T 2211/18 10-12-2021

1. The appeal proceedings are governed by the revised version of the Rules of Procedure which came into effect on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), except for Articles 12(4) to (6) and 13(2) RPBA 2020, instead of which Articles 12(4) and 13 RPBA 2007 remain applicable (Articles 25(2) and (3) RPBA 2020).

2. Main request - claim 1 - Article 56 EPC

2.1 In the decision under appeal the examining division found that the subject-matter of claim 1 was obvious compared with a combination of the teaching of document D2 together with the common general knowledge of the skilled person, or with the teaching of document D9.

2.2 The appellants did not contest that document D2 was a suitable starting point for assessing inventive step, nor that the distinguishing feature of claim 1 with respect to the teaching of document D2 is that:

"the guide can be moved via a translating movement from a non-guiding position to a guiding position by means of an actuator, which actuator is disposed on the side of the second conveyor relative to the first conveyor".

The appellants did argue, however, in its statement of grounds of appeal, that the decision under appeal was incorrect as

- the examining division used hindsight in looking for a solution to the objective technical problem;

- the examining division provided no evidence of common general knowledge;

- the conveyor systems of D2 and D9 were not similar so that the teachings could not be combined;

- the examining division did not show what would prompt the skilled person to make the required changes to the system of D2.

The Board finds at least the following arguments of the appellants convincing for the reasons set out below.

2.3 Use of hindsight when assessing inventive step

2.3.1 It is well-established jurisprudence of the Boards of Appeal that the assessment of inventive step must be carried out from the viewpoint of a skilled person without knowledge of the invention (see Case law of the Boards of Appeal (CLB), 9th edition, 2019, I.D.6.). In the present case, the examining division used an

ex-post facto analysis to arrive at the claimed solution when it determined that an alternative diverter was required to solve the objective technical problem.

2.3.2 According to the examining division the objective technical problem was "to increase the speed of the product flow" (see the decision under appeal, point II.17.4). However, the examining division then found that the skilled person "would recognise that the bottle neck, for an increase in speed of the first and second conveyor, is the limitation resulting from the maximum pace of the diverter between its two working positions. The skilled person would therefore have to look for an alternative in the technical field of diverters" (see decision under appeal, point II.17.5).

The examining division has however not shown why the skilled person, in the absence of any knowledge of the invention, would have immediately determined that the provision of an alternative guide is required to increase the speed of product flow.

2.3.3 The Board follows the arguments of the appellants that the examining division has effectively taken the provision of an alternative guide as the objective technical problem to be solved. It is however established case law that the objective technical problem should not anticipate the solution, in order to avoid the use of hindsight (see CLB, supra, I.D.4.3.1).

2.3.4 Therefore for the combination of document D2 and common general knowledge, as well as the combination of the teaching of documents D2 and D9, the examining division used hindsight in finding that the subject-matter of claim 1 was obvious. Without the use of hindsight the skilled person would not have focused on the provision of an alternative diverter in order to solve the problem of increasing the speed of product flow.

2.4 Combination of the teaching of document D2 with common general knowledge

2.4.1 The appellants have argued that no evidence was provided by the examining division that demonstrated that the identified plurality of alternative diverters formed part of the skilled person's common general knowledge.

2.4.2 The examining division found that four types of diverters (pivoting, translating, lifting and lowering) were "well-known to the skilled person", whereby translating diverters allowed a quicker flow than pivoting diverters but were not as quick as lifting and lowering diverters, which were however more expensive and difficult to install in the system of document D2 (see the decision under appeal, point II.17.5).

The examining division then found that the provision of a guide moved via a translating movement was merely the choice of one from several straightforward possibilities, which the skilled person would select in order to solve the technical problem posed.

2.4.3 However, the Board again follows the arguments of the appellants that in the present case the objective problem to be solved, when starting from the system of document D2, is not to select a specific guide from a number of well-known alternative guides. Instead the skilled person is trying, without knowledge of the invention, to solve the problem of increasing the speed of product flow in the conveying system of D2.

Therefore it is not necessary to consider whether the various diverters mentioned by the examining division do form part of the common general knowledge of the skilled person.

