (G) is used. This robot picks up EPE that can be magnetically fixed (feature D), precisely positions them on the casing table (feature F) and then activates the permanent magnet elements (PME; feature G).

The EPE that can be magnetically fixed (feature D) used in this method have integrated PME (feature E) that can be activated according to feature G.

Thus the method according to claim 1 comprises the use of at least one program-controlled robot for handling EPE each of which has integrated PME.

Closest prior art

[4.1] it is undisputed that […] the method for manufacturing concrete products disclosed in D1 is the closest prior art for the subject-matter of claim 1 of all the request s on file.

[4.2] The known method concerns the manufacture of concrete products on at least one casing table wherein, as in feature A, at least one program-controlled robot is used […]. This robot positions EPE that can be magnetically fixed on the casing table, as in features B and D.

In the known method the PME are distinct from the EPE. The robot first positions them on the casing table and then positions EPE on top of the corresponding PME […].

Distinguishing features

[5] It is undisputed that the method according to claim 1 […] differs from the method according to D1 in that the EPE have integrated PME (features D and E) and, as far as the use of program-controlled robots is concerned, in that it is the EPE which can be magnetically fixed that are picked up from a store and precisely positioned (features A and C to F). A further distinguishing feature results from the fact that the integrated PME of the EPE are activated by the robot (feature G).

Problem

[6] The above mentioned distinguishing features have the following effects:

On the one hand, the method is improved by increasing the precision of the positioning of the EPE. As EPE having integrated PME are used, the number of elements that have to be handled is reduced and the EPE and the PME are maintained in a constant relative position.

On the other hand, the reduction of the number of elements that have to be handled also leads to the effect that the set-up times (Rüstzeit) are shortened and that the handling of the EPE is simplified.

Based on these effects, the problem underlying the method according to claim 1 […] can be formulated to consist in providing an improved method wherein the set-up times are significantly shortened and wherein the handling of the EPE is perceptibly simplified.

Solution

[7] It is apparent that the above mentioned problem is solved by the interaction between the robot and the EPE that can be magnetically fixed and which have integrated permanent magnets, as defined in claim 1 […].

Consideration of further prior art D2

[8.1] According to the impugned decision, starting from the method using a program-controlled robot according to D1, document D2, which discloses an edge forming profiled casing element having integrated PME, is to be taken into account. […]

[8.2] The [patent proprietor] considers this view to be wrong. It contests that document D2, which has been cited in the application that has resulted in the opposed patent […], is to be considered as further prior art together with the method according to D1 when the presence of an inventive step is to be assessed.

[8.2.1] The [patent proprietor] is of the opinion that there is no indication for using the edge forming profiled casing element known from D2, which is disclosed only in the context of manual handling, in a method such as that of D1, where EPE are handled using a program-controlled robot.

[8.2.2] This was also supported by D10 which presents the actual development. This document explains that it was already known to use EPE having integrated PME such as those of D2 in a method for manufacturing concrete products. However, in this method, the EPE had deliberately been handled manually because apparently serious difficulties were to be expected when using a program-controlled robot […].

[8.3] The Board believes the reasons for the impugned decision to be correct and cannot endorse the opinion of the [patent proprietor].

The Board is of the opinion that the skilled person starting from the method according to D1, wherein EPE and PME are handled separately, is almost obliged to take into account the use the EPE having integrated PME from D2, e.g. in order to improve the degree of automatisation and the precision of the method or to solve the problem mentioned above […]. The advantage resulting from the reduction of the number of the elements to be handled (EPE with separate PME according to D1 vs. EPE with integrated PME according to D2) is manifest.

It may be added that the serious difficulties encountered when using EPE according to D2 in a method using a program-controlled robot according to D1 have not found any expression in a feature of claim 1 […] nor does the opposed patent report measures that have allowed to overcome these problems.

Consequently, as these difficulties have no basis in claim 1 to be assessed, they cannot be taken into account. It is not possible to consider that they prevent the skilled person from using the EPE according to D2. Moreover, such difficulties would not be insurmountable because the skilled person to be considered here is part of a team comprising a person skilled in the field of robots […]

For this reason alone (lack of corresponding features in claim 1) the argument that such difficulties are reported in D10, which presents the actual development, cannot succeed.

For the sake of completeness, the Board would like to add that this argument is not persuasive. In this context, it is not necessary to discuss whether D10 as a single document can be representative for the actual development of the field under consideration. Even if one assumes, in favour of the [patent proprietor] that this is the case, it is necessary to take into account the whole disclosure of D10 concerning the technical development. When doing so, one finds, as has been pointed out by the Board during the OPs, that D10 mentions a lack of experience in the use of a casing robot as a particular circumstance justifying the manual handling disclosed therein. The possibility of retrofitting with a casing robot is expressly mentioned in this context […]. Therefore, the disclosure of D10 does not allow to draw any conclusion that technical difficulties would have prevented the skilled person from improving the method according to D1 by using the EPE having integrated PME known from D2.

