T 2057/12 - Closest prior art and technical field

Key points (I)

• This decision is about the meaning of the closest prior art and was already discussed here. 
• The Board: " [The problem-and-solution] approach presupposes that the skilled person would have indeed possibly been confronted, in the framework of his activities, to the item of prior art selected as closest prior art, and would have then recognised the existence of the objective problem to be solved." 
• " It is, however, hardly conceivable that the skilled person would decide to ignore the purpose of an object or process he is using during his normal activity to modify said object or process by getting rid of one of the features essential for said purpose." 
• The Board agrees with T2201/10 (same Board different composition), that " if the claimed invention distinguishes from the [a prior art document] only in the modification of a feature disclosed as essential in the context of said prior art [document]", this is "sufficient as such to conclude that the invention is not obvious vis-à-vis this prior art"

Key points (II)

• More important is the Board's analysis of whether claim 1 is obvious over A6 (or A11), which is about an electrical connecting system on a printed circuit board, whereas the claimed connection element is fixed to a glass pane of a motor vehicle.
• " The question arises then whether document A6, or A11, may indeed be considered to illustrate the closest prior art ". The Board acknowledges that "the closest prior art normally discloses an item of prior art which shares a common purpose with the claimed subject-matter". The Board notes however that the claimed invention can be defined as a glass panel with an electrical connection, or as an electrical arrangement installed on a glass panel. The Board : "the principles [of established case law] recalled above would then make the decision on obviousness dependent on the manner the independent claims are drafted and would be clearly contrary to an objective assessment of the inventive merits of a claimed invention" .
• The Board notes that "it can indeed not be excluded, beforehand, that real-world circumstances would have led a skilled person in a certain technical field to have given attention or even used an item of prior art from a completely different technical field. Such a scenario, rather unusual, cannot rely on mere speculation, but must be supported by sufficient evidence and argumentation." 
• The Board proposes to do the inventive step analysis in two ways: "arguments or evidence should be provided as to why the skilled person in a specific technical field would have indeed envisaged selecting a document in a remote field of technology as closest prior art or, alternatively, whether he would have indeed considered adapting a prior art disclosure originating from his technical field to implement it in a remote technical field." 
• The Board then assess, firstly "whether the skilled person in the art of glass panes for motor vehicles would have considered documents pertaining to the field of PCBs such as A6, or A11, as possible starting points." (and finds that this is not the case)
• The Board secondly assess: "the skilled person to be considered would be the skilled person in the field of PCBs. In that situation, the selection of A6, or A11, as closest prior art is justified by the mere fact that both documents belong to his field of activities. The question to be elucidated is then whether the skilled person in the field of PCBs would have indeed envisaged modifying the prior art disclosures of A6, or A11, so as to use them on glass panes for motor vehicles. Relying on the technical effects provided by a glass pane identified above (cf. section 3.2.1) this would imply that the skilled person would concern himself with the protection of passengers of a vehicle from the effects of the wind. Here again, in the absence of evidence or convincing argumentation as to why the person in the field of PCBs would have tackled such issues, the objection of lack of inventive step fails as unrealistic, under the circumstances." 
• As a comment, the somewhat weaker point is that the Board does not explain how to identify "the skilled person". In the first approach, the skilled person (in the art of glass panes) depends on the "the manner the independent claims are drafted". I think that the second approach is correct, but in order to be consistent, the sentence about "the selection of A6, or A11, as closest prior art is justified by the mere fact that both documents belong to his field of activities"  should have been omitted. It mixes the first and second approach. In the second approach, any arbitrary document can be taken as "starting point" for the problem-and-solution approach, great care must be given to the requirement that "sufficient evidence" must be given that the skilled person would give attention to the different technical field. But if there would have been some evidence on file that PCB engineers are frequently thinking about "the protection of passengers of a vehicle from wind", the claim could have been obvious starting from A6. 

EPO T 2057/12 -  link

3.1.3 Plugs or clamping systems of the kind used according to the present invention are known from A6, or A11. In order to arrive at the claimed subject-matter, the skilled person would however have to renounce to the amplification function provided by the high frequency body of A2 and to replace it by the connector means known from A6, or A11. This would imply renouncing to a feature presented as essential in the context of A2.

In the appellant's view, these findings are not relevant in the context of the invention where the presence of an amplifier is not addressed and not even required, though the invention also covers the field of antennas. The definition of the objective technical problem to be solved by the claimed invention is the only aspect that really matters when deciding on how the closest prior art is to be modified. The purpose which leads to modifying the closest prior art is, in this respect, irrelevant.

