T 1045/12 - Equally likely options

Key points

• " The appellant further argued that the solution to the objective technical problem taught by D3 was one of several, equally likely options, the others being  [...]. In the presence of several, equally likely options, the board had to provide a reason why the skilled person would have selected the claimed option. The board is not persuaded by this argument because the fact that there are other options has no bearing on the obviousness of one specific option. Furthermore, if all options are equally likely, then the invention merely results in an obvious and consequently non-inventive selection among a number of known possibilities"
• The Board then refers to " Guidelines for Examination, G VII 3.1 (i), November 2018" However, that paragraph is about common general knowledge and does not seem very relevant.
• The Board gave this decision publication code [C] but did not highlight a particular paragraph. I find the paragraph about 'equally likely options' the most interesting. I am not sure why the Board refers to the Guidelines and not to the Case Law Book (e.g. I.D.9.18.9). 

EPO T 1045/12 -  link

4. Inventive step, Article 56 EPC 1973

4.1 According to the reasons for the appealed decision regarding the then third auxiliary request (the same as the previous version of the claims in these appeal proceedings), the subject-matter of claim 1 differed from the disclosure of D4 in that the controller responded to the user logging out by allowing data processing to finish if the log out took place during said data processing. No technical problem could be derived from the difference feature, as it was merely a security policy. The skilled person would have implemented the policy with "the tools at hand", for instance by applying the teaching of D3, relating to implementing this security policy in UNIX.

4.2 In the grounds of appeal the appellant argued regarding D3 that, when entering a job command, the user already had to predict whether the job should continue after he/she had logged out and, if so, include the "nohup" prefix. In contrast, the invention allowed an operation to continue by default after the user had logged out.

4.3 In the annex to the summons to oral proceedings the board pointed out that D4 did not disclose what happened if a scan-and-store operation was still in progress when a user logged out of the device. The board also expressed doubts as to the relevance of D3 to the invention.

4.4 In the submission of 20 September 2018 the appellant argued that the invention operated in the "opposite" way to the device known from D4. The skilled person realizing the apparatus in D4 would have taken into account the security concerns mentioned in D4 and have either stopped all user-initiated processes when that user logged out or paused them, perhaps deleting any data stored in the storage device, and only completing them the next time the user logged in. Furthermore, the claimed solution could not be obvious, since otherwise the same approach would have been used in D4, filed shortly before the present application. The board had also not provided conclusive reasons on the basis of tangible evidence (see decision T 1014/07, reasons point 8) showing why the skilled person starting from D4 would, and not just could (see decision T 0002/83, headnote, point II), have arrived at the claimed invention.

4.5 At the oral proceedings it was common ground between the appellant and the board that the subject-matter of claim 1 differed from the disclosure of D4 in the characterising features, namely

"if storing of the image data is not completed, the accessing unit is configured to continue the storage of the image data input by the scanner in the storage area of the storage device after the user logs out of the data communication device."

It was also common ground that the objective technical problem solved by these features was to provide an alternative realization of the device known from D4.

4.6 At the oral proceedings the board explained that it had revised its preliminary view on the relevance of D3 and that the skilled person starting from D4 would have recognised that the gap in the disclosure of D4, namely what happened to jobs in progress when the user logged out, could be filled by applying the teaching of D3, in particular by making every scan-and-store job a "nohup" job, thereby allowing such jobs in progress to complete even after the user had logged out. The board also questioned whether, given this gap in the disclosure of D4, the invention could be considered to do the "opposite", as the appellant had stated.

The appellant argued that D4 was concerned with the security of data transmitted by the image processing device. Figure 18B showed in the steps between S1813 and S1818, described in paragraphs [236-249], that the device decided whether or not to transmit print job data in encrypted form, depending on whether the communication channel was logically (step S1813) and physically (step S1816) secure. In this context, the skilled person would have "filled the gap" by stopping all processes when a user logged out. Regarding D3, the appellant argued that D3 only disclosed using the "nohup" prefix as an option. Hence the board's inventive step reasoning was incomplete, as D3 did not disclose using the "nohup" prefix for every job. Moreover the board had not proved an incitement for the skilled person to combine D3 and D4 and arrive at the claimed subject-matter. The board's argument was thus based on hindsight, as it had not proved, based on tangible evidence (see T 1014/07, reasons, point 8) that the skilled person would have been incited to realize the device in the claimed way, rather than in one of the alternative ways proposed by the appellant.

