Zusammenfassung von Article 056 EPC für die Entscheidung T1078/23 vom 23.05.2025

In ex parte case T 1078/23, the decision of the examining division refused the European patent application for, at least, lack of inventive step; the examining division considered prior-art document D1 "to be the prior art closest to the subject-matter of claim 1". The appellant submitted that document D1 failed to disclose at least feature (c) of claim 1. So, document D1 – in spite of belonging to the same technical field as the present application – was not an appropriate starting point; the skilled person would rather choose document D5. In the board’s view, the appellant's argumentation was not convincing. First, the board considered, in agreement with T 787/17, T 967/97, T 1112/19, T 449/23, and contrary to e.g. T 2057/12, T 2759/17 or the conclusions drawn in the first-instance decision of the Unified Patent Court UPC_CFI_1/2023 of the Central Division Munich (point 8.6), that no specific justification for the choice of a starting point for the assessment of inventive step is necessary if inventive step is to be denied, since the claimed subject-matter must be inventive over any state of the art according to Art. 56 EPC. Moreover, it is not the task of the skilled person, who is the person qualified to solve the underlying objective technical problem according to the problem-solution approach, to "choose a document as the closest prior art" (see e.g. T 1450/16). Selection criteria such as the "intended purpose" of the claimed subject-matter thus constitute merely a matter of efficiency for the deciding body. The board added that a selected starting point might indeed turn out to not be suitable for denying inventive step if, for example, the resulting objective technical problem formulated on the basis of that starting point was an unrealistic or artificial one. But this did not mean that a starting point was to be disqualified as unsuitable right from the outset. Nor was it relevant in that context whether other pieces of prior art, such as document D5, were "relatively closer" to the claimed subject-matter, as argued by the appellant. Document D1 belonged to the application's technical field; specifically it disclosed features (a) and (b). The fact that D1 did not disclose feature (c), did however not preclude it from being an appropriate starting point for the assessment of inventive step.