Zusammenfassung von EPC2000 Art 056 für die Entscheidung T2465/19 vom 13.07.2023

In T 2465/19 there was agreement that, as set out by the examining division in the decision at issue, D1 represented the closest state of the art and that the subject- matter of claim 1 of the main request differed from D1 by feature i): "wherein the control contact region is spaced apart from the current shifting region so that the current shifting region is electrically isolated from the control contact region". The examining division found that D1 and the application solved the same (subjective) technical problem and that feature i) had no (additional) advantage or surprising/ beneficial effect and was therefore not important. The examining division further set out that the original description was not only totally silent about any such advantage or beneficial/surprising effect, but that a statement in the application indicated that direct contact between the current shifting region and the base contact region would not have much influence, supporting its view that feature i) was not important and rather represented an arbitrary modification. It concluded that an arbitrary modification of a known device having only disadvantages as compared to that known device could not justify an inventive step. The appellant accepted that D1 and the application had the common goal to reduce surface recombination. It argued that this did not prove, however, that the novel feature of the invention provided no advantage. The appellant further submitted that the disclosure of advantages in the description was not a requirement for inventive step, as long as such advantages were derivable from the application. The board accepted that the application did not explicitly mention any particular additional advantage or surprising beneficial effect. However, it found that contrary to the view of the examining division, feature i) could not be said to have only disadvantages with respect to D1 (closest prior art). Nor could this feature be said to be arbitrary. The board noted with reference to Headnote II of G 2/21 that the technical effect of an invention over the closest prior art need not be explicitly stated in the application, as long as it is derivable from the original application, in particular since the closest prior art may not have been known to the applicant when drafting it. The board found that the passage of paragraph [88] cited by the examining division did not support its view that feature i) was not important. The distinguishing feature i) did not represent an arbitrary modification of the device of D1 having only foreseeable disadvantages in the sense of section I.D.9.21.1 of the Case Law of the Boards of Appeal (10th edition, 2022), on which no acknowledgement of an inventive step could be based, but rather represented an alternative solution to a known problem as referred to in section I.D.4.5 of the Case Law of the Boards of Appeal (10th edition, 2022), having particular properties with respect to the solution known from D1. The board concluded that the subject-matter of claim 1 of the main request involved an inventive step within the meaning of Art. 56 EPC with respect to D1 as closest state of the art and combined with the common general knowledge of the skilled person.