T 0855/15 - The closest prior art

Key points

• In this examination appeal, the applicant argued that the Examining Division had not properly chosen the closest prior art document, because the used document would be remote from the invention. 
• The Board  notes that "if a piece of prior art is "too remote" from an invention, it should be possible to show that the invention is not obvious to a skilled person having regard to this piece of prior art"
• "Secondly, the board disagrees with the appellant's suggestion that it is relevant for the question of inventive step whether or not the "skilled person would [...] select" a piece of prior art "as a starting point to arrive at the invention" [] Article 56 EPC requires the assessment of whether an invention would be obvious to the skilled person "having regard to the state of the art". For this assessment, the deciding body will select one or more documents for consideration. However, no argument is required as to whether the skilled person would select a document. "
• As a comment, on the EQE it is important to take the right document as the closest prior art. 

EPO T 0855/15 - link

8. As regards the appellant's argument that the chosen "closest prior art" is so "remote" from the invention that the skilled person would not select it (see point 3 above), the board makes two additional observations.

8.1 Firstly, the board considers that the "remoteness" of a piece of prior art from the claimed invention does not, in itself, rule out an assessment of inventive step in view of that prior art. If a piece of prior art is "too remote" from an invention, it should be possible to show that the invention is not obvious to a skilled person having regard to this piece of prior art (see Article 56 EPC, and T 1742/12, point 9 of the reasons).

8.2 Secondly, the board disagrees with the appellant's suggestion that it is relevant for the question of inventive step whether or not the "skilled person would [...] select" a piece of prior art "as a starting point to arrive at the invention" (see the grounds of appeal, page 4, paragraph 3). Article 56 EPC requires the assessment of whether an invention would be obvious to the skilled person "having regard to the state of the art". For this assessment, the deciding body will select one or more documents for consideration. However, no argument is required as to whether the skilled person would select a document. In fact, the board considers that a consideration of what the skilled person would do, in particular whether the skilled person "would select" a document, in order "to arrive at the invention as claimed" would amount to hindsight reasoning, because the skilled person would have to be assumed to know the invention before an argument could be made as to what he would do in order "to arrive at" it.

Inventive step

9. The claims recite a software architecture defined in in terms of layers comprising "automation", "engine" and "platform" objects. These objects may be thought of as representing (i.e. modelling) a "plant", but no control of the plant seems to be implied by the claimed subject-matter. The modelling is not specific to a particular plant or type of plant or any specific "process control" and "manufacturing information" task in that context.

9.1 The same applies to the security model. The claims refer to a "set of security groups", each comprising "automation objects" having "attributes" with "security classifications", a "set of user roles", and an associated way of granting "access to an attribute of an object", but they fail to specify what the objects, attributes, accesses or roles are or how they may be "associated with a plant process" as the preamble of the claim indicates. As mentioned above, this hardware independence is intentional (see the description, page 6, lines 8-16, and point 3.3 above).

9.2 Thus the invention is not concerned with any specific industrial process - or control thereof - but rather with modelling or programming a control system (and its access control) in such a way that reconfigu­ration (i.e. re-programming) becomes simple (or "easily designed and altered for customized use", as the application itself puts it). The board considers it questionable whether this goal (i.e. simplicity or speed of design, (re-)configuration, or customisation) and its consequences (such as reduction of system idle time, see the description, page 2, lines 12-14) are plausibly achieved by the claimed system and, furthermore, how it could be established (e.g. quantified and measured) whether they are achieved. Moreover, the board follows its earlier jurisprudence, according to which providing a programming system does not solve a technical problem merely because it makes the programmer's task easier (see e.g. T 1630/11, points 6 to 8 of the reasons).

10. The board thus concludes that the claimed invention lacks an inventive step over the common general knowledge in the art because it does not solve a technical problem, Article 56 EPC 1973.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.