7.And what about inventive step?

And what about inventive step?

Coverage

Two approaches to the discussion of inventive step will be outlined.

After you have read this chapter you should be aware of:

1. The need to take a structured approach to any discussion of inventive step.

2. The ‘Pozzoli’ approach.

3.The ‘problem-and-solution’ approach.

In the real world the issue of ‘inventive step’ is often of crucial importance in contested patent matters. Unless there are delicate matters of interpretation most parties can soon agree on the questions of whether a claim is infringed or not, and whether a claim is anticipated or not. It is the question of ‘inventive step’ that tends to divide opinion, as there is no ‘black-and-white’ test. The FD4 examiner is trying to see if candidates have sufficient experience in inventive step matters to be able to advise their clients, and to be able to generate appropriate attacks and defences.

Look again at the marking schemes for the P6 paper of 2014 and the FD4 papers from 2015 onwards. From the table given at the end of the inventive step section it is clear that there were marks in the marking scheme for considering the inventive step of each of the claims. So, it will be prudent for you to try and devise an inventive step argument for the subject-matter of each claim, even if you have found any particular claim to be novel. You will hopefully have been involved in European Patent Office opposition proceedings, where it is common to have several different ‘attacks’ that are considered in order, and a similar approach can be adopted in FD4. As with novelty, because one claim is found to have inventive step, it is not appropriate simply to say that all of the claims dependent on that claim must have inventive step. This can, of course, be said, because in a way it is true, but the examiner is expecting you to analyse the inventiveness of the subject-matter of each claim.

It is inevitable that the marks set out in the ‘inventive step’ section of the marking schedule must be at least partly discretionary. The examiner has tried very hard to set a lot of points ‘in balance’, and when you reach this stage of the answer you have made various decisions regarding the ‘balance points’, supporting your decisions with evidence and reasoning. However, other candidates will have made very different decisions, and so as you enter the inventive step

part of the paper you may have decided on a feature or combination of features that give the claims novelty and another candidate may have concluded that a very different feature gives the claims novelty. The examiners have to be fair to all candidates, and so at this stage the examiners are judging your technique, and trying to assess if you have done a good job. They look to see if the conclusions that you have reached are logical, with the logic being explained. Can you show that you understand, and can use, the various ‘tools’ that are needed to construct an inventive step attack? Can you see the ‘clues’ that can be used as evidence to support or contest the suggestion that a claim is ‘obvious’?

So you can see that here, even more than in the novelty section, there is no set conclusion for you to reach, as so much depends upon your construction, and also the decisions that you have made concerning which features of the claims are shown by which prior art documents. The only thing that you have to do is to discuss inventive step in a sensible structured way.

Even if you cannot begin to see an inventive step attack, please do not just write ‘I cannot see any inventive step attack that will succeed’. That will get you no marks. You must show the examiner your thoughts, and so you must show that you have considered the problem, tried to generate arguments, and that you have only been able to generate a case that is extremely weak.

If you have found a specific claim to lack novelty, but to be ‘only just’ anticipated, because one feature was present in view of a possible broad interpretation of that feature, you could at this stage consider the effect of a narrower interpretation of that feature. So you can explain that if the feature is construed narrowly the claim would be novel, and then you can consider the inventive step of the now-novel claim. Alternatively, you can simply attack the claim as being obvious as well as lacking novelty as would a patent office examiner.

Even if you have concluded that a claim is anticipated by one or more prior art documents, you can still consider the possibility of an inventive step attack based on the remaining documents. So, for each claim, you should at least consider the possibility of an attack on the subject-matter of the claim on the basis of each prior art document taken alone, and each possible available combination of documents, and somehow show the examiner that you have done this. Sometimes the examiner is looking for arguments based on the combination of two patents. The approach taken by the courts is typically that it is not permissible to combine the teaching of two disclosures, such as patents or other documents unless one of the disclosures is common general knowledge, or there are some strong reasons for combining these two specific disclosures, such as a reference in one to the other. However, if you see an attack that could be raised by combining two disclosures, you could outline the attack, but explain that it would not really be available because it is two disclosures that are being combined, neither of which is common general knowledge and there is no motive to do this.

