T 1892/17 27-08-2021

Reasons for the Decision

1. The appeal is admissible.

2. Main request - Inventive step (Articles 100(a) and 56 EPC)

2.1 Technicality

2.1.1 All features of claim 1 of the patent as granted are to be taken into account in the assessment of inventive step.

2.1.2 The method of optimising a chronological developing of consumption of electric power according to claim 1 inter alia comprises measuring the consumption of electric power of the individual consumers (feature 1.3.1) as well as apportioning of the electric power to the individual consumers (feature 1.6). These features thus imply the use of corresponding technical means in a physical entity, making the claimed method eligible to be patented under Article 52(2) EPC.

2.1.3 However, the respondent argued that features 1.3.2, 1.4 and 1.5.1 to 1.5.3 do not have a technical character, but rather relate to mere mental acts and therefore are not to be taken into account in the assessment of inventive step.

2.1.4 The board recognises that method steps 1.3.2, 1.4 and 1.5.1 to 1.5.3 of claim 1, relating to determining characteristic time curves, making a prognosis for a future time period, making a plan for apportioning of electric power based on the characteristic time curves and adapting it to the prognosis, when considered in isolation, only involve data processing and simulation aspects. However it is a general principle that the question whether a feature contributes to the technical character of the claimed subject-matter is to be assessed in view of the whole scope of the claim.

The claimed invention does not refer to a simulation as such. The data processing or simulation is rather defined in claim 1 as being based on (real) measurements of consumed electric power in a technical system, resulting in a plan and a prognosis, which does not produce a purely virtual effect. Rather, the plan made on the basis of the characteristic time curves and thus, on the basis of the measured consumed electric power, is in fact defined in claim 1 as being used for a (real) apportionment of the electric power according to this plan within the future period of time at a temporal resolution equal to at least 0.1 Hz (feature 1.8). Consequently, claim 1 is clearly limited to a technical teaching, involving the specific technical use of the calculated characteristic time curves, plan and prognosis. Features 1.3.2, 1.4 and 1.5.1 to 1.5.3 in particular define a way of processing the measured consumed electric power such as to achieve an appropriate apportionment of electric power to individual consumers, and thus contribute to a specific technical effect. Thus, irrespective of wether features 1.3.2, 1.4 and 1.5.1 to 1.5.3 are per se considered to be technical or non-technical in nature, in the overall context of claim 1, they in any case provide a technical contribution to the invention, having technical character as a whole, over the prior art, and are consequently to be taken into account in the assessment of inventive step (see also the findings in T 0641/00 (COMVIK), Headnote I.).

2.1.5 For the sake of completeness, the board observes that it does not understand the decision G 1/19, cited by the respondent, to mean that any feature in a claim related to a simulation, if considered in isolation, is in principle not to be taken into account in the assessment of inventive step, and the respondent has not submitted anything further in this respect.

2.1.6 The board has therefore come to the conclusion that features 1.3.2, 1.4 and 1.5.1 to 1.5.3 are to be taken into account in the assessment of inventive step.

2.2 Closest prior art document D1

2.2.1 The appellant did not contest that document D1 could be considered as the closest prior art document in the assessment of inventive step of the subject-matter of claim 1 of the patent as granted.

2.3 Distinguishing features over the closest prior art document D1

2.3.1 Furthermore, it was not in dispute that the subject-matter of claim 1 of the patent as granted differs from document D1 in that it did not disclose the sample rate and temporal resolution according to features 1.7 and 1.8 of claim 1.

2.3.2 The board agrees with the appellant that, in addition, document D1 does not disclose the determination of characteristic time curves of the consumption of electric power by the individual consumers (feature 1.3.2) and making a plan for apportioning electric power on the basis of these characteristic time curves of the consumption of electric power by the individual consumers (feature 1.5.2).

2.3.3 The respondent referred to several passages in the description of document D1, in particular paragraphs [0007], [0009], [0010], [0012], [0027], [0028], [0059] and [0060], while substantially arguing that the person skilled in the art would understand from these passages that characteristic time curves of the consumption of electric power by the individual consumers must necessarily be determined in order to regulate the energy flow to the individual consumers (see in particular paragraph [0027], fifth indent).

2.3.4 The board notes that