3.1.4 The present Board (in a different composition) already had the opportunity to decide in a previous appeal on a similar issue. It then ruled that the findings according to which the claimed invention distinguishes from the prior art only in the modification of a feature disclosed as essential in the context of said prior art would be sufficient as such to conclude that the invention is not obvious vis-à-vis this prior art (cf. T 2201/10, not published, point 5.1.3).
The Board thus disagrees with the argument put forward by the appellant according to which the purpose which lead to the development of the system of the prior art should be simply ignored if this purpose is not relevant in the context of the claimed invention.

Although entirely hypothetical, the problem-solution approach developed by the jurisprudence of the boards of appeal is deemed to reflect what the skilled person would have done under realistic circumstances in order to solve the objective problem previously identified. In this respect, the reasoning developed by the organ raising the objection of lack of an inventive step should reflect real-world circumstances. In particular, this approach presupposes that the skilled person would have indeed possibly been confronted, in the framework of his activities, to the item of prior art selected as closest prior art, and would have then recognised the existence of the objective problem to be solved.

It is, however, hardly conceivable that the skilled person would decide to ignore the purpose of an object or process he is using during his normal activity to modify said object or process by getting rid of one of the features essential for said purpose.

As emphasized by the respondent, it is not credible under the present circumstances that the skilled person, who would have made use of the glass pane and associated amplifier system known from A2, would have sought to improve the connection to the high frequency amplifier body by throwing away said body and replacing it with a plug connector. It is namely assumed that the skilled person who makes use or requires a system combining a glass pane for a motor vehicle (windscreen) and its associated amplifier system indeed requires the functionalities conferred by both items; the windscreen is required for the vehicle in which it is to be installed to protect from the wind, the amplifier is required to amplify the signals obtained from various sensors such as e.g. antenna elements present on the vehicle. An approach according to the problem-solution which would consider renouncing to one of these two key features would be totally artificial and at odds with what the skilled person would have done in realistic situations.

3.2 With regard to documents A6 or A11

3.2.1 The parties agree that a main difference between the claimed subject-matter and the electrical connector system of A6 resides in the fact that the claimed connection element is fixed to a glass pane of a motor vehicle, whereas the systems of A6, or A11, are mounted on a printed circuit board.

The appellant denies the existence of any technical effect resulting from this distinguishing feature which is considered as a mere alternative to known PCBs.

The notion of "alternative" defines a technical feature or a plurality of features which fulfil, in a given context, the same functionalities as some other known features in a similar context. While the glass pane of a motor vehicle may indeed provide the functionality of supporting means for various electrical circuits and connecting means, it does not offer the flexibility of use of a PCB. Undisputedly, a windscreen provides effects in a vehicle that a printed circuit board cannot provide. Moreover, the glass pane of a motor vehicle, obviously, limits the use of the electrical circuits and connecting means mounted thereon to the field of motor vehicles.

The technical effects resulting from the presence of the glass pane of a motor vehicle are thus, under the circumstances:

- to provide a support for the electrical arrangement and associated connecting element and

- to produce the effects normally associated with the presence of a windscreen in a vehicle, namely to shield the passengers of said vehicle from the effects of the wind.

While the first effect of supporting the structural elements of the electrical circuit is indeed equivalent under the circumstances to what may be provided by a PCB, the protection against the wind obviously defines a technical contribution of the claimed invention vis-a-vis the arrangements known from A6, or A11.

The view that the claimed subject-matter differs from the prior art as known from A6, or A11, only by the presence of an alternative to the PCB, deprived of any technical effect, is therefore rejected.

3.2.2 The question arises then whether document A6, or A11, may indeed be considered to illustrate the closest prior art when deciding on the existence of an inventive step of the claimed subject-matter.

It is generally accepted that the closest prior art normally discloses an item of prior art which shares a common purpose with the claimed subject-matter or aiming at the same objective (cf. case law of the Boards of Appeal, 8th. edition, section I-D-3.1). This approach appears to rely on the assumption that the skilled person would only possibly arrive at the claimed invention when starting from a document which shares a common or similar purpose with the claimed invention. In other words, this approach seems to exclude from the group of possible candidates as closest prior art disclosures which belong to technical fields remote from the field of the invention. The jurisprudence of the Boards of Appeal puts also much emphasis on the similarity of the technical problem to be solved by the item of prior art to be selected (cf. case law of the Boards of Appeal, 8th. edition, section I-D-3.3).