Before you start the detailed consideration of the inventive step attack just check the publication dates of the disclosures. Some disclosures may be available for novelty, but not for inventive step!

The examiners have made it clear that they prefer to see candidates adopt the approach used by the British courts, but they will not penalise candidates who make a good attempt at the problemand-solution approach favoured by the European Patent Office. That said, it will probably be harder to gain marks efficiently using the problem- and-solution approach as this approach will take longer to present in your answer. Most of the marks will be awarded on the basis of the quality of the arguments that you can generate. However, in using problem-and-solution there is a tendency to

pick just one document as the starting point and move on from there, and so you may miss some of the arguments that the examiner is hoping that candidates will raise.

The British courts now use the approach set out in Pozzoli SpA v BDMO SA and others [2007] EWCA Civ 588; F.S.R. 37 and www.bailii.org/EWCA/Civ/2009/498.html. The case sets a four-step test for determining inventive step, with the first step being in two parts. The steps are:

1. a) Identify the notional person ‘skilled in the art’. b) Identify the common general knowledge of that person. 2. Identify the inventive concept of the claim, or of that cannot be done, construe it. 3. Identify what, if any, difference exists between the material forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed. 4. Viewed without any knowledge of the alleged invention as claimed, do those differences represent steps which would be obvious to the person skilled in the art, or do they require any degree of invention?

All of this may, at first sight, seem to be a bit circular, but this approach does help thoughts to be marshalled in a logical order.

Some candidates write out the Pozzoli questions, but there are no marks for doing this, especially if the candidate then goes into ‘waffle-mode’. The examiner expects you to follow the Pozzoli precedent, and you can show the examiner that you are doing this by using the unique numbering system as you answer the four-step test.

You will typically get recognition if you start the obviousness section setting out that you know the relevant case law and can deal with the initial steps of the test. So you might just write something like ‘Applying Pozzoli...’ before you move onto the four steps.

For all of the claims together, you can deal with step 1a)… who is the person ‘skilled in the art’? This always depends on the facts of the case. In the Catnic case, where the invention was a steel lintel to go over a doorway, to replace the then-conventional wooden or cast concrete lintels that were made on-site, the notional addressee was a person skilled in the building trade and the use of lintels. In other cases, the skilled person has been found to be a designer of the relevant products (rather than a user of the products), or even a team of people, each bringing a particular expertise or knowledge-set. It is possible to envisage scenarios involving groundbreaking inventions where it may be very difficult to identify the skilled person, but in FD4 it is usually quite straightforward.

Typically, the title of the specification, and the first paragraph, or preamble, indicate the technological area of interest, although the title and the first paragraph may not be consistent. From a tactical point of view in FD4 you will probably want the skilled person to have a broad, rather than specific, common general knowledge. The challenge is for you to define the skilled person quickly, while giving a reason. If the situation that faces you is such that there are arguments that the skilled person should have a broad knowledge, and arguments that skilled person only has a narrow field of interest, then both arguments should be outlined in your answer, and a conclusion should be reached.

If you preface the answer to the first part of the first question with ‘ 1a) ’ and then preface the answer to the second part of the question with ‘1b)’ the examiner will get the idea that you are

following the Pozzoli approach, and this will be reinforced by prefacing the answers to the three remaining questions with the appropriate numbers.

In answering question 1b) in real life there can often be a long discussion as to what information is within the common general knowledge. In FD4, however, you can only rely on the information provided in the question, and so the only real decision that you have to make is what information in the documents provided is known to the skilled person. There will not be any marks for waffle about the skilled person knowing about this general area, but not that general area. You must move straight to a decision as to which documents or disclosures will be in the common general knowledge, and which documents or disclosures will not. This, again, can be dealt with together for all of the claims at the start of the Inventive Step section.

