Saturday, 24 March 2012

T 188/09 - No Good Reason

This appeal deals with the refusal of an application by the Examining Division.

The applicant argued that the “problem-solution approach” should not be used. Although this approach was used as a tool to provide a consistent approach to the assessment of inventive step, there were cases where its application was not appropriate because it hindered rather than assisted in answering the ultimate question of whether or not the claimed subject-matter was obvious over the prior art. This was acknowledged in decision T 465/92.

The Board was unwilling to adopt this argument and to follow T 465/92 – which, incidentally, is referred to as a “one-off” decision in the Case Law Book:

[1] The “problem and solution approach” is regularly applied as an auxiliary means by the instances of the EPO in the course of deciding whether or not claimed subject-matter fulfils the requirements of A 56.

[2] The appellant, referring to decision T 465/92, observes that there are however cases where the “problem and solution approach” hinders, rather than assists answering the question of whether claimed subject-matter is obvious over the prior art.

[3] In decision T 465/92 [6-9.6] the board explicitly decided not to use the “problem and solution approach”. Thus, the board understands the appellant’s reference to this decision as an argument that the present case is one where the “problem and solution approach” should not be used.

[4] The board notes first that whatever approach is applied as an auxiliary means for the evaluation of inventive step of claimed subject-matter, in a given evidential situation it must provide the same result, be it either in favour of or against inventive step. Therefore, in the present case, even if the “problem and solution approach” was applied, the decision on inventiveness should be the same as if it was not used.

[5] Moreover, according to the reasons of decision T 465/92, the board decided to avoid the “problem and solution approach” because it considered that the seven relevant citations were all equally close to the claimed invention and that therefore, the opponent “ought not to be tied down by having to select one or more citations as being closer than others” (see points [9.3] and [9.4] of the reasons). Consequently, the board considered them all individually without selecting one as the closest prior art document.

[6] The board in decision T 465/92 [9.5] also notes that there may be situations which “can result in a complicated multi-step reasoning where the facts were clear, either for or against inventiveness. Thus, if an inventions breaks new ground it may suffice to say that there is no close prior art rather than constructing a problem based on what is tenuously regarded as the closest prior art.”

[7] None of the circumstances for the avoidance of the classical “problem and solution approach” referred to in decision T 465/92 is present in the case at hand, i.e. neither can the claimed subject-matter be considered as breaking new ground, since document D4 describes a G-protein coupled receptor specifically located in taste cells nor is there a large number of equally close prior art documents […].

[8] Thus, having considered the rationale in decision T 465/92 the present board does not see a reason to apply the approach adopted by the board in that decision rather than the classical “problem and solution approach”.

T 465/92 was indeed more radical than what is said about it in the present decision, because it made the somewhat provocative statement that the problem-solution approach, “as it relies on the results of a search made with actual knowledge of the invention, it is inherently based on hindsight, and therefore calls for care in its application in some circumstances” (point [9.5] of the reasons). If this were true, then the statement under point [4] above would not be correct any more because a method based on hindsight will not always give the same results as a method that is not. However, even if the statement in T 465/92 was correct, if an invention was found to be inventive when assessed with an approach based on hindsight, then it should a fortiori be inventive when assessed with an approach that was not flawed by hindsight. The reverse would not be true. Please correct me if I am wrong.

To download the whole decision, click here.

The file wrapper can be found here.


Manolis said...

This is called "the schizophrenia of the examiner": you search with the invention in mind and then you have to forget it in order to make the PSA-reasoning.
Personally, I find it normal (which may give some indications about my current mental condition...) You cannot search without knowing the invention, how can you search for something you don't know? And I don't see how this hindsight has to be present in the PSA approach. If it was so, then all reasoning based on prior art found after a search would be based on hindsight and per definition wrong.
It only takes some training in the PSA in order to be able to arrive at separating the two phases (as both me and myself can prove!) After all, until not so long ago at the EPO they were different people doing the search and the examination (certainly at the time of T 465/92)...

oliver said...

My doctor told me I’m a paranoid schizophrenic. We think he’s out to get us.

Roufousse T. Fairfly said...

This case reminds me of a reply I received many many years ago from the patent department of a certain German conglomerate:

Im oben bezeichneten Bescheid wird bei der Prüfung auf erfinderische Tätigkeit der sogenannte "Aufgaben-Lösungs-Ansatz" angewendet. Wir sind der Auffassung, dass im Rahmen der vorläufigen internationalen Prüfung der "Aufgaben-Lösungs-Ansatz" nicht anzuwenden ist, weil dieser in den "PCT International Preliminary Examination Guidelines" nicht erwähnt ist; lediglich in den europäischen Richtlinien für die Prüfung finden sich darauf gerichtete Anweisungen.