[8.4] D2 discloses, as duly considered in the impugned decision and mentioned in the application underlying the opposed patent, that an EPE that can be magnetically fixed (according to features D, E, and G) can be activated by a release button.

As far as the disclosure of D2 regarding the handling of the EPE that can be magnetically fixed is concerned, the Board is of the opinion that the [patent proprietor] is right in pointing out that this document only gives indications concerning the handling of EPEs in general […] and provides details only for manual deactivation […] of the integrated PMEs.

Obviousness

[9.1] According to the opinion expressed in the impugned decision, which the Board endorses, the method of claim 1 does not involve an inventive step when starting from the method according to D1 and taking into account the EPEs known from D2 […].

[9.2] The Board is of the opinion that when the problem-solution approach for assessing inventive step is applied, which the [patent proprietor] has not objected to, one has to assume that the skilled person to be considered […], based on the method for manufacturing concrete products according to the closest prior art D1 […] and trying to solve the problem […] of improving (e.g. regarding the precision of positioning of the EPEs on the casing table) and simplifying the method and of reducing the set-up times, would replace the two elements to be handled in D1 (the EPE and the separate PMEs) by the single element of D2 (i.e. the EPE with integrated PMEs) and would activate the PMEs with the existing robot.

Therefore, the method according to features A to F of claim 1 is to be considered obvious over documents D1 and D2, as discussed in the OPs.

[9.3] The [patent proprietor] is of the opinion that, irrespective of the above statement, which it has not objected to any more in the end, the method of claim 1 involves an inventive step.

The main argument of the [patent proprietor] is based on the fact that neither D1 nor D2, nor their combination (Gesamtschau) gives an indication for proceeding along features A to F taking into account feature G, according to which the PMEs are activated by the at least one program-controlled robot.

According to the [patent proprietor] the purpose of the robot used in the method of D1 is to position the PMEs and, in a distinct step, the EPEs (which do not comprise PMEs). Leaving aside the serious difficulties to be expected […], this known method may encompass the possibility that when EPEs according to D2 are used, they are picked up from a store and are precisely positioned on the casing table by using the at least one program-controlled robot (according to features A, C, and F). However, there was no indication in D1 for subsequently activating the PMEs according to remaining feature G of claim 1.

The same was true for D2 because this documents only refers to manual handling of EPEs with integrated PMEs. Consequently, there was no hint in this document tat the integrated PMEs were to be activated by means of a robot.

[9.4] The Board is of the opinion that the impugned decision has correctly addressed this argument by stating

“… that in principle robots are used in industry for replacing human activities, which allows to save time and costs. In the present case, it is unthinkable that the skilled person, which already uses a robot in all steps of the casing method would not at least try to have the PMEs activated by the robot.”

The Board is of the opinion that the last sentence of this citation is crucial in the present case. The skilled person, who is familiar with the idea expressed in D1 to use “a robot for all steps of the casing method” will at least consider having the PMEs according to features A and G activated by the robot, be it only to keep the degree of automation known from D1. When doing so, the skilled person cannot ignore the need for activating the PMEs after having positioned an EPE on the casing table (according to feature G), which is inherent to the PMEs of D2 because of the integrated PMEs.

The Board finds the [patent proprietor’s] argument, according to which the skilled person would provide a manual actuation by pressing a release button 18 for activating according to D2, to be unpersuasive.

Rather, the Board is of the opinion that the skilled person would provide that all the steps of the method, and, therefore, also the activation of the PMEs, are carried out by the existing program-controlled robot, thereby following the method of D1. The Board believes that this is all the more true as, according to the manual procedure of D2, the activation of the PME can be obtained by simply exerting pressure on the release button of the corresponding PME by the program-controlled robot.

[9.5] Regarding the use of the program-controlled robot known from D1 for handling the EPEs according to D2, the [patent proprietor] was of the opinion that the skilled person would expect serious difficulties which could only be overcome through development work that was considerable both from a temporal and from a financial point of view […]. This was particularly true for the activation of the PMEs according to feature G of the invention.

These difficulties would have prevented the skilled person from extending the use of the program-controlled robot in the method according to D1 to the activation of the PMEs according to features A and G.

