3. Nächstliegender Stand der Technik

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).

In T 1719/21 there was a focus on the extent to which commercial, non-reproducible products – particularly ENGAGE® 8400 – could belong to the closest prior art in the light of G 1/23 for the purposes of inventive step.

An object of the present invention was to provide an encapsulating material for a solar cell having excellent insulating properties. D11 was concerned with the same objective. Responding to an argument by the respondent submitted before issuance of G 1/23 that the example of D11 using a commercial polymer did not represent an enabling disclosure, as information on the physical properties of that polymer was missing and its synthesis was not described, the board noted the Enlarged Board in G 1/23 had rejected an interpretation of G 1/92 according to which a non-reproducible but otherwise existing and commercially available product would not belong to the state of the art. The respondent’s view that it would be unrealistic and necessarily contaminated by hindsight to assume that a skilled person would start from a non-reproducible polymer was thus as a principle not accepted by the board. The exemplified encapsulating material described in D11 belonged to the state of the art and represented a suitable starting point for the skilled person aiming at providing an encapsulating material for a solar cell having excellent insulating properties.

The appellant objected in addition that the subject-matter of claim 1 of Auxiliary Request 2 lacked an inventive step over the disclosure of D4 (ENGAGE® 8400) taken as the closest prior art. As with D11, the respondent had contested before the issuance of G 1/23 that the commercial product ENGAGE® 8400 was not enabled and thus should not be considered to have been made available to the public within the meaning of Art. 54(2) EPC. In view of decision G 1/23, however, the board found that ENGAGE® 8400 and all its analysable properties and structure did belong to the state of the art. The product was physically accessible, irrespective of whether or not particular reasons could be identified for analysing its composition and structure, also if the skilled person would not have been in the position to reproduce it on their own (see G 1/23, point 91 of the Reasons).

The respondent submitted that the Enlarged Board in G 1/23 had expressed serious concerns whether a product such as ENGAGE® 8400 could represent the closest prior art, despite the fact that this product and its analysable properties belonged to the state of the art within the meaning of Art. 54(2) EPC. It cited in particular point 47 of the Reasons: "When applying the problem-solution approach, it may well be a plausible argument that the skilled person faced with the objective technical problem of manufacturing a product with similar properties cannot be assumed to depart from the product ENGAGE 8400 because its method of manufacture is not in the public domain. It can be argued that a skilled person would turn to some other starting point, purely as a question of identifying the theoretical "closest prior art".

The board did not agree with the respondent’s interpretation of G 1/23. Reasons 45 to 48 of G 1/23 were concerned with the reproducibility requirement establishing a legal fiction and the analysis therein lead the Enlarged Board to the conclusion that the fiction of the exclusion of a product from the state of the art in view of the reproducibility requirement should be treated with serious reservations. The scope of the sections of G 1/23 relied upon by the respondent was to show that the assumption that a commercially available product was legally non-existing was artificial and manifestly contradicting notorious facts. The Enlarged Board expressly rejected the position that a non-reproducible, but otherwise existing and commercially available product, does not belong to the state of the art, as this interpretation leads to an absurd result and therefore cannot hold. ENGAGE® 8400 was taken as an example of a commercial product for the purpose of the reasoning. This, the board in the case in hand stated, was accidental due to the fact that ENGAGE® 8400 was also the product considered in the referring decision (T 438/19 of 27 June 2023)..

Moreover, the board did not agree that a non-reproducible, but commercially available, product or a product difficult to reproduce could not constitute a promising starting point for evaluating the existence of an inventive step. When selecting a promising starting point for an invention, the skilled person will take into account relevant technical information on products put on the market. The Enlarged Board ruled that such technical information made available to the public before the filing date forms part of the state of the art within the meaning of Art. 54(2) EPC irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date (G 1/23, Headnote II). What needs to be modified, however, is part of the inventive thinking of the skilled person in order to solve the problem addressed, not a consideration concerning the selection of that starting point.

Im Fall T 95/23 ging es um eine Durchgangsschleuse mit einem Eingang und einer Ausgangstüre, sowie einem Display und einer Aufnahmevorrichtung zur Erfassung biometrischer Merkmale einer Durchgang begehrenden Person, die frontal gegenüber dem Eingang in der Ausgangstüre integriert sind. Die Beschwerdeführerin (Einsprechende) hatte Argumentationslinien vorgebracht, die von D1 bis D6 als nächstliegendem Stand der Technik ausgingen. Die Kammer befand, dass ausgehend von D1, D3, D2 oder D5 der Gegenstand des Anspruchs 1 jeweils erfinderisch sei. In Bezug auf D4 führte sie aus, dass sich der beanspruchte Gegenstand von der aus D4 bekannten Vorrichtung dadurch unterscheide, dass die Kamera und ein Bildschirm in die Türe integriert seien.

