EP 3 716 698 A1 relates to a cross-carrier scheduling activation for a dormant cell.
Brief outline of the case
The ED refused the application for, at least, lack of IS with respect to a MR and 3 AR.
The board confirmed the refusal.
The case is interesting in that it deals with the choice of the CPA when IS is to be denied, and the fact that the board disagrees with a decision of the Munich CD of the UPC.
The applicant’s point of view
Claim 1 of the MR comprises three features (a), (b) and (c).
The ED considered D1 to be the be the CPA as it disclosed features (a) and (b).
The applicant submitted that document D1 failed to disclose at least feature (c).
D1, in spite of belonging to the same technical field as the present application, was not an appropriate starting point. Instead, “the skilled person would rather choose D5 as the CPA, since this document deals with the same technical purpose as the present invention”. Thus, to avoid hindsight, D5 should be used.
The boards decision
The board considered, in agreement with T 787/17, Reasons 5.1, T 967/97, Reasons 3.2, T 1112/19, Reasons 2.1.3, or T 449/23, Reasons 1.1.7, and contrary to e.g. T 2057/12, Reasons 3.2.2, T 2759/17, Catchword, or the conclusions drawn in the first-instance decision of the Unified Patent Court UPC_CFI_1/2023, point 8.6 (Sanofi/Amgen), of the Central Division Munich, that no specific justification for the choice of a starting point for the assessment of inventive step is necessary if IS is to be denied.
For the board, the claimed subject-matter must be inventive over any state of the art according to Art 56 and since it is not the task of the skilled person, who is the person qualified to solve the underlying OTP according to the problem-solution approach, to “choose a document as the closest prior art“, and referred to T 1450/16, Reasons 2.1.4.
Selection criteria such as the “intended purpose” of the claimed subject-matter thus constitute merely a matter of efficiency for the deciding body.
The board added that a selected starting point may indeed turn out to not be suitable for denying inventive step if, for example, the resulting OTP formulated on the basis of that starting point is an unrealistic or artificial one.
But this does not mean that a starting point is to be disqualified as unsuitable right from the outset. Nor is it relevant in that context whether other pieces of prior art, such as document D5, are “relatively closer” to the claimed subject-matter, as argued by the applicant.
Choice of D1 as CPA
The board held that D1 belongs to the application’s technical field and proposes a unified framework for configuration/activation/deactivation of CCs (Component Carriers) and BWPs (Band Width Parts) in NR (New Radio) systems.
The fact that D1 does not disclose the “dormant state”, i.e. feature (c), does however not preclude it from being an appropriate starting point for the assessment of IS. After all, both the present application and the system of D1 relate to CA (Carrier Aggregation) in NR.
For the board, the straightforward combination of D1 and D5 would lead to the subject-matter to claim 1 of the MR. The same applied to AR I-III, so that the refusal was confirmed.
Comments
Only one route needed to show a lack of IS
The present case makes it once more clear that when IS is to be denied it is only necessary to show that one document chosen as CPA and that the document alone, in combination with CGK or with another piece of prior art leads to a lack of IS.
It is nothing new that the CPA chosen might be further away from the claimed invention, and that another one might look “nearer”. What matters is the result. When IS is lacking on the basis of the chosen CPA, it is then not necessary to look for different realistic starting points.
When IS has to be acknowledged, it may be necessary to look at various ways in order to be sure that IS is present. In case of a very realistic starting point, it might as well not be necessary to look at different document which is more “away” fromthe invention as the chosen CPA. It clearly depends on the circumstances.
This approach is quite different from that of the UPC, which is clearly inspired by that of the Federal Court of Justice. Even when IS is denied, all possible combinations of documents brought forward by the parties are scrutinised. According to point 8.6 of the quoted UPC decision: There can be several realistic starting points. It is not necessary to identify the “most promising” starting point.
Other interesting decisions
In T 320/15, Reasons 1.1.2, it was held, that the structure of the PSA is not to be seen as a forum where a party can develop various attacks at will from various prior art documents, in the hope that one of them would have a chance of success.
In T 2401/17, the board admitted three IS attacks applying the PSA from three different CPA. In this case, the three attacks allowed to show that IS was given.
The present decision is in line with T 1654/22, commented in the present blog.
T 1450/16 and following decisions
T 1450/16, the board held that, in the application of the PSA for the assessment of inventive step, the skilled person only enters the stage when the OTP has been formulated in view of the selected “CPA”. Only then can the notional skilled person’s relevant technical field and its extent be appropriately defined.
Therefore, it cannot be the “skilled person” who selects the CPA in the first step of the PSA. The selection of the CPA is to be made by the relevant deciding body, on the basis of the established criteria, in order to avoid any hindsight analysis
In T 628/16, Reasons 9, the applicant requested the board to refer two questions to the EBA, as it considered that there were two approaches
- that in T 1450/16 and
- that in T 1841/11, T 2057/12 and T 1248/13, leaving the choice of the CPA to the “skilled person”
The board rejected this request.
Those two approaches were also discussed in T 2759/17, Reasons 5.3.1 and 5.3.2.
It would indeed be interesting if the EBA would decide which of the two approaches for selecting the CPA should be adopted, or even if both were acceptable.
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