Patent case: T 1148/15, EPO

@peter parker The problem-solution approach is intended to be a safeguard against hindsight-guided assessment of inventive step. Guideline G-VII, 8 rightly points out that the documents obtained in the search of the prior art have been obtained with foreknowledge of the claimed invention – this is inevitable – and the examiner must always bear this in mind when combining documents to avoid ex post facto analysis. If you come up with a reasoning which arrives at the invention by a series of apparently easy steps, it must be kept in mind that every document relied upon in the reasoning has been obtained with foreknowledge of the invention. This is why it makes sense to relate the problem-solution approach to the framework defined by the « aim or purpose », I would rather refer to a « field of use » or « field of application ». This framework is relevant for every step of the problem-solution approach and provides maximum objectivity. The purpose or field of use is the defining context for the « problem » (which includes a particular objective or set of objectives but also the host of constraints applicable to that field), it defines the « art » of the skilled person, which allows the delineation of the common general knowledge of the skilled person, and it is the key factor to select a « closest prior art ».

@peter parker The problem-solution approach is intended to be a safeguard against hindsight-guided assessment of inventive step. Guideline G-VII, 8 rightly points out that the documents obtained in the search of the prior art have been obtained with foreknowledge of the claimed invention – this is inevitable – and the examiner must always bear this in mind when combining documents to avoid ex post facto analysis. If you come up with a reasoning which arrives at the invention by a series of apparently easy steps, it must be kept in mind that every document relied upon in the reasoning has been obtained with foreknowledge of the invention. This is why it makes sense to relate the problem-solution approach to the framework defined by the « aim or purpose », I would rather refer to a « field of use » or « field of application ». This framework is relevant for every step of the problem-solution approach and objective. The purpose or field of use is the defining context for the « problem » (which includes a particular objective or set of objectives but also the host of frequently implicit constraints applicable to that field), it defines the « art » of the skilled person, which allows the delineation of the common general knowledge of the skilled person, and it is the key factor to select a « closest prior art ».

"Is it a lazy hang-over from how obviousness is discussed in the patents courts of Germany?" I don't think so. In every decision I know (at the DPMA, the BPatG or the BGH) all relevant prior art is discussed, when patentability is confirmed. There are several decisions by the BGH, that a reason must be given for any document, why it is to be used during discussion of inventive step. Further, the BGH states that it doesn't matter if there is "closer" prior art, as claim-matter has to be not-obvious compared to all prior art documents or their combination. Sometimes it is a bit tiresome, when they recite for a lot of documents, why the claim is valid... Of course, for negative decisions, usually only the "killer"- prior art is discussed...