T 0703/18 - Problem inventions are rare and somewhat at odds with the PSA

Key points

• The Board, under inventive step:  "The problem to be solved proved to be a contentious issue.". 
• "The [opponent] appellant argued that the technical problem was to provide an infant formula suitable for newborn infants. For the [patentee] respondent, however, the correct technical problem was the one identified in the decision under appeal [probably: "resided in recognising that bioavailability of lutein from infant formula was low"]. In its view, the patent involved one of the rare cases of a "problem invention". It had not been recognised in the art that bioavailability of lutein from formula milk was lower than that achieved by human milk. Once this was known, the solution would have been obvious."
• The Board: "As the respondent [patentee] acknowledged, "problem inventions" are rare. One reason for this may be that they are somewhat at odds with the problem-solution approach. It is generally accepted that the formulation of the technical problem should not contain pointers to the solution or partially anticipate the solution. In contrast to this, "problem inventions" tend to do both."
• I'm not entirely certain of what the Board means with the last sentence.
• The Board reviews the foundational decision T 2/83. "T 2/83 concedes that the discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter. This may be so even though once the formulation of the problem is accepted, the question of whether the solution was obvious becomes irrelevant. A situation may arise in which, if a subject-matter claimed is assessed as a "problem invention", an attack based on lack of inventive step can be successfully directed only against the recognition of the problem, not against the claimed solution. At the same time, T 2/83 makes it clear that in the context of a clearly desired improvement, side effects which may be interpreted as a solution of a yet unknown problem shall not be decisive for patentability."
• The Board then turns to the facts of the case at hand. I refer the interested reader to the text below the fold. I would be glad to learn from comments to what extent the Board applies a coherent framework.
• "Considering all this, it is not justified to accept the formulation of a "problem invention", as suggested by the respondent. Instead, the technical problem has to be regarded as that of providing a nutritional formula (with lutein) suitable for infants, including newborns."
• The patent is revoked.

EPO 

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

T 2378/13 (II) - The inventive step attacks get their day in court

Key points

•  This is the follow-up to R 5/19, which was the 9th successful petition for review.
• In the first decision, the Board had reasoned that the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the complainant's allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent] made attacks using the problem-solution approach, which the board acknowledged." The board only considered inventive step starting from D6 and found that claim 1 was inventive. 
• The statement of grounds of the opponent included three inventive step attacks which appear, each individually, to state the distinguishing feature and the objective technical problem (e.g. the attack on p.24 starting from D13); for each attack, detailed comments were given on the (adverse) reasoning in the impugned decision of the opposition division.  
• The Board, after the remittal from the Enlarged Board, considers the inventive step attacks and concludes that the claims are inventive (only a dependent claim was further amended to address a clarity issue). The Board's reasoning seems fairly detailed, but it is not my technical field. This time, however, multiple inventive step attacks in parallel are considered and discussed by the Board.
• The OD had taken a decision to maintain the patent in amended form while the petition for review was pending (and the B2 publication was published). The Board expressly sets aside that decision.
• The Board, in machine translation:  "Neither in Article 112a nor in Rule 108 or in its other provisions does the EPC contain an express statement as to whether decisions of the opposition division which took effect in the period between the adoption of the board of appeal decision and the adoption of the review decision of the Enlarged Board of Appeal automatically become effective as a result of the reversal of the Board of Appeal decision and the resumption of the appeal proceedings become ineffective or whether this requires an express reversal of these decisions. However, as part of the review procedure that has been introduced, it is necessary to interpret the existing procedural rules to the effect that a request is admissible which aims to remove the effect or legal appearance of a decision already given by the opposition division which is not in accordance with the final decision of the opposition division Board of Appeal after the reopening of the appeal proceedings. Indeed, it would be contrary to the spirit of a review procedure and to legal certainty if decisions of the opposition division which took effect in the period between the issue of the first Board of Appeal decision and the issue of the review decision of the Enlarged Board of Appeal and which are not consistent with the final Board of Appeal decision in the resumed proceedings actually exist or would even appear to be effective. Ultimately, the purpose of the review process is to ensure effective legal protection and a fair process. This can only be done if there are no decisions of the opposition division based on the decision of the Board of Appeal which have been set aside and which could perpetuate the result of the proceedings before the review proceedings are carried out or at least be suitable for creating a corresponding legal appearance."

EPO 

The link to the decision is provided after the jump

T 2377/18 - CPA and binding effect starting point

Key points

• This decision illustrates the substantive aspects of the choice of the starting point document for the problem-solution approach. 
• It is a basic feature of the PSA that one document (or embodiment) is taken as the starting point and that obviousness of the claimed invention is analysed in view of the distinguishing feature of the claimed invention in view of that document and in view of the objective technical problem solved by that feature. The objective technical problem can generally be formulated as "how to modify the starting point document so as to achieve the technical effect", the technical effect being the effect achieved by the distinguishing feature, in the context of the claimed invention, compared to the starting point document.
• In the present case, the patentee argues that D1 is not the CPA.
• The Board (al quotes in translation): " In this sense, the [patentee's] arguments against the selection of D1 as the closest prior art seem to imply that the problem and solution approach must be applied based on only a single prior art document or exemplary embodiment, namely from the one to be initially selected closest prior art. This is not consistent with established case law." 
• The Board: "If the person skilled in the art has several viable paths, i.e. paths starting from several different documents or exemplary embodiments that could lead to the invention, the boards of appeal have consistently held that the ratio of the problem-solution approach requires the invention to be examined in relation to all of these paths before inventive step is acknowledged. If the [claimed] invention is obvious to a person skilled in the art in at least one of these ways, it is not inventive. If the inventive step is denied, the choice of starting point does not have to be specifically justified" 
• This is indeed established case law and was already indicated by Szabo 1986.
• However, the choice of the starting point document is important, as far as substantive aspects are concerned. In the present case, the claim was directed to a hood furnace (also translated as a bell annealer), in any case a batch design; D1 was about a continuous furnace. 
• " The board agrees with the appellant that the basic structure of a conventional bell annealer plant is part of the specialist knowledge of a person skilled in the art. However, such bell annealer furnace systems are structurally fundamentally different from the continuous heat treatment system disclosed in D1. The expert faced with the above task would therefore have no reason to combine the different building constructions. Even if he wanted to combine them, he had no idea how the well-known bell annealer systems could be integrated into the continuous furnace at D1. To do this, he would have to completely redesign D1's heat treatment facility in an unknown way. 
• " In addition, according to the settled case law of the Boards of Appeal (supra, I.D.3.6), the selection of the closest prior art not only defines the subject matter serving as a starting point, but also defines the framework for further development, namely a further development within this genus. A change from the consciously chosen type to another, previously known but not selected other type during the further development (i.e. here from continuous furnaces as disclosed in D1 to bell annealers) can then only be regarded as the result of an ex post facto analysis." 
• 
  

EPO T 2377/18

The link to the decision is provided after the jump break.

