This is an appeal against the refusal of an application by the Examining Division (ED).
The Board did not like the way in which the ED had found claim 1 on file to lack an inventive step:
[9] In the decision under appeal the ED holds that the subject-matter of claim 1 is obvious on the basis of the reasoning quoted in the present decision […]. In brief, the ED identifies the difference between the relevant disclosure in the closest prior art document D4 and the claimed invention, finds that prior art documents D1, D2, D6 and D7 disclose the “missing” features and then states that “[a] skilled person willing to reproduce the invention and facing the disclosures of the cited documents would combine the process disclosed in D4 with the process disclosed in D6 (or D1, D2 and D7) in order to arrive at the proposed process”.
[10] Thus, essentially, the ED considers the subject-matter of claim 1 as obvious for the reason that each of the claimed features has been disclosed in the prior art. However, the mere existence of teachings in the prior art is not a conclusive reason for explaining that the skilled person would have combined these teachings in order to solve the problem that he or she is confronted with (see Case Law of the Boards of Appeal, 6th edition 2010, I.D.8.2.1, in relation to combination inventions).
[11] As a further reason for denying an inventive step for the claimed subject-matter the ED indicated that “[t]he mere fact that a known biochemical step has been added to a known chemical process of oxidation cannot be considered in itself inventive in the absence of a special feature or advantage of the combined use of biochemical and chemical processes” ([…] emphasis as in the decision under appeal).
[12] However, as observed above in point [10] for the determination of the obviousness or non-obviousness of claimed subject-matter, it is not decisive that teachings are known – it must be decided whether or not the skilled person would have combined the known teachings such as to arrive at the claimed subject-matter when attempting to solve the underlying technical problem. Thus, in contrast to the ED’s view, the combination of known teachings may result in non-obvious subject-matter, namely when the skilled person is not motivated, for example by promptings in the prior art, to make such a combination. Under these circumstances the presence of any special effect arising from the combination is not necessary to establish an inventive step.
[13] It follows from the observations in points [9] to [12] above that the reasons given in the decision under appeal do not persuade the board that the subject-matter of the present main request lacks an inventive step.
[14] Hence, the appellant’s request to set aside the decision under appeal […] is granted.
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12 comments:
I'm not sure that I agree with point 12 of the Board. If the combination of known sets of features does not given anything beyond the sum of the effects of the individual sets, any additional motivation to combine the two is not needed anymore. In such a case the combination is an obvious mere juxtaposition. This can be found back quite literally in GL G-VII, 7.
In terms of the problem-solution approach, if the second set of features when added to the first set of features only overcomes a problem that this second set already overcomes by itself, i.e. without interacting with the features of the first set, then the skilled person starting from the first set would, in order to solve this problem, combine the second set with the first set and arrive at the claimed invention. The motivation here is found in the disclosure of the second set of features, which solve the stated problem.
In point 6 the Board formulates a problem ("the provision of an improved process to make saturated dicarboxylic acids, whereby the improvement is the absence of mono-carboxylic by-products") that I can only to be correct, and which the ED probably had not identified. I'm not sure why the Board did not consider the fact that this problem is solved as the "special effect" of the combination in order to explain why the ED's inventive step objection as summarised in point 11 could not be agreed with.
Reading on, I am surprised by point 24 in which the Board considers that none of the documents "conveys that in the framework of a process for the production of saturated dicarboxylic acids an improvement of the process of removing mono-carboxylic by-products is worth consideration". Once the problem has been formulated, and provided that this is not a case of a problem invention (which are rare), whether certain prior art discloses a motivation to consider the problem is not relevant; the skilled person is always motivated to solve (obvious) problems. What is relevant, is whether the prior art discloses that the formulated problem can be solved using the features that constitute the difference (or somewhat more accurate, whether the prior art discloses a solution to the problem that, when applied to the closest prior art, would lead to something within the scope of the claim).
Not sure i follow your analysis. The problem is not in the prior art, and the prior art does not motivate consideration of the problem. In this scenario the problem can only be derived ex post facto from the applicant's disclosure (if not from there, where else?).
The point is that the PSA does not require the problem to be in the prior art.
Upon reading section 12 I had the same feeling as Myshkin pointed out.
Upon second reading I'm not sure they really have a different opinion of PSA as he does. In the end one must find out if the skilled person would have combined prior art teachings and arrive at the claimed subject matter.
Of course the principal way for him to be so motivated is to solve the underlying technical problem.
But even in the absence of a special effect a combination may be inventive. For example, there may be teachings away, or incompatibilities which make the combination non-obvious. The problem may also be to provide an alternative to a known method. For sure, it will be harder so show non-obviousness, but it is not impossible.
But those are the unusual cases, here, as the board points out in the same section ' it must be decided whether or not the skilled person would have combined the known teachings such as to arrive at the claimed subject-matter when attempting to solve the underlying technical problem'
@Anonymous, finding the objective technical problem is done by comparing the claim with the prior art. That is why it is objective. I think US attorneys find the PSA tainted with hindsight for this reason. But nevertheless the big advantage is that it makes inventive step reasoning very structured.
As to section 24, I agree the wording is somewhat akward. Perhaps the board simply means this. Given closest prior art D4, and the objective technical problem, the skilled person would read the cited documents, looking for a teaching that solves this problem. However, he does not find anything worth consideration.
I don't think the board implies that D4 should state the problem. What I do think is needed, is that a document giving the missing feature should also give an indication that it will solve his problem.
