4.1.1 Critères objectifs

In T 1523/23, the invention concerned a display with reduced colour shift. Regarding feature M1.7 of claim 1 of the main request, the board noted that, for a given display, it was not apparent what the target colour was. Consequently, it was also not apparent whether a colour shift had occurred and whether it was reduced by the choice of the heights of the two uneven-structure-forming regions. The board found this feature attempted to define a technical effect of the manufacturing process in a claim directed to an individual display, which cannot limit the claimed product.

The board explained that under the problem-solution approach, a technical effect can only be taken into account if it is achieved by the claimed subject-matter. In the present case a technical effect achieved by the manufacturing process could not be relied upon when assessing inventive step of the display of claim 1. Even if the process produced an ensemble of displays whose standard deviation from the mean (target) colour was reduced, for an individual display neither the target colour nor the deviation or reduction thereof was recognisable..

The patent proprietor (respondent) contended that a technical effect need not be directly derivable from the claimed subject-matter, referring to decisions T 648/88 and T 1089/15. Those cases showed that a technical effect achieved by an inventive chemical process may be relied upon when assessing inventive step of a new intermediate product occurring in that process. It was therefore argued that, for a new product with distinguishing features, one could rely on effects of the improved manufacturing process, without requiring the effect to be directly produced by the claimed product.

This argument did not persuade the board in substance. The cited decisions concerned inventions in the field of chemistry, where the inventive concept lies in a new and non-obvious reaction pathway whose non-obviousness can "carry over" to intermediate products. The present invention, by contrast, concerns a display device, viz. a physical artefact, as the end product of a manufacturing process, not an intermediate compound in a chemical process. The proprietor had not shown why the relationship between manufacturing method and physical end product was comparable to that between a chemical process and an intermediate product. These relationships are fundamentally different.

The board stated that the chemical case law invoked by the proprietor did not establish a general rule that a new (within the meaning of Art. 54 EPC) product made by an inventive process is itself inventive. This would contradict established case law and examination practice on product-by-process claims. It held that the inventiveness of the present display could not be inferred from the alleged inventiveness of the manufacturing process, which was neither claimed nor examined..

For these reasons, the technical effect of a reduction in chromaticity deviation was found to be a feature of the manufacturing process or of an ensemble of displays. It was not produced by the distinguishing feature of claims 1 and 6 and therefore could not be taken into account. The objective technical problem of claim 1 was therefore to provide a display with an alternative mixed colour.

In T 1632/22, In ex parte case T 1632/22, the application related to liveness detection in relation to authentication, e.g. when unlocking a phone based on a face image. The application proposed to categorise the images as a function of their "quality" and to use different liveness detectors for each quality type. The examining division concluded there was a lack of inventive step over D1 (face authentication).

With an amendment in substance to define the quality parameter used to define the quality type, the new feature of claim 1 was not disclosed in D1. The board saw only two differences between claim 1 and D1 which might support the presence of an inventive step, namely that the claimed method was used for liveness detection and that it considered also quality parameters other than those disclosed for the "specialized classifiers" of D1. For the appellant, D1 did not qualify as the closest prior art as it was concerned with authentication rather than with liveness detection.

In the board’s view, the novelty requirement provides that no patent can be granted for anything that is already known. The inventive step requirement raises the bar to a patent by also excluding matter which is obvious over what is known. That which is obvious to the skilled person cannot depend on anything that the skilled person does not know yet. In particular, what is obvious at the filing date of a patent application cannot depend on the content of that patent application. Conversely, an argument that a skilled person having regard to some piece of prior art will find something to be obvious cannot be rebutted on the basis of what the application says. In particular, the application cannot be invoked to limit the prior art under consideration or the expertise of the skilled person (their "art") on the basis of the stated "field of the invention". That essentially any piece of prior art can be considered in an inventive step analysis has been stated several times in the case law. The definite articles in the phrase "the person skilled in the art" in Art. 56 EPC are not meant to limit the relevant "arts". Any successful rebuttal of an inventive step objection must address the obviousness argument directly, without reference to the application.

