Résumé de EPC2000 Art 056 pour la décision T1001/18 du 10.10.2022

In T 1001/18 the invention related to a coin token assembly for use in a vending machine dispensing coin tokens. The board found D3 to be the most suitable spring- board for the problem and solution approach, whereas the impugned decision relied on D1 as the closest prior art. The board found that D1 had a completely different purpose to that of the present invention. The main difference between the claimed invention and D3 was that the coin tokens were made of plastic having a thickness of 0.5 to 4 mm, rather than paper. The technical effect disclosed in the originally filed application was that the tokens could be counted by weighing. None of the cited documents D1 to D4 disclosed any other effect related to the use of plastic coin tokens. The board stated that since the problem and solution approach defines the problem based on the effect of the differences from the closest prior art, and the effect is derived primarily from the disclosure of the invention, the effect documented in the present application documents alone was taken as the basis for the problem formulation. The board concluded that any further, undocumented effects would be speculative and should not be additionally included in the problem formulation (with reference to T 495/91, point 4.2 of the Reasons, as well as to the "Case Law of the Boards of Appeal of the European Patent Office", 10th edition, 2022, I.D.4.2.2). Consequently, the problem was formulated as "modifying D3 such that a supply of used coin tokens can be counted in simple manner". Considering obviousness, the board found the paper coins in D3 were not suitable for counting by weighing and D3 did not give any hint either to count the tokens by weighing or to use another material (e.g. plastic) instead of paper. Therefore, given the teaching of D3 alone, the skilled person would not have considered a count by weighing. While D2 taught that a token could be made of plastic in form of a coin, it did not disclose counting them by weighing, and so the board found the skilled person would have had no reason to replace the paper tokens of D3 by the plastic tokens disclosed in D2 in order to solve the objective problem. Furthermore, even if, for some reason, the skilled person had considered combining the teaching of D2 with the teaching of D3, this would not have led to the claimed invention. In summary, the board concluded the skilled person would have no incentive to modify the vending machine of D3 to make it suitable for dispensing plastic coins, which were suitable for counting by weighing. Therefore, starting from D3, the skilled person would not arrive at the combination of features (A) to (N). The board judged that, taking into account the available prior art, the coin tokens assembly of claim 1 involved an inventive step within the meaning of Art. 56 EPC. It therefore ordered the decision under appeal be set aside and remitted to the department of first instance with the order to grant a patent on the basis of claims 1 to 13 of the main request submitted during the oral proceedings.