T 0369/12 - Closest prior art

Key points

• A straightforward case of the Board explaining the problem-solution approach, and finding the claims inventive, in an examination appeal.
• " The problem formulated by the Examining Division in point 17 of the impugned decision, directly concerning the stimulation of an involuntary cough, cannot be accepted, as it already contains an element of the proposed solution: the presence of the composition of L-tartrate implies the stimulation of involuntary coughs." 

EPO T 0369/12 -link

Reasons for the Decision

It is the established jurisprudence of the boards of appeal that the assessment of inventive step is performed by applying the problem-solution approach, according to which the closest prior art has to be identified first. If it is concluded that, starting from the closest prior art, the claimed subject-matter is inventive, then it will be inventive with any other piece of prior art as starting point.

In their decisions, the boards have repeatedly pointed out the essential criteria for the selection of the closest prior art. In essence, a piece of prior art qualifies as the closest if it represents the most promising springboard towards the invention from the perspective of the person skilled in the art (e.g. T 1939/12). Such a piece of prior art will have to be directed to a purpose or effect which is the same or at least the closest to that of the claimed invention. This normally implies that the closest prior art should belong to the same or a closely related technical field. If the skilled person had to start from a piece of prior art not concerned at all with the technical field and the problem solved by the invention, then he could not develop it further in the direction of the invention without the benefit of hindsight, and hence without being inventive.

From the documents cited, as explained in point 3.2 above, neither D1 nor D3 are concerned with diagnosing urinary incontinence. As a consequence, any problem related to the specific detection of urinary stress incontinence, as formulated by the Examining Division in the impugned decision, cannot be derived from either of these documents and, for the reasons just mentioned, D1 and D3 can hardly be considered the closest prior art.

Only D4 relates to diagnosing urinary incontinence, albeit by employing some tests mentioned as the state of the art in the application as filed (page 3, second full paragraph). Clearly, it is concerned with a technical field much closer to that of the invention. In the Board's opinion, for this reason, it is D4 that qualifies as the closest prior art. As a consequence, the reasoning of the Examining Division in the impugned decision based on D1 as the closest prior art is flawed.

As explained in point 3.2 above, D4 fails to disclose a nebuliser containing a composition of L-tartrate in a pharmaceutically acceptable carrier.

Such a nebuliser permits the use of the claimed apparatus to cause involuntary coughs, which are then evaluated in the diagnosis of urinary stress incontinence by considering the pressure in the bladder induced by such coughs.

According to the application as filed, in particular page 11, last paragraph, the result is that a better diagnosis of urinary stress incontinence can be performed.

Starting from D4, the objective technical problem is therefore how to improve the reliability of the specific diagnosis of urinary stress incontinence. The problem formulated by the Examining Division in point 17 of the impugned decision, directly concerning the stimulation of an involuntary cough, cannot be accepted, as it already contains an element of the proposed solution: the presence of the composition of L-tartrate implies the stimulation of involuntary coughs.

No available document addresses or hints at the objective technical problem. From D4 it is not derivable that the tests envisaged by it for the detection of urinary incontinence (paragraphs [0022 and [0091] in particular) suffer from any deficiency. The only document disclosing a nebuliser containing a composition made with L-tartaric acid is D3. However, D3 does not relate to the problem formulated above, as it does not even relate to urology. For this reason, the skilled person wishing to improve the diagnosis of stress incontinence would not even consider this document, and in any case could only combine it with D4 by making abundant use of hindsight.

For these reasons alone, the Board concludes that the subject-matter of claim 1 of the main request is inventive within the meaning of Article 56 EPC.

4. The description has been adapted, in particular citing D4, on which the two-part form of claim 1 of the main request is based.

5. Since the Board considers the main request to be allowable, there is no reason to examine the auxiliary request.