T 1865/22 - Inventive step of omitting a feature

Key points

• In the case at hand, the only distinguishing feature is omitting a feature of the prior art method.
•  The Board, in the headnote: "The mere fact that claimed subject-matter excludes a technical feature disclosed in the closest prior art as being essential or advantageous for a technical effect cannot in itself establish the existence of an inventive step. "
• "Rather, where the exclusion of the technical feature in question is the only feature distinguishing the claimed subject-matter from the closest prior art, it must be shown that the claimed subject-matter achieves said technical effect to an extent comparable to that of the closest prior art, even without this feature. Without such proof, the claimed subject-matter merely results in an obvious deterioration of the technical effect described in the closest prior art"
• As a comment, possibly, even a surprisingly small deterioration can provide for inventive step in some cases. Indeed, the term 'comparable' used  by the Board (as opposed to identical) could accommodate such cases. 
• 
  

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221865eu1