T 2759/17 - The skilled person and the CPA

Key points

•  Board 3.3.02 on the selection of the closest prior art document: “With regard to the choice of the starting point, there are two different approaches in the case law.”
• “ In a first approach, it is the deciding body which selects the closest prior art (T 1241/18, point 2.1 of the reasons [of Board 3.5.02]; T 1450/16 point 2.1.4 of the reasons; T 855/15 point 8.2 of the reasons). Under this approach, the skilled person and their expectations, prejudices, knowledge and abilities do not play any role in this selection (T 1241/18, Ibid.). The skilled person does not come into play until later on when the closest teaching has been identified [...]  If parties have diverging views over the right springboard, the examination of inventive step under this approach should in principle be repeated for each of the technical teachings invoked since the invention has to be inventive over the entirety of the prior art.
• As a comment I personally see the merits of this first approach, but it is of course not the established EPO problem-solution approach.
• “In a second approach, the skilled person comes into play as early as when the closest prior-art disclosure is being selected.” (numerous references to case law omitted).
• “In the board's view, the first approach is not applicable at least in the present case. First of all, in line with the established case law [] it is the board's firm conviction that the skilled person is the relevant point of reference right from the start of any inventive-step assessment.  ... at least in the field of chemistry, with which the case in hand is concerned, the skilled person normally does not arbitrarily pick any existing prior-art disclosure and only then starts to think about the technical field in which it might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial.
• “Unlike the first approach, the second approach is based on a technically meaningful and thus realistic scenario. More specifically, the skilled person is normally confronted with a certain purpose or effect to be achieved in a certain technical field, e.g. as the goal formulated within a research project. With this in mind, the skilled person would then look for a prior-art disclosure that is in the same technical field and aims at the same or a similar purpose or effect. ”
• “ For the above reasons, the board follows the second approach. Hence, a disclosure within a prior-art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it.”
• As a comment, the question then is how to determine the relevant skilled person (technical field etc.).
• As a comment, where the Board writes that: “the skilled person normally does not ... starts to think about the technical field in which [the starting point document] might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial”, it seems that this could probably also be used as reasoning in the third stage (obviousness) of the PSA. Furthermore, the phrase "normally does not" implies that exceptions are possible depending on the facts of the case.

Headnote:

A disclosure within a prior art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it. An important consideration in this assessment generally is whether this disclosure aims at the same or a similar purpose or effect as that underlying the patent in question (see in particular 5.3 to 5.6 of the Reasons).

EPO T 2759/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t172759eu1.html

5. Inventive step (Article 56 EPC)

5.1 The appellant relied exclusively on E1 as the closest prior art and the board has assumed below, in the appellant's favour, that this assumption is correct.

5.2 The appellant essentially argued that each of the detergent compositions disclosed in E1 was an embodiment of the invention of that document. Consequently, any of them could be considered separately from the rest of the disclosure of E1 and taken as a starting point for assessing inventive step. Therefore, the detergent compositions in question discussed under novelty above, i.e. compositions 1-I to 1-III, 2-I to 2-III and 5-II of E1, could also be considered a suitable starting point. Were novelty over these detergent compositions to be acknowledged, the subject-matter of claims 1 and 6 could differ from them at most in that the hexosaminidase enzyme was suitable for removing an already-formed biofilm and in that the use was also directed to this purpose. The objective technical problem, therefore, was to provide a composition which also removed an already-formed biofilm. Since E1, in a preferred embodiment, also disclosed hexosaminidase enzymes which had the ability to remove biofilms, to arrive at the subject-matter of claim 1 the skilled person merely had to swap the hexosaminidase enzyme contained in the detergent compositions in question for the one which had the ability to remove biofilms. Doing so did not require any inventive skill.

5.3 The board agrees with the implicit premise underlying the appellant's argument, namely that the "closest prior art" is not a document but a piece of information or technical teaching. Therefore, where the same document discloses a number of different technical teachings, each of them represents a potential starting point against which the inventive character of the invention may be assessed. In the case at issue, however, there is disagreement about which of these different technical teachings within document E1 represents the correct starting point. This question will be addressed below. With regard to the choice of the starting point, there are two different approaches in the case law.