T 0469/19 - Putting the problem first

Key points

• Board 3.3.10 on inventive step, in a chemistry case: "Document D1 discloses a method silent on the amount of water fed to the reactor. The parties agreed with the opposition division's conclusion that D1 was a suitable starting point for examining inventive step. The board sees no reason to differ.' 
• The Board analyses the patent in suit and holds that "Inventive step will thus be examined in the following considering the technical problem underlying the claimed invention to be the provision of a method for the hydrogenation of phenol with enhanced phenol conversion" 
• "The solution to this technical problem is the claimed method of continuous catalytic hydrogenation of phenol over a palladium catalyst, characterised in that water is fed ..." 
• "The respondent [patentee] relied on the experimental evidence on file to show that the problem of providing a method with enhanced conversion was credibly solved by the features of claim 1." 
• The  Board then studies the (experimental) evidence submitted by the parties.
• "Having regard to the available evidence, it is not credibly shown that the problem of providing a hydrogenation process with enhanced conversion has been credibly solved by the method of claim 1." 
• The Board reformulates the problem. "In accordance with the case law, alleged but unsupported advantages cannot be taken into consideration in determining the problem underlying the invention (see e.g. decision T 20/81, OJ EPO 1982, 217, Reasons 3, last paragraph). 
• "As the alleged improvement in terms of better conversion has not been proven, the technical problem as defined above needs to be reformulated as to provide an alternative method for preparing cyclohexanone, cyclohexanol or a mixture of these."
• "The claimed solution is the method of claim 1, characterised by the relative amount of water added to the reactor."
• "This problem is credibly solved by the claimed method. Having regard to the available evidence, the hydrogenation of phenol can be carried out if the required relative amount of water is fed to the reactor."
• " It thus remains to be decided whether the proposed solution to the objective problem defined above would have been obvious for the skilled person in view of the prior art.
• As a comment, the Guidelines indicate that first the distinguishing feature is determined, then the technical effect provided by that feature, and that "  the [objective] technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects".
• This Board first identifies the technical problem, then the claimed solution (distinguishing feature), then checks whether the technical problem is solved by the claimed solution, and if not, reformulates the technical problem. See G. Raths, epi Information 2/2014 p.68; and footnote 7 of my article in epi Information 2/2021

EPO 

The link to the decision is provided after the jump.

T 1112/19 - Whether a problem invention is compatible with the PSA

 Key points

• In this appeal against a refusal, the applicant argues that “In D1, there was no discussion or appreciation of the objective problem and no teaching to go towards the invention starting therefrom, which should be rather considered a "problem invention".”
• “First, the board recalls that the closest prior art does not have to disclose the "objective technical problem", which is only determined in the second step of the problem-solution approach ”
• “Third, regardless of the question whether a "problem invention" is compatible with the assessment of inventive step according to the problem-solution approach or to which extent it may generally justify the presence of an inventive step, the objective problem formulated above is typically apparent in [the computer technology at hand]”
• “With [certain technology considerations indicated by the Board] in mind, the skilled person would have deemed the objective technical problem likely to arise in the data network 106 of D1 as well, without any need to have it explicitly mentioned in the same document.”
• “ In conclusion, the recognition of that problem would have been obvious to the skilled person in the field of telecommunications and therefore cannot be a "problem invention" within the meaning of T 2/83.”

T 1112/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191112eu1.html

2.1.9 The appellant [applicant, Goldman Sachs & Co. LLC]  submitted that even considering that the skilled person were to start with D1, there was no reason to require "replay" in the system of D1, which was directed to providing a summary of a stream. The summarised stream of D1 was not distributed over databases; there was no need for a particularly reliable playback of that stream. In D1, there was no discussion or appreciation of the objective problem and no teaching to go towards the invention starting therefrom, which should be rather considered a "problem invention".

2.1.10 This is not convincing.

First, the board recalls that the closest prior art does not have to disclose the "objective technical problem", which is only determined in the second step of the problem-solution approach on the basis of the technical effect(s) provided by those features which distinguish the claimed invention from that prior art (see e.g. T 698/10, Reasons 3.4; T 910/90; Reasons 5.1, last sentence).

T 0894/19 - Exception to the could-would approach

Key points

• The Board, on inventive step: “ The configuration of features (c) and (d) therefore represents a mere obvious and consequently non-inventive selection among a number of known and equally likely possibilities (see e.g. T 1045/12, Reasons 4.7.7). In such cases, the "could-would approach" normally does not apply (see e.g. T 12/07, Reasons 4.1.6; T 1968/08, Reasons 5.5). To consider all of the solutions that are equally obvious, it is sufficient that the skilled person could recognise the solutions concerned without inventive efforts: a separate pointer is then not required for this purpose.”
• The question arises: how does the Board know that selection of the claimed configuration was obvious, without using the could-would approach?
• The Board, in the sentences immediately preceding the quote above: “The relevant skilled person tasked with the objective technical problem described in point 3.5 above belongs to the field of "hearing devices". Based on their common general knowledge, this skilled person is aware of several solutions to the objective technical problem posed, such as the clamping or resiliently suspending mentioned in point 3.5 above or the rotatable snapping connection of features (c) and (d). The skilled person also knows the respective advantages and disadvantages of each of these solutions.”
• “3.5 The corresponding objective technical problem can thus be framed as "how to provide for an easy and a reliable connection between the canal element and the speaker element in D1 that allows for an adjustable positioning of the speaker element".”
• As a comment, I'm not sure what the "such cases" are wherein "the "could-would approach" normally does not apply". 
• I'm also not sure if it was impossible to reason that the claimed feature was something that the skilled person would have applied to solve the objective technical feature; I don't think that the could-would approach means that a feature is only obvious if it is the only solution that the skilled person would have applied. 

