Tuesday, June 26, 2018 T 2057/12 - Closest prior art selected from a remote technical field

It is generally accepted that the closest prior art normally discloses an item of prior art which shares a common purpose with the claimed subject-matter or aiming at the same objective (see below). As indicated in reason 3.2.2 of this decision, "this approach appears to rely on the assumption that the skilled person would only possibly arrive at the claimed invention when starting from a document which shares a common or similar purpose with the claimed invention. In other words, this approach seems to exclude from the group of possible candidates as closest prior art disclosures which belong to technical fields remote from the field of the invention. The jurisprudence of the Boards of Appeal puts also much emphasis on the similarity of the technical problem to be solved by the item of prior art to be selected." But is it possible that a correct inventive step attack can be formulated that uses a document from a remote technical field as the closest prior art document? If so, under what circumstances, under which conditions and what are the consequences of using such a starting point? This is maybe not such a very surprising decision, but it gives a nice review of making such a choice.

Friday, January 27, 2017 T 1379/11 - Combinations of technical and non-technical features

In this appeal against a decision of the Examining Division the claims have a combination of technical and non-technical features and this plays an important role in the inventive step reasoning of the Board. The question is whether the applicant has really added something technical or that the claimed method is an obvious implementation of business requirements in a know technical system. In this case there are also some interesting paragraphs about the selection of the closest prior art - the Board writes "The Examining Division made an attempt to apply both criteria... but failed to do so in a convincing manner.".

Friday, July 10, 2015 T 698/10: Problem not mentioned in closest prior art

The closest prior art and the objective technical problem were disputed because the closest prior art does not mention the problem of the claimed invention. This appeal lies from a decision of the Examining Division to refuse a patent for an invention that relates to the Audio Video Coding Standard of China (AVS). The Board of Appeal clearly discusses the inventive step of the invention. In this discussion the above mentioned objections of the Appellant (Applicant) are discussed extensively. The Applicant also considered his right to be heard violated. The Board also provides a clear discussion of this subject at the end of the decision.