T1247/21 - The possible feature in the CPA is inventive

Key points

• The case is mostly about novelty and inventive step over a public prior use. The invention concerns a thermoforming packaging machine. The feature at issue is "a measuring unit (51, 42, 45) is provided which is configured to detect a contact between the upper tool part (7) and the lower tool part (3)".  (all quotes are machine translations).
• The opposition division [held that] knowledge of the source code [of the public prior use apparatus] was necessary in particular in order to recognize whether contact between an upper part of a tool and a lower part of a tool was being measured. Accordingly, feature K2 was not known from the public prior use.
• " The source code was not accessible to the customer Wolf (or other third parties) for factual and legal reasons. This was not disputed by the parties involved. "
• I take this to mean that the feature is actually present in the source code, but that the source code was not accessible to the customer. 
• The Board: "an alleged disclosure can only be considered implicit if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature was part of the disclosed subject matter (cf. RdB, ibid, IC4.3). It therefore depends on whether the skilled person, in view of the information available to him on the public prior use, specifically recognises the real possibility of configuring the measuring unit to detect contact between the upper and lower parts of the tool, and not whether such contact is hypothetically conceivable."
• The Board concludes after consideration of the facts of the case that the feature was not implicitly disclosed because a "reference run" would have been necessary, and alternatives were conceivable. 
• As a result, the Board is convinced that the skilled person cannot directly and unambiguously derive feature K2 from the public prior use "Power PAK RT 520".
• Regarding inventive step, "the parties unanimously formulated the technical task associated with the distinguishing feature K2 as improving or facilitating the adjustment of a known foil punch, for example, when changing tools. 
• Note, if the feature was actually present in the public prior use device, then there is no actual technical improvement over that device. 
• "The appellant [opponent] merely argued that the expert would like to prevent the control of a known foil punch from going beyond the contact point. However, this consideration alone does not provide any reason or indication for providing feature K2. In fact, there is no obvious reason for this in the prior art in the proceedings. "
• The feature is held to provide for an inventive step.

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t211247du1

Machine translation

2. Novelty

2.1 Obvious prior use "Power PAK RT 520"

2.1.1 The opposition division stated in point 3.1.6.6.7 of the reasons for the decision that knowledge of the source code would have been required in order to be able to understand the referencing of the cross punch. Knowledge of the source code was necessary in particular in order to recognize whether contact between an upper part of a tool and a lower part of a tool was being measured. Accordingly, feature K2 was not known from the obvious prior use.

2.1.2 The source code was not accessible to the customer Wolf (or other third parties) for factual and legal reasons. This was not disputed by the parties involved.

2.1.3 The appellant, however, argued that the skilled person would already be aware of feature K2 by knowing that a servo motor and the associated position-indicating sensor in the device known from the prior public use, as well as by the fact that the punch described therein is designed as a crushing punch. In this regard, it referred to the testimony of Mr Greeb (Document N1, page 8).

2.1.4 However, an alleged disclosure can only be considered implicit if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature was part of the disclosed subject matter (cf. RdB, ibid, IC4.3). It therefore depends on whether the skilled person, in view of the information available to him on the obvious prior use, specifically recognises the real possibility of configuring the measuring unit to detect contact between the upper and lower parts of the tool, and not whether such contact is hypothetically conceivable.

2.1.5 The respondent rightly objects that the sensor mentioned by the witness Greeb does not provide any direct information about the reference between tool parts, such as the punched parts, but merely provides information about the positioning of the servo drive. Consequently, a reference run of the tool parts is necessary to determine the connection between a detected position of the servo drive and the correlating position of a tool part. However, such a reference run is not described by the obvious prior use. A mechanical adjustment for referencing the servo drive remains just as conceivable as the determination of an upper point of the disclosed punch as a reference point.

2.1.6 As a result, the Board is convinced that the skilled person cannot directly and unambiguously derive feature K2 from the obvious prior use "Power PAK RT 520".

2.1.7 In conclusion, the appellant's arguments regarding the alleged lack of novelty of the subject matter of claim 1 according to the main request in comparison with the obvious prior use "Power PAK RT 520" are not convincing.

3. Inventive step

3.1 Based on the obvious prior use "Power PAK RT 520"

3.1.1 The appellant further contested the finding on page 22, paragraph 2, of the contested decision that the subject-matter of claim 1 according to the main request involved an inventive step over the prior public use "Power PAK RT 520".

3.1.2 As already explained in point 2.1 above, the disclosure of the prior public use "Power PAK RT 520" accessible to the person skilled in the art differs from the subject-matter of claim 1 according to the main request by feature K2.

3.1.3 The complainant argued that it was imperative for the skilled person to carry out a reference run on the packaging machine which had become known through obvious prior use and that it was obvious - if not even mandatory - that one of the end points of the reference run would be the contact point between the upper and lower tools and that the distinguishing feature K2 would thus have been immediately obvious to the skilled person.

3.1.4 However, in view of the Chamber's conviction set out in point 2.1.5 above, this argument is not convincing. The expert had various alternatives available to him for carrying out the reference run.

3.1.5 The problem-solution approach regularly applied by the Boards of Appeal is also not suitable to convincingly justify a lack of inventive step in the subject-matter of claim 1 according to the main request.

3.1.6 The parties unanimously formulated the technical task associated with the distinguishing feature K2 as improving or facilitating the adjustment of a known foil punch, for example when changing tools.

3.1.7 The Board is of the opinion that it may be left open whether feature K2 was known to the skilled person from his general technical knowledge or for other reasons.

3.1.8 When assessing whether the claimed subject matter represents an obvious solution to an objective technical problem, the Boards of Appeal apply the so-called "could-would approach" according to established case law. According to this, the decisive factor is not only whether a person skilled in the art could have carried out the subject matter of the patent in dispute, but rather whether, in the expectation of solving the problem, he would have modified the teaching of the closest prior art in such a way that he would have arrived at the claimed invention because the prior art provided inspiration for the invention (see RdB, supra, ID5).

3.1.9 The appellant merely argued that the expert would like to prevent the control of a known foil punch from going beyond the contact point. However, this consideration alone does not provide any reason or indication for providing feature K2. In fact, there is no obvious reason for this in the prior art in the proceedings.

3.1.10 In conclusion, the appellant's argument regarding the alleged lack of inventive step of the subject matter of claim 1 according to the main request based on the obvious prior use "Power PAK RT 520" is not convincing.