T 0894/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t190894eu1.html

3.6 The relevant skilled person tasked with the objective technical problem described in point 3.5 above belongs to the field of "hearing devices". Based on their common general knowledge, this skilled person is aware of several solutions to the objective technical problem posed, such as the clamping or resiliently suspending mentioned in point 3.5 above or the rotatable snapping connection of features (c) and (d). The skilled person also knows the respective advantages and disadvantages of each of these solutions. The configuration of features (c) and (d) therefore represents a mere obvious and consequently non-inventive selection among a number of known and equally likely possibilities (see e.g. T 1045/12, Reasons 4.7.7). In such cases, the "could-would approach" normally does not apply (see e.g. T 12/07, Reasons 4.1.6; T 1968/08, Reasons 5.5). To consider all of the solutions that are equally obvious, it is sufficient that the skilled person could recognise the solutions concerned without inventive efforts: a separate pointer is then not required for this purpose.

The respondent argued that Figure 15B of D1 comprises many possible connections which the skilled person could have changed to solve the objective technical problem posed and that there would be no reason why the skilled person would have considered specifically the connection of the speaker element to the canal element. The board agrees, however, with the appellant that the skilled person would have primarily focused on the connection between tube 1512 connecting speaker element 1212 to ear mould 1510 to solve the above objective technical problem because this is the most prominent connection in Figure 15B of D1.

3.7 Hence, claim 1 of the main request and of auxiliary request 1 does not involve an inventive step (Article 56 EPC).

T 1066/18 - An effect that is not claimed

 Key points

• The OD found the claims to be insufficiently disclosed because it would be unclear how the advantage, mentioned in the description but not recited in the claims, can be achieved. The Board reverses in view of G2/03. This is all fairly standard case law, except for one sentence in the Board's decision.
• The Board agrees that the skilled person can reduce the claimed subject-matter to practice.
• “Die Einspruchsabteilung und die Beschwerdegegnerin [opponent] sehen das jedoch nicht als hinreichend an, sondern meinen, die Lehre der Erfindung müsse so ausführlich offenbart sein, dass der Fachmann eine Wirkung zuverlässig erzielen könne, die in der Beschreibung als angestrebt offenbart sein, selbst wenn der Anspruch diese Wirkung nicht ausdrücklich fordere.”
• The Board explains that in view of G1/03, r.2.5.2, “Dabei sei entscheidend, ob eine einschlägige Wirkung im Anspruch gefordert werde oder nicht. In jenem Fall folge unzureichende Offenbarung, in diesem ein Mangel an erfinderischer Tätigkeit.”
• The Board briefly discusses the problem-solution approach, in an obiter remark r.4.3.3 in translation: " The problem-and-solution approach used by the EPO to assess inventive step defines it as the objective technical problem to achieve the effect that is determined by comparing the claimed invention with the "closest prior art". An effect that is not claimed is not included in this comparison. In addition, the objective technical problem is regularly different from the (only) disclosed, "subjective" problem." 
• I am not sure if the sentence in italics is established case law (original : Dabei geht eine nicht bean­spruch­te Wirkung nicht in diesen Vergleich ein). If it is many claims directed to a compound as such (e.g., say, the dasatinib molecule) would lack a technical effect.

T 1066/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181066du1.html

4.3.3 Der am EPA weit überwiegend verwendete Aufgabe-Lösungs-Ansatz zur Bewertung der erfinderischen Tätigkeit be­stimmt es als die objektive technische Aufgabe, die­je­ni­­ge Wirkung zu erzielen, die durch Vergleich der bean­spruchten Erfindung mit dem "nächstliegenden Stand der Technik" bestimmt wird. Dabei geht eine nicht bean­spruch­te Wirkung nicht in diesen Vergleich ein. Zudem ist die objektive technische Aufgabe regel­mäßig von der (nur) offenbarten, "subjektiven" Aufgabe verschie­den.

T 0547/17 - Two, the same, partial problems

 Key points

• The claim at issue has two distinguishing features.
• The Board: “In conclusion, both distinguishing features are aimed at maximising the flux linkage but without influencing each other because the flux linkages at the pole claw roots and at their tips are independent of each other. The Board therefore agrees with the appellant, that there is no synergy. It follows that the first and second partial technical problems addressed by the two distinguishing features are both to maximise the output current.”
• “Since there is no synergy, the solutions to the partial problems can be assessed separately.”

T 0547/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170547eu1.html

decision text omitted

T 1148/15 - A review of the PSA

Key points

• The Board provides a very useful general review of the problem-solution approach.
• “The first step of the problem-and-solution approach is to determine the closest prior art, i.e. the item of prior art which appears to be the most promising starting point for arriving at the claimed subject-matter in an obvious manner.”
• “The main reason for identifying the closest prior art is that if it can be established that the skilled person would not have arrived at the claimed subject-matter in an obvious manner when starting from the closest prior art, then it can be reasonably assumed that the same conclusion would be true when starting from any other item of prior art” (italics added). The Board adds that if the assumption turns out to be wrong “the problem-and-solution approach may have to be repeated for any prior art that also qualifies as a suitable starting point”.
• “As a first criterion, the closest prior art should be related to the claimed invention, in the sense that it should disclose subject-matter conceived for the same purpose or aiming at the same objective, corresponding to a similar use, or relating to the same or a similar technical problem or, at least to the same or a closely related technical field.”
• “As a second criterion, the closest prior art should disclose subject-matter having the greatest number of technical features in common with the claimed invention, i.e. requiring the minimum of structural and functional modifications.”
“ the first criterion should be given more weight than the second” (summarizing CLBA I.D.3.2)
• “If the closest prior art also had to disclose the purpose or effect of the distinguishing feature(s) [as argued by the applicant], it would mean that only items of prior art which contained a teaching towards the distinguishing feature(s) would qualify as the closest prior art. However, this is not required by the problem-and-solution approach because the teaching towards the distinguishing feature(s) may come from another item of prior art or from the skilled person's common general knowledge.”
• “the closest prior does not have to disclose all the problems solved by the claimed invention. In particular, it does not have to disclose the objective technical problem [...]”
• “the technical effect in question is that achieved by the distinguishing features. The technical effect is usually one or more technical advantages (and possibly one or more accompanying disadvantages). When the claimed subject-matter is a process for making an object, it is also the object itself.”
• “In most cases, the objective technical problem can be formulated as how to achieve the technical effect. ” (clerical error corrected)
• “[The objective technical problem] is usually a problem the skilled person is familiar with because it relates to known drawbacks of the prior art in the technical field of the invention.”
• “Determining the technical effect is a useful intermediate step for ensuring the proper formulation of the objective technical problem.”
• “The determination of the technical effect is objective because it is based on an objective comparison of the claimed subject-matter with the closest prior art.”
• “In the third step of the problem-and-solution approach, according to the established case law of the boards of appeal, in order to determine whether the claimed invention would have been obvious to the skilled person starting from the closest prior art and having regard to the state of the art within the meaning of Article 54(2) EPC [], the boards apply the "could-would approach". This means asking not whether the skilled person could have arrived at the claimed invention by modifying the closest prior art, but whether they would have done so in the expectation of solving the objective technical problem or in the expectation of some improvement or advantage”.
• As a comment, the alternative of “or in the expectation of some improvement or advantage” not necessarily tied to the objective technical problem is in my view not the basic form of the PSA. Why formulate to objective technical problem carefully in the second step to forget about it in the third step?
• As a further comment, I think that question is whether the skilled person would have arrived at something falling within the ambit of the claimed invention. A claim specifying a broad range is not inventive if one embodiment in that range is obvious even if the prior art does not make the whole range obvious. 
• The Board: “ it is established case law that selecting one solution from a host of obvious solutions does not render the selected solution inventive, in the absence of an unexpected technical effect associated with that selection”.

