T 0053/22 - Bonus effects

Key points

• "The invention relates to a manufacturing method of a turbine wastegate." "A turbine wastegate is a valve []. It includes a wastegate seat, a plug, an arm connected to the plug, a shaft, [and] a control arm at the opposite end of the shaft."
• "The invention aims at improving fit of the plug to the arm, shaft and wastegate seat for reducing leakage. With this aim the assembly process includes welding of the arm to the plug in a closed position against the seat in the turbine housing. Such a method reduces clearances and customizes fit of the plug".
• The method specifies a step of "applying a force to a control arm operatively coupled to the shaft"; this force is used to maintain the arm and the plug in a closed position against the seat.
• The opponent: "D2 is silent about where to apply the force to the actuating element [(which is the subunit formed by the shaft and the arm in the sense of the contested patent) ] while performing the welding step between actuating element and plug in the manufacturing method described there. Applying it to a control arm operatively coupled to the actuating element's shaft is an obvious choice for the skilled person when tasked with carrying out in practice the method taught by E2."
• The Board: "The objective technical problem [over D2] must be formulated based on effects that can be associated with the differentiating feature of applying force to an operatively connected control arm"
• "In the Board's view the primary, main effect associated with specifying that force is applied via the control arm is that it allows D2's teaching to be put into practice. As noted D2 only states that force is applied by means of the actuating element 5 but gives no further detail. Therefore, if the skilled person wants to carry out D2's teachings, it must first identify a suitable way of applying force by means of the actuating member to produce the required contact pressure for welding. In the Board's view this is an objective and realistic reflection of what a skilled person, in this case an engineer designing turbochargers, would do and the considerations they would have when confronted with the teaching of D2. It thus seems reasonable to formulate the objective technical problem starting from D2 accordingly, and as broadly as possible, as how to practically implement the invention taught by D2. "
• "As variously stated in case law, once a realistic problem has been defined and once it has been established that a particular solution to such a problem is obvious, that solution cannot be said to involve an inventive step, and this assessment is not altered by the fact that the claimed invention inherently also solves further technical problems"
• "The respondent proprietor argued that using the control lever reduces the introduction of undesirable misalignment in the control linkage" "If not already the primary effect on which the objective technical problem should be based, it was more than just a "bonus effect". For it to be a "bonus effect", the respondent proprietor argues, citing CLBA, 10th edition, 2022, I.D.10.8 and case law mentioned therein, the skilled person must be in a "one-way street" situation with no other alternative courses of action." (according to the proprietor).
• " The Board has already indicated above why it considers any further effect, and thus also the (further) reduction of misalignment, to be only secondary or supplementary to the primary effect of realizing D2's teaching. Because, as also explained above, there are only very few realistic options available to the skilled person when carrying out D2's teaching to press the plug into its seat by means of the actuator, and these are all known and thus obvious to them, the presence of a further effect (whether surprising or not) cannot change the fact that each of these very few options is obvious. The situation may be different if there is a "multiplicity", as in "a large number", of options as in the case law cited, e.g. T0192/82. There, and in other cited decisions, it was held that if a selection of one amongst many options could be associated with a (derivable and plausible) "surprising effect" then that selection was non-obvious by virtue of that surprising effect."
• "Nor is this case similar to T0848/94, where the Board held an effect arising from a combination of measures to be a synergistic effect and not a bonus effect, because that combination of measures, that might each be prima facie obvious, was not a "one-way street", that is something the skilled person would inevitably do. In this case it has not been argued that the reduced misalignment would be a synergistic effect arising from a combination of measures."
• "Further cited T0936/96 in section 2.6 underscores the general approach to bonus effects mentioned above without reference to a "one way street". Indeed, it is clear from section 2.4, last paragraph, that there were several choices available to the skilled person, but that nonetheless the alleged effect was seen to be a bonus effect that could not render an obvious combination inventive"
• See also T 1356/21.
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EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t220053eu1