2.5 Combination of the teaching of documents D2 and D9

2.5.1 It is well-established case law that in order to assess whether a claimed invention is obvious, the "could-would approach" is used, i.e. it must be considered not only whether the skilled person could have arrived at the claimed invention, but whether they would have done so (see CLB, supra, I.D.5.).

2.5.2 The examining division has not demonstrated why the skilled person would replace the guide of D2 with a guide known from document D9.

In the decision under appeal no passages of document D9 have been cited which indicate that a guide moved via a translating movement will increase the speed of product flow.

The appellants themselves made reference to a passage of this document, where it is disclosed that the guide allows the speed of unloading to be increased (D9, page 3, lines 12-19).

The Board however agrees with the appellants' conclusions that this passage does not indicate that the speed of unloading is increased due to the type of guide used, but rather that it is due to the angle of the guide with respect to the rotary platform and the unloading conveyor. Therefore the Board follows the appellants' arguments that document D9 does not contain any teaching regarding an improvement in speed of product flow when using a guide moved by translating.

2.5.3 The examining division found that, due to the closeness of articles on the rotating table of D9, a pivoting diverter would not be suitable for use in that system and that therefore document D9 taught the advantages of translating diverters "with respect to interference with the flow of articles on the first conveyor" (decision under appeal, point 17.6).

The Board cannot follow this reasoning and agrees with the appellants that the suitability (or not) of a pivoting guide for the system of document D9 cannot be understood as teaching the skilled person that a pivoting guide in the system of document D2 should be replaced with a translating guide.

2.5.4 As there is no indication given in document D9 that a guide moved by translating movement would solve the problem of increasing the speed of product flow, the skilled person, without prior knowledge of the invention, would not replace the pivoting guide in the system of document D2 with the guide of document D9.

Thus, it is not necessary to consider whether or not the skilled person could combine the teachings of documents D2 and D9, as the examining division has not shown that the skilled person would combine them.

2.6 The Board therefore finds the appellants' arguments regarding the incorrectness of the decision under appeal convincing and finds that the subject-matter of claim 1 is not obvious with respect to a combination of the teaching of document D2 with either the common general knowledge of the skilled person or the teaching of document D9.

3. Remittal

3.1 It follows from the above that the sole ground for the refusal set out in the decision under appeal does not hold and the decision cannot be upheld.

The Board notes that in the present case it is not clear whether a complete examination with respect to the requirements of the EPC for all claims has been carried out by the examining division.

The findings in the decision under appeal relate only to inventive step of claim 1. The examining division did not make any reference to other requirements of the EPC in the decision under appeal, therefore no explicit decision has been taken with respect to matters such as clarity or added subject-matter.

During the examination proceedings objections were raised under Articles 84, 76(1) and 123(2) EPC, it is unclear whether the examining division was satisfied that these objections had been overcome by the amendments made and that the amendments did not give rise to any further objections. In the light of the examining division's decision that the subject-matter of claim 1 was not inventive, there was no obligation to assess the amended claims for compliance with any further requirements of the EPC.

Therefore, even if, as in the present case, a decision was taken only on objections raised relating to inventive step, this cannot be understood as an implicit decision of the examining division that all other requirements of the EPC have been fulfilled.

3.2 Pursuant to Article 111(1) EPC, the Board may continue with the examination, or may remit the case to the examining division for further prosecution. According to Article 11 RPBA 2020, a Board should only remit cases for further prosecution if special reasons present themselves.

The existence of such special reasons has to be assessed on a case-by-case basis, bearing in mind the primary object of the appeal proceedings, i.e. the review of the decision under appeal in a judicial manner (Article 12(2) RPBA 2020).

It is established case law that if essential questions regarding the patentability of the claimed subject-matter have not been examined and decided upon by the examination division then special reasons exist and the case can be remitted. See, for example, T 1966/16, Reasons 2.2.

In the present case, in view of objections raised during the examination proceedings, it is not clear to the Board, whether all further requirements of the EPC were in fact deemed fulfilled by the examining division.

The Board therefore judges it appropriate to remit the case to the examining division for further prosecution according to Article 111(1) EPC.