The [patent proprietor] has not substantiated the difficulties he had invoked, nor provided evidence for them, although the Board had requested him to do so. As the Board is of the opinion that the facts of the present case do not indicate such difficulties and as neither a feature of claim 1 nor an indication of the opposed patent provide an indication that such difficulties had to be overcome, the argument based on them cannot be taken into consideration when assessing inventive step.

As far as this argument is concerned, the Board can only endorse the opinion expressed in the impugned decision according to which the use of the robot as defined in claim 1 may not be trivial but that problems arising in this context and corresponding solutions are not mentioned in claim 1 or in the rest of the patent […].

Regarding the suitability of integrated PMEs according to D2 for activation by robots according to features A and G, it is undisputed that the requirements for an activation by use of a robot are fulfilled even without any modification of the robot because each integrated PME of the EPE according to D2 has a pull-off element (Abziehorgan) 10 for manually deactivating by pulling up this element […], which means that the activation is obtained in reverse order by pushing down this element.

[9.6] Therefore, the method according to claim 1 […] does not involve an inventive step when starting from the method according to D1 and taking into account the EPEs known from D2 (A 56).

[9.7] This holds true even when the remaining arguments of the [patent proprietor] are taken into account.

[9.7.1] One of the arguments is based on the opinion that when inventive step is to be assessed, one has to take into account that, according to the “could-would approach” it is not sufficient for denying the presence of an inventive step that the skilled person, starting from the closest prior art (here: D1) and taking into account further prior art (here: D2) could arrive at the method according to claim 1. Rather, [it has to be examined] whether he, starting from the method according to D1 and taking into account document D2 would indeed arrive at the method according to claim 1. This was not the case because neither D1 nor D2 contained an indication pointing towards such a result based on the combination (Gesamtschau) of documents D1 and D2.

[9.7.2] The Board is of the opinion that according to the “could-would approach”, when inventive step is to be assessed, it has to be examined, in each individual case, to which extent the skilled person, starting from the closest prior art and taking into account the effect of the features that distinguish [the claim] from this prior art, or the objective technical problem that can be derived from [this effect], respectively, had good reason (Veranlassung) to adduce further prior art and to apply its teaching to the method / the device of the closest prior art, or, in other words, whether there is any apparent indication (Anhaltspunkt) pointing towards a combination of the teachings of the documents under consideration.

As mentioned during the OPs, the Board does not share the point of view of the [patent proprietor] according to which such an indication had to arise from one of the documents D1 or D2. As also mentioned during the OPs, and contrary to the opinion expressed by the [patent proprietor], this also holds true for method steps which the skilled person to be taken into account in the present case may be expected to carry out when using EPEs according to D2 in the method according to D1, using the existing program-controlled robot.

In the present case, where the teachings of documents D1 and D2 are combined when inventive step is assessed, the Board is of the opinion that the examination according to the “could-would approach” at first concerns the question whether the skilled person, starting from the method according to D1 with EPEs and permanent magnets which are arranged separately, can be expected, within the framework of his technical know-how and in order to solve the objective problem, to replace these two elements, which are to be handled separately by means of the robot in the known method, by a single element, i.e. the EPE having PMEs according to D2. This question is answered in the affirmative for the reasons mentioned above in section [9.2].

The indication that leads the skilled person to taking into account the EPE according to D2 in the method according to D1 results from his fundamental endeavour to simplify the existing method within the framework of the problem to be solved, for instance, as here, by reducing the number of elements that are to be handled by the robot (D1: EPEs and separate PMEs; D2: EPEs with integrated PMEs) and, as a consequence, the set-up time needed for the handling. The same holds true for the part of the problem that concerns the improvement of the method; it is apparent that the reduction of the number of elements to be positioned contributes to say improving the method by means of an increased positional precision.

The further question raised by the [patent proprietor] in this context, to which extent, when starting from the combination of the teachings of D1 and D2, there was an indication to activate the PMEs according to features A and G by means of the program-controlled robot is also to be answered in the affirmative for the reasons given above in section [9.4]. The indication – in this case for taking into account the technical knowledge of the skilled person, see section [2] above – is found in the fundamental endeavour of the skilled person to (further) automatize, here at least with the goal of reducing the set-up times according to a part of the problem.

[9.7.3] According to a further argument of the [patent proprietor] the economic success that was due to the solution according to the invention, should not be disregarded when assessing inventive step.

In the present case, this argument cannot lead to another conclusion, because the result of the examination using the problem-solution approach does not leave any doubt. For the sake of completeness it may be added that this argument cannot be taken into account also because there are no concrete and established facts that would support it.

Finally the appeal was dismissed.

NB: If you find the English translation cumbersome here and there, it might just be that it is faithful to the original :-).

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.