Abstract on EPC2000 Art 056 for the decision T0302/19 of 21.12.2023

In T 302/19 the examining division considered claim 1 as being a straightforward automation of a known manual practice of a laboratory assistant. The board held that for such an argument to succeed, it should be clear what the alleged manual practice is, it should be convincing that it was indeed an existing practice at the relevant date and that it would have been obvious to consider automating it. It held that a clear description of the alleged manual practice - in particular of the concrete steps allegedly performed by a laboratory assistant - had not been sufficiently provided by the examining division. While it appeared to be uncontested that the trypan blue dye exclusion test was the basis of a common manual practice for assessing the viability of cells in a sample at the relevant date, the board was unconvinced, on the basis of the available evidence, that it was part of that practice, to determine the viability of any given cell by first attempting to determine it based on a first focus plane and, if the cell appeared to be dead on the basis of that first focus plane, to try again based on a second focus plane. The board considered that the quoted prior art D6 did not establish the existence before the relevant date of a manual practice as described by the examining division. It furthermore held, that automating the manual practice described in the prior art D10 would have been an obvious aim, but the skilled person would thereby not have arrived at the invention. According to the board, even consideration of the teaching of D6 in the course of devising an automated version of the manual practice described in D10 would not have led the skilled person to the invention.