It is a matter of efficiency when assessing inventive step to consider only persons skilled in arts related to the claimed invention, and, consequently, only prior art which such a person may have regard to. The board considered that a person skilled in some art may well have regard to prior art from a field which is not, in a narrow sense, their "own field". It is reasonable to assume, for instance, that persons skilled in one field will typically keep themselves informed about developments in related fields, and in this sense have regard to prior art in related fields. The board disagreed with T 646/22 and held that in principle, all problems which the skilled person would have addressed (or been asked to address) based on the prior art alone are valid ones. In the present case, the board assumed a person skilled in liveness detection methods. Such a person was, generally, interested in improving, or finding alternatives to, known liveness detection methods, based on the knowledge that known methods have known pitfalls. Liveness detection for authentication and authentication were closely related technical areas. The board noted that it was typical to try adapting developments in neighbouring fields to the own area of interest. It was certainly common practice in image processing, in particular when the images were of the same type. Thus, in the board's judgement, the person skilled in the art in liveness detection would have regard to D1 and would have reason to adapt its solution to liveness detection in a way leading to the invention according to claim 1 of the main request before the examining division. The current requests differed from that request ("quality parameter").

Finally, the board noted that during examination a relatively large number of documents were cited, some of them concerned with liveness detection, but were not discussed in the decision. A positive decision on inventive step could not be issued before at least these documents have been discussed (Remittal).

In T 646/22, the invention concerned input/output circuits and devices having physically corresponding status indicators. It followed from the conclusions on novelty that claim 1 as granted differed from D7 in that the two status indicators were capable of displaying different statuses and that the second status indicator comprised a transparent or translucent portion which surrounded the terminal opening (feature [1.9]).

The parties did not agree whether or not these features provided together a synergistic technical effect over D7. The opponent was of the opinion that the features distinguishing claim 1 from D7 were to be assessed separately as no synergistic technical effect was apparent. It would have been obvious to the skilled person to provide an additional status indicator in D7 to display a second status, if they so desired.

The board did not follow the opponent’s argument, mainly because it did not accept the formulated technical problem. The formulation of the technical problem took for a given that the skilled person wished to display a second terminal status of the terminal in D7 and that the only problem was how to do that. However, D7 did not envisage the display of any second status different from the status it already displayed. Hence, it could not be accepted that the only problem the skilled person would be faced with was how to display such a second status. In the board's opinion, in order to arrive at the claimed invention the skilled person when starting from D7 would first have to find a motivation for displaying a second status of the terminal, then to find a way to modify the described light sources such that they were capable of displaying different statuses and would only then have to start contemplating here to place an additional status indicator. The board considered that such activities went beyond what could be considered obvious for the skilled person in the present context.

Regarding feature [1.9], the opponent pointed to the description of D7, and argued that it would thus have been obvious for the skilled person to increase the size of given indicators if they wanted to improve visibility from all sides even further. The board did not follow the opponent in this respect, either. The formulated technical problem of improving the visibility of the status indicator was not related to the claimed invention..

The board stated that in the so-called "problem-solution-approach", the formulated objective technical problem should be one that corresponds to the technical effect obtained by the features distinguishing the claimed invention from the prior art. In other words, these distinguishing features should provide a technical advantage to the claimed invention that the prior art has not. In the present case, the terminal block of the claimed invention had no curved surface and there was no technical advantage related to the visibility of the status indicators from all sides. The problem of improving the visibility of the status indicators concerned only D7 and the I/O block it described, but was not a problem to be solved which related to any technical effect the distinguishing features provided to the claimed invention with respect to the prior art. The board, hence, found the opponent's argument not convincing.

The board proposed the following Catchword: The objective technical problem formulated in the context of the problem-solution approach should stem from a technical effect the distinguishing features provide to the claimed invention with respect to the closest prior art and not from a possible improvement of the prior art itself.