Die Beschwerdeführerin hatte zur Frage des Naheliegens argumentiert, dass die Fachperson von einem allgemeinen generischen Ausführungsbeispiel ausgehen würde, das nicht unbedingt zwei separate Ausgänge hinter den Türen (von D4 Figur 1) haben müsse. In D4 werde die Erfindung sehr allgemein dargestellt und insbesondere beschrieben, dass die Ausgänge zu Zoll/Sicherheitskontrolle bzw. direkt zum Flugzeug verschiedene, rein optionale Varianten seien. Folglich könnten beide Türen auch zu ein und demselben Raum führen. Die Fachperson würde die allgemeine Lehre der Dokumente D1 und D2 aufnehmen und kleine Kameras und Displays in den Türen integrieren. Die Beschwerdegegnerin hatte argumentiert, dass dies nicht möglich sei, weil dann eine zu schleusende Person nicht wisse, durch welchen Durchgang sie zu gehen habe, während sich in D4 nach der Kontrolle nur die "richtige" Türe abhängig vom Ergebnis der Zugangskontrolle öffne.

Die Kammer war der Meinung, dass die Fachperson die Lehre der D1 und/oder D2 zwar in Betracht ziehen, aber aus folgenden Gründen nicht implementieren würde.

Bei der Prüfung der erfinderischen Tätigkeit sollte vorzugsweise von einem konkreten Ausführungsbeispiel ausgegangen werden, da die Fachperson bei einem generischen und unspezifischen Ausführungsbeispiel noch zusätzlichen technischen Aufwand für eine spezifische Ausarbeitung dieses Ausführungsbeispiels aufwenden müsste. Bei dieser Ausarbeitung würde der Fachmann letztendlich doch wieder auf die konkrete Lehre der detaillierten Ausführungsbeispiele im selben Dokument zurückgreifen. Die Fachperson würde sich also in der Regel für ein detailliertes Ausführungsbeispiel als Ausgangspunkt für die Prüfung der erfinderischen Tätigkeit entscheiden (s. Orientierungssatz). Die Kammer analysierte das einzige in D4 in den Figuren gezeigte und in der Beschreibung behandelte spezifische Ausführungsbeispiel und kam zu dem Schluss, dass der Durchgang eher verlangsamt würde, wenn der biometrische Abgleich durch Kameras (und Bildschirme) in jeder der beiden Türen stattfände, da die zu kontrollierende Person nicht im Voraus wüsste, bei welcher der beiden Türen sie herausgelassen werde.

Ferner sei es nicht unbedingt ohne technische Schwierigkeiten möglich, eine Kamera und einen Bildschirm, wie sie in D1 (bzw. D2) gezeigt sind, in die schwenkbaren Türen (von D4 Fig. 1) zu integrieren. Die in D1 gezeigten Kameras seien in den Zeichnungen relativ voluminös dargestellt. Die Kamera könne zwar in ein Display integriert werden, zum relevanten Zeitpunkt der Beurteilung der erfinderischen Tätigkeit (Anmeldetag des Patents im Jahre 2009) seien jedoch Kameras und Displays noch deutlich voluminöser und schwerer gewesen als zum Zeitpunkt der mündlichen Verhandlung vor der Kammer. Die Türen von D4 ließen die Fachperson darauf schließen, dass es sich um rahmenlose Türen handele. Eine Befestigung von Kameras und Displays in solchen rahmenlosen Glastüren sei technisch nicht einfach. Die Kameras und Displays in D1 hätten einen anderen technischen Kontext (massive Türen) und seien nicht unbedingt für die in D4 gezeigten Türen geeignet..

In Anbetracht der komplexen Umsetzung und insbesondere in Anbetracht der spezifischen Ausführungen in D4, die bei einer Integration von Kameras/Displays in die Türen den Durchgang eher schwieriger machen würden als vereinfachen, würde die Fachperson von solch einer Lösung absehen, insbesondere, da Komplikationen und Konfusion an einem Flughafen vermieden werden sollten. Der Gegenstand von Anspruch 1 sei erfinderisch gegenüber D4 in Kombination mit D1 oder D2. Gleiche Argumente gelten ausgehend von D6.

