T 1574/23 - GL examples on inventive step

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.

EPO Guidelines 2018 Changes

See also my detailed overview of the changes in the EPO Guidelines (with more comments).
(via Google Drive, you can print it, download it and edit it e.g. in MS Word).

EPO plain overview of all changes: https://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/m.htm

Substantive new changes (according to EPO)

GL part with link	EPO Summary	Key sentence (added by this blogger)
F‑IV, 4.13	Clarifications regarding interpretation of claims comprising expressions like "Apparatus for ...", "Method for ...	in the case of a "method of manufacture", i.e. a claim directed to a method for manufacturing a product, the fact that the method results in the product is to be treated as an integral method step (this was unclear in the GL2017).
F‑IV, 4.14 F‑IV, 4.14.1 F‑IV, 4.14.2	New section clarifying interpretation of claims defined by reference to (use with) another entity	For a claim for "a cylinder head for an engine”: the cylinder head must be suitable to be mounted in the engine described in the claim, but the features of the engine do not limit the subject-matter of the claim per se
F‑IV, 4.21	Clarified how the terms “comprising”, “consisting of” and “consisting essentially of” are construed in a claim	Regarding Art. 123(2), "comprising" does not provide per se an implicit basis for either "consisting of" or "consisting essentially of"
F‑IV, 4.4	Clarified practice regarding the use of general statements, "spirit of invention”, claim-like clauses	claim-like clauses appended at the end of the description must also be deleted prior to grant
F‑IV, 4.6.1 F‑IV, 4.6.2	New sections explaining how relative terms need to be construed and when an objection of clarity may be raised	if a relative term (such as “ thin”) is used by the applicant as the only feature to distinguish the subject-matter of a claim from the prior art, the use of this term is objected to under Art. 84 unless the term has a well-recognised meaning in the particular art, e.g. "high-frequency" in relation to an amplifier. in most cases, a relative term is simply not limiting the extension of the subject-matter of a claim.
F‑IV, 4.7.1 F‑IV, 4.7.2	New sections explaining how the term “about” and similar terms need to be construed and when an objection of clarity may be raised	If no error margins are specified in the application, the expression "about 200 °C" is interpreted as having the same round-off as "200 °C". When terms such as "substantially" or "approximately" are applied to a structural unit of an apparatus (e.g. "a tray plate with a substantially circular circumference"), the expression containing the term "substantially" or "approximately" will be interpreted as a technical feature being produced within the technical tolerance of the method used to manufacture it
F‑IV, 4.9	Reorganized section so to indicate how optional features need to be construed and when an objection of clarity may be raised	Optional features, i.e. features preceded by expressions such as "preferably", "for example", "such as" or "more particularly" are allowed if they do not introduce ambiguity. the wording "the solution is heated up to between 65 and 85 °C, particularly to 90 °C" does not fulfil the requirements of Art. 84 because the temperature after the term "particularly" contradicts the range before it.
F‑IV, 4.12 G‑II, 5.2 G‑II, 5.3	Clarified practice that if a technical feature of a claimed plant or animal might be the result of either a technical intervention or of an essentially biological process, a disclaimer is necessary to delimit the claimed subject matter to the technically produced product	If a technical feature of a claimed plant or animal, e.g. a single nucleotide exchange in the genome, might be the result of either a technical intervention (e.g. directed mutagenesis) or an essentially biological process (a natural allele), a disclaimer is necessary
H‑V, 3.1	Clarified practice regarding replacement or removal of features from a claim (“essentiality test”)	The three-step test is maintained, but the GL add that: even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard"
H‑V, 4.1	Amended in view of G 1/16	The undisclosed disclaimer (which inevitably quantitatively reduces the original technical teaching) may not qualitatively change the original technical teaching in the sense that the applicant's or patent proprietor's position with regard to other requirements for patentability is improved.

Further changes (minor according to EPO, important in my view)

T 1710/11 - Not the required constructive approach

Key points

• In this examination appeal, the application was refused for lack of clarity, with obiter comments that claim 1 did not involve an inventive step.
• The Board notes that "this approach  [not basing the refusal on lack of inventive step, but only on clarity] does not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt ". The Board observes that it could have remitted the case after finding that the clarity issues were resolved. " Such potential ping-ponging of the application would of course negatively impact the overall procedural economy of the application and may be avoided if all reasons for refusal were to be included in the contested decision." 

Summary of Facts and Submissions

I. The appeal lies against the decision of the Examining Division refusing the European application no. 06 727 684.0 for failure to comply with the requirements of Article 84 EPC 1973, Article 83 EPC 1973 and Article 123(2) EPC. In an obiter dictum the Examining Division indicated that, in its opinion, the subject-matter of claim 1 did not involve an inventive step. []

Reasons for the Decision

[] 2.11 For these reasons, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC). []

4. The Board appreciates that only one reason is required to refuse an application and that, in the present case, the numerous clarity objections set out in the contested decision more than sufficed for this purpose. Nevertheless, the Board has some sympathy for the Appellant's view that the insistence of the Examining Division that the clarity issues should be dealt with before a definitive assessment of inventive step could be undertaken, led to a procedure which - at least for the Applicant - was rather inefficient.

As may be seen from the obiter dictum of the contested decision, the Examining Division understood the claimed subject-matter sufficiently to be "convinced that the idea of placing the A/D converter in the patient table does not comprise an inventive step". However, the Examining Division held that "a final decision on [novelty and inventive step] can properly be taken only after the scope of the claims has been clarified". In the knowledge that the subject-matter of the "unclear" claim was not inventive, it does indeed appear to be somewhat inefficient to issue a decision which gives lack of clarity - but not a lack of inventive step - as a reason for refusal, thus forcing the Appellant to address each of the clarity objections before being able to challenge the inevitable inventive step objection. This approach does not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt (C-I,2). In the present case, the Board decided to deal with the question of inventive step itself, thus concentrating on the issue which ultimately sealed the fate of the application. But it was equally possible that the Board, once satisfied that the claimed subject-matter would meet the requirements of Article 84 EPC 1973 and Article 123(2) EPC, could have chosen to remit the case to the Examining Division for a decision on this issue in order to give the Appellant the benefit of two instances. Such potential ping-ponging of the application would of course negatively impact the overall procedural economy of the application and may be avoided if all reasons for refusal were to be included in the contested decision.

Order

For these reasons it is decided that:

The appeal is dismissed.

EPO Guidelines 2016 with track change

The complete EPO Guidelines November 2016 with track change

EPO overview of changes: link

The EPO Guidelines 2016 with track change are available at Dropbox.
Update 08.10.2017: updated the broken link, should work in Dropbox. The file a ZIP archive with in it separate HTML files for each part A - H of the Guidelines.

Now also available: the EPO Guidelines 2017 with track change (modified sections only)