Friday, 29 May 2020

T 1900/16 - strict formulation of objective problem leads to inventiveness

Printer with blank pages 

When printing a document, it sometimes happens that inadvertently a blank pages ends up between the printed pages. While this is annoying in any print-job it can become a real problem if one is doing print jobs of 100,000 pages. The solution to this problem comprises better synchronization of read and write commands in the printer spool file. 
The Examining division argued for lack of inventive step by solving the general problem how to 'ensure correct printing results are generated'. A skilled person would then try to apply known techniques that avoid incorrect data and arrive at the solution defined in claim 1. 
The board found this line or arguing incorrect. Without generalizing the problem set out in the application, the skilled person would not have combined with the secondary document. 

Reasons for the Decision
1. The appeal is admissible.
2. Main request - inventive step (Article 56 EPC)
2.1 Closest prior art and distinguishing features
2.1.1 The appellant has not disputed that document D1 represents the closest prior art and the board agrees. The board therefore sees no reason to deviate from the decision under appeal on this point.
2.1.2 The appellant also did not object to the examining division's finding that the subject-matter of claim 1 of the main request differs from D1 in the following feature:
"wherein the step of activating one of the write (TPW) and read (TPR) paths comprises alternately activating each of the write (TPW) and read (TPR) paths to eliminate synchronous access to the same data location within the spool file by the application software/spooler along the write path and the print processor along the read path."
2.2 Objective technical problem
2.2.1 The application is concerned with the generation of additional blank sheets in a printed document. While the generation of a single blank sheet can be tolerated in conventional printed documents, which typically require less than 100 sheets of content material, it has severe consequences in a print job for mailpiece inserters, which can exceed 100,000 sheets. Consequently, there is a high probability that a print job for mailpiece inserters experiences this problem, which can result in the need to reprocess the entire print job (see in particular paragraphs [0028] to [0030] of the published application).
In light of the detailed explanations provided in the application as well as by the appellant in the statement setting out the grounds of appeal, the board has no doubts that the problem underlying the invention, as explained above, is plausible. In particular, the objective technical problem corresponds to that set out in the present application, namely how to prevent additional blank sheets appearing in printed content material that was to be inserted or fabricated into mail pieces.
2.2.2 In conclusion, the objective technical problem that has been formulated by the examining division, namely that of how to ensure that correct printing results are generated, is too general in view of the specific problem set out in the application. The objective technical problem as has been formulated by the appellant, namely that of how to avoid the generation of blank sheets in printed content material, therefore requires neither reformulation nor generalisation.
2.3 Obviousness
2.3.1 The solution to the objective technical problem (see points 2.1 and 2.2 above) is not rendered obvious by a combination of documents D1 and D5.
In the present case, finding the solution presupposes first finding the cause of the problem.
A key point to take into consideration in this context is that the skilled person, when attempting to find the cause of the problem, was faced with a high number of different technical fields to investigate in the overall complex printing process of a mailpiece inserter (see in particular figure 1 and the corresponding description of the application), as has has been convincingly argued by the appellant.
There is, however, nothing in the prior art that would have led the skilled person to believe that the read/write access to the spool file was the cause of additional blank sheets in the print job.
While a mere synchronisation of a read and write access to a specific file location may have been generally known in the art, the realisation that simultaneous read and write access to the spool file is the cause of blank sheet generation in a printing process of a mailpiece inserter, is not obvious.
Document D5 might disclose general teaching concerning read and write access synchronisation to a specific file location, but it does not provide any teaching to the person skilled in the art as to how to solve the problem of blank sheet generation in printed content material, since, as has been convincingly argued by the appellant, D5 does not contain any reference to printing problems. Thus the skilled person attempting to address the problem of blank sheet generation would have consulted D5 only if he had already realised that synchronisation of read/write access was the underlying cause of the problem. However, as indicated above, that realisation was not obvious.
2.3.2 Summarising, the question to answer is not whether the person skilled in the art could have obtained the invention by modifying the closest prior art (D1), but whether the modification would have been made in expectation of solving the objective technical problem because the prior art provided an inducement that the solution would actually solve the problem. The board sees no such inducement or motivation in the prior art and in particular not in the relevant documents D1 or D5.
The opposite conclusion that the teaching of D5 is obviously the solution to the specific problem of a blank sheet generation in D1, must thus be considered to be based on hindsight knowledge of the invention.
2.3.3 The board has therefore come to the conclusion that the subject-matter of claim 1 is not rendered obvious to the person skilled in the art from the prior art documents at hand and consequently involves an inventive step in the sense of Article 56 EPC.
Since the further claims 2 to 6 are dependent on claim 1, this conclusion also applies to these claims.
3. Final remarks
Given that the subject-matter of claim 1 of the main request involves an inventive step in the sense of Article 56 EPC and considering that the further requirements of the EPC are also fulfilled, the board had to accede to the appellant's main request.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the examining division with the order to grant a patent in the following version:

This decision T 1900/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T190016.20200417. The file wrapper can be found here. Photo by Steve Buissinne (stevepb) via PixaBay under the PixaBay license (no changes made).