In T 1632/22, In ex parte case T 1632/22, the application related to liveness detection in relation to authentication, e.g. when unlocking a phone based on a face image. The application proposed to categorise the images as a function of their "quality" and to use different liveness detectors for each quality type. The examining division concluded there was a lack of inventive step over D1 (face authentication).

With an amendment in substance to define the quality parameter used to define the quality type, the new feature of claim 1 was not disclosed in D1. The board saw only two differences between claim 1 and D1 which might support the presence of an inventive step, namely that the claimed method was used for liveness detection and that it considered also quality parameters other than those disclosed for the "specialized classifiers" of D1. For the appellant, D1 did not qualify as the closest prior art as it was concerned with authentication rather than with liveness detection.

In the board’s view, the novelty requirement provides that no patent can be granted for anything that is already known. The inventive step requirement raises the bar to a patent by also excluding matter which is obvious over what is known. That which is obvious to the skilled person cannot depend on anything that the skilled person does not know yet. In particular, what is obvious at the filing date of a patent application cannot depend on the content of that patent application. Conversely, an argument that a skilled person having regard to some piece of prior art will find something to be obvious cannot be rebutted on the basis of what the application says. In particular, the application cannot be invoked to limit the prior art under consideration or the expertise of the skilled person (their "art") on the basis of the stated "field of the invention". That essentially any piece of prior art can be considered in an inventive step analysis has been stated several times in the case law. The definite articles in the phrase "the person skilled in the art" in Art. 56 EPC are not meant to limit the relevant "arts". Any successful rebuttal of an inventive step objection must address the obviousness argument directly, without reference to the application.

It is a matter of efficiency when assessing inventive step to consider only persons skilled in arts related to the claimed invention, and, consequently, only prior art which such a person may have regard to. The board considered that a person skilled in some art may well have regard to prior art from a field which is not, in a narrow sense, their "own field". It is reasonable to assume, for instance, that persons skilled in one field will typically keep themselves informed about developments in related fields, and in this sense have regard to prior art in related fields. The board disagreed with T 646/22 and held that in principle, all problems which the skilled person would have addressed (or been asked to address) based on the prior art alone are valid ones. In the present case, the board assumed a person skilled in liveness detection methods. Such a person was, generally, interested in improving, or finding alternatives to, known liveness detection methods, based on the knowledge that known methods have known pitfalls. Liveness detection for authentication and authentication were closely related technical areas. The board noted that it was typical to try adapting developments in neighbouring fields to the own area of interest. It was certainly common practice in image processing, in particular when the images were of the same type. Thus, in the board's judgement, the person skilled in the art in liveness detection would have regard to D1 and would have reason to adapt its solution to liveness detection in a way leading to the invention according to claim 1 of the main request before the examining division. The current requests differed from that request ("quality parameter").

Finally, the board noted that during examination a relatively large number of documents were cited, some of them concerned with liveness detection, but were not discussed in the decision. A positive decision on inventive step could not be issued before at least these documents have been discussed (Remittal).

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.

In T 2463/22 the opposition division had held that the prior uses had not been proven beyond reasonable doubt (up to the hilt), in particular with regard to whether the products of the prior uses had actually been delivered. The parties before the board focused on which standard of proof had to be applied in view of G 2/21 and T 1138/20 and whether the applicable standard had been met. In the respondent-proprietor’s view, T 1138/20 was an isolated decision, not compatible with G 2/21.

On the required standard of proof, the present board observed that G 2/21 recognised that different concepts as to the standard of proof had been developed in the case law. According to T 1138/20 only one standard should be applied, namely "the deciding body must be convinced, taking into account the circumstances of the case and the relevant evidence before it, that the alleged fact occurred".

In the present board's view, under the principle of free evaluation of evidence, it was always decisive in the evaluation of evidence that the members of the deciding body were personally "convinced". Moreover, they had to always be convinced of whether, as stated in T 1138/20, "the alleged fact has occurred". The board stated this was true regardless of which standard of proof was applied. The standard of proof refers to the nature or degree of conviction that the members of the deciding body must have to be satisfied that an alleged fact occurred (see T 832/22).

According to the board, and with reference to a UK House of Lords decision, two important aspects had to be stressed. Firstly, that the standard of proof is related to the required degree of conviction of the members of the deciding body. Secondly, that it is not related to what is evaluated by the deciding body. Hence, also when a lower standard of proof such as the balance of probabilities is applied, the deciding body must assess whether or not the alleged fact indeed occurred. In other words, also when such a standard of proof is applied, the question is not whether the alleged fact might have occurred with some probability. The board considered G 2/21 (points 31 and 45 of the Reasons) consistent with this understanding.

