T 0176/84 - Prior art from a "neighboring technical field" - #56

Citation rank: 56
No. of citations: 85

T 176/84 was concerned with a decision from the examining division, which had refused an application claiming a hand-operatable pencil sharpener including a container to collect the shavings, enclosed to prevent egress of shavings, the containing having an aperture through which the pencil to be sharpened can be inserted, and the aperture is closed completely when the sharpener is not in use. The closing of the pencil sharpener was effected by a slider, which slider was pushed open by the pencil, when the pencil was inserted.

The state of the art included hand-operated pencil sharpener, which also included a slider to open and close the aperture, however, those sliders had to be opened manually, not automatically by insertion of the pencil.

The examining division, in the contested decision, considered that the claimed pencil sharpener lacked inventive step in view of a document disclosing a savings-box having an aperture, which was opened automatically when a coin was inserted into the box and then closed again. The examining division was of the opinion that the field of saving-boxes was sufficiently close to the field of pencil sharpeners for it to be taken into account, because both pencil sharpeners and savings boxes belonged to the "broader field of the closing of containers".

The Board in T 176/84 disagreed. They stated: 

5.3.1 While it is indeed perfectly reasonable to expect a person skilled in the art if need be, i.e. in the absence of useful suggestions in the relevant field as to how a given problem might be solved, to look for suitable parallels in neighbouring fields, the question of what is a neighbouring field is one of fact and the solution depends, in the opinion of the Board, on whether the fields are so closely related that the person skilled in the art seeking a solution to a given problem would take into account developments in the neighbouring field. It is furthermore quite reasonable to expect a skilled person to refer to the state of the art in the general field of technology in which the same problems or problems similar to those in the special field of the application extensively arise and of which a person skilled in the art must be expected to be aware.

5.3.2 In the present case, even adopting the same premise as the Examining Division that the person skilled in the art by abstracting the problem would eventually, in his search for suggestions as to how he might solve the problem underlying the application, turn to the broader, that is to say general field of container closing, while he would then have entered what the Examining Division considers to be the generic field, he would not have reached the field of securing mechanisms for savings-box slots. In view of the technological differences between the two fields - storage of coins in a container as opposed to sharpening of pencils with provision for collection of shavings - there is no reason why it should occur to a skilled person to refer to this specific area - which the Examining Division considers to be part of the same broader field - to see how similar problems had been solved there.

The Board concluded that the claimed pencil sharpener was inventive.

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Headnote:

The state of the art to be considered when examining for inventive step includes, as well as that in the specific field of the application, the state of any relevant art in neighbouring fields and/or a broader general field of which the specific field is part, that is to say any field in which the same problem or one similar to it arises and of which the person skilled in the art of the specific field must be expected to be aware.

The full text of the decision can be found here.