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
7 replies 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?
Dear Max Drei,
You put the finger where it has to be put. The notion of problem and solution looks indeed very simple, and this encourages some people to make short cuts and apply a kind of PSA which does not compare with the PSA as applied at the EPO.
The PSA applied at the UPC looks like the PSA, smells like the PSA, but it is not the PSA from the EPO, it is a Canada Dry PSA. A non-alcoholic beverage in France, Canada Dry, advertised itself like this: it looks like alcohol, it smells like alcohol but it is not alcohol.
During my initial training in Munich in 1979, one former member of the German Federal Patent Court was always speaking about case law. As the boards had only begun to be constituted, one of the trainees asked him once which case law he was speaking about. For him it was the BGH case law which should imperatively be followed. The reply came promptly: we are here at the EPO and not in a German institution. We never heard about “case law” during the rest of the training.
It has to be acknowledged, and the boards have to be congratulated for this, that they managed to develop their own case law. Not everybody agrees with the boards case law, but the boards have become a kind of melting pot of various legal systems. This was also part of the success of the EPO. This should not be forgotten.
I would not think that, generally, board members are disingenuous and want to go with the UPC flow. I would more see the problem in the large number of German legal members, or legal board members having studied in Germany, compared to legal members having a different legal training. A well-known legal member of the boards is still wearing its white tie or bow-tie when sitting in OP….
I also link the strong German influence at the UPC to the large number of cases dealt with in first instance in Germany, which always has two German judges in the panel. Neither the UPC, nor the EPO should actually become German tinted jurisdictions.
G 1/24 is also a reaction to the German influence, as some boards have clearly said that even for Art 123(2), the description is always to be consulted, see T 450/20, T 1473/19, T 1167/13 or T 2773/18. All those decisions go back to T 16/87.
Other boards denied the reference to the description when it comes to Art 123(2), see T 640/22 or T 169/20, T 821/20, T169/20, T 1127/16 or T 30/17. All those decisions all go back to T 1279/04.
I know that EPO board members, legally or technically qualified members, even some examiners, have applied at the UPC. Some former technical member have become, after they have retired from the EPO, part of the pool of technical judges at the UPC. To my knowledge, no legally qualified member of the boards has ever been auditioned to become a legally qualified judge at the UPC.
Dear Daniel
Another interesting case. I also find the Board’s reasoning to be confusing, but possibly for a different reason. I wonder if the Board is conflating the issue of the skilled person’s common general knowledge (CGK) and what should be the starting point for an inventive step objection.
There is no argument, surely, that any document forming part of the state of the art, i.e. published before the filing date of the application, can provide the starting point for an inventive step objection. The question then becomes whether the person skilled in the art would, based on their skill, experience and CGK, arrive at the claimed invention as a result of an obvious step from the said document. The PSA has the concept of closest prior art in order to direct the examiner towards the document most likely to yield the strongest inventive step argument. This is perfectly reasonable. The question of how the skilled person becomes aware of, or arrives at, such a document is irrelevant. However, the question of what the skilled person would know and would have access to (CGK) in order to make the step from the document to the claimed invention, or indeed be motivated to make the step from the document in the first place, is a different matter altogether.
@ HKJ,
Thanks for your comment.
You could indeed be right that the board has not carefully distinguished between CGK and the choice of the CPA.
I would however not say that the PSA has the concept of CPA in order to direct the examiner towards the document most likely to yield the strongest inventive step argument. What is important is to decide whether there is an IS or not. How strong the argument in favour or against IS should not play a role. Going along those lines could actually lead to hindsight and to an ex-post facto argumentation especially against the presence of IS.
I do agree that question of how the skilled person becomes aware of, or arrives at, such a document is irrelevant. The document has just to be publicly available before the effective date of the claim.
I would not say that the skilled person has to be motivated in the CPA to make the step from the document towards the invention. This is, in my opinion, exactly what the BGH requires, but this way of thinking is fundamentally different from the EPO.
I refer here to the article of Deichfuß, GRUR 2024, 94, where it is stated at Point 39 “And this is precisely what the Federal Court of Justice means when it asks whether there was a suggestion or an indication to take the very path that leads to the subject matter of the patent”
In Point 40 it is added that “This is based on the idea that treading a new path to solve a technical problem is in principle to be regarded as an inventive step if the person skilled in the art did not receive a “’push”’ that set him on this path”.
I take this that, according to the Federal Court of Justice, the push has to come from the CPA, whereas according to T 0428/23, commented in my blog, the skilled person does not need to find a “push” in the CPA.
According to the same article, the Federal Court of Justice also requires a problem even if the deciding body comes to the conclusion that there a lack of N. See Point 28: “A problem must therefore be formulated even if the subject matter of the patent is not new. According to the German understanding, the problem does not change if prior art is introduced into the nullity proceedings that was not known to the examiner or the patent court”.
In spite of what Deichfuß is suggesting, the way of apprehending IS differs quite drastically between the EPO and the Federal Court of Justice, even if the same conclusion on IS can be reached in both jurisdictions and on the same prior art. In case of a lack of IS one way of showing that there is a lack of IS is enough at the EPO. This is not the case at the Federal Court of Justice or in the decisions of the UPC published up to now. Also at the UPC interpretation in the light of the description is always required..
The thread leaves me confused about how the obviousness debate starts, respectively at the EPO and before the courts in Germany. Perhaps the contributors would like to clarify their positions in relation to my question as follows:
Let’s look at the single disclosure within the universe of prior art which is the “starting point” for the analysis of obviousness. Of course it can be ANY single disclosure to the public. Call it D1. But what about the issue whether D1 is a”realistic” starting point for the imaginary skilled person? It seems to me unfair to the inventor to find their claimed subject matter obvious as a result of an analysis which starts from a disclosure that is NOT a realistic one, within the field of technology of the claim in view. One might say that it is a non-obvious act to select D1 as the point from which I start thinking about contributing to the state of the art.
What happens before the courts in Germany if I as patent owner argue persuasively that the starting point disclosure adopted by the petitioner for revocation is not realistic? Can the judges in Germany even understand such a line of argument? Or is it for them mere hand-waving nonsense?
And what happens at the EPO?
Dear Daniel
As you will know from a comment in an earlier post, I also agree that it is not necessary for the skilled person to find motivation to make the step from the CPA towards the invention in the CPA itself. This view is not unique to the EPO or peculiar to the PSA, which makes the BGH approach seem so nonsensical (I am relying here on your explanation of the BGH approach, which I have no reason at all to doubt).
Dear Max Drei
You invited me to clarify my comment, which I am happy to do. But before doing so, maybe I can start with a reaction to your comment about fairness to the inventor, which made me wonder how fair it is to an inventor to discover that their invention lacks novelty due to a disclosure found in an obscure journal stored on a shelf in a library in the back of beyond, or to find that their invention had already been made available to the public as a result of secret testing carried out in a remote location that had the potential to be viewed by a member of the public. But this is a digression.
Back to the subject of inventive step, while the imaginary skilled person can start from any document within the universe of prior art, it is expected that the said person will find the step from “a realistic starting point” to be much easier to make (based on their CGK, expertise and skill) than from any of the other documents in the universe. But the concept of a “realistic starting point” is only a secondary consideration to the primary question of whether the step from any document to the invention would be obvious to the skilled person. In a case where a document might not be a realistic starting point for consideration at first glance, but where a skilled person would still find it obvious to arrive at the invention, the invention is still obvious.