The more specific question as to whether there was only a single standard of proof or more than one could be left unanswered according to the board. The board held that if the deciding body was convinced beyond reasonable doubt that an alleged fact had occurred, there was no need to decide how many standards of proof there were and which one was applicable (see T 832/22).

The board then gave some consideration to the assessment of factual allegations using the beyond reasonable doubt standard of proof. The European Patent Organisation being an independent international organisation, the board stated the standard had an autonomous meaning within this autonomous legal order. Secondly the board agreed with T 832/22 that it seemed expedient to focus on the term "reasonable".

The board then considered the prior uses, focusing especially on prior use relating to the sale of product 5 (sample of a powder mix from a specific lot number), the content of the sample and whether it was available to the public. In view of all the information (including invoices, affidavit, emails, test report, excerpt from database), which also involved evidence provided by a third party (the buyer), the board was convinced beyond reasonable doubt that product 5, with a specific lot number, was sold prior to the effective date of the patent. Since it had also been shown that product 5 disclosed all features of claim 1, lack of novelty prejudiced the maintenance of the patent as granted. Concerning the third auxiliary request, product 5 was suitable for use as closest prior art. The board referred to the reluctance sometimes in the case law to treat an object of a prior use as the closest prior art. Often, there was neither information on what the object did and what properties it had in the technical environment in which it was applied nor on how the process for its manufacture could be modified. These considerations indeed spoke against regarding a prior use as a suitable starting point for assessing inventive step. In the case in hand however, the skilled person was faced with a different situation. The board concluded that the third auxiliary request did not involve an inventive step. The decision of the opposition division was set aside and the patent revoked.

In T 356/22 the invention sought to provide dosage forms of pomalidomide having advantageous physical and pharmaceutical properties, amongst these being stability. Starting from the pomalidomide composition of claim 22 of closest prior art D1, the differentiating feature was the presence of both mannitol and starch. The decision under appeal was that of the opposition division finding that the patent in suit met the requirements of the EPC.

The respondent (patent proprietor) effectively considered that, since there were no stable dosage forms shown in D1 which could serve as comparator, the achievement of a certain level of stability independently of any comparison with the prior art could be taken into account for the assessment of inventive step. The board did not agree; the circumstances of the case did not justify that the respondent be exonerated from their burden to properly demonstrate that the purported technical effect of the claimed invention had successfully been achieved in comparison with the prior art. That the disclosure of D1 was generic in some respects did not mean that it was speculative or insufficient, nor allowed the assumption that the formulations of D1 suffered from a lack of stability. The mere fact that D1 did not contain any prepared and tested specific formulations of pomalidomide did not change this conclusion; for the purposes of inventive step, the teaching of the prior art is not limited to prepared and tested examples.

The board confirmed that an inventive step could be acknowledged to a selection if this selection was connected to a particular technical effect, and if no hints existed leading the skilled person to the selection. This however supposed that this particular technical effect was convincingly shown for the entire selected subset of formulations by a meaningful comparison with other formulations falling within the ambit of D1.

The respondent cited several decisions to support their view that, when the prior art was unspecific, the achievement of a technical effect per se could be taken into account for the assessment of inventive step. The board firstly noted that in all the cited cases, experimental data were presented in respect of a differentiating feature (citing T 1193/18, T 2342/19, T 2200/17, T 1126/19). But more importantly, the board did not agree that D1 was unspecific; the claimed active ingredient and two excipients were explicitly recited and part of a limited number of emphasised alternatives in D1.

It had to thus be assessed whether the evidence on file convincingly demonstrated that the selection was associated with a technical effect over the pomalidomide formulations of D1, and whether this effect credibly arose over the whole claimed scope. The board did not consider that the application as filed credibly demonstrated the technical effects of improved stability or improved suitability for clinical use for the claimed selected formulations in comparison with D1.

The problem to be solved was thus seen in the provision of an alternative pomalidomide oral dosage form. Since the claimed selection was not shown to be associated with any technical effect, the board found that this selection was arbitrary and did not involve an inventive step. The board noted that considering the problem was only formulated as the provision of an alternative, the lack of preference expressed in D1 for the features selected in present claim 1 did not establish an inventive step, because the chosen alternative was not shown to be any more suitable than the others considered in D1.