9.19.10 Selection from obvious alternatives

In T 1072/07 the application related to an oxygen-fired front end for a glass forming operation. The prior art documents proposed two possibilities for solving the problem of choosing the fuel for the burners and thus two types of burners, an air-gas fired burner or an oxygen-gas fired burner. The board concluded that to solve the problem (how to select a suitable type of burner), the person skilled in the art had to make a choice between two well-known possibilities. Either choice, which in a particular situation would be based on balancing the advantages of the specific type of burner being selected, such as efficiency in its operation, with its disadvantages, such as technical adaptations required and costs involved, was obvious, since the types of burner to be chosen from were well-known.

In T 1045/12 the appellant (applicant) argued that the solution to the objective technical problem taught by D3 was one of several, equally likely options and that the board had to provide a reason why the skilled person would have selected the claimed option. The board disagreed. The fact that there were other options had no bearing on the obviousness of one specific option. Furthermore, if all options were equally likely, then the invention merely resulted in an obvious and consequently non-inventive selection among a number of known possibilities.

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