T 1112/19 - Whether a problem invention is compatible with the PSA

 Key points

• In this appeal against a refusal, the applicant argues that “In D1, there was no discussion or appreciation of the objective problem and no teaching to go towards the invention starting therefrom, which should be rather considered a "problem invention".”
• “First, the board recalls that the closest prior art does not have to disclose the "objective technical problem", which is only determined in the second step of the problem-solution approach ”
• “Third, regardless of the question whether a "problem invention" is compatible with the assessment of inventive step according to the problem-solution approach or to which extent it may generally justify the presence of an inventive step, the objective problem formulated above is typically apparent in [the computer technology at hand]”
• “With [certain technology considerations indicated by the Board] in mind, the skilled person would have deemed the objective technical problem likely to arise in the data network 106 of D1 as well, without any need to have it explicitly mentioned in the same document.”
• “ In conclusion, the recognition of that problem would have been obvious to the skilled person in the field of telecommunications and therefore cannot be a "problem invention" within the meaning of T 2/83.”

T 1112/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191112eu1.html

2.1.9 The appellant [applicant, Goldman Sachs & Co. LLC]  submitted that even considering that the skilled person were to start with D1, there was no reason to require "replay" in the system of D1, which was directed to providing a summary of a stream. The summarised stream of D1 was not distributed over databases; there was no need for a particularly reliable playback of that stream. In D1, there was no discussion or appreciation of the objective problem and no teaching to go towards the invention starting therefrom, which should be rather considered a "problem invention".

2.1.10 This is not convincing.

First, the board recalls that the closest prior art does not have to disclose the "objective technical problem", which is only determined in the second step of the problem-solution approach on the basis of the technical effect(s) provided by those features which distinguish the claimed invention from that prior art (see e.g. T 698/10, Reasons 3.4; T 910/90; Reasons 5.1, last sentence).

Second, the fact that the stream presented by computer 114 of D1 is a summarised stream does not mean that data integrity of the summarised stream can be dispensed with. Nor does "bundling" as claimed necessarily exclude a reduction of the amount of information being combined, as indicated in point 2.1.3 above. As to the meaning of "replay", the claims are not limited to (re-)population of databases. Actually, the word "database" is never mentioned in the claims. Furthermore, the computer 114 obtains the summarised stream 112 from the summarisation server 102C, which necessarily implies a (re-)play of the data hosted at that summarisation server 102C. According to paragraphs [0004] and [0020], the data can include text, video, photographs, audio, and other data, which does not rule out (re-)population of databases.

Third, regardless of the question whether a "problem invention" is compatible with the assessment of inventive step according to the problem-solution approach or to which extent it may generally justify the presence of an inventive step, the objective problem formulated above is typically apparent in packet-based data networks, where the underlying data packets may be sent over different data paths. This is known to inherently involve the risk of data packets being lost or arriving out of order. With these considerations in mind, the skilled person would have deemed the objective technical problem likely to arise in the data network 106 of D1 as well, without any need to have it explicitly mentioned in the same document. In conclusion, the recognition of that problem would have been obvious to the skilled person in the field of telecommunications and therefore cannot be a "problem invention" within the meaning of T 2/83.