Key points
- The Board, on inventive step: “ The configuration of features (c) and (d) therefore represents a mere obvious and consequently non-inventive selection among a number of known and equally likely possibilities (see e.g. T 1045/12, Reasons 4.7.7). In such cases, the "could-would approach" normally does not apply (see e.g. T 12/07, Reasons 4.1.6; T 1968/08, Reasons 5.5). To consider all of the solutions that are equally obvious, it is sufficient that the skilled person could recognise the solutions concerned without inventive efforts: a separate pointer is then not required for this purpose.”
- The question arises: how does the Board know that selection of the claimed configuration was obvious, without using the could-would approach?
- The Board, in the sentences immediately preceding the quote above: “The relevant skilled person tasked with the objective technical problem described in point 3.5 above belongs to the field of "hearing devices". Based on their common general knowledge, this skilled person is aware of several solutions to the objective technical problem posed, such as the clamping or resiliently suspending mentioned in point 3.5 above or the rotatable snapping connection of features (c) and (d). The skilled person also knows the respective advantages and disadvantages of each of these solutions.”
- “3.5 The corresponding objective technical problem can thus be framed as "how to provide for an easy and a reliable connection between the canal element and the speaker element in D1 that allows for an adjustable positioning of the speaker element".”
- As a comment, I'm not sure what the "such cases" are wherein "the "could-would approach" normally does not apply".
- I'm also not sure if it was impossible to reason that the claimed feature was something that the skilled person would have applied to solve the objective technical feature; I don't think that the could-would approach means that a feature is only obvious if it is the only solution that the skilled person would have applied.
T 0894/19 -
https://www.epo.org/law-practice/case-law-appeals/recent/t190894eu1.html
3.6 The relevant skilled person tasked with the objective technical problem described in point 3.5 above belongs to the field of "hearing devices". Based on their common general knowledge, this skilled person is aware of several solutions to the objective technical problem posed, such as the clamping or resiliently suspending mentioned in point 3.5 above or the rotatable snapping connection of features (c) and (d). The skilled person also knows the respective advantages and disadvantages of each of these solutions. The configuration of features (c) and (d) therefore represents a mere obvious and consequently non-inventive selection among a number of known and equally likely possibilities (see e.g. T 1045/12, Reasons 4.7.7). In such cases, the "could-would approach" normally does not apply (see e.g. T 12/07, Reasons 4.1.6; T 1968/08, Reasons 5.5). To consider all of the solutions that are equally obvious, it is sufficient that the skilled person could recognise the solutions concerned without inventive efforts: a separate pointer is then not required for this purpose.
The respondent argued that Figure 15B of D1 comprises many possible connections which the skilled person could have changed to solve the objective technical problem posed and that there would be no reason why the skilled person would have considered specifically the connection of the speaker element to the canal element. The board agrees, however, with the appellant that the skilled person would have primarily focused on the connection between tube 1512 connecting speaker element 1212 to ear mould 1510 to solve the above objective technical problem because this is the most prominent connection in Figure 15B of D1.
3.7 Hence, claim 1 of the main request and of auxiliary request 1 does not involve an inventive step (Article 56 EPC).
source http://justpatentlaw.blogspot.com/2021/10/t-089419-exception-to-could-would.html
