T 0984/15 - The skilled person for inventive step

 Key points

• In this opposition appeal, the Board deals with the 'obviousness stage' of the problem solution approach to inventive step.
• The opponent argued that the skilled person was “an expert in the field of telecommunications engineering, who typically is a graduate engineer in electrical engineering, physics or informatics with a focus on telecommunications and has several years of practical experience in the field of communication networks, e.g., in a development department of a company specialized in this field. Thus, the skilled person has a fundamental theoretical understanding and a broad knowledge regarding the implementation of such theoretical knowledge. ”
• The patentee argued that “the relevant skilled person would be an engineer in telecommunications who is familiar with existing wireless communications systems and who might have some knowledge of new technologies, but no detailed knowledge of the upcoming LTE standard”
• The Board “the board recalls that the technical field and general knowledge associated with the notional skilled person within the meaning of Article 56 EPC should be defined on the basis of the objective technical problem to be solved by that skilled person in the framework of the problem-solution approach. This is because the skilled person under Article 56 EPC is the person qualified to solve the established objective technical problem”
• The Board: “In view of this objective technical problem, the notional skilled person, for the purpose of assessing inventive step under Article 56 EPC, is a telecommunications engineer working in the field of 3GPP-based mobile networks. The board does not agree with the quite limited set of skills attributed to the skilled person by the [patentee and rather concurs with the [opponent]  that the skilled person could even be a member of the 3GPP RAN Working Group 2.”
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EPO T 0984/15 -  link

2.2 The person skilled in the art


2.2.1 In the case at hand, it is particularly important to establish which attributes can be ascribed to the notional person skilled in the art within the meaning of Article 56 EPC.

2.2.2 As to the relevant person skilled in the art, the appellant [opponent] indicated in their statement of grounds of appeal the following (see section IV.19; board's emphasis):

"The patent opposed thus is directed to a person of average skill in the art, i.e. an expert in the field of telecommunications engineering, who typically is a graduate engineer in electrical engineering, physics or informatics with a focus on telecommunications and has several years of practical experience in the field of communication networks, e.g., in a development department of a company specialized in this field. Thus, the skilled person has a fundamental theoretical understanding and a broad knowledge regarding the implementation of such theoretical knowledge. An implementation may comprise, e.g., development and/or testing of hardware and/or software. The skilled person is also able to work with and understand the telecommunication standards, in particular the technical specifications of the 3rd Generation Partnership Project. He is aware of the interrelation of various documents belonging to the same technical sphere of a standard. He can be a member of the 3GPP RAN (Radio Access Network) Working Group 2 dealing with the Evolved Universal Terrestrial Radio Access (E-UTRA), in particular handover mechanisms between various radio access technologies."

2.2.3 The respondent argued that the relevant skilled person would be an engineer in telecommunications who is familiar with existing wireless communications systems and who might have some knowledge of new technologies, but no detailed knowledge of the upcoming LTE standard.

2.2.4 In that context, the board recalls that the technical field and general knowledge associated with the notional skilled person within the meaning of Article 56 EPC should be defined on the basis of the objective technical problem to be solved by that skilled person in the framework of the problem-solution approach. This is because the skilled person under Article 56 EPC is the person qualified to solve the established objective technical problem (see e.g. T 32/81, OJ 1982, 225, Reasons 4.2; T 422/93, OJ 1997, 25, headnote I; T 1140/09, Reasons 4.4; T 1523/11, Reasons 4.4; T 1450/16, Reasons 2.1.4). Therefore, the board will revisit this issue when the objective technical problem has indeed been established in this case (see point 2.5 below).

2.3 Distinguishing features

It follows from the preceding novelty analysis that the subject-matter of claim 1 differs from O1 in that:

(i) configuring proximity indication reporting is specifically done as part of an

inter-RAT handover procedure.

2.4 Technical effect and objective technical problem

2.4.1 The technical effect achieved by distinguishing feature (i) is that it avoids multiple separate messaging instances to handover the UE to the second RAT system, i.e. the EUTRAN, and to configure the UE to report proximity indications, reducing the time and power consumption required (see paragraph [0009] of the underlying application as published).

2.4.2 The objective technical problem to be solved can thus be framed as "how to reduce the delay and power consumption required to handover the UE from one RAT system to another one in the inter-RAT system of O1."

2.5 Definition of the person skilled in the art

In view of this objective technical problem, the notional skilled person, for the purpose of assessing inventive step under Article 56 EPC, is a telecommunications engineer working in the field of 3GPP-based mobile networks.

The board does not agree with the quite limited set of skills attributed to the skilled person by the respondent and rather concurs with the appellant that the skilled person could even be a member of the 3GPP RAN Working Group 2.

2.6 Could-would approach

[...]

2.9 In conclusion, the fact of [document] O1 [ 3rd Generation Partnership Project; Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA) Radio Resource Control (RRC); Protocol specification (Release 9); 3GPP TS 36.331 V9.1.0; (2009-12)] being a technical specification drafted by a standardisation group would not deter the skilled person from carrying out obvious improvements of that specification. Thus, the technique used in section 5.3.5.4 of O1 for intra-RAT handover presents itself as the most obvious manner to optimise also the inter-RAT handover procedure of section 5.4.2 of O1.

3. Hence, the patent as maintained by the opposition division cannot be upheld under Article 56 EPC.

4. As there is no allowable set of claims, the opposed patent must be revoked.