In setting the question, the examiner could identify some documents as being within the common general knowledge, but the examiner is trying to test your powers of deduction, and so provides a selection of disclosures to see if you can come up with reasons why any disclosure is, or is not, common general knowledge to the skilled person. There have been many cases in which the scope of the common general knowledge has been discussed, and the conclusion has been reached that it includes standard texts or material accepted without question by those in that line of work, and so includes text books, regulations, and methods and products which have been widely used in the relevant field. The common general knowledge does not automatically include all patents in the field, or all sales of products, especially if the total number of products sold was very low in comparison with the size of the market. However, if a document is quite old, or an ‘isolated’ document, then it may be possible argue that the document is not in the common general knowledge. Also the common general knowledge does not necessarily include specific design details of prior-sold products.

In FD4, you must look closely at the documents and disclosures provided to see if you can come up with any reason why each disclosure might be well known to the skilled person. It is usually easy to decide if a textbook is in the right field. It may be more difficult to decide about a publication which is in a similar field. Would the skilled person be expected to consider that similar field? Is there any motive for the skilled person to look in the other field? Do the same problems face designers in the two fields? Or are the fields very separate commercially? The examiner will expect you to explore the possibilities and reach a conclusion.

In one P6 paper, the same piece of prior art was briefly described in the patent, and also in a prior patent that was on the table. Why did the examiner do that? So that a candidate could suggest that if two different inventors mentioned this piece of art independently, then it was probably within the common general knowledge? You must look hard to find the clues that the examiner has put into the question. Look out for things like ‘It is well known’……regardless of where those words appear. The clue could be in the letter from the client, or a preamble in a specification.

A patent specification may, in some circumstances, be within the common general knowledge, but this is very much the exception and there must be some evidence that you can point to if you are going to suggest that a patent specification, or the embodiment described in the specification, would be known to the skilled person.

Now you have identified the skilled person and which of the disclosures (or which parts of the disclosures) can be considered to be common general knowledge you can move on to the second question.

For each claim, you must now try to distil the inventive concept of each claim. This can be the feature or features of the claim that really solves the problem that the inventor is seeking to solve. For example, recalling the example used in Chapter 5 of a case involving an airbag, you might put a few words that serve to identify the inventive concept and give a reason. So, you

might put something like: The inventive concept of claim 1 is the provision of the vent hole in the airbag, because it is the provision of this vent hole than enables the airbag to deflate slightly when the driver’s head hits it, thus gently decelerating the driver’s head, rather than letting the head bounce back, which is what would happen if there was no vent and the airbag was inflated to be ‘hard’.

The third question should be easy to answer as you have already decided on the novelty of each claim. Using your novelty analysis, at this point simply set out what features were not present in the prior art document(s).

Your answer will look something like: Document D shows all of the features of the claim except the feature of ‘the airbag having a vent hole to permit gas to escape from the airbag’.

It is your answer to the fourth question that will really bring in the marks. The answer must be logical, and set out clearly, and not just waffle. Remember that just because an invention is easily understood, or just because it seems simple, or just because it is not technically difficult, does not mean that it was ‘obvious’. Generally, the British courts have been reluctant to find an invention to be lacking in inventive step, but sometimes a claim that is more than one step away from the prior art can be found to be obvious (see the BosGmbH decision for example) if it can be shown that there would be some motivation to improve an old design.

You should address inventive step on a claim-by-claim basis, considering all of the possible attacks on claim 1, and then considering all of the attacks on claim 2, and so on.

Starting with the first claim you should initially consider the difference between the claim and each individual piece of prior art. During this thinking stage you will be looking to see if the ‘difference’ can be observed in any of the other documents or disclosures. Also, you will be thinking if the difference is something that the skilled person would be led to almost automatically when seeking to solve the problem, bearing in mind that the skilled person is usually expected to seek to improve things. Is the ‘problem’ that the difference solves a ‘problem’ that was immediately apparent? Was it even mentioned as a problem before the date of the patent? Is it possible that the really clever thing was actually ‘spotting’ the problem? Is it technically easy to make the necessary change? If the change is made, are there further parts of the product that will need to be altered or redesigned? Will the change be expensive to implement? All of these are questions that should be floating in your mind as you begin to think about your analysis of the inventive step of the main claim.

