EPC: Choosing a Suitable Starting Point for Inventive Step & Remittal for an Incomplete Search (T 0610/24)

In T 0610/24, the Board set aside a refusal for lack of inventive step and remitted the case for further prosecution, including a further search. The decision is notable for its treatment of the “closest prior art” in the problem–solution approach and for clarifying when an incomplete prior art search can justify remittal under Article 11 RPBA 2020.

Background

The appeal concerned European patent application No. 19710517.4 (“pump chemical compatibility management system”). The examining division had refused the application for lack of inventive step under Article 56 EPC, starting from D5 (US 2010/0024915 A1).

Claim 1 related to a system in which a portable device reads identifiers (e.g. from RFID tags) for a chemical composition and a chemical pump, queries a database containing compatibility data, and outputs an indication of compatibility between the chemical composition and the pump.

Key findings of the decision

No disclosure of the relevant compatibility check in D5. The Board agreed with the appellant that D5’s check served to ensure that the correct chemical was dispensed into the correct container (avoiding mislabelling), rather than assessing compatibility between a pump and a chemical composition (points 4 and 4.1).

D5 was considered structurally remote. The Board went further and held that D5 did not disclose a “pump” at all, but an eductor (fluid-driven) operating on a different principle from a mechanically driven pump (point 4.1). On that basis, arriving at the claimed subject-matter from D5 would require adding a pump, then addressing chemical compatibility, and only then applying the automated compatibility check disclosed in D5 — without an identifiable motivation (points 4.2–4.3).

Closest prior art and avoidance of hindsight. The Board restated that, although it is not mandatory to start from the strictly closest prior art, it is recommended to start from prior art with a similar purpose and overall technical effect, because more remote starting points risk ex post facto reasoning and “hindsight problems” (point 4.4). Applying this, the Board found D5 unsuitable because it neither pursued the same purpose nor disclosed the structurally significant component (the pump) required for the invention’s technical problem to arise (point 4.4).

Analysis and implications

The Board indicated that a more suitable starting point would be a system already involving a chemical pump and addressing chemical compatibility issues, enabling a more realistic objective technical problem such as automation of the compatibility check (point 4.4). While the Board referred to an internet document (D6) discussing chemical compatibility checks, it noted that the publication date was uncertain and could not exclude that more suitable prior art existed (points 4.4–4.5).

This fed directly into remittal. The Board observed that the search had focused on IPC class G06Q and did not encompass liquid pumps or compatibility issues, so the relevant state of the art was not properly established (points 4.6 and 6.1). Given this incomplete search, the Board considered itself unable to decide inventive step and found “special reasons” to remit under Article 11 RPBA 2020, exercising its power under Article 111(1) EPC; it also pointed to the need to include pump-related prior art (e.g. IPC class F04) to come to a complete search (point 6.1).

Conclusion

T 0610/24 underscores that, in the problem–solution approach, selecting a realistic starting point aligned in purpose and technical context is central to avoiding hindsight (point 4.4). It also illustrates that where the initial search does not cover key technical aspects of the invention, evidenced by the search not covering certain IPC classes, remittal for a further search by the Examining Division may be justified as a special reason under Article 11 RPBA 2020 (point 6.1).