Zusammenfassung von Article 056 EPC für die Entscheidung T1109/24 vom 05.09.2025

In T 1109/24 the board noted that while it was sometimes stated that the proper question to be answered when assessing inventive step was not whether the skilled person could have modified the closest prior art to arrive at the claimed invention but whether they would have done so, the "would" question presupposed that the "could" question was answered in the affirmative. It was often easier to establish that the skilled person could modify the closest prior art to arrive at the invention than to show that they would have done so. The "could" question could not, however, be ignored in cases where there was not self-evidently a realistic path or "workable route" from the starting point to the claimed invention, as would be the case if the distinguishing features could not reasonably be combined with the closest prior art to obtain the claimed invention. The board found that in such a situation, the invention was not rendered obvious by that prior art and the question whether the distinguishing features achieved a technical effect over the closest prior art was essentially meaningless. In the present case the board did not see how the skilled person could modify the system disclosed in document D1 to arrive at the claimed invention without fundamentally departing from the essential teaching of document D1, i.e. there did not appear to be a realistic path from document D1 to the invention. The contested decision was silent on this point. Therefore, the subject-matter of claim 1 was not rendered obvious by document D1 alone (Art. 56 EPC). Neither was the system of claim 1 rendered obvious by document D2 or by the combination of documents D1 and D2, either.