Bear in mind that the skilled person not only has their specialised common general knowledge, they can also be assumed to know about things that are commonplace in the dayto-day world. While you should not bring any specialised knowledge that you may have to the examination room, things that are really just common sense should be used. For example, candidates have been expected to at least query whether the use of polyurethane as preferred material for a ‘foam body’ was just an obvious selection of a known material. The skilled person appreciates that sometimes things can be improved by selecting a different size or shape or material, and will be expected to at least consider such options, trying to determine if it would

be a good idea or a bad idea. Something might be ‘obvious to try’, even if there is some doubt that it would really work. As long as there is some motive to make the attempt, then it may be possible to conclude there is no inventive step.

There are things that can indicate that there really is an invention, even if the claimed subjectmatter looks very ‘thin’. For example, is the problem that has been solved one that has been around for a very long time? If the ‘starting point’ disclosure is, say, more than 20 years old, is it really reasonable to say that any skilled person looking at it would make the step to bridge the gap between the disclosure and the invention? It may be even more unreasonable to see an inventive step if the attack is based on one or two documents that are in ‘the common general knowledge’. If the starting point is common general knowledge the step to get to the invention cannot be obvious or someone would have done it sooner. Sometimes financial success on the part of the patentee can be an indicator that an invention may be present, but this indicator is certainly not infallible, as many people and organisations have had great financial success with products and processes that have been far from inventive, with that success being driven by other factors, such as good marketing and advertising. Also, with a product with any degree of complexity, it may be impossible to prove that the success was the consequence of just one inventive feature in the product.

Sometimes the client’s letter may describe its commercial aims or a ‘non-patent’ reason for the commercial success of the product in question. These should be treated respectfully but often do not bear on obviousness issues or on what line of amendment to take. But in any event in the report to the client how you chose to treat such an indication should be explained, at the very least to show that you did not just ignore it.

If the invention has been marketed, is it very different from everything previously available in the relevant field? And did designs that resemble the invention become available after the invention was launched? Evidence of this type of situation can help demonstrate that a real invention has been made.

The important thing in FD4 is to show the examiner what you are thinking, demonstrating that you are trying to generate an argument, and then concluding that the resultant argument is flawed if you cannot find an argument of real merit.

When you have thought about each piece of prior art individually, then you must look again at the non-common-general-knowledge items, and see if the difference between the main claim and each of these documents is shown in a common-general-knowledge disclosure. If it is shown, is there anything that might lead the skilled person to combine the teachings, or anything, such as a pre-existing prejudice in the art, that would discourage the skilled person from effecting a combination? For example, (referring again to the airbag example Chapter 5) the examiner might put a passage in the letter from the client reading: For years we have been trying to make airbags really gas-tight, so that we can get them inflated in less than a quarter of a second, and having a large hole in the airbag would just make it much more difficult to inflate the bag in the short period of time available…Any prejudice like this leading away from the invention may show there is an inventive step.

Always check to see if you client showed any ‘surprise’ or ‘amazement’. Sometimes the surprise is that a patent existed, and this may be because the client was of the view that the product in question could not possibly be inventive. There is another reason why your client might be ‘surprised’ that will be mentioned in Chapter 10!

Consider if the invention is a simple combination of the teaching of the disclosures that you are seeking to combine, or are further changes or modifications needed? The more necessary it is to modify or change, the more likely that there is an inventive step. Although it may be clear that two disclosures could be combined, the real question is would the skilled person be motivated in any way to effect the combination?

Of course, you may find that two items in the common general knowledge could be combined to reach the desired result, but in such a situation be wary, since if the skilled person was already aware of the two pieces of the solution to the problem this must raise the question as to why the solution was not reached before.

Often timing can be an important part of an inventive step argument. For example, was the invention made very shortly after a key document was published? This might show that the development of the disclosure of that document into the invention was carried out quickly and might well be ‘obvious’. On the other hand, if all of the necessary information had been in the public domain for a long time, then that may be an indicator of inventive step.

The examiner does not want comments that indicate merely that the point is trivial, or ‘easily invented’, and also will want more than a simple statement that some of the features of the claim are in one disclosure, and the remainder are in another. The examiner will want an outline of the motivation that existed to combine the teachings.