T 1148/15 -

https://www.epo.org/law-practice/case-law-appeals/recent/t151148eu1.html

Reasons for the Decision

1. The appeal is admissible.

The present application

2. The present application relates to a set-top box for cable television, comprising a front-end portion for receiving and transmitting signals over said cable and a back-end portion for further processing the signals received by or to be transmitted by the front-end portion. The front-end and back-end portions are controlled by a front-end processor and a back-end processor, respectively, which communicate with each other.

Main request - inventive step (Article 56 EPC 1973)

3. Problem-and-solution approach

The problem-and-solution approach has been developed by the case law of the boards of appeal of the EPO to ensure that inventive step is assessed objectively and avoid ex post facto analyses of the prior art (see Case Law of the Boards of Appeal of the European Patent Office (hereinafter "CLBoA"), 9th edition, July 2019, I.D.2).

The steps of the problem-and-solution approach may be summarised as follows:

(a) identifying the closest prior art and determining the distinguishing features, i.e. the features of the claimed subject-matter that are not disclosed by the closest prior art;

(b) determining the technical effect achieved by the distinguishing features and deriving from the technical effect the objective technical problem solved by the claimed subject-matter with respect to the closest prior art;

(c) examining whether the skilled person, starting from the closest prior art and having regard to the state of the art within the meaning of Article 54(2) EPC 1973, would have arrived at the claimed subject-matter in an obvious manner.

T 1861/17 - The subjective problem

Key points

• The present Board emphasizes that the objective technical problem can only be formulated on the basis of the distinguishing features in view of the closest prior art / suitable starting point document. 
• The Board thereby departs from e.g. T 0606/99 which had held that "Dabei ist zunächst von der im Streitpatent formulierten Aufgabe auszugehen. Erst wenn festgestellt wird, daß die dort gestellte Aufgabe nicht gelöst ist, muß untersucht werden welche andere Aufgabe objektiv bestand (siehe z. B. T 246/91 oder T 495/91)."
• The present Board: “ sollte die Formulierung dieser "objektiven Aufgabe" nach Auffassung der Kammer regelmäßig erst nach Festlegen des nächstliegenden Stands der Technik erfolgen”.
• As a comment, historically indeed the objective technical problem is 'reformulated' but in my view it needs to be formulated only once, namely on the basis of the distinguishing features and the technical effects that are made plausible and derivable for said features in the application as filed (see T 1/80, hn.II, the very first decision of the Technical Boards of Appeal, cf. Szabo 1986). T1/80 concerned a case wherein the applicant made a technical effect credible in appeal by filing comparative results. 

T 1861/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t171861du1.html 

3.4 Obwohl in der Rechtsprechung bisweilen bei der Ermittlung der objektiven technischen Aufgabe zunächst grundsätzlich von der im Patent genannten Aufgabe ("subjektive Aufgabe") ausgegangen wird (siehe z.B. T 246/91, Gründe 4.4; T 495/91, Gründe 4.2; T 606/99, Gründe 5.3.1 und die nachfolgenden Entscheidungen, die sich darauf berufen), sollte die Formulierung dieser "objektiven Aufgabe" nach Auffassung der Kammer regelmäßig erst nach Festlegen des nächstliegenden Stands der Technik erfolgen. Nur auf der Basis der Unterscheidungsmerkmale im Vergleich zum nächstliegenden Stand der Technik (geeigneten Ausgangspunkt) kann ja nach dem etablierten Aufgabe-Lösungs-Ansatz überhaupt die objektive technische Aufgabe bestimmt werden (siehe z.B. R 9/14, Gründe, 2.1.1). Die Patentschrift kann aber logischerweise nicht vorab vom später zu ermittelnden, tatsächlichen nächstliegenden Stand der Technik ausgegangen sein.

T 0694/15 - The terminology "closest prior art" is somewhat misleading

Key points

• This is an examination appeal about inventive step.
• “The Examining Division started from document D8. The Board also considered documents D9 and D5 as possible starting points. The [applicant] disagreed that D5 was the closest prior art”
• The Board: “the terminology "closest prior art" is somewhat misleading. It is perhaps preferable to use the terminology "starting point (in the prior art)". It can be economical to start from prior art that is in some sense close to the invention, in the hope that the consideration of this single starting point will be enough to establish whether the claimed subject matter would have been obvious.”
• “However, if this fails, before arriving at the conclusion that the subject matter would not have been obvious, it is necessary to consider other possible starting points, to see whether there are any other paths leading to the invention, that the skilled person would have taken when searching for solutions to technical problems pertinent to that starting point. If such a path exists, then the invention would have been obvious.”
• “It has to be noted, however, that a problem which is not apparent from the context of the starting point, but which is derived only with knowledge of the invention, is very likely to be the result of hindsight.”
• The Boards finds the claims to be inventive.

EPO  T 0694/15 - link




9. The Examining Division started from document D8. The Board also considered documents D9 and D5 as possible starting points.

10. The appellant disagreed that D5 was the closest prior art, because it only provided, as a visual indication, the switching on or off of an LED, and did not provide for a measurement of a level in the sense of the claim, whereas D9 did.

11. This argument fails in view of the Board's claim construction (point 8, above). But the argument is actually of no relevance to the question of whether D5 can be selected as closest prior art.

12. Having one less feature in common with the claim may mean that it appears less likely that the skilled person would arrive in an obvious manner at something falling within the scope of the claim, but it does not mean that the skilled person could not have arrived at such subject manner without hindsight, possibly while looking for a solution to a different objective technical problem.

T 1147/16 - Bonus effect

Key points

• This is an opposition appeal about inventive step. The Board finds that the distinguishing feature provides for the technical effect of "reduction of epimerisation". The Board also finds that none of the cited documents teaches that the feature at issue (adding lactose) will reduce epimerisation. The opponent then argues that adding lactose is well-known to provide for "a more general stabilisation effect", such that "the particular effect of reduction of epimerisation" is a bonus effect which can not provide for inventive step.
• The Board: "As stated in T 227/89, in determining which effect is crucial and which is merely accidental (the so-called "bonus effect"), a realistic approach has to be taken, considering the relative technical and practical importance of those effects in the circumstances of a given case." 
• The Board then turns to the technology at issue and concludes that "the known potential use of lactose to stabilise lyophilisates does not equate with the specific effect of lactose on [] epimerisation disclosed in the patent, nor does this known optional use justify that the crucial epimerisation problem be disregarded in the assessment of inventive step."

T 1147/16 - link

11.5 The appellants-opponents 1 regard the particular effect of reduction of epimerisation as a bonus effect, with the consequence that the known more general stabilisation effect of lactose on lyophilisates would render the claimed subject-matter obvious. The Board does not agree.

As stated in T 227/89, in determining which effect is crucial and which is merely accidental (the so-called "bonus effect"), a realistic approach has to be taken, considering the relative technical and practical importance of those effects in the circumstances of a given case.

It is not contested that lactose is one of many commonly known bulking agents that may optionally be used to physically stabilise lyophilisates. However, as submitted by the appellant-patent proprietor, there is no suggestion in the art that a bulking agent is needed for a tigecycline composition, let alone desired (see D37, paragraph 29). In contrast, the issue of tigecycline C-4 epimerisation appears crucial considering that the C-4 epimer lacks the anti-bacterial efficacy of tigecycline, and that the epimerisation rate of tigecycline is particularly fast (see paragraphs [0010] and [0012] of the patent).

Thus the known potential use of lactose to stabilise lyophilisates does not equate with the specific effect of lactose on tigecycline epimerisation disclosed in the patent, nor does this known optional use justify that the crucial epimerisation problem be disregarded in the assessment of inventive step.

T 1230/15 - The very nature of the PSA

Key points

• "The  [opponent] argued that its right to be heard had been violated at the oral proceedings before the opposition division since it was allowed to present only two lines of attack on inventive step, namely, one starting from D1 and one starting from D11, each in combination only with a single document." 
• " The [opponent's] understanding appears to be that there exists an absolute right to present all possible inventive-step attacks orally before the opposition division. Anything else incurs, in its view, a violation of its right to be heard. This is, however, in fundamental contradiction to the problem and solution approach as applied by the departments of the EPO for assessing inventive step." 
• " The first step in this approach entails selecting the closest prior art []. It is in the very nature of the problem and solution approach that the closest prior art constitutes "the easiest route for the skilled person to arrive at the claimed solution or the most promising starting point for an obvious development leading to the claimed invention" []. If an invention is not obvious when starting from the closest prior art, it is reasonable to say that it will not be obvious when starting from a more remote document." 
• "On the basis of the [opponent's] own account, it was allowed to present, at the oral proceedings [before the OD], a complete problem and solution approach starting from a document of its choice, namely, D1, as the closest prior art []. The opponent was also allowed to reply to the patent proprietor's arguments based on D5 as the closest prior art []. Indeed, D5 was ultimately used as the only closest prior-art document in the appealed decision. Finally, the opponent was also allowed to present a further attack starting from D11 []. This was another document taken from the pool of (potential) closest prior-art documents proposed by the opponent." 
• " This chain of events shows that the opponent had the opportunity to present its comments on the essential legal and factual reasoning on which the appealed decision is based (Article 113(1) EPC) and cannot, hence, demonstrate a violation of the right to be heard."
• " As regards the argument that the [OD] discussed further inventive-step attacks as evidence for patentability, the board cannot agree with the appellant's reading of the appealed decision. The relevant section [] merely sets out the opposition division's reasoned assessment as to why some of the documents which the opponent had cited were not the closest prior art.
• " It follows that no violation of the right to be heard has occurred, at any rate none which would justify the remittal of the case to the opposition division. The board thus proceeded with the examination of the appeal as to the substance".
• As a comment, with hindsight, an opponent could possibly try to attack the argument "If an invention is not obvious when starting from the closest prior art, it is reasonable to say that it will not be obvious when starting from a more remote document." If the argument is not in the impugned decision, there is a gap in the reasoning why the non-obviousness over D1, D5 and D11 show that the claimed subject-matter is not obvious having regard to the other prior art documents on file. If the impugned decision includes that "it is reasonable to say", the question arises if this is not a "fact" in the sense of Article 113 EPC (note that some arguments are actually facts according to the recent case law about the admissibility of late filed arguments under Article 114 EPC).
  
  
  EPO T 1230/15 - link

2. Right to be heard and remittal

2.1 The appellant [opponent] argued that its right to be heard had been violated at the oral proceedings before the opposition division since it was allowed to present only two lines of attack on inventive step, namely, one starting from D1 and one starting from D11, each in combination only with a single document. In addition, the opposition division discussed in the decision under appeal, as evidence of patentability, further inventive-step attacks which had not been discussed at the oral proceedings. In view of these deficiencies, the case had to be remitted to the opposition division. Moreover, a decision by the board on those inventive step arguments would deprive the appellant of a first-instance decision on them.

2.2 The appellant's understanding appears to be that there exists an absolute right to present all possible inventive-step attacks orally before the opposition division. Anything else incurs, in its view, a violation of its right to be heard.

2.3 This is, however, in fundamental contradiction to the problem and solution approach as applied by the departments of the EPO for assessing inventive step.

T 2378/13 - Not using the PSA, so disregarded?

Key points

• In this opposition appeal, the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the complainant's allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent] made attacks using the problem-solution approach, which the board acknowledged." The board finds that claim 1 is inventive. 
• The board does not indicate the legal basis in the EPC for disregarding the arguments in the opponents' statement of grounds and does not mention the opponent's right to be heard under Art.113(2) EPC. 
• A petition for review was recently filed (R5/19). However, admissibility of the petition appears a bit of an issue because the opponent (who was represented by an employee during the oral proceedings before the board; minutes) did not raise an objection under Rule 106 EPC.
• Addendum 26.07.2021: the petition for review was allowed.
  https://www.epo.org/law-practice/case-law-appeals/recent/r190005du1.html 
• As a comment, the legal basis for the Boards assumed power to disregard (i.e. declaring inadmissible) any timely filed inventive step attacks on the ground that they are not in the problem-solution approach format is not at all apparent to me, unless the Board, of course, understood that the opponent had waived its arguments during the oral proceedings.
• The statement of grounds of the opponent was drafted by a professional representative. It includes from page 19 three inventive step attacks which appear to each individually state the distinguishing feature and the objective technical problem (e.g. the attack on p.24 starting from D13), for each attack detailed comments are given on the (adverse) reasoning in the impugned decision.  Hence, I don't fully understand what the Board means with " Allerdings basiert keine dieser Argumentationen auf dem allgemein anerkannten Aufgabe-Lösungs-Ansatz zur Beurteilung der erfinderischen Tätigkeit" unless this Board means that an opponent may present inventive steps attacks in appeal starting from only one single document as "the" closest prior art.

EPO T 2378/13 -  link

5. Erfinderische Tätigkeit (Artikel 56 EPÜ)

5.1 Mit der Beschwerdebegründung hatte die Beschwerdeführerin eine Vielzahl von unterschiedlichen Argumentationen gegen die erfinderische Tätigkeit des der angefochtenen Entscheidung zugrundeliegenden Anspruchs 1 eingereicht, der dem Anspruch 1 des gültigen Hauptantrags entspricht. Allerdings basiert keine dieser Argumentationen auf dem allgemein anerkannten Aufgabe-Lösungs-Ansatz zur Beurteilung der erfinderischen Tätigkeit. Die schriftlich vorgebrachten Angriffe der Beschwerdeführerin bezüglich der erfinderischen Tätigkeit finden folglich in dieser Entscheidung keine Beachtung.

Während der mündlichen Verhandlung vor der Kammer hat die Beschwerdeführerin Angriffe unter Verwendung des Aufgabe-Lösungs-Ansatzes vorgebracht, die die Kammer gewürdigt hat.

5.2 Dokument E6 und allgemeines Fachwissen oder D2

Der Gegenstand des Anspruchs 1 ist ausgehend von der Offenbarung des Dokuments E6 weder in Zusammenschau mit dem allgemeinen Fachwissen noch in Zusammenschau mit der Offenbarung des Dokuments D2 nahegelegt.

T 1680/17 - Fulvestrant formulation

Key points

• In this opposition appeal (whith parallel national litigation), claim 1 is for a second medical use of fulvestrant for the treatment of breast cancer with intra-muscular injection with distinguishing feature over D4 that fulvestrant is formulated with ehtanol, benzyl alcohol, benzyl benzoate, and castor oil. The gist is that this combination of solvents allows for a high concentration of fulvestrant and hence a small volume for injection. D4 is silent about the cosolvents in the "castor oil-based vehicle" used therein. 
• D1 is a scientific article using in one of the examples the precise formulation of fulvestrant according to claim 1. D1 " aims to elucidate mechanisms underlying an acquired tamoxifen resistance in the therapy for estrogen receptor-positive breast cancer". 
• The objective technical problem in view of D4 is therefore, according to the Board: "The technical problem is the provision of a castor oil-based vehicle for a fulvestrant containing composition allowing for treatment of breast cancer by intramuscular injection." 
• The Board finds that the use of the formulation of D1 is not obvious. " However, the purpose of [D1] is the elucidation of a biochemical mechanism. [D1]  does not aim at the provision of a therapy." 
• " Firstly, [D1] is a scientific paper dealing with basic research. The board considers that the skilled person would not have turned to formulations used in basic research when aiming at providing a formulation for therapeutic treatment. The requirements of a formulation to be used in basic research are fundamentally different from the requirements of a formulation to be administered to a patient. While in basic research merely the availability of the active at the test site is of relevance, in a clinical situation aspects such as safety/tolerability and bioavailability over the treatment period are decisive factors." 

EPO T 1680/17 -  link

II. Independent claim 1 of the patent in suit as granted reads as follows:

"1. A pharmaceutical formulation for use in the treatment of breast cancer by intra-muscular injection,
wherein the pharmaceutical formulation comprises fulvestrant,
a pharmaceutically-acceptable alcohol being a mixture of 10 % weight of ethanol per volume of formulation and 10 % weight of benzyl alcohol per volume of formulation,
and the formulation contains 15 % weight of benzyl benzoate per volume of formulation
and a sufficient amount of a ricinoleate vehicle so as to prepare a formulation of at least 45 mgml**(-l)of fulvestrant,
wherein the ricinoleate vehicle is castor oil, and wherein the total volume of the formulation is 6 ml or less."

Reasons for the Decision

4. Novelty (Article 100(a) and Article 54(1) EPC)

Document (1) [McLeskey et al.,] does not provide a direct and unambiguous disclosure of the feature of intramuscular injection and is thus not novelty-destroying for the subject-matter of claim 1.

Respondent 1 has argued that the skilled person would have understood the disclosure of document (1) as referring to intramuscular administration. The board cannot accept this line of argument since document (1) discloses the formulation under consideration solely for animal studies. In animal studies a subcutaneous administration is a common mode of administration which is, however, distinct from intramuscular administration. Therefore, intramuscular administration is not directly and unambiguously disclosed.

The board notes that document (1) does not disclose any concrete formulations in the context of the therapeutic treatments discussed in the passages of the "introduction" (page 697, right column, first paragraph to page 698, left column, first paragraph).

The ground for opposition under Article 100(a) and Article 54 EPC does therefore not prejudice the maintenance of the patent.

T 0068/16 - Assumed technical effect

Key points

• In this opposition appeal, the Board finds that the OD had committed a substantial procedural violation.
• In the impugned decision, the OD had stated: "However it is assumed that the presence of thermoset has an effect on the flowability of the coating and the opposition division follows the argumentation of [patentee]  and considers that the skilled person would have no incentive to add thermoset to the coating disclosed in D16. Thus claim 1 is inventive (art. 56 EPC) in view of D16."
• The Board: " By reasoning in this way, the opposition division appears not to have taken account of the assertion of the appellant that the "assumed" technical effect was not obtained over the whole claimed range and in particular at low amounts of thermoset, although the technical effect of the distinguishing features clearly is of crucial importance when inventive step is to be assessed. Incidentally, the board wishes to point out that a finding of inventive step (or lack thereof) cannot be based on a mere assumption."
• The failure to consider the argument that no technical effect is achieved is a substantial procedural violation.
• The fact that the OD has not followed the problem-and-solution approach, is not a substantial procedural violation because the PSA is not mandatory. 
• The OD had also failed to engage with a second inventive step attack with a second document as CPA. "Once the opposition division had found the subject-matter of claim 1 to be inventive with respect to the teaching of document D16, it should have discussed inventiveness in respect of document D17. This discussion appears not to have taken place. According to the established jurisprudence of the boards of appeal, the mere presence of information somewhere in the file does not relieve a party of its duty to draw attention to it when necessary or to present arguments relying on such information at the appropriate time". The Board infers from the minutes that the opponent had the opportunity to comment and to draw the OD's attention to D17. Therefore, this is not a substantial procedural violation.