  1. I don't get the rational of r.2.2.2. Art. 56 EPC states "An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."

    It does not state "An invention shall be considered as involving an inventive step if, having regard to the state of the art, the skilled person is confronted to at least one objective problem which does not lead him to the invention in an obvious manner."

    As I understand the problem-solution methodology in view or Art. 56, the question is not whether some “plausible” objective problem, e.g. as stated in the application, can be cast that does not lead to the invention in an obvious manner. The real question for inventiveness (Art. 56) is whether there is no objective problem obvious to the skilled person reading the prior art (not merely stated in the description of the questioned application/patent) the claimed solution of which is obvious. Inventiveness is an absolute criteria and achieved only when all routes to a claim are not obvious. It is not achieved already when one “plausible” route to a claim is not obvious (while another route is potentially obvious). The latter approach amounts to an incomplete inventiveness assessment in my opinion.

    Also, for the purpose of Art. 56 EPC, the skilled person without hindsight, starting from the prior art, does have access to the challenged/patent. Therefore, the fact that a problem is stated in the description of the examined application/patent or not, makes no different for the inventive step assessment, which is an absolute criteria. The stating of the objective problem in the description may be an aid for examination but should not be considered as limiting the scope of Art. 56 (and the scope of examination of compliance with Art. 56).

    The question is thus not whether the technical problem “requires” generalisation but whether a more general technical problem starting from the considered piece of prior art would also be obvious to the skilled person confronted to the considered piece of prior art (irrespectively of the technical problem stated in the questioned application/patent). If the answer is yes, then the claimed invention must also be assessed in view of that obvious problem not stated in the application/patent. It is not sufficient to conclude that there is at least one technical problem, e.g. stated in the description, over which the invention is not obvious in view of Art. 56.

  2. The inventive step in this case seems to be highly dependent on the starting point. In general, blank sheets will be the result of a sheets of paper somehow sticking together when being fed to the printer. Figuring out that, in a particular system, the problem lies somewhere else (namely in bad programming) may well be non-obvious. But other systems will have been properly programmed and will not suffer from this software problem.

    "There is, however, nothing in the prior art that would have led the skilled person to believe that the read/write access to the spool file was the cause of additional blank sheets in the print job."

    True enough, but was the "read/write access to the spool file" really the cause of the problem in D1? I haven't looked at D1, but this seems extremely doubtful. It was probably only the cause of the problem in a buggy version of the appellant's printing system.

    If D1 does not suffer from blank sheets due to bad programming, then the claim does not solve the stated problem over D1 and it seems one would have to look for another problem formulation. (And even if D1 does suffer from the software problem, it should not be difficult to find another prior art system without buggy programming.)

    To avoid inventive step attacks based on documents that do not have the solved problem to begin with, it would seem to be necessary to somehow limit the claim to systems that do have the software problem that the invention is solving.

  3. When one looks at the technical effect of the missing feature, the decision becomes much clearer.
    It seems that the technical effect of the missing feature was disclosed in the patent as less blank pages. If the person skilled in the art is not aware of other effects, this is the effect to be used for the problem solution approach. Therefore the objective technical problem of the examining division "to ensure correct printing results" (that also encompasses the prevention of other errors), seems indeed to broad when considering the effect of the missing feature. Thus the technical problem of the Board "avoid additional pages of blank sheets" is indeed chosen wisely.

    In my opinion, the formulation of the correct objective technical problem is in general the turning point of the problem-solution approach.

  4. Sorry I'm late to the party. As far as I'm concerned though, formulation of the OTP is the key step of EPO-PSA, and therefore is the core issue for advocacy before an EPO tribunal.

    But it is not as if one can formulate the OTP out of whole cloth. Once the prior art starting point is fixed, the OTP emerges more or less as a direct consequence. So it is, that fixing the starting point document is also key to the outcome, and hence another area where skill levels in advocacy are key to the outcome.

    My feeling is that much of the criticism of EPO-PSA is from i) people who don't understand the Approach fully, and ii) advocates who have lost at the EPO and need something to blame other than their sub-optimal advocacy.