T 1231/20 - Obvious as a solution for another problem

Key points

• The invention is about clock control units for microcontrollers. D5 is the closest prior art. It contains an oscillator, but D5 does not specify that the oscillator is a numerically controlled oscillator. 
• The filing date is in 2013. 
• " before the priority date of the present application, NCO's had evolved as a possible alternative to analog oscillators. They have since [1993] become cheaper and have become easier to integrate. It was also well known already before the priority date of the application that NCO's provide numerous advantages compared to analog oscillators: they are more agile, accurate, stable and reliable (see e.g. D6, second paragraph, first sentence). In addition, a general trend exists to use digital instead of analog components.'
• "For this reason, the skilled person, who has a natural tendency to consider alternative designs which can provide an advantage in specific circumstances, would have an incentive to consider the use of an NCO as an oscillator in a microprocessor comprising a central processing core."
• "A skilled person would thus arrive at the subject-matter of claim 1 without demonstrating any inventive activity."
• The application focuses, however, on a different advantage, namely to "fill in the gap between the binary-multiple frequency increases which can be achieved with analog oscillators". The applicant argues that the feature is not an obvious solution to this problem.
• The Board: "This argument could not sway the board's opinion. Once a convincing argument is made why the claimed invention would have been obvious to the skilled person having regard to the state of the art (Article 56 EPC), the claimed invention will no longer be considered as involving an inventive step. More specifically, if the claimed invention is found to be an obvious solution to an objective technical problem which can be assumed to have arisen - as is the case here, namely to make available the advantages of a replacement component in a piece of prior art - the identification of an alternative technical problem as a solution to which the claimed invention might not appear to be obvious does not suffice to invalidate the finding of obviousness. Especially the fact that the alternative technical problem is the one addressed in the application, i.e. the "subjective" technical problem, is insufficient to establish an inventive step."
• As a comment, the Board does not discuss the case law about bonus effects nor about one-way-street situations. 

EPO 

https://www.epo.org/en/boards-of-appeal/decisions/t201231eu1

In the meantime, however, and already before the priority date of the present application, NCO's had evolved as a possible alternative to analog oscillators. They have since become cheaper and have become easier to integrate. It was also well known already before the priority date of the application that NCO's provide numerous advantages compared to analog oscillators: they are more agile, accurate, stable and reliable (see e.g. D6, second paragraph, first sentence). In addition, a general trend exists to use digital instead of analog components.

For this reason, the skilled person, who has a natural tendency to consider alternative designs which can provide an advantage in specific circumstances, would have an incentive to consider the use of an NCO as an oscillator in a microprocessor comprising a central processing core.

The board observes in this respect that this would remain true even if a constant cycle time were required as argued by the appellant. One would then simply leave the "increment value" (term used in D1) or "frequency control word" (term used in D6) constant.

3.5 An NCO would comprise an adder coupled with an accumulator having an overflow output providing an output clock signal (see D6, figure 1 and D1, section 20.1, first sentence).

3.6 A skilled person would thus arrive at the subject-matter of claim 1 without demonstrating any inventive activity.

3.7 During the oral proceedings, the appellant did not specifically question the board's analysis that NCOs were known in the prior art to have the mentioned advantages or that the skilled person would, in order to achieve these advantages, consider the modification of the microcontroller disclosed in D5 by using an NCO as disclosed in D6.

However, the appellant defended the point of view that the problem of making these advantages available to the microcontroller disclosed in D5 was an inappropriate objective technical problem to be considered, given the fact that the description of the present application on page 5, lines 16 to 18, sets out a different problem addressed by the invention, viz. to fill in the gap between the binary-multiple frequency increases which can be achieved with analog oscillators.

This argument could not sway the board's opinion. Once a convincing argument is made why the claimed invention would have been obvious to the skilled person having regard to the state of the art (Article 56 EPC), the claimed invention will no longer be considered as involving an inventive step. More specifically, if the claimed invention is found to be an obvious solution to an objective technical problem which can be assumed to have arisen - as is the case here, namely to make available the advantages of a replacement component in a piece of prior art - the identification of an alternative technical problem as a solution to which the claimed invention might not appear to be obvious does not suffice to invalidate the finding of obviousness. Especially the fact that the alternative technical problem is the one addressed in the application, i.e. the "subjective" technical problem, is insufficient to establish an inventive step.

3.8 The board consequently holds that the subject-matter of claim 1 is not inventive (Article 56 EPC).