T 0179/18 - Bonus effect and secondary indicators

Key points

• The Board finds claim 1 to be obvious over D8 in combination with D5. The Board then turns to the further arguments of patentee/ appellant.
• “ The appellant also submitted that the following secondary indicia show the presence of an inventive step: (a) the existence of a technical prejudice in the field of concrete floors against the claimed invention; (b) the wide commercial success of the invention showing a long-felt need; (c) the efforts of market competitors to imitate the invention and (d) the existence of a surprising technical effect achieved by the invention.”
• “ The Board is not persuaded that any of the secondary indicia claimed by the appellant confers inventiveness on the subject matter of claim 1. Secondary indicia such as the satisfaction of a long-felt need, the overcoming of a prejudice in the professional world, or economic success, are auxiliary considerations in assessing inventive step. However, in this case, application of the problem-solution approach has led to the clear result that the subject-matter of claim 1 does not involve an inventive step.
• “5.4.3 Nevertheless, for the sake of completeness, the Board would comment as follows: ... The appellant also cited unexpected effects [surprising technical effect] achieved with the invention as evidenced by Annexes 15, 16 and 23. They argued that in addition to the solution to the above discussed objective technical problem the combination of features of claim 1 produced the surprising technical effects of significantly improving the transfer of load from one slab to another during a vehicle's crossing over the joint and of reducing the vibrations. According to established case law [CLBA I.D.10.8] an additional effect achieved inevitably by the skilled person as the result of an obvious measure without any effort on his part simply represents a bonus effect. The improved load transfer and the reduction of vibrations are bonus effects inherently resulting from the obvious configuration of the vertical stems with an undulated top edge. Therefore these effects do not confer inventiveness on the obvious solution.”
• As a comment, it is curious to see the term 'technical effect'  under the secondary indicia. However, GL G-VII, 10.2 indeed mentions in the chapter "Secondary indicators"  that "An unexpected technical effect may be regarded as an indication of inventive step." 
• As a further comment, it is not clear to me why not all technical effects were included in the formulation of the objective technical problem, unless perhaps the advantages of improved load transfer and reduced vibrations can not be derived from the application as filed.

T 0179/18
https://www.epo.org/law-practice/case-law-appeals/recent/t180179eu1.html

5.4 Secondary indicia claimed by the appellant

5.4.1 The appellant also submitted that the following secondary indicia show the presence of an inventive step:

(a) the existence of a technical prejudice in the field of concrete floors against the claimed invention;

(b) the wide commercial success of the invention showing a long-felt need;

(c) the efforts of market competitors to imitate the invention and

(d) the existence of a surprising technical effect achieved by the invention.

5.4.2 The Board is not persuaded that any of the secondary indicia claimed by the appellant confers inventiveness on the subject matter of claim 1. Secondary indicia such as the satisfaction of a long-felt need, the overcoming of a prejudice in the professional world, or economic success, are auxiliary considerations in assessing inventive step. However, in this case, application of the problem-solution approach has led to the clear result that the subject-matter of claim 1 does not involve an inventive step.

5.4.3 Nevertheless, for the sake of completeness, the Board would comment as follows:

(a) The existence of a technical prejudice (indicium a) indicative for a long-felt need has not been sufficiently proven. The filing date of the patent is only three years after the filing date of the closest prior art document D8, which is not considered a long period indicative of a technical prejudice (see T 0779/02, catchword 2, referred to by the appellant). Annexes 1 to 7, 17 and 19 merely document that it was standard practice to form continuous straight joints where concrete slabs meet each other. It may be true that the provision of rectangular slabs with corresponding straight joints for forming large area floors is obvious for reasons of reduced costs and required technical effort (see e.g. Annex 4, chapter 5.2.2). However, none of the cited references provides a teaching that straight joints were considered the only feasible possibility. The references to cut/sawed joints made by the appellant are not relevant, since in the present case the gap is provided by the profile elements.

Furthermore solutions other than straight joints are commonly known in the prior art. The application of intermeshing profile elements which create an undulated gap as a measure to protect the joint edges from loads resulting from passing vehicles is, in addition to the early teaching of D5, known from various other documents and applied in the art on industrial floors, see for example:

- D2, column 1, lines 44 to 52;

- D6, column 1, lines 42 to 49;

- D9, page 1 and page 5, second paragraph;

- D12, page 2 lines 22 to 26.

(b) Commercial success (indicium b) alone is in principle not to be regarded as indicative of inventive step. The following requirements must first be met: a long-felt need must have been fulfilled and the commercial success must result from the technical features of the invention and not from other influences (e.g. selling techniques or advertising). In the present case, in view of the lack of a long-felt need (see above) the submissions made by the appellant are not sufficient to establish that the wide commercial success is only due to the technical features of the floor as claimed.

(c) With respect to indicium (c), the appellant has merely shown that some similarity exists between the claimed invention and competitors' products. However, this does not rule out that these products may have been developed to satisfy new market demands. Moreover, in view of the prior art it is not convincing that this development was only made possible due to the invention disclosed in the patent.

(d) The appellant also cited unexpected effects (indicium d) achieved with the invention as evidenced by Annexes 15, 16 and 23. They argued that in addition to the solution to the above discussed objective technical problem the combination of features of claim 1 produced the surprising technical effects of significantly improving the transfer of load from one slab to another during a vehicle's crossing over the joint and of reducing the vibrations.

According to established case law (cf. Case Law of the Boards of Appeal, 9th edition, 2019, I.D.10.8) an additional effect achieved inevitably by the skilled person as the result of an obvious measure without any effort on his part simply represents a bonus effect.

The improved load transfer and the reduction of vibrations are bonus effects inherently resulting from the obvious configuration of the vertical stems with an undulated top edge. Therefore these effects do not confer inventiveness on the obvious solution.