EP 3 333 768 A1 relates to a method and apparatus for determining whether a target in a target image is a true target, thus detecting liveness of the target.
Brief outline of the case
The application was refused for lack of IS over D1 and the applicant appealed.
The board decided that the sole request left in appeal was not allowable, but decided to remit in that it noted that during examination a relatively large number of documents were cited, but not discussed.
The case is interesting in that the board made some general comments on the questions of the skilled person, the prior art and which technical problem to consider when IS.
The applicant ‘s point of view
For an IS objection to be valid only persons skilled in certain arts, specifically the arts addressed in the considered piece of prior art, and that only some prior art may be considered, namely ones addressing the same problem as that solved by the claimed invention. For the applicant the claimed invention is not obvious.
During OP, the applicant stated that D1 did not qualify as the CPA as it was concerned with authentication rather than with liveness detection.
The board’s decision
To lack IS it is not necessary for an invention to be obvious to anyone, it is sufficient for it to be obvious to a person with a degree of skill.
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 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 of the boards of appeal, see e.g. T 1742/12, reasons 6.6, T 1294/16, reasons 4 and 5, and T 261/19, reasons 2.5, and that the contents of the patent application cannot determine the obviousness analysis has also been observed in T 454/23, reasons 2.3, albeit in the context of what are appropriate technical problems to be considered.
The board also considered that the definite article in the phrase “the person skilled in the art” in Art 56 are not meant to limit the relevant “arts” but merely to express the idea that an invention already lacks an IS if it is obvious to a person with skills in the art of interest, as opposed to a person with no relevant skills.
Any successful rebuttal of an IS objection must address the obviousness argument directly, without reference to the application.
It is true, that for a person to find something obvious having regard to a certain piece of prior art, that person needs skills with some relation to the content of this prior art. It is also clear that for a person to find obvious the claimed invention, that person needs skills relating to it.
Accordingly, it is a matter of efficiency when assessing IS 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.
On this account, 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, his or her “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.
It remains to be answered what a skilled person, having regard to some prior art, finds obvious. The PSA as used at the EPO requires, for a finding of obviousness, a problem that the skilled person would address.
In the PSA the problem is derived on the basis of the difference between the prior art and the claimed invention. In the board’s view, this is an efficient way of producing an argument as to why the claimed invention might be obvious.
However, it must still be established that the so-derived problem is, in fact, one that the skilled person would have addressed based on the prior art alone. This is to avoid hindsight reasoning, but also to make sure that the problem is an appropriate one irrespective of what the application itself discloses.
The board considered that the problems derivable by comparison of the claimed invention with the prior are not the only ones that can “validly” be considered in obviousness analysis, and disagrees with the catchword of T 646/22 in this regard. 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.
This view appears to be consistent with the headnote 1 of T 1737/21 which considers that the skilled person would have addressed the problem of working out the details of the teaching of a prior art document.
Specifically, the present board considered that the skilled person might realise that a piece of prior art can help solve problems he or she must be assumed to be already aware of. In this situation, the problem addressed may not relate to a deficiency of the considered piece of prior art, but rather to the interests of the skilled person, and referred to T 1294/16, reasons 6.
Comments
The present board can be followed when it makes clear that the application under scrutiny cannot limit the prior art to be used and the “art” or “arts” to be taken into account.
When looking at case law, the art to be taken into account when assessing IS, it is possible to distinguish the following aspects.
– The specific field on the invention (S),
– Neighbouring fields to that of the invention (N)
– General fields of technology (G)
Reference can be made to T 32/81, OJ 1982,228, T 176/84, OJ 1986,50 or T 195/84, OJ 1986,121. Those decisions are rather old and go back to a period well before the establishment of the PSA to assess IS, but are still valid.
In T 488/16, the board held that the opinion of highly skilled experts on how a disclosure of a document is to be understood does not reflect the view of the notional skilled addressee, who is a person of ordinary skills aware of what is common general knowledge in the art at the relevant date. Experts give evidence based on their professional experience and expertise which is not common general knowledge and will have an influence on their way of reading the disclosure of a document
In T 646/22, commented in the present blog, 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.
It is thus difficult to follow the present bord when it disagrees with the catchword of T 646/22, when it states that all problems which the skilled person would have addressed (or been asked to address) based on the prior art alone are valid ones. This is rather the view of the BGH and of the UPC, not the view of the EPO. Having a plurality of problems possible, does not correspond to the definition of the OTP according to the PSA. According to case law of the boards, one way to show that the subject-matter of the claim lacks IS is enough. This is not the case at the BGH or the UPC.
The present board quoted e.g. BGH X ZR 60/19, Reasons 10, as well the UPC, UPC_CFI_501/2023, Reasons 1.b. Should the conclusion be drawn that the boards of appeal are going along with the BGH or the UPC? Let’s hope not. The UPC claims to follow the PSA, but it is not the PSA as applied at the EPO.
Comments
1 reply on “T 1632/22 – PSA – The skilled person – The prior art – The technical problem”
And there we have it: the UPC has fallen into the same trap as jurists all over the world outside Europe. Because the notion of “problem and solution” is so simple, they think they understand EPO-PSA even when they have no grasp of the laboriously established and sophisticated case law of the Boards of Appeal of the EPO. As the venerable saying goes “A little knowledge is a dangerous thing”. As true today as ever.
Or else they do understand it but are deliberately being disingenuous, letting themselves go with the UPC flow.
We have lived through a “Golden Age” of EPO jurisprudence. But now, perhaps members of various TBA’s are looking to their future, going the way the wind is blowing, and quietly auditioning for jobs with the UPC?