4.7 The board's finding on inventive step

4.7.1 According to decision T 0002/83, issued in 1984 and cited by the appellant, inventive step depended not upon whether the skilled person could have added features to the closest prior art to arrive at the invention but whether the skilled person "would have done so in expectation of some improvement or advantage"; see headnote, point II, and reasons, point 7. According to further case law of the boards of appeal of the EPO, the issue to be decided is whether the skilled person, seeking a technical solution to the objective technical problem, would have solved it by modifying the closest prior art to arrive at the claimed subject-matter; see Case Law of the Boards of Appeal of the EPO, 8th edition, I D 2 and 5.

4.7.2 In decision T 1014/07 it was found that a refusal by the examining division had arrived at a finding of lack of inventive step by merely establishing that all the features of claim 1 were known either from the closest prior art document or one or more secondary documents, i.e. that "each of the claimed features has been disclosed in the prior art"; see reasons, point 10. The board in that case set aside the decision because it did not provide reasons as to why "the skilled person would have combined the known teachings such as to arrive at the claimed subject-matter when attempting to solve the underlying technical problem"; see reasons, point 12. As the board put it, [a finding of lack of inventive step must] "identify conclusive reasons on the basis of tangible evidence that would have prompted the skilled person to act in one way or another". The present board finds that the present decision, being based on prior art documents D4 and D3, is based on "tangible evidence".

4.7.3 Regarding the disclosure of D4, the board is not persuaded that it is derivable from D4 that jobs in progress when the user logs out are to be stopped. In particular, the fact that the device in D4 requires at least a physically secure communication channel, optionally using encryption if the channel is logically insecure, does not show that a transfer started when the user was logged in suddenly becomes insecure when the user logs out, since the security of the device is distinct from the security of the communication channel.

4.7.4 Regarding the disclosure of D3, the appellant has disputed whether D3 discloses using the "nohup" prefix for all commands. The board points out that D3 discloses the "nohup" prefix as a solution to the problem of running long jobs, meaning jobs longer than the user was prepared to stay logged in for. D3 explicitly states (see lines 12 to 13) that running jobs with the "nohup" prefix does not negatively impact other users "interactive use of the same computer". Hence D3 does not disclose the "nohup" prefix as something to be used sparingly, if at all. The board finds that, in the context of a command language, the skilled person would have understood that the "nohup" prefix could be used without restriction.

4.7.5 The image processing device known from D4 contains a computer, the users logging in with an IC card to use the device (see [149]) and logging out when they are finished; see [157 and 165]. There is however no disclosure of the fate of jobs in progress when the user logs out. In order to fill the gap in the disclosure of D4, the user must seek to solve the objective technical problem, namely to provide an alternative realization of the device known from D4, or more precisely, how to fill the gap in the disclosure in D4 regarding the situation in which scan-and-store jobs are running when the user logs out. The skilled person would have recognised that, by applying the teaching of D3 to D4 and making all scan-and-store jobs "nohup" jobs, the problem would be solved by allowing all scan-and-store jobs in progress to complete, even if the user logged out. Hence the skilled person starting from D4 and applying the teaching of D3 would have arrived at the subject-matter of claim 1 in an obvious manner.

4.7.6 The appellant has challenged the board to provide documentary proof of all jobs on a computer being run as "nohup" jobs. The board points out that the present case does not depend on such evidence, since the invention is not restricted to continuing all jobs running on a data communication device after the user has logged out. Claim 1 only requires that the scan-and-store job continues.

4.7.7 The appellant further argued that the solution to the objective technical problem taught by D3 was one of several, equally likely options, the others being to stop all user-initiated processes when that user logged out or to pause them, perhaps deleting any data stored in the user storage space, when the user logged out and to only complete them once the user had logged in again. In the presence of several, equally likely options, the board had to provide a reason why the skilled person would have selected the claimed option. The board is not persuaded by this argument because the fact that there are other options has no bearing on the obviousness of one specific option. Furthermore, if all options are equally likely, then the invention merely results in an obvious and consequently non-inventive selection among a number of known possibilities (see, for example, the Guidelines for Examination, G VII 3.1 (i), November 2018).

4.7.8 Consequently the board finds that the subject-matter of claim 1 does not involve an inventive step, Article 56 EPC 1973, in view of the combination of D4 and D3.

Order

For these reasons it is decided that:

The appeal is dismissed.