Beware of ex post facto analysis. It is always easy to explain how you could have started with a particular document, and then you could have changed this and could have changed that to reach the invention. But this analysis is based on the knowledge of the final destination i.e. the invention. The real question is always not could the skilled person make the journey, but would the skilled person make the journey. Can you find anything that would be a motive for the skilled person to combine the two teachings? Many things which look simple and obvious after the event were certainly not obvious before the event.

Having dealt with the main claim, you will now need to progress to the subject-matter of the remaining claims. If the subject-matter of a dependent claim is to be found unambiguously disclosed in the ‘starting point’ document used in a successful inventive step argument set out against the main claim, then this fact can simply be highlighted, as the dependent claim cannot be valid. Do be careful to set out the inventive concept of each dependent claim as this will change with the further features added be each dependent claim. Otherwise it will be necessary to see if it is possible to attack the subject-matter of the sub-claim on the basis that the subject-matter of the claim is obvious. The mental ‘tools’ that you used in connection with the main claim will have to be re-employed with each of the sub-claims (and any further independent claims!).

The inventive step section of the answer typically has around 20 marks. The marks are usually spread across all of the claims, usually with most marks for the independent claim, but with still valuable marks in the sub-claims. Recalling how many words you can write in a minute, you will appreciate that you cannot really afford a very exhaustive analysis of inventive step, but you must be able to write enough to show the examiner that you can use the necessary ‘mental tools’, and you can notice observe evidence, or deduce reasons, to support, or resist, an obviousness attack.

The examiner will try to set up the question so that a logical Pozzoli approach can be used, but will expect candidates to provide very different answers in view of the different conclusions

that they will have reached in interpretation and novelty. The examiner will, however, assess how well you have done, taking into account your own starting point.

Firstly, it is necessary to determine the problem that is solved by the invention. In the world of FD4 it will help greatly if you can identify a problem that is actually solved by the feature or features of the claim that distinguish the claim from the prior art. This need not necessarily be the problem that the inventor originally set out to solve as described in the preamble of the patent, but may be a very different problem.

Initially, you should consider a starting document that shows ‘most’ of the invention and try to determine if it would be ‘obvious’ to make the modification, initially without referring to any other document. The mental tools that are described above in the Pozzoli approach are of equal value here. One is looking for motivation to make the change, rather than mere opportunity. Then you can see if there is a second document that actually discloses the modification. Here again you are looking for motivation that would make the skilled person at least try the modification.

Does the combination of the documents get us all the way to the invention? – or are further changes or modifications needed? Is there any pre-existing prejudice that might deter the skilled person from making the combination? Would a simple combination of the features give rise to other problems?

Once again the point to be considered is would (NOT could) the skilled person have tried the combination of features in the claim to solve the problem?

Remember to consider the subject-matter of all of the claims.

Whichever method you use to consider ‘obviousness’ it may be prudent to consider whether any amendments would be available to the patentee to improve the position, and make the claims less ‘obvious’. You may be able to ‘see’ a potential area for amendment much more clearly while the ‘obviousness’ attack is fresh in your mind. If you think that there is an appropriate amendment you might write ‘Amend’ at the bottom of the relevant paragraph, and underline it, so your eye will be drawn to it as you skim through the early part of your answer while preparing the amendment section.

As in previous sections of the answer the word ‘because’ may be a very useful friend. It is very easy, in the obviousness section, to make sweeping assertions. You might put ‘It is clear that

the skilled person would combine documents A and C….’ Indeed, this might be the case, but you must explain WHY. So, set yourself a challenge. Can you get at least ten appearances of ‘because’ in the inventive step section of your answer, as well as setting out coherent arguments based on the disclosure of the prior art documents and a bit of common sense?

Because the real test of ‘obviousness’ involves the skilled person, the only thing you can hope to achieve in the examination room is an educated guess as to what the skilled person might think, and arguments that might be put forward. So your answer will, almost inevitably, merely set out some possibilities. While the examiner will expect you to come to a definite conclusion concerning the validity of each claim it would be prudent to end this section of your answer with a reference to the fact that you would get a real person of skill in the art to review your logic and your conclusions. You can do this by asking the client for confirmation from a skilled person. Those candidates who are over-full of self-confidence (which may come across as pomposity), and who indicate that because they think the claims are obvious they must be invalid, may not really impress the examiners.

