T 1294/16 - (II) Inventive step

 Key points

• “Under Article 56 EPC 1973, the only relevant question is whether the skilled person, having regard to the state of the art, would find the claimed invention to be obvious. This does not exclude the skilled person starting their considerations from any piece of prior art they might be aware of. Thus, the choice of the starting point is not restricted. ”
  
  
• On the right to be heard before the Examining Division: “The appellant submits that in the oral proceedings before the Examining Division only D2 was considered as the "closest prior art" in the framework of the "problem and solution approach", whereas the decision is based on document D1 as "closest prior art". The applicant was not heard on the grounds that led to the refusal, in breach of Article 113(1) EPC 1973.”
• “In its preliminary opinion [], the Board expressed its doubts, stating, with reference to passages from the minutes, that it seemed to be "at least implicit" that both D1 and D2 had been considered as closest prior art by the Examining Division. The appellant takes issue with the idea that an only "impli­cit discussion" could be sufficient to satisfy the appellant's right to be heard under Article 113(1) EPC 1973 and asks the Board to submit that question to the Enlarged Board. ”
• “The board takes the view that a potential violation of the appellant's right to be heard by the Examining Division would have no impact on the present decision, as the appellant did not contest that the right to be heard on the matter was respected by the Board. The appellant acknowledged to have had ample opportunity to present its case before this Board. In particular, it was discussed what is the appropriate starting point ("closest prior art") for the assessment of inventive step, the Board explicitly considered both D1 and D2 as possible "closest prior art" documents, and the appellant was given several opportunities to file amendments at a very late stage of the proceedings.”
  
  
• “The Board does not dispute that a technical effect might be obtained [by the feature of the claimed computer-implemented method] under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step ”

T 1294/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161294eu1.html

Starting point (closest prior art)

3. The Examining Division considered that claim 1 of the main request lacked an inventive step starting from document D1.

4. The appellant (page 4 of the grounds of appeal) disagrees with the choice of D1 as "closest prior art" and submits that D2 should instead be the "closest prior art", because D2 has, or at least mentions, the same purpose, i.e. a search for a model in an image, whereas D1 is only about defect detection. In support, the appellant quotes the "Case Law of the Boards of Appeal" (I.D.3.1, seventh edition; same section in the ninth edition) stating:

The boards have repeatedly pointed out that the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common.

5. This Board endorses the opinion that a document with a different purpose can be selected as a starting point in an inventive step analysis (see, e.g., T 1742/12, points 9 and 10). Under Article 56 EPC 1973, the only relevant question is whether the skilled person, having regard to the state of the art, would find the claimed invention to be obvious. This does not exclude the skilled person starting their considerations from any piece of prior art they might be aware of. Thus, the choice of the starting point is not restricted. The Board notes that the above passage quoted by the applicant is a rule which states which document is "normally" (not "always") to be chosen as closest prior art. This rule is employed for efficiency reasons, but it cannot be taken to exclude the selection of different prior art as a starting point and thus as "closest prior art" (see T 0694/15, point 13; T 0405/14, point 19; T 0816/16, point 3.7.1).

6. Considering the situation as put forward by the appellant, the fact that a document has a different purpose than the invention does not mean that it cannot lead to a finding of obviousness. There can be obvious reasons for using the teachings of the document for the claimed purpose, e.g. when the skilled person reading it knows that the teaching can be used, as it is or analogously, for that purpose.

[...]

25. In response to this second point, the Board recalls that it is of constant jurisprudence that only features contributing to the solution of a technical problem by providing a technical effect can contribute towards a finding of inventive step (T 0641/00 Two identities/COMVIK, point 6). This is because the EPC provides for protection of inventions, which require a technical solution to a technical problem (Rule 27(1)(c) EPC 1973). It is the (claimed) invention, i.e. the technical solution, that needs to involve an inventive step (Articles 52 EPC and 56 EPC 1973) for a patent to be granted.

26. In response to the first set of arguments (point 23. above), the Board first remarks that, whichever way the data is arranged, the number of operations (data read-outs, additions, multiplications) cannot change, because the computation of the NCC requires all data to be read and the same products to be computed and added.

