Abstract on EPC2000 Art 056 for the decision T1231/20 of 06.11.2023

In T 1231/20 the application aimed to provide a microcontroller with a more flexible configurability of a digital clock source that could be used as a system clock or as a clock source for peripheral devices or other uses. In order to achieve this aim, the microcontroller further comprised a multiplexer configurable to select the output clock signal of the numerical controlled oscillator (NCO) as an internal system clock, thereby providing a clock for the central processing core of the microcontroller. During the oral proceedings, the appellant (applicant) did not specifically question the board's analysis that NCOs were known in the prior art to have numerous advantages compared to analogue oscillators, or that the skilled person would, in order to achieve these advantages, consider the modification of the microcontroller disclosed in D5 (closest prior art) by using an NCO as disclosed in D6. However, the appellant defended the point of view that the problem of making these advantages available to the microcontroller disclosed in D5 was an inappropriate objective technical problem to be considered, given the fact that the description of the present application set out a different problem addressed by the invention, viz. to fill in the gap between the binary-multiple frequency increases which could be achieved with analogue oscillators. This argument did not sway the board's opinion. Once a convincing argument had been made why the claimed invention would have been obvious to the skilled person having regard to the state of the art (Art. 56 EPC), the claimed invention would no longer be considered to involve an inventive step. More specifically, if the claimed invention were found to be an obvious solution to an objective technical problem which could be assumed to have arisen - as was the case in the appeal before the board - the identification of an alternative technical problem as a solution to which the claimed invention might not appear to be obvious did not suffice to invalidate the finding of obviousness. Especially the fact that the alternative technical problem was the one addressed in the application, i.e. the "subjective" technical problem, was insufficient to establish an inventive step. As the board summarised in its catchword: an inventive step objection based on an appropriate objective technical problem which the invention solves over the prior art cannot be overcome by mere reference to the fact that the application discloses a different, more specific ("subjective") technical problem addressed by the invention. The board consequently held that the subject-matter of claim 1 was not inventive (Art. 56 EPC) and dismissed the appeal.