5.3.1 In a first approach, it is the deciding body which selects the closest prior art (T 1241/18, point 2.1 of the reasons; T 1450/16 point 2.1.4 of the reasons; T 855/15 point 8.2 of the reasons). Under this approach, the skilled person and their expectations, prejudices, knowledge and abilities do not play any role in this selection (T 1241/18, Ibid.). The skilled person does not come into play until later on when the closest teaching has been identified and the problem formulated. Consequently, it would not be possible under this approach to disregard a technical teaching on the ground that the skilled person would not have considered it to be the most promising - or at least an otherwise realistic - starting point. If parties have diverging views over the right springboard, the examination of inventive step under this approach should in principle be repeated for each of the technical teachings invoked since the invention has to be inventive over the entirety of the prior art. Transferred to the question before the board, this approach would imply that each and every disclosure within a document can be selected as the starting point for assessing inventive step.

5.3.2 In a second approach, the skilled person comes into play as early as when the closest prior-art disclosure is being selected. The technical teaching from which the skilled person would have realistically started as the most promising springboard towards the invention therefore needs to be determined (see e.g. T 254/86, point 15 of the reasons; T 2148/14, point 2.2.1 of the reasons). Under this approach, the skilled person is held to generally look for a disclosure that aims at a purpose or effect that is the same as or at least similar to the one underlying the patent in question (see e.g. T 710/97, point 3.2.1 of the reasons). Following this approach, it is possible to reject an inventive-step attack on the ground that the skilled person would have not realistically selected the specific disclosure on which the attack in hand relies as a starting point (see T 1307/12 point 3.1.3 of the reasons; T 2114/16, point 5.3.4 of the reasons).

5.4 In the board's view, the first approach is not applicable at least in the present case. First of all, in line with the established case law (see e.g. the decisions cited in relation to the second approach), it is the board's firm conviction that the skilled person is the relevant point of reference right from the start of any inventive-step assessment. Determining whether an invention is inventive involves technical considerations, and those have to be made through the eyes of the skilled person. Excluding the skilled person for part of the inventive-step assessment would lead to artificial and thus technically meaningless results. Under this premise, at least in the field of chemistry, with which the case in hand is concerned, the skilled person normally does not arbitrarily pick any existing prior-art disclosure and only then starts to think about the technical field in which it might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial.

Furthermore, the consequence of selecting any disclosure within a prior-art document as the starting point, as is possible under the aforementioned first approach, would be that the disclosure coming structurally closest to the claimed subject-matter might always be chosen. However, starting from that disclosure and then possibly denying inventive step on this basis would imply the use of hindsight. More specifically, selecting the disclosure that is structurally closest to the claimed invention would presuppose knowledge of this invention, e.g. in terms of the structure of a claimed compound (see again T 1307/12, point 3.1.3 of the reasons; T 2114/16, point 5.3.4 of the reasons).

For these reasons, in the board's view, the first approach should not be applied in the case in hand.

5.5 Unlike the first approach, the second approach is based on a technically meaningful and thus realistic scenario. More specifically, the skilled person is normally confronted with a certain purpose or effect to be achieved in a certain technical field, e.g. as the goal formulated within a research project. With this in mind, the skilled person would then look for a prior-art disclosure that is in the same technical field and aims at the same or a similar purpose or effect. This, in the board's view, is what is meant by the "most promising springboard" formulated in the above-cited well-established case law. While the same or similar purpose or effect is not necessarily the only consideration the skilled person would make, other considerations, such as the greatest possible structural similarity between the composition described within the closest prior art and that defined in the relevant claim, are of less importance (Case Law of the Boards of Appeal of the European Patent Office, ninth edition, 2019, I.D.3.3). Applying this second approach thus avoids the above-discussed drawback of using hindsight when selecting the starting point for assessing inventive step.

5.6 For the above reasons, the board follows the second approach. Hence, a disclosure within a prior-art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it. An important consideration in this assessment is generally whether this disclosure aims at the same or a similar purpose or effect as that underlying the patent in question.

5.6.1 In the case in hand, there are various embodiments within E1 which could represent a potential starting point for the assessment of inventive step, including: