Zusammenfassung von Article 056 EPC für die Entscheidung T0610/24 vom 16.12.2025

In T 610/24 the invention in claim 1 concerned chemical pumps and their compatibility with chemical compositions. The examining division had considered document D5 to represent the closest prior art, which, the appellant argued, was concerned with a different purpose than the claimed invention, namely that of ensuring that the correct chemical was dispensed in the right container – a labelling issue rather than a compatibility issue. Nothing in D5 suggested analysing the chemical compatibility between the material of a pump or container and the chemical composition being in contact with such a material. Thus, the examining division had erred in its conclusion that D5 disclosed a chemical compatibility check between the chemical solution and the container. The appellant furthermore argued that, starting from D5, the skilled person would not have recognised the problem of chemical damage to the pump, and would therefore not have sought a solution to such a problem. The board agreed with the appellant that D5 does not disclose a compatibility check between a pump or container and the chemical composition that comes into contact with this component. Furthermore, the board considered that D5 does not disclose a pump at all. Accordingly, in order to arrive at the claimed subject-matter starting from D5, the skilled person would first have to add a chemical pump, then address the issue of chemical compatibility, and finally apply the automated compatibility check proposed in D5 for this purpose. Even if each of these steps were known or individually trivial, a motivation would still be required for the skilled person to modify the prior art in the claimed manner. The board could not identify such a motivation when starting from D5 as the closest prior art. The above raised the question whether D5 was an appropriate starting point for the assessment of inventive step. The board referred to the established case law on the problem-solution approach that the "closest prior art" should normally be a document that is directed to the same purpose or aims at the same objective as the claimed invention and that has the most relevant technical features in common, i.e. requiring the minimum of structural modifications. The board noted that while it is not mandatory to start from the strictly closest prior art when arguing a lack of inventive step, it is nevertheless recommended to start from prior art having a similar purpose and overall technical effect. Starting from a more remote document often leads to an ex post facto analysis, in particular to the formulation of a "hindsight problem" – a problem that the skilled person would not have realistically conceived. In the present case, the board found that D5 neither pursued the same purpose nor disclosed the structurally most significant component – the pump – which was a prerequisite for the technical problem addressed by the invention to arise at all. In the board's view, a more suitable starting point would be a system comprising a chemical pump and addressing issues of chemical compatibility with the components of that pump. Such a starting point would require fewer structural modifications and would allow for the formulation of a more realistic technical problem, such as the automation of the compatibility check. The board could not rule out that a more suitable document addressing the problem of chemical compatibility of pump components existed. It appeared that this aspect had not been covered by the search. The search report indicated the field of search as IP class "G06Q", which relates to information and communication technology (ICT) specially adapted for administrative, commercial, financial, managerial, or supervisory purposes. This field does not encompass liquid pumps, let alone issues of chemical compatibility of pumps. The board noted that before granting a patent, the board of appeal, like the examining division, must ensure that the requirements for patentability are met (see G 10/93, point 3 of the Reasons). To that end, the relevant state of the art must be properly established. Since the search was incomplete in that it did not cover all the relevant aspects of the invention, the relevant state of the art had not been properly established in the case in hand. The board thus remitted the case to the examining division for further prosecution, including a search (Art. 111(1) EPC).