Key points
- The Board: "While the use of the problem-solution approach is not mandatory because it is not always reasonably applicable, if it is not used, the examining division should have explained the reasons for not using it."
- " the appealed decision is seriously flawed because the examining division neither made a clear division of the features of claim 1 into technical and non-technical features nor properly applied the problem-solution approach. Therefore, the appealed decision must be set aside."
- "the examining division's finding that the subject-matter of claim 1 lacked an inventive step was not based on applying the problem-solution approach, comprising the steps of identifying the distinguishing features of claim 1 over the disclosure of the closest prior art, determining which distinguishing features are technical features and which are non-technical features, determining the technical effect of the distinguishing features which are technical, deducing therefrom the objective technical problem solved by the distinguishing features, looking for an incentive for the skilled person to solve the objective technical problem and analysing whether the solution as claimed was obvious in view of the available prior art."
- The Board nevertheless adds that: " claim 1 does not seem to comprise any feature which would exclude that the entire tailored sensory work is transmitted between the server and the playback device. Actually, claim 1 seems to cover the possibility of transmitting the entire sensory work between the server and the playback device. Therefore, the objective technical problem as stated by the applicant does not appear to be a valid objective technical problem solved by the distinguishing features."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/06/t-162121-psa-is-not-mandatory.html