EXERCISE 5

Still having in mind all of the papers about the bowsaw blade of Exercises 4 and 5, consider how you would approach inventive step in the light of the fact that the investigation also shows a chapter in the textbook ‘Saw Blade Design’, published three years before the priority date, relating to circular saws for cutting marble. One blade illustrated in the chapter is shown. The blade is described as providing a superior cut with minimum dust retention in the cut. Another part of the book describes how a circular saw blade is usually made by being stamped from a long sheet of steel, a row of ten blades each having a diameter slightly less than the width of the sheet being stamped from a single sheet. Circular saw blades only rotate in one direction, which is shown by an arrow printed on them. Only the leading edges of the teeth (in the sense of rotation of the blade) are sharpened.

Consider how you would approach dealing with the question of ‘inventive step’. Maybe you would like, now, to write an analysis of ‘inventive step’ before turning over the page.

EXERCISE 5 – notes

Who is the skilled person? What is the common general knowledge of the skilled person?

Surely the title and pre-amble help with defining the skilled person. The title is ‘saw blade’ and the preamble begins with a reference to ‘saw blade’, followed by ‘more particularly… bowsaw blade’. There seems to be a strong argument that the skilled person knows about saw blades in general.

Is the blade of Figure 1 common general knowledge? It is described as if it is the only type of bowsaw blade that has been used before. Is the bandsaw blade common general knowledge? This would seem most unlikely if it was only sold in one location during a three-week period. However, maybe the investigations only revealed one use, and in truth the blade was very popular and in widespread use. Maybe we should ask the client, who may have knowledge of the saw blade market, if there is any further information.

Is the circular saw common general knowledge? It is in a textbook, but it relates to a very special type of blade, used for cutting marble rather than wood.

So there is quite a lot to deal with in deciding which documents are available for use in an ‘inventive step’ attack, and there are a lot of arguments that lead to opposite conclusions.

What is the inventive concept of the claim? The answer to this question depends on your construction. It might be that the teeth are divided into groups of four which are separated by gaps. It might be that the teeth are in groups of four, with the teeth of each groupbeing offset in the same direction, successive groups having different directions of offset. It might be simplest just to refer to the construction of the claim.

The closest prior art would seem to be the admitted blade of Figure 1. If your construction of claim 1 permitted, then the bandsaw would also be close prior art. You have already considered the differences between these items and the claims. You may have concluded that some claims are anticipated, but some claims may remain unanticipated by this prior art.

Can we now find ‘the difference’ in any of the common general knowledge documents available to us? And if we can find ‘the difference’ is there anything that would lead us at least to try to use that ‘difference’, or is there anything that would make us think that trying the ‘difference’ would just be a waste of time?

The answers to these questions depend very much on your initial interpretation of the claims, and your analysis of the prior art, and your thinking about the circular saw blade. While it does have a tooth pattern which is identical to that of the preferred embodiment, it is a circular saw, and so only has the leading edge of each tooth sharpened, and it is intended for use in cutting marble, whereas you could conclude ( from the closing words of the second paragraph of the patent) that bowsaws are only used for cutting wood.

Did you see that the circular saw could have been ‘formed of a steel strip’? Could the sheet used to make the circular blades, which is one blade wide and ten blades long be a strip? If it is a strip, is the blade ‘formed of a steel strip’? You can see there is some room to argue here, but is it relevant? Even if the circular blade is formed of a steel strip, is the circular saw blade a blade ‘for a bowsaw’? Of course, in a real FD4 examination you would have the circular saw to consider when doing novelty, and the point of ‘formed of a steel strip’ would have to be discussed at that time.

So, there are various possible ‘obviousness’ attacks. The blade of Fig 1 can be the prior art, and that can be combined with the tooth layout of the circular saw. The bandsaw can be combined with the circular saw (depending on your construction of ‘for’ in claim 1). The bandsaw can be combined with Figure 1.