T 0899/11 - Background section as CPA

Key points

• The Board takes as closest prior art (for a claim essentially for collaboration software) a system which is briefly described in the background section of US patent D1.
• The Board: " Although the known system in the background section of D1 is described with a focus on one of its disad­van­tages, it is still the disclosure of a known system. As a matter of principle, this disclosure thus constitutes prior art for the present invention as well." 

T 0899/11 - link

Reasons for the Decision

Suitable starting points for the inventive-step assessment

4. The board considers that D1 provides two suitable starting points for the assessment of inventive step, the system summarized in the background section (esp. column 4, line 44 to column 5, line 17) and the solution proposed in D1 to overcome the deficiency of the known system (see column 6, line 3 et seq.). For brevity, these will be referred to below as the "background" and the "invention" of D1, respectively.

4.1 The appellant challenged the suitability of the background of D1 as a starting point because D1 disclosed it merely "as a negative", i.e. in terms of its disadvantages, and in order to justify the invention as an attempt to overcome them. In this sense, D1 as a whole taught away from its background, which, therefore, the skilled person starting from D1 would not use as a basis for further developments.

4.2 The board disagrees with the appellant's assertion that the skilled person would be deterred from starting from the background of D1 merely because D1 focused on how to overcome its disadvantages and thus "taught away" from it.

4.3 Although the known system in the background section of D1 is described with a focus on one of its disad­van­tages, it is still the disclosure of a known system. As a matter of principle, this disclosure thus constitutes prior art for the present invention as well.

4.4 The board is, however, aware of the fact that the background contains only very little detail about the known system.

The main request

5. The subject-matter of claim 1 differs from the background of D1 in the majority of its features. Specifically, the background of D1 does not disclose
a) what happens when a member is added to a group,
b) the use of the community list for this purpose,
c) the symmetric key being protected using asymmetric encryption (key pairs), or
d) that the identity service is added as one of the collaborators.

5.6 In summary, the board finds that the subject-matter of claim 1 of the main request lacks inventive step over the background of D1, Article 56 EPC 1973.