26.1 So, if there is any speed-up, it must come from a faster data read-out, caused by the allegedly simpler structure. This, however, cannot be assessed without information on the software and hardware architecture. Such information is not provided, neither in the claim, nor in the description. A simpler indexing structure does not necessarily translate to a faster read-out. This depends on a number of factors, including the data structures allowed by the programming language, the memory management, the compiler design etc. If, for instance, the programming language is optimized for treating RGB images in the standard 3-plane format (see D6), then forcing a rearrangement of the data matrix will actually reduce performance. There is no information in the description allowing to assess this.

26.2 The Board does not dispute that a technical effect might be obtained under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step (see also T 0939/92, points 2.4 to 2.6).

27. Regarding the argument as to the convenience for the programmer, i.e. easing the programming effort, this, in principle, cannot be considered to define an invention at all (T 1539/09, Catchword). Arguendo, even if that could be the case, the technical effect cannot be objectively assessed here, because on the one hand the programming language is not specified, and because on the other hand the answer is a matter of subjective preference: while writing code with only two loops may be more convenient, the indexes will no longer intuitively directly represent the standard RGB format, making code reading less convenient.

28. Thus the claimed data transformation means does not solve any technical problem at all, and hence cannot contribute to a finding of inventive step. As in the case of the main request, claim 1 of this request lacks inventive step starting from D1 in view of the common knowledge in the art or from D2 in view of D1 and the common knowledge in the art.

[...]

Alleged procedural violation

37. The appellant submits that in the oral proceedings before the Examining Division only D2 was considered as the "closest prior art" in the framework of the "problem and solution approach", whereas the decision is based on document D1 as "closest prior art". The applicant was not heard on the grounds that led to the refusal, in breach of Article 113(1) EPC 1973.

38. The minutes of those oral proceedings mention that the "preliminary opinion of 23-11-2015" was discussed (1st page, paragraph 4), especially its "section 1.3.2" (pa­­ra­graph 10), and state (1st page, last sentence, to 2nd page, 1st paragraph) that the "Art 52 objection of the preliminary opinion under point 1.3.2 was withdrawn" and that "the Art 52 objections raised in sec­tion 1.5 [...] were maintained". There is no point 1.5 in the preliminary opinion of 23 November 2015. The summons to oral proceedings dated 5 June 2015 contain objections starting from both D1 and D2 (in combination with D1) in points 1.4 and 1.5. The discussion during the oral proceedings then focused on the teachings of D1 (2nd page, top: "fills the gaps of D1"; further down "The contiguous data is not explicitly disclosed in D1").

39. Thus, on the basis of the examination file itself, it appears that it was at least implicit during the oral proceedings, i.e. it should have been known to the applicant that both D1 and D2 were considered as "closest prior art".

40. The appellant disagreed. It was clear during the oral proceedings before the Examination Division that the starting point was D2. The arguments were different if one started from D1 or D2. The case could then have been argued differently.

41. The Board is not in a position to verify this allegation. It would have been for the members of the Examining Division to do so had the applicant contested the minutes of the oral proceedings before the division. Thus, the Board cannot find that a (substantial) procedural violation took place.

The request for referral to the Enlarged Board

42. The appellant argued that the Examining Division had based its decision on D1 as closest prior art that had not as such been discussed during the oral proceedings. In its preliminary opinion (see points 5.3 and 5.4), the Board expressed its doubts, stating, with reference to passages from the minutes, that it seemed to be "at least implicit" that both D1 and D2 had been considered as closest prior art by the Examining Division. The appellant takes issue with the idea that an only "impli­cit discussion" could be sufficient to satisfy the appellant's right to be heard under Article 113(1) EPC 1973 and asks the Board to submit that question to the Enlarged Board.

43. The board takes the view that a potential violation of the appellant's right to be heard by the Examining Division would have no impact on the present decision, as the appellant did not contest that the right to be heard on the matter was respected by the Board. The appellant acknowledged to have had ample opportunity to present its case before this Board. In particular, it was discussed what is the appropriate starting point ("closest prior art") for the assessment of inventive step, the Board explicitly considered both D1 and D2 as possible "closest prior art" documents, and the appellant was given several opportunities to file amendments at a very late stage of the proceedings.

44. Hence, the answer to the question the appellant asks the Board to refer would have no consequences on the present case, so that a decision is not required (Article 112(1)(a) EPC 1973).

Order

For these reasons it is decided that:

The appeal is dismissed.