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Raytheon: On-demand instantiation in a computing system

On the 22 June 2016 the Technical Board of Appeal issued its decision (T 1742/12) regarding an appeal concerning the selection of closest prior art when it is ambiguous as to which document is closest to the claimed arrangement.

In this case, the appellant (Raytheon) had filed an application which was rejected by the examining division for lack of inventiveness with respect to D1.

Raytheon appealed against the decision of the examining division on the grounds that the document selected as the closest prior art was inappropriate, as it was not intended for the same purpose as the claimed system.

Raytheon cited several earlier decisions in support of their appeal (including T 254/86 and T 606/89) which each suggested that D1 would not be allowable as the closest prior art.

Raytheon also noted that decisions, such as T 21/08, have come to differing conclusions as to whether D1 would be allowable as the closest prior art, and in view of this discrepancy requested that questions be referred to the Enlarged Board of Appeal; this request was refused by the Board of Appeal.

The Board of Appeal found that the approaches of T 21/08 and T 967/97 were correct in finding that if the skilled person had a choice of several workable routes which might lead to the invention (ie, if several different documents could reasonably to used as a basis for assessing inventiveness), then the problem-solution approach should be assessed with respect to each of these routes. Several further decisions were cited that also supported this reasoning, and as such it was considered that the findings of T 967/97 and T 21/08 were not isolated outcomes as was suggested by the appellant.

While the Board of Appeal did agree that the intended purpose of an invention (both of the claimed invention and a cited prior art document) is relevant when assessing inventive step, a difference between the purposes of the two documents does not preclude the use of the prior art in assessing the inventiveness of the claimed invention; that is, unless the difference is so large that it is inconceivable that the skilled person would consider modifying the earlier arrangement to arrive at the claimed arrangement.

The Board of Appeal instead found that it was only necessary to determine whether it would be obvious to modify the prior art to provide the features of the claimed arrangement; the closest prior art should be considered to be the disclosure from which it would be most obvious to derive the claimed arrangement, not necessarily the one that has the most similar intended use.

The Board of Appeal further stated that that an inventive step objection does not become invalid simply because another document has been established as the closest prior art; this is clearly unreasonable, and could lead to situations in which the person skilled in the art could be disadvantaged by having a greater knowledge of existing arrangements. Therefore the introduction of a new document, D6, which was suggested as the closest prior art by the appellant is not taken to be prejudicial to the inventive step argument based upon D1.

In the appeal it was held that D1 was a suitable document upon which to base an inventive step argument, and that D1 rendered the independent claims of each of the main and first three auxiliary requests invalid for a lack of inventiveness.The application was referred back to the examining division for further processing on the basis of the fourth auxiliary request.


The Technical Board of Appeal found that when the selection of the closest prior art is not clear-cut, and the skilled person has several routes by which they could derive the invention starting from different documents, inventive step should be assessed with respect to each of these documents. If any of the routes are deemed to be obvious, then the claims should be rejected for a lack of inventive step regardless of which document is initially identified as the closest prior art.

Useful link

Full decision T 1742/12: http://dycip.com/t174212