Abstract on EPC2000 Art 056 for the decision T1623/21 of 25.05.2023

In T 1623/21 the board found the reasons of the appealed decision for showing that the subject-matter of claim 1 lacked an inventive step not convincing. Contrary to the examining division's view expressed in the appealed decision, overlaying information onto a received sensory work at a specific instance relative to the epoch time amounted to a technical task. Indeed, as explained by the applicant, the technical task underlying the playback method of claim 1 included identifying a source of the overlay information, controlling the communication of the network media player with the identified source of the overlay information, controlling the subsequent playback carried out by the network media player and defining a point in time at which the overlay was overlaid onto the sensory work. In view of the method steps referred to above, the board was not convinced that claim 1 only defined "non-technical display of information". To convincingly argue lack of inventive step, it was not sufficient to assert that the skilled person was aware of the underlying technology. It must also be shown that the skilled person had a clear incentive to apply the presumably known technology in a particular way, namely to arrive at the claimed subject-matter. At least some of the method steps of claim 1 were technical features having a technical content going beyond the mere display of information. Therefore, the technical content of these features should not have been ignored when assessing the inventive step of the subject-matter of claim 1. Rather, the assessment of inventive step should, in principle, have been carried out on the basis of the problem- solution approach, including the definition of an objective technical problem solved by the distinguishing technical features of claim 1. If the problem-solution approach was not used, the examining division should have explained the reasons for not using it, which they had not.