Brief outline of the case
The invention relates to a coin token assembly for use in a vending machine dispensing coin tokens. The assembly consists of a number of mutually distinguishable tokens, wherein mutually adjacent tokens are connected to each other in a manner such that they are ordered in mutually separable manner relative to each other. The tokens are separated along a notch that is created in the assembly to define a coin.
The applicant appealed the ED’s decision to refuse the application for lack of IS.
Claim 1 of the MR is mainly based on claims 1, 2 and 3 as originally filed.
The case was remitted to the OD with the order to grant a patent on the basis of the documents, MR and amended description filed during the OP + original drawings.
The choice of the CPA and the effects resulting from the difference with respect to the CPA
The ED took D1=DE 39 41 286 as CPA.
The applicant and the board disagreed and considered D3=DE 933 956 as CPA.
The main difference between the claimed invention and D3 is that the coin tokens are made of plastic having a thickness of 0.5 to 4 mm, rather than paper.
The technical effect disclosed in the originally filed application in this regard is that the tokens can be counted by weighing, cf. page 3, lines 26 to 29 or §  of the A1 publication.
None of the cited documents D1 to D4 discloses any other effect related to the use of plastic coin tokens.
For the board, the PSA defines the problem based on the effect of the differences from the CPA, and the effect is derived primarily from the disclosure of the invention.
The effect documented in the application documents alone is 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.
The board referred to T 495/91 (reasons point 4.2), and “Case Law of the Boards of Appeal of the European Patent Office, 10th edition, 2022, section I.D.4.2.2: “an objective definition of the problem to be solved by the invention should normally start from the problem described in the application”.
Consequently, the problem was formulated as “modifying D3 such that a supply of used coin tokens can be counted in simple manner”.
The Board concluded further that, starting from D3 as the CPA, the skilled person would not arrive at the subject-matter of claim 1 without exercising an inventive step pursuant Art 56. Claims 2 to 13 depend upon claim 1.
This decision reminds that even when the CPA used when applying the PSA is different to that mentioned (or not) in the application as filed, the objective technical problem will be based on the effect of the differences with the CPA, but this effect is derived primarily from the original disclosure of the invention.
Any further, undocumented effects would be speculative and should not be additionally included in the problem formulation.
This satatement is important and any effect/advantage resulting from the objective technical problem when applying the PSA has to lie within the original problem and the advantages/effects the inventor though that his invention brought about.
Adding further effects/advantages in the original description going further than those originally disclosed would invariably lead to an objection of added matter.
In the absence of an effect, the objective technical problem is to find an alternative
In all the other cases, the objective technical problem is to produce the effect of the invention. This effect cannot be different from that originally disclosed.
Some of the amicus curiae in G 2/21 discussed in the present blog, considered that the formulation of the objective technical problem could lead to express a different effect(s) to that (those) mentioned in the original application.
The present decision reminds that this cannot be the case.
The board’s considerations also help in the choice of the CPA. The skilled person would not take as CPA a document in a domain which is foreign to that of the invention, even if said document had the most features in common with the claimed invention.