Abstract on EPC2000 Art 056 for the decision T1246/21 of 14.07.2023

In T 1246/21 the appellant (patent proprietor) appealed against the opposition division's decision to revoke the patent. As an auxiliary measure, the proprietor requested that the patent be maintained on the basis of claims according to one of the auxiliary requests filed with the statement of grounds of appeal. The board agreed with the opposition division's formulation of the objective technical problem starting from D3 (undisputed closest prior art) as finding an alternative for the image icons with increased resolution. As regards the application of the problem-solution approach, the appellant argued that in its strict application, the skilled person combining the teaching of D3 with that of D2 would arrive in a straightforward manner only at the provision of a protective layer over the focusing elements (as known from D3). However, there was no indication in either D2 or D3 or a combination thereof to use a protective layer which covered the focusing elements and also filled the interstitial spaces between them. Arriving at this feature would clearly involve hindsight. With respect to a combination of two documents, the proprietor argued that for some of the claimed features the documents provided no "direct and unambiguous disclosure" and that "[a]ccording to the problem-solution approach, if there is any remaining feature not taught by this combination, the subject-matter claimed has to be acknowledged to involve an inventive step". The board disagreed with this application of the problem-solution approach. In the fourth and final stage of the problem-solution approach it was to be considered "whether or not the claimed solution, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person" (Case Law of the Boards of Appeal, 10th ed. 2022, I.D.2). This was the stage most closely related to the requirement of Art. 56 EPC according to which "[a]n invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art". The board stated that since Art. 56 EPC and the final stage of the problem-solution approach both considered what was obvious to a person skilled in the art, an inventive step could not be acknowledged solely on the finding that the claimed subject-matter was not directly and unambiguously disclosed from the combination of two documents. In other words, when considering the question of whether an invention was obvious starting from a document representing the closest prior art in combination with another document, it was not the mere sum of the teachings of these two documents that had to be considered. An inventive step could not be acknowledged solely on the finding that the claimed subject-matter was not directly and unambiguously disclosed from the combination of two documents. The skilled person's common general knowledge and skills also had to be taken into account when combining the two documents. In the case at hand, D3 did not disclose that the protective layer filled interstitial spaces between and covered the focusing elements and formed a distinct interface between the first and the second materials, as discussed above. However, the board found that for the person skilled in the art considering the specific implementation of the protective layer taught by D3, it would be obvious not only to fill the concave parts of the lenses with material but also to cover the spaces between them in order to provide sufficient protection for the focusing elements. Otherwise, the boundaries between the filled portions and the protrusions would act as points of attack for harmful environmental conditions, as would be readily apparent to the skilled person. In addition, in view of the required relationship between the refractive indices, it would be clear to the skilled person that the protective layer would necessarily have to be formed without an additional intermediate layer and would therefore also form a distinct interface with the first material. In conclusion, the board was of the opinion that the subject-matter of claim 1 did not involve an inventive step starting from D3 in view of D2. The patent proprietor's arguments with regard to the remaining auxiliary requests were also unsuccessful for reasons of lack of inventive step, added subject matter and clarity, and the board dismissed the proprietor's appeal.