9.21. Beispiele für die Verneinung der erfinderischen Tätigkeit

In T 2412/22 the invention related to continuous learning of a deep learning model for a specific autonomous vehicle and the appeal lay from the decision of the examining division to refuse the application for lack of inventive step over D1. In its communication the board indicated to the appellant that it tended to agree with the examining division that all differences were obvious starting from D1.

The appellant argued that the examining division's (and the board's) analysis was ex post facto. Without knowledge of the invention the skilled person had no reason to modify D1 in a way so as to arrive at the claimed invention. D1 and the claimed invention were conceptually different and pursued different objectives. The claimed invention focused on continuous learning for a specific autonomous vehicle, the model retrained with specific video data and stored in a library for efficient fine-tuning. The selection step ensured the proper model was selected and updated. In contrast, D1 focused on real-time adaptation, where a (single) generic stock model was adapted to a driver on the vehicle itself during operation of the vehicle. The appellant disputed that storing a stock model implied a library, and even if that were the case, there was no need for a selection step from a "library" with a single entry.

The board noted that the appellant's description of the invention differed from the claimed invention, which was broader and less detailed. The continuous learning aspect was not part of the claim, and the library's content was not defined as dynamic. The selection of a model from the library was broadly formulated, including methods such as basing selection on vehicle type alone. The claim therefore covered providing a deep learning model to an autonomous vehicle based on a static library, where a managing device selected and retrained a model using vehicle video data before transmitting it to the vehicle. Although the library might not be strictly necessary, it was something that the person skilled in the art would certainly consider.

For inventive step, however, the question was not what D1 disclosed, but how the person skilled in the art would modify it, e.g. in order to improve it. In general, the person skilled in the art would consider well-known alternatives and in the case in hand the board was convinced that the person skilled in the art would consider the alternative of performing the adaptation on a central server rather than onboard the vehicle. It concluded that the person skilled in the art would arrive in an obvious manner at subject matter falling within the scope of the claimed invention. Therefore, claim 1 of the main request lacked inventive step.

With regard to the auxiliary requests, the appellant had also submitted that to arrive at the invention starting from D1 a number of modifications were needed. There was no reason for the person skilled in the art to perform all of them. The added features, in particular in the fourth auxiliary request, further increased the already large number of differences over D1.

The board remarked that the number of differences over a certain piece of prior art was neither decisive nor a reliable indicator for the presence of an inventive step.

First, the number of differences itself might be deceiving. One modification might imply or make obvious several other differences. For instance, as in the case in hand, performing the computations on a server instead of on the user vehicle, implied data transmission, and with it a host of other associated "differences" which might or might not be specified in a claim, like an antenna, a transmission protocol, etc. A library implied storage, indexing, a retrieving mechanism and so forth. Also, in complex systems it was very easy to accumulate a large number of individual differences while simply considering the different options available to the person skilled in the art.

Secondly, whether several modifications combined to provide an inventive overall contribution did not depend on their number. For instance they might be obvious solutions to independent, "partial problems".

Ultimately, the board held that the claimed invention had to contain a (new and) non-obvious technical teaching, which it did not see reflected in any of the requests on file. The abord thus concluded that the auxiliary requests, as the main request, were not allowable for lack of inventive step.