2. Stand der Technik

In T 1249/22 the application related to the development – including the training – of an analytical model (e.g. a machine learning model) and the deployment of the trained analytical model on a "compute engine" so as to process live incoming data. The examining division found that the independent claims of the main request lacked an inventive step in view of common general knowledge evidenced by D5.

D5 was a book comprising a collection of individual papers on grid computing, all from different groups of authors, referred to as "chapters" by the editors of the book. The appellant argued that D5 was not evidence of common general knowledge and that each of the chapters of D5 represented a separate piece of prior art; the examining division combined several distinct elements from these chapters without providing any reasoning. The board agreed with the appellant that each of the "chapters" represented a separate piece of prior art, as they appeared to be self-contained papers which did not build on each other, unlike chapters of a textbook. Definitions given in one of these papers did not necessarily apply to the others. D5 rather resembled a conference proceedings volume including a collection of separate papers on a common topic. The mere fact that the papers were published in the same book with a single ISBN did not imply that the whole content of the book formed a single piece of prior art.

As to whether D5, or its individual chapters, were generally suitable as evidence for common general knowledge, the board noted that an allegation that a teaching was common general knowledge might be supported by specific evidence. The deciding body evaluates such evidence by applying the principle of free evaluation of evidence on a case-by-case basis (G 2/21). The board explained that while it might be relevant that the cited evidence was a "book" or a "textbook", this could not, on its own, be decisive, as no firm rules dictate which types of evidence are convincing.

The board further observed that information often appears in a textbook because it was common general knowledge when the book was drafted. However, this did not mean that all textbook content necessarily was common general knowledge or became so upon publication. In the decision under appeal, the examining division referred to Part G, Chapter VII, 3.1 of the Guidelines, in which it was stated that "[i]nformation does not become common general knowledge because it has been published in a particular textbook, reference work, etc.; on the contrary, it appears in books of this kind because it is already common general knowledge (see T 766/91). This means that the information in such a publication must have already become part of common general knowledge some time before the date of publication". The board noted however, that the cited decision T 766/91 only described what is "normally" accepted and what is "usually" the case. In a statement according to Art. 20(2) RPBA, the board explained that the Guidelines had lost this nuance when saying "must" in the passage cited above.

Regarding the examining division's reliance on chapters of D5 as evidence of alleged common general knowledge, the board considered the examining division's reasoning to be insufficient regarding what alleged common general knowledge it was relying on (R. 111(2) EPC). For instance, the examining division referred merely to the "known paradigm of message-based grid computing" without indicating which features of this paradigm were considered to be common general knowledge, despite appearing to rely on more than the knowledge of the existence of that paradigm when considering that all the features relating to the processing pipeline "form part of the common general knowledge of the skilled person".

Thus, the board concluded that the first-instance decision was not sufficiently reasoned within the meaning of R. 111(2) EPC. The case was remitted to the examining division for further prosecution under Art. 111(1), second sentence, EPC and Art. 11 RPBA and the appeal fee was reimbursed under R. 103(1)(a) EPC.