EP 2 434 850 B1 relates to input/output circuits and devices having physically corresponding status indicators.
Claim 1 of the patent defines that one (first) of the status indicators is placed directly adjacent to the terminal it is associated with, while the other (second) comprises a portion surrounding the opening of its associated terminal.
Brief outline of the case
The OD decided that claim 1 as granted contained added matter, as did claim 1 of AR1.
The patent was maintained according to AR2.
Both proprietor and opponent appealed.
As there was no added matter in claim1 as granted, and it was novel and inventive, the board set aside the decision of the OD and maintained the patent as granted.
The case is interesting in that it defines the objective technical problem (OTP) formulated in the context of the problem-solution approach (PSA).
The opponent’s point of view on IS
The opponent was of the opinion that the features distinguishing claim 1 from D7= EP 1 315 248 A1 were to be assessed separately as no synergistic technical effect was apparent.
Those were
- two status indicators displaying different statuses
- the second status indicator comprises a transparent or translucent portion which surrounds the terminal opening
Two status indicators
Regarding the two status indicators displaying different statuses, the opponent argued that if it were considered that both indicators in D7 displayed the same status, they could be seen as one status indicator corresponding to the second status indicator of claim of the patent.
In that case, the feature missing from D7 would be another (first) status indicator, adjacent to the terminal opening, which was capable of displaying a status which was different from the one displayed by the existing status indicator.
According to the opponent, the technical problem solved by this distinguishing feature was how to display a second status of the terminal in the I/O block of D7. The skilled person would have thus sought a position in the I/O terminal block to place a second indicator to display a second status.
Given the structure of the block, it would have been obvious to place an additional indicator next to the terminal, i.e. “directly adjacent” to the terminal.
The second status indicator surrounding the terminal opening
The opponent pointed to the description of D7, according to which the front face of the surface of the terminal block was curved and the purpose of having the two indicators 12 and 13 was to make them visible from both sides of the terminal block
It would thus have been obvious for the skilled person to increase the size of the indicators and if they wanted to improve visibility from all sides even further.
According to the opponent, in such a case, the combined indicators and would correspond to the second status indicator, while another status indicator, corresponding to the first status indicator of claim 1 would have been placed directly adjacent to the terminal, also in an obvious manner.
The proprietor’s point of view on IS
According to the proprietor, the distinguishing features provided a synergistic technical effect and should be assessed together for inventive step.
There was nothing in D7 indicating that the two indicators were capable of displaying different statuses. The opponent’s argument was based on hindsight. The description of D7 was also clear that the size of the two status indicators was limited and there was no motivation for the skilled person to extend any of them around the terminal opening.
The board’s decision
The parties did not agree whether or not these features provided together a synergistic technical effect over D7. For the sake of argument, the board assumed that the distinguishing features did not provide a synergistic effect and are to be assessed separately with regard to IS.
Two status indicator
The board did not follow the argument of the opponent, mainly because it does not accept the formulated technical problem. This formulation of the technical problem takes for a given that the skilled person wishes to display a second terminal status of the terminal in D7 and that the only problem is how to do that. However, there is nothing in D7 that indicates that there is a second status to be displayed.
D7 does not envisage the display of any second status different from the status it already displays. Hence, it cannot be accepted that the only problem the skilled person would be faced with is 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 where to place an additional status indicator.
The board considered that such activities go beyond what could be considered obvious for the skilled person in the present context.
The second status indictor surrounding the terminal opening
The board held that the formulated technical problem of improving the visibility of the status indicator is not related to the claimed invention. The terminal block of the claimed invention has no curved front face and the problem of rendering the indicators better visible from all sides does not arise.
In the present case, the terminal block of the claimed invention has no curved surface and there is no technical advantage related to the visibility of the status indicators from all sides.
The problem of improving the visibility of the status indicators concerns only D7 and the I/O block it describes, but is not a problem to be solved which relates to any technical effect the distinguishing features provide to the claimed invention with respect to the prior art. The board, hence, finds the opponent’s argument not convincing.
The board added that the OTP formulated in the context of the PSA 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.
Comments
In general, a patent can be considered as a technical solution to a technical problem, which can be considered as the “subjective” problem starting from a given piece of prior art known to the applicant. The “subjective” problem can, but not necessarily be to improve an existing prior art. Sometimes the “subjective” and the “objective” problem can coincide.
With a different piece of prior art, when applying the PSA, the notion of OTP comes into play.
In the present case, the board simply reminded that the OTP stems from the technical effect of the difference with the prior art and not from the mere wish of improving the prior art.
The opponent’s argumentation is a good example of ex-post facto argumentation. Without artificially bringing in an absence of synergy, the opponent’s argument would have failed from the outset.
Comments
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