T 0819/14 - Inventive alternative

Key points

• The Board finds an alternative to be inventive. The problem to be solved is to provide an alternative arrangement. The opponent argued that the distinguishing features were workshop modifications. 
• " The argument that these modifications were simple workshop modifications which would not require any inventive activity is not persuasive because the person skilled in the art, not being endowed with any inventive capability, would have needed a hint to do so. Lacking such a hint has the consequence that the person skilled in the art would have had no reason to carry out any of the required modifications and also no reason to believe that doing so would involve any expectation of success."

T 0819/14  - link

2.2 Differences with the subject-matter of claim 1

This document does not disclose that the longer base forms a support surface for engaging with a corresponding bottom surface of a recess. In the drawings of D2, the shorter base of the trapezium is shown as engaging with the bottom of the recess. Since the longer base forms part of the connection to the stem then it is not suitable for engaging with a corresponding bottom surface of a recess. Moreover the enlarged head of D2 has only one inclined side.

D2 discloses that the connecting pieces 7d may be split and replaced by a male / female connection, see D2, page 4, left hand column, line 21 through to right hand column, line 6. This passage does not however disclose that there is one male and one female connector but rather leaves this point open.

2.3 Problem to be solved

According to the appellant the problem to be solved is to provide an alternative arrangement to that known from D2. For the sake of argument, this problem is used in the following.

2.4 Solution

In seeking to solve the above problem, the skilled person would realise that D2 indicates that male / female connections may be used. From this there were only two options - one male connector and one female connector on each stem or two identical connectors on each stem. It would be expected that the person skilled in the art would be able to choose between these two alternatives without the exercise of inventive activity.

However there are other modifications that must be made in order to arrive at the subject-matter of claim 1:

i) Rotation of the trapezium such that its longer base forms a support surface for engaging with a corresponding bottom surface of a recess.

ii) Providing the trapezium with inclined sides (in the plural).

The argument that these modifications were simple workshop modifications which would not require any inventive activity is not persuasive because the person skilled in the art, not being endowed with any inventive capability, would have needed a hint to do so. Lacking such a hint has the consequence that the person skilled in the art would have had no reason to carry out any of the required modifications and also no reason to believe that doing so would involve any expectation of success.

Therefore, the subject-matter of claim 1 involves an inventive step.