Key points
- The Board: "The appellant's [applicant's] view is however correct in this respect. The platform of D3 is clearly limited to a height/diameter ratio of less than 0.05 (see claim 1). Accordingly, D3 teaches away from the claimed ratio. The cited reference to Annex 3.1 (ii) of the Guidelines for Examination in the decision is not correctly interpreted by the Examining Division."
- The reference is to the following example in the Guidelines, Chapter G-VII (Inventive step), Annex, para. 3.1 "Obvious and consequently non-inventive selection from among a number of known possibilities." - ...(ii): "The invention consists in choosing particular dimensions, temperature ranges or other parameters from a limited range of possibilities, and it is clear that these parameters could be arrived at by routine trial and error or by applying normal design procedures."
- Fun fact: this paragraph is almost verbatim the same as in the 1st edition of the Guidelines (1978): Chapter C-IV, 9.8, C1:
- In case you wonder, the 1978 GL are not (yet) on the EPO GL archive page. If you are interested, please contact the EPO, and if that doesn't work, feel free to contact me.
- There is a lot to say about these examples. In particular, they predate the EPO's problem-solution approach, which was developed by the boards of appeal in the early years of their operation, i.e., after 1978. The first edition of the GL was drafted by various national delegations and an Interim Committee. For that reason, the examples omit the steps of identifying the technical effect, and the particular example speaks of 'could' whereas the actual rule is "would (not merely could) have arrived at " (according to the later decision T2/83). Indeed, the Annex is called"Examples relating to the requirement of inventive step – indicators", with the "indicators" (Indizien) referring the method that was used to examine the inventive step requirement by the national courts and patent offices before the PSA was developed by the EPO.
- The Board in the present case, as cited in part before: "The appellant's [applicant's] view is however correct in this respect. The platform of D3 is clearly limited to a height/diameter ratio of less than 0.05 (see claim 1). Accordingly, D3 teaches away from the claimed ratio. The cited reference to Annex 3.1 (ii) of the Guidelines for Examination in the decision is not correctly interpreted by the Examining Division. The issue at hand is not a selection in the sense of a choice from a limited range of possibilities in the prior art, since D3 does not disclose a range of ratios within the claimed ones (0.06 to 0.35), but of less than 0.05 (see claim 1 and page 11 of D3). It is not apparent why the skilled person, starting from the platform of D3, would seek to optimise such a ratio outside the specific teaching of staying below 0.05. The reasoning is tainted by hindsight."
- "Consequently, the decision is incorrect in this respect and the subject-matter of claim 1 is not rendered obvious by the combination of D3 with common general knowledge."
- "Furthermore, since none of the cited documents teaches or points to such a ratio for a disc-shaped platform with a completely watertight radial structure, the subject-matter of claim 1 cannot be rendered obvious by them (Article 56 EPC)."
EPO
The link to the decision can be found after the jump.
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