T 1520/19 - The description must state a technical problem

Key points

•  In this case, the application does not comply with Rule 42(1)(c) EPC which requires that the description shall " disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art".
• The question is, what is the Article of the EPC that can be used as ground for refusal.
• The Board: " The factual situation can be summarized as follows: it is clear what the claimed invention is and how it can be implemented. However, the skilled person cannot understand from the application or its common knowledge whether the claimed invention solves a technical problem, and which one. The Examining Division refused the application pursuant to Articles 83 and 84 EPC. The Board does not find this to be correct in this case." 
• " According to the requirement of Article 83 EPC that the invention be sufficiently disclosed, the skilled person must be able to carry out the alleged invention. This is the case here for the reasons provided above" 
• " The requirement for the claims in Article 84 EPC is that they define the matter for which protection is sought and that they be clear and supported by the description. These requirements are satisfied: the claimed set of features defines the invention as the description does, so this definition of the invention is supported by the description. It is irrelevant in this regard whether the claimed invention solves a technical problem, or which one." 
• " According to T 26/81 (headnote, last sentence, and reasons 9, esp. second and last sentence), the requirement that the invention should be disclosed in such terms that the technical problem and its solution can be understood (now in Rule 42(1)(c) EPC) cannot be set up as a separate formal criterion independent of inventiveness." 
• " Established case law holds that if a technical effect is not present, i.e. if a technical problem is not solved, then inventive step is to be denied. This is also consistent with the statement in T 26/81 (reasons 9) that, if the subject-matter of of an independent claim, for which there is sufficient disclosure, is judged as being inventive, it must always be possible to derive a technical problem from the application." 
• " In the present case, the application relates to an allegedly improved [] fingerprint sensor [of a particular type]. This undoubtably has the character of an invention in the sense of Article 52 EPC. However, it does not solve any technical problem in respect of a standard [] fingerprint sensor [of that type], so inventive step is to be denied under Article 56 EPC." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191520eu1.html

Legal consequences

22. The factual situation can be summarized as follows: it is clear what the claimed invention is and how it can be implemented. However, the skilled person cannot understand from the application or its common knowledge whether the claimed invention solves a technical problem, and which one.

23. The Examining Division refused the application pursuant to Articles 83 and 84 EPC. The Board does not find this to be correct in this case.

23.1 The requirement for the claims in Article 84 EPC is that they define the matter for which protection is sought and that they be clear and supported by the description. These requirements are satisfied: the claimed set of features defines the invention as the description does, so this definition of the invention is supported by the description. It is irrelevant in this regard whether the claimed invention solves a technical problem, or which one.

23.2 According to the requirement of Article 83 EPC that the invention be sufficiently disclosed, the skilled person must be able to carry out the alleged invention. This is the case here for the reasons provided above (point 17).

24. However, even if the claimed invention can be carried out by the skilled person, that the skilled person is not in a position to understand it as a solution to a technical problem means that the present application fails to fulfill this requirement expressed in Rule 42(1)(c) EPC.

25. According to T 26/81 (headnote, last sentence, and reasons 9, esp. second and last sentence), the requirement that the invention should be disclosed in such terms that the technical problem and its solution can be understood (now in Rule 42(1)(c) EPC) cannot be set up as a separate formal criterion independent of inventiveness.

25.1 Established case law holds that if a technical effect is not present, i.e. if a technical problem is not solved, then inventive step is to be denied. This is also consistent with the statement in T 26/81 (reasons 9) that, if the subject-matter of of an independent claim, for which there is sufficient disclosure, is judged as being inventive, it must always be possible to derive a technical problem from the application.

25.2 In the present case, the application relates to an allegedly improved FTIR fingerprint sensor. This undoubtably has the character of an invention in the sense of Article 52 EPC. However, it does not solve any technical problem in respect of a standard FTIR fingerprint sensor, so inventive step is to be denied under Article 56 EPC.

26. The additional feature of the auxiliary request is insufficient to overcome the preceding analysis or conclusion, as the appellant acknowledged during oral proceedings.

Remittal

27. At the end of the oral proceedings, the appellant requested remittal to the first instance for further prosecution, so that it had a chance to further consider the formulation of the technical problem. In the Board's view, however, this is not a special reason for remittal (Article 11 RPBA 2020). As not only the decision of the Examining Division was concerned with the question which technical problem the claimed invention solved, but also the Board's preliminary opinion and the larger part of the oral proceedings before the Board, there is no convincing reason to allow that discussion to continue before the first instance. The request is therefore rejected.

Order

For these reasons it is decided that:

The appeal is dismissed.