T 0229/85 - Objective technical problem / no pointers to the solution - #58

Citation rank: 58
No. of citations: 84

T 229/85 dealt with an important aspect of the problem-solution approach, namely with the question of how to formulate the objective technical problem.


As already mentioned here in this blog, the problem-and-solution approach, normally includes three stages:

(i) determining the "closest prior art",

(ii) establishing the "objective technical problem" to be solved, and

(iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person (GL 2017, G-VII, 5).

T 229/85 was is concerned with step (ii).

In the underlying decision, the examining division had refused the application for lacking inventive step. The invention concerned an etching process in which metal, such as copper, is etched from printed circuits by means of a solution containing sulphuric or phosphoric acid and hydrogen peroxide, and the etching solution is recycled. A problem occurring in the prior art processes was that the hydrogen peroxide decomposed through catalytic action of the etched/dissolved metal, mostly during recycling. Hydrogen peroxide therefore had to be added in relatively large amounts. The prior art used "stabilisers" to neutralise the dissolved metal ions, thereby reducing the amount of hydrogen peroxide that had to be added during the process. The invention proposed adding the hydrogen peroxide such that the "quantity of hydrogen peroxide [is] just sufficient for a single etching operation [and] is added to the solution immediately before or at the moment that the solution is applied to the circuit board it is desired to etch and that when the etching process is completed practically no hydrogen peroxide remains in the solution" (characterising feature of claim 1). Because the decomposition of the hydrogen peroxide (in particular during recycling) is reduced, the inventive process did not need (and use) any stabilisers in the etching solution.

The examining division formulated the technical problem as lying in the provision of a process that prevented the decomposition of hydrogen peroxide without using stabilisers. The Board, however, found that this definition of the problem was influenced by the information contained in the present application, and therefore inadmissibly incorporated part of the solution offered by the invention.

The Board stated:

"The idea of doing away with stabilisers is an essential part of the teaching of the invention as reflected in the solution given above and ultimately consisting in regulating the amount of hydrogen peroxide added to the solution and its timing. However, the technical problem addressed by an invention must be so formulated as not to contain pointers to the solution, since including part of a solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity. For this reason alone the decision of the Examining Division cannot stand." (point 5 of the reasons)

 For that reason, the Board decided that the decision of the examining division was set aside and the matter was referred back to first instance for a patent to be granted on the basis of the application as originally filed.


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Headnote:

The technical problem to be solved by an invention must be so formulated as not to contain pointers to the solution.

The full text of the decision can be found here.