EPO T 0068/16 -  link

Reasons for the Decision

1. Violation of the appellant's right to be heard

The appellant argued that the opposition division had violated its right to be heard on three counts:

1.1 Document D17 not taken into account

Having received the summons to the oral proceedings before the opposition division, the opponent filed written submissions comprising two new documents, D16 and D17. It argued that the subject-matter of claim 1 was not inventive over document D16 and "not inventive over D17, but at least not inventive over a combination of documents D17 and D16 or D17 and D1" (see page 15 of the submissions of 7 October 2015).

T 0320/15 - Closest prior art and GL2018

Key points

• This decision was already published on 24.11.2016, but I missed it back then, and now it is in the Guidelines 2018 (G-VII, 5.1). 
• The Guidelines make this out of it:
  "Applying the problem-solution approach from different starting points, e.g. from different prior-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards. In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding (T 320/15, Reasons 1.1.2)." 
• The Board (in translation):  "The board notes that according to the problem-solution approach, the appellant should select, in a first step, the most promising document to arrive at the claimed invention. [...] Moreover, the structure of the problem-solution approach does not consist in a forum where the appellant can at will develop various attacks starting from various documents of the state of the art in the hope that one of them would have a chance to succeed. Therefore the second objection must also be rejected." 
• As first comment, the sentence in the GL that " Applying the problem-solution approach from different starting points [] is only required if it has been convincingly shown that these documents are equally valid springboards. " does not follow from T 320/15. 
• As a second comment, I am not sure whether the problem-solution-approach as developed in the case law is a valid legal basis for curtailing the right to be heard of Article 113 EPC.
• As a third comment, the next sentence of the GL says that "In the event of refusal or revocation [or revocation is added in GL2018], it is sufficient to show, on the basis of one relevant piece of prior art that the claimed subject-matter lacks an inventive step:there is no need to discuss which document is "closest" to the invention". How this is to be reconciled with T 320/15 is an interesting exercise.
  

EPO T 0320/15 - link

Edited machine translation from French:

Reasons for the decision

1. The right to be heard under Article 113 (1) EPC

1.1 The appellant [opponent] considered that the Opposition Division failed to respect his right to be heard for a number of reasons. First, the [appellant] submits that during the oral proceedings he only had the opportunity to explain why D4 was the closest state of the art without having had the opportunity to develop his argument according to the problem-solution approach. Secondly, the applicant did not, in his view, have the opportunity during the oral proceedings to present further attacks against the inventive step of the claimed subject-matter by considering other documents, such as D8 or product SIGRAFLEX UNIVERSAL V30010C1l (first public prior use), as the closest state of the art. Thirdly, in the written decision the reasoning of the Opposition Division in relation to the closest prior art D4 was based on arguments which had not been previously cited in the proceedings. Fourthly, again according to the applicant, the Opposition Division did not admit the series of documents D13 and D14 concerning an alleged second prior use, without knowing the relevance of the first prior use SIGRAFLEX and therefore without knowing whether this second previous use was more relevant than the first.

T 2101/12 - Non-technical features

Key points

• Catchword: "Article 54(2) EPC does not exclude non-technical disclosures from the prior art, in disagreement with Catchword 2 of T 172/03." 
• T 172/03, Headnote "  anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56" 
• The present decision makes me wonder what happened in T 172/03 to cause the Board in that decision to decide that disregard a prior art document, and to pronounce it as a rule in a headnote.
• The Board in T 172/03 was certainly not applicant-friendly and was in fact refusing a patent application for a business method. The written decision T 172/03 is however somewhat difficult to follow. In para. 5, the Comvik approach is briefly discussed. In para. 6, it is emphasized that the skilled person is a software engineer and not a businessman. In para. 7, this is connected to the Examining Division being composed of technically qualified Examiners. The core of the decision is however in para. 8. Therein, the Board disagrees with the ED, who took as closest prior art an existing "order placing mechanism", i.e. a known business method. The Board then recalls that in T 641/00 (Comvik), r. 2, it was said that the FR and DE version of Article 56 refer to (in English) that inventive step means that " if a skilled person cannot derive it in an obvious manner from the state of technology." The Board decides that the closest prior art is " a distributed information system comprising multiple general purpose computers at different locations and connected by a communication network". The distinguishing features are functional features, and the functional features of the claim are accodingly put in the "requirements specification" of the Comvik approach. The Board then finds that "the claimed technical solution does not go beyond the concept of a mere automation of constraints imposed by the business-related aspects. Such automation using conventional hardware and programming methods must be considered obvious to a skilled person." 
• In the present case, the Board starts from what it considers to be common general knowledge of what a notary does, and reasons that the way of automation specified in claim 1 is obvious. The Board cites no document evidencing the work procedures of notaries. "The board however observes that the appellant has at no moment disputed that the [notary work process] above is indeed common general knowledge." 
• As a comment, in the present case, claim 1 is apparently a 1:1 automation of a known business method. But perhaps a next time the business method is slightly adapted to the use of internet. The advantage of the normally used Comvik approach is that any business method features are put in the requirements specification, even if the (notional) business person has come up with a quite creative business method. I don't think that Comvik requires disregarding business method features of the prior art. Taking into account that a claim is not inventive if it is obvious from any document, it is not necessary to exclude "business method" prior art to say that a general purpose computer is the " closest" prior art (i.e. suitable starting point) for the problem-solution approach, more in particular for the Comvik approach. 

