T 1621/21 - PSA is not mandatory

Key points

•  The Board: "While the use of the problem-solution approach is not mandatory because it is not always reasonably applicable, if it is not used, the examining division should have explained the reasons for not using it."
• " the appealed decision is seriously flawed because the examining division neither made a clear division of the features of claim 1 into technical and non-technical features nor properly applied the problem-solution approach. Therefore, the appealed decision must be set aside."
• "the examining division's finding that the subject-matter of claim 1 lacked an inventive step was not based on applying the problem-solution approach, comprising the steps of identifying the distinguishing features of claim 1 over the disclosure of the closest prior art, determining which distinguishing features are technical features and which are non-technical features, determining the technical effect of the distinguishing features which are technical, deducing therefrom the objective technical problem solved by the distinguishing features, looking for an incentive for the skilled person to solve the objective technical problem and analysing whether the solution as claimed was obvious in view of the available prior art."
• The Board nevertheless adds that: " claim 1 does not seem to comprise any feature which would exclude that the entire tailored sensory work is transmitted between the server and the playback device. Actually, claim 1 seems to cover the possibility of transmitting the entire sensory work between the server and the playback device. Therefore, the objective technical problem as stated by the applicant does not appear to be a valid objective technical problem solved by the distinguishing features."
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EPO 

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/t211621eu1.html

2. Further prosecution - remittal

2.1 The reasons given in the appealed decision for showing that the subject-matter of claim 1 lacks an inventive step are deficient and hardly comprehensible by the board.

As rightly objected by the applicant during the first-instance proceedings, the examining division did not clearly identify which features of claim 1 are technical features and which are not. The appealed decision merely states that "the Division will now give an example why it is difficult to separate the features in such a manner" (decision, page 7, fourth paragraph).

Moreover, the examining division's finding that the subject-matter of claim 1 lacked an inventive step was not based on applying the problem-solution approach, comprising the steps of identifying the distinguishing features of claim 1 over the disclosure of the closest prior art, determining which distinguishing features are technical features and which are non-technical features, determining the technical effect of the distinguishing features which are technical, deducing therefrom the objective technical problem solved by the distinguishing features, looking for an incentive for the skilled person to solve the objective technical problem and analysing whether the solution as claimed was obvious in view of the available prior art.

While the use of the problem-solution approach is not mandatory because it is not always reasonably applicable, if it is not used, the examining division should have explained the reasons for not using it.

Despite the serious deficiencies in the examining division's reasoning mentioned above, in the board's view the decision cannot be considered as not reasoned for the purposes of Rule 111(2) EPC. The applicant did not rely on a lack of sufficient reasoning either.

2.2 As explained in point 2.1 above, the appealed decision is seriously flawed because the examining division neither made a clear division of the features of claim 1 into technical and non-technical features nor properly applied the problem-solution approach.

Therefore, the appealed decision must be set aside.

2.3 In order to determine the further course of action, the following aspects have to be considered:

Re-examination of the patentability of claim 1 on a different basis is necessary, including the consideration of the technical character of at least features F3 and F7 and a correct application of the problem-solution approach (if no reasons for not applying this approach are provided).

Furthermore, it should be noted that the applicant's justification of an inventive step might be based on an inadequate technical effect of claim 1.

Due to these aspects, the board is confronted with a fresh case, the examination of which is not compatible with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner.

In view of these considerations, the board decides to make use of its discretion under Article 111(1) EPC and Article 11 RPBA 2020 in remitting the case to the examining division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.