Finding the OTP may well be achieved by comparing the claim with the prior art, but where the problem is not in the prior art recognition of the problem itself may have been inventive at the priority date.
This goes to could-would.
The POSITA could have solved the problem at the priority date - but as the poor soul lacks imagination, and the prior art did not disclose the problem nor motivate its consideration - he would not have done so.
@SvR "What I do think is needed, is that a document giving the missing feature should also give an indication that it will solve his problem."
We agree. See Reasons 25.
@Sander:
I agree with the first sentence of point 12. The second sentence and third sentence I do not agree with. Together they contradict GL G-VII, 7, or at least I don't see how they can be reconciled with GL G-VII, 7. In case of a mere juxtaposition, i.e. if a special effect arising from the combination is absent, then this is sufficient to conclude that an inventive step is lacking.
The "mere juxtaposition" reasoning is a special case of the problem solution approach. The skilled person "would" add the second set of features to the first set of featurse in order to get the known technical effects of the second set of features. There is no contradiction with the PSA.
"But even in the absence of a special effect a combination may be inventive. For example, there may be teachings away, or incompatibilities which make the combination non-obvious."
Yes, if there are incompatibilities, the skilled person "could" not combine and therefore would not. The "teaching away"-part I'm less sure about, maybe if the prior art insists that the combination cannot be made, but the skilled person has realised that it actually is possible. (Teaching away normally applies when the prior indicates the problem cannot be solved in the claimed way or not at all, but with a mere juxtaposition there is not really a problem to be solved by the combination. Documents merely showing other combinations than the one claimed do not teach away. But maybe this is another discussion.)
Regarding point 24, if the Board meant what you write, then I completely agree. But I don't read that back in what the Board wrote, and usually they are quite precise in their choice of words.
"I don't think the board implies that D4 should state the problem. What I do think is needed, is that a document giving the missing feature should also give an indication that it will solve his problem."
I think what is needed is that the missing feature is used in D4 to solve the same problem, and that the skilled person can recognise this from reading D4. An explicit mention of the problem is not required. Otherwise a product for sale or a prior use could not serve as a "D2". (I believe there is a decision on this, but whether I can find it is another matter.)
@Sander:
Now that I read your last paragraph more carefully, I actually do agree. An explicit mention of the problem is not needed, but there must be an indication (implicit or explicit) that the missing feature solves the problem. Such an implicit indication can of course also be found in a prior use or a product for sale.
@Anonymous:
"Finding the OTP may well be achieved by comparing the claim with the prior art, but where the problem is not in the prior art recognition of the problem itself may have been inventive at the priority date."
Problem inventions exist, but they are rare. From Case Law I-D, 8.10:
"In T 971/92 the board emphasised that the appreciation of conventional technical problems which formed the basis of the normal activities of the notional person skilled in the art, such as the removal of shortcomings, the optimisation of parameters or the saving of energy or time, could not involve an inventive step. The appreciation of a technical problem could thus only contribute to the inventive step in very exceptional circumstances. However, if an applicant nevertheless wished to rely on an assertion that the inventive activity resided in the recognition of a technical problem to which the solution was admittedly obvious, then the minimum requirement to be met was that this technical problem be clearly and unambiguously disclosed in the application as filed (T 43/97, T 1417/05)."
In the present case, the Board did not agree with the applicant's formulation of the problem and formulated a different problem. I did not check if this problem was clearly and unambiguously disclosed in the application as filed, but that seems unlikely (maybe the Board has made an invention? ;-)).
Regarding the problem formulated by the Board, I have no idea if the goal of producing something without "mono-carboxylic by-products" is conventional (not my field), but if this is unheard of, this goal seems to be arbitrary at most. Arbitrariness is not an indication of inventiveness (otherwise the COMVIK-approach would very often lead to a finding of inventive step, because the problem will usually consist in a long string of non-technical features that cannot be found in the prior art).
It is different if the absence of carboxylic by-products solves some further underlying technical problem, but in that case it seems to me that that underlying problem should be used as the problem to be solved.
"there must be an indication (implicit or explicit) that the missing feature solves the problem"
How can this be possible without (at least implicit) disclosure of the problem?
"How can this be possible without (at least implicit) disclosure of the problem?"
By looking at the function of a feature. What I mean is that the document does not have to stress that a particular problem is solved, i.e. it does not have to (implicitly or explicitly) state that the problem is "worthy of consideration".
The skilled person must understand from studying the document that the missing feature solves the problem / achieves the effect (in an appropriate context and in such a way that the skilled person can apply this teaching to the closest prior art, etc.). This is the core of the PSA. The underlying technical motivation for the invention must be disclosed in a document, or be part of the common general knowledge.
Of course it can very well be the case that documents D4, D5 and D9 (which are discussed in point 24) do not disclose the missing feature as solving the problem. However, this is not what point 24 seems to say (unlike e.g. point 25 which deals with documents D1, D2, D6 and D7).
If the function (effect) is disclosed then so is the problem.
Problem = how to provide [the effect]
With that I can agree. However, I don't think this is what the Board had in mind in point 24.
What I read in point 24 is that the Board is looking (in documents D4, D5, D9) for a motivation to solve the problem. So simply mentioning the effect would not be enough; it would need to be mentioned that the effect is desirable, that it is a problem that is worth solving. And that I don't agree with (unless we have a problem invention).
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