No comment...

Kimiko Loko said...

The PSA could be contaminated with hindsight as the search is performed, by definition, knowing the problem and the solution. There could be some documents that a priori are irrelevant and a skilled person would have never taken into account (e.g. prejudice), but they become key when the solution to the problem is provided. Then, the examiner easily localizes such documents during the search and he/she can be tempted to introduce such documents as the closest prior art...

Both of us! said...

According to the definition of the skilled person, all the knowledge (i.e. the prior art) in the specific technical field is known to him. So, to localise a document is not an issue, since theoretically, he knows all documents that exist in the technical field. For an examiner (or anybody else looking for prior art) it is a bit more difficult, since (s)he cannot know everything. So the search is made with the invention in mind.
The PSA and the task of those arguing with it requires to show convincingly why the skilled person would select (not find) this particular document and why he would combine it with another one. It is at this point that the danger of using hindsight appears and not before.

Kimiko Loko said...

I agree partially with "both of us". The skill person would know everything, but the examiner is not a skilled person and s/he would know the results of her/his search.

If the scope of the search is too narrow, the number of available starting solutions in the prior art might be reduced, potentially leading to a situation where the only reasonable prior art solution is one that
naturally leads to the claimed invention.

Myshkin said...

@Kimiko Loko:
"If the scope of the search is too narrow, the number of available starting solutions in the prior art might be reduced, potentially leading to a situation where the only reasonable prior art solution is one that naturally leads to the claimed invention."

If there is prior art that naturally leads to the claimed invention, then the invention lacks an inventive step.

The existence of other solutions than the claimed one is not an indication of inventive step (at least not under the EPC). Neither is the existence of documents from which you can never get to the claimed invention.

So I agree with both of them. Hindsight is removed by a proper application of the PSA.

Kimiko Loko said...

One thing is that a prior art leads "naturally" to an invention, an another that the skilled person "would have obviously taken" such prior art as starting point to solve the alleged problem. One the invention is known, one can easily indentify how to justify / arrive to the invention. However, what has to be assessed is how the skilled person would actually have tried to solved the problem. The skilled person would not have only this prior art which naturally lead to the invention, but also those prior arts which would leads not to the invention. The examiner cannot perform a limited and biased search, to only those prior arts which explain a posteriori the invention.

In short, you cannot search only those prior art that "naturally" leads to the invention if those pieces of the art would had not been the actual starting point for the skilled person.

As US Judge Markey remarked, “[o]nly God works from nothing. Men must work with old elements.” Why Not the Statute, 65 JPOS 331 (1983).

Myshkin said...

@Kimiko Loko:
"One thing is that a prior art leads "naturally" to an invention, an another that the skilled person "would have obviously taken" such prior art as starting point to solve the alleged problem."

The PSA does not require that the skilled person "would have obviously taken" a particular prior art as starting point in order to solve the alleged problem. On the contrary, the problem to be solved is determined by the starting point that is chosen. It is the problem that the invention solves compared to that prior art. It therefore does not make sense to look for a starting point in order to solve the problem.

The idea is that the skilled person can start from essentially any piece of prior art and will then try to improve it in all obvious ways. During examination it must be determined if there is (at least) one piece of prior art, and one obvious way of improving that piece of prior art, that would lead to the invention. That "what is obvious" comprises everything already known plus all possible obvious modifications of what was already known.

Thus, if one piece of prior art leads naturally/obviously to the invention, then the invention lacks an inventive step. There is no way around that, at least not under the EPC.

The search that the search examiner performs MUST be biased towards the invention, otherwise he doesn't do his job. The results of the search should enable the Examining Division to determine whether there is a starting point and an obvious way of modifying it that leads to the invention.

Kimiko Loko said...

I agree mostly with Mishkin. However, I still believe that in some cases such reasoning could be contaminated with hindsight. For me one thing is that the invention may be derivable from the state of the art and an another that the skilled person would obviously derivate the invention with any inventive step.

For example, imagine that there are in the state of the art one million of documents pointing in the incorrect direction and only one document which could point to the good direction. If the search is performed with hindsight, the examiner would only located the document which points to the solution, but this search would be clearly contaminated with hindsight. In other words, the examiner choose the right document because he or she now knows, after reading the patent application, that this is the correct document. However, the skilled person would have never arrive to the invention due to that normally the skilled person follows the teaching of one million documents before following the teaching of one unique piece of art.