These approaches have in common to limit the extent of the prior art to be considered when searching for the closest prior art. It is, however, questionable whether they are in agreement with an analysis of inventive step which should be objective and should hence take into account all realistic circumstances which would lead to the claimed subject-matter. In a case like the present one, the jurisprudence suggests to limit the search for the closest prior art to the field of glass panels for motor vehicle or to prior art documents concerned with the need to provide reliable electrical connections in environments subjected to strong vibrations. The same invention could however be defined in a totally different manner, for example, in terms of an electrical arrangement with connecting means characterised in that it is installed on the glass pane of a vehicle, hence putting much emphasis on the fact that the claimed system relates to an electrical connector. The principles developed by the jurisprudence of the boards of appeal, recalled above, would then lead to searching for the closest prior art in a totally different technical field, namely, in the field of electrical connectors, although the claimed invention would be the same. All in all the principles recalled above would then make the decision on obviousness dependent on the manner the independent claims are drafted and would be clearly contrary to an objective assessment of the inventive merits of a claimed invention.

In a recent decision, it was considered that the remoteness of a piece of prior art did not, in itself rule out an assessment of inventive step in view of that prior art. It was further held, that if a piece of prior art was too remote from an invention, it should be possible to show that the invention was not obvious to a skilled person having regard to this piece of prior art (cf. T 855/15, not published, point 8).

The present Board agrees with these findings. It can indeed not be excluded, beforehand, that real-world circumstances would have led a skilled person in a certain technical field to have given attention or even used an item of prior art from a completely different technical field. Such a scenario, rather unusual, cannot rely on mere speculation, but must be supported by sufficient evidence and argumentation.

For this reason, the present Board can agree with the deciding body in case T 855/15 only insofar that it might be irrelevant for the question of inventive step whether or not the "skilled person would [...] select a piece of prior art 'as a starting point to arrive at the invention' [...]" and that "no argument is required as to whether the skilled person would select a document", as long as the closest prior art belongs to the same or a neighboring technical field of the person skilled in the art or to its common general knowledge.

Consequently, arguments or evidence should be provided as to why the skilled person in a specific technical field would have indeed envisaged selecting a document in a remote field of technology as closest prior art or, alternatively, whether he would have indeed considered adapting a prior art disclosure originating from his technical field to implement it in a remote technical field.

3.2.3 Applied to the present circumstances, the principles developed above lead to two different scenarios under the problem-solution approach. The board in charge of case T 25/13 followed a similar reasoning, distinguishing between persons skilled in the art and adapting its analysis according to the problem/solution approach accordingly (cf. T 25/13, points 2.3; 2.4).

According to a first approach, the question to be elucidated is whether the skilled person in the art of glass panes for motor vehicles would have considered documents pertaining to the field of PCBs such as A6, or A11, as possible starting points. The Board observes, in this respect, that the appellant did not elaborate on that aspect and merely assumed that this would be the case. The Board is also not able ex officio to identify any reason supporting the appellant's assumption. An objection of lack of an inventive step, in order to be successful should however establish the complete logical chain of considerations which would lead the skilled person to the claimed subject-matter. In the absence of evidence or convincing arguments as to why the skilled person in the field of glass panes for motor vehicle would have indeed considered A6, or A11, as closest prior art, the objection of lack of an inventive step fails from the start (cf. decision T 686/91).

According to a second approach, the skilled person to be considered would be the skilled person in the field of PCBs. In that situation, the selection of A6, or A11, as closest prior art is justified by the mere fact that both documents belong to his field of activities. The question to be elucidated is then whether the skilled person in the field of PCBs would have indeed envisaged modifying the prior art disclosures of A6, or A11, so as to use them on glass panes for motor vehicles. Relying on the technical effects provided by a glass pane identified above (cf. section 3.2.1) this would imply that the skilled person would concern himself with the protection of passengers of a vehicle from the effects of the wind. Here again, in the absence of evidence or convincing argumentation as to why the person in the field of PCBs would have tackled such issues, the objection of lack of inventive step fails as unrealistic, under the circumstances.

3.2.4 The subject-matter of claim 1 is thus not obvious in the light of A6, or A11.

4. The respondent's main request is therefore allowable.

Order

For these reasons it is decided that:

The appeal is dismissed.