EPO T 2101/12 - link

6.3 Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. The notary in such a case has the function of a "trusted third party". It is considered well known, and has not been denied by the appellant, that the whole process in the notary's office would typically comprise the following steps:

(a) A notary receives a document, which will need to be signed, from its author;
(b) the notary authenticates the document, e.g. by providing it with a seal;
(c) the notary presents ("displays") the document to a signatory (not necessarily, and indeed typically not, the same as the author), so that the signatory can gain knowledge of the document's content before signing it;
(d) the signatory signs the document;
(e) the notary authenticates the document together with the signature, i.e. the notary authenticates the fact that the given document was signed by the given signatory, linking the document and the signature together.

6.4 The appellant has submitted, both in the response to the summons (under I.A.1(a)) and during the oral proceedings, that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03.

T 2245/12 - Why consult D2?

Key points

• In this examination appeal, the Board sets aside the refusal as being insufficiently reasoned.
• "Section 11 [of the decision of the ED] prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning." 
• " In section 11.5, [the ED] introduce document D2. The reasoning is apparently that the skilled person would consider [D2] because it "has already in the title an indication that a person should be included in the architecture" [] and because 'D1 and D2 are also both Philips patent applications'. There is however no explanation why a skilled person would look for prior art where a person is included in the architecture, nor why the fact that the applicant is the same for both D1 and D2 is relevant." 
• The lack of reasoning is a substantial procedural violation.

EPO T 2245/12 - link

Reasons for the Decision

1. The admissibility of the appeal

The appeal is admissible.

2. No reasoned decision; Rule 111(2) EPC

2.1 According to Rule 111(2) EPC, the decisions of the European Patent Office open to appeal shall be reasoned. The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first instance department (see inter alia T 34/90 (OJ EPO 1992, 454), headnote I, and G 9/91 (OJ EPO 1993, 408), reasons 18, for the inter partes case). A reasoned decision issued by the first instance department meeting the requirements of Rule 111(2) EPC is accordingly a prerequisite for the examination of the appeal.

2.2 Section 11 of the grounds for the appealed decision prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning.

2.3 Section 11.2 lists the differences between the subject-matter of claim 1 and the disclosure of D1:

[....]

2.4 Section 11.3 states that these differences have the technical effect that when a user leaves a home-domain, the device is not able to use the user-licenses anymore.
ISection 11.4 then concludes that the problem to be solved is how to prevent a user from losing rights he or she paid for. Such would however be a problem caused by the listed differences, rather than one solved by it, as would be required in the context of the "problem and solution" approach, which should in principle be used for the assessment of inventive step at the European Patent Office.

T 1761/12 - Interrelated features in the CPA

Key points

• From the headnote (informal translation): the argument of the opponent, that under the PSA does not foresee an assessment of the question whether or not the features of the closest prior art other than the distinguishing features would be maintained, is too formalistic.
  In particular, this proposed approach would deny the skilled person not only creativity, as is generally accepted, but also the ability to draw the consequences from the information that the prior directly provides.
  The problem-solution approach leads to an assessment of  what the skilled person would have undertaken to solve the at the outset defined objective technical problem, and only this one.
  Any additional reflections dealing subsequently with the relevance of the modifications which said analysis implies for the closest prior art [...], leads in fact to integrating into the initially defined objective technical problem elements of other problems to be solved [...]. Such an approach would therefore lead to an extension of the analysis beyond the framework defined by the PSA and must be rejected for this reason.
• In the present case, in the CPA document "O2", spikes were used with aluminium conductors (because of the oxide skin on Al). The distinguishing feature was using conductive ink instead of Al conductors. According to the Board, the skilled person would then also omit the spikes. In the patent, the spikes were present and this was therefore not obvious. The fact that in O2, the spikes had also a second function, is not relevant according to the Board. 

Headnote

La position défendue par l'intimée selon laquelle l'approche problème-solution développée par la jurisprudence des chambres de recours ne prévoit pas de s'interroger sur la nécessité de conserver ou non des caractéristiques non distinctives de l'état de la technique le plus proche apparait, trop formelle. En effet, au-delà du seul manque d'imagination généralement reconnu à l'homme du métier, cette approche semble également lui nier la capacité de tirer les conséquences d'une information que l'état de la technique lui procure directement. [...] L'approche problème-solution conduit à s'interroger sur ce que l'homme du métier aurait entrepris pour résoudre le problème technique objectif préalablement défini, et uniquement celui-ci. Toute réflexion complémentaire consistant à s'interroger, ensuite, sur la pertinence des modifications que cette analyse implique au niveau de l'état de la technique le plus proche, [...], conduit en réalité à intégrer au problème objectif initialement défini des éléments relevant d'autres problèmes à résoudre, [...]. Une telle approche conduirait donc à élargir l'analyse au-delà du cadre défini par l'approche problème solution et doit, pour cette raison, être écartée.

EPO T 1761/12 - link

Même si O2 souligne quel avantage supplémentaire la présence des pointes permet d'obtenir en termes de cohésion de la carte ainsi réalisée, (cf. O2a, paragraphe [0030]), cet effet ne saurait être pris en compte pour conclure au maintien des pointes de perçage. La position défendue par l'intimée, selon laquelle l'approche problème-solution développée par la jurisprudence des chambres de recours ne prévoit pas de s'interroger sur la nécessité de conserver ou non des caractéristiques non distinctives de l'état de la technique le plus proche apparait, à cet égard, trop formelle. En effet, au-delà du seul manque d'imagination généralement reconnu à l'homme du métier, cette approche semble également lui nier la capacité de tirer les conséquences d'une information que l'état de la technique lui procure directement. En l'occurrence, il est indiscutable que la présence de la couche d'oxyde et la nécessité de pointes pour la percer qui en résulte constituent un tout, découlant de l'emploi de conducteurs en aluminium. L'homme du métier aurait donc renoncé, dans la situation présente, à la présence des pointes, dès lors qu'il aurait décidé de renoncer à l'emploi des conducteurs en aluminium.

L'approche problème-solution conduit à s'interroger sur ce que l'homme du métier aurait entrepris pour résoudre le problème technique objectif préalablement défini, et uniquement celui-ci. Toute réflexion complémentaire consistant à s'interroger, ensuite, sur la pertinence des modifications que cette analyse implique au niveau de l'état de la technique le plus proche, comme en l'espèce la renonciation aux pointes de O2, conduit en réalité à intégrer au problème objectif initialement défini des éléments relevant d'autres problèmes à résoudre, comme ici, la nécessité de renforcer la cohésion mécanique de l'ensemble réalisé que permettent ces pointes. Une telle approche conduirait donc à élargir l'analyse au-delà du cadre défini par l'approche problème-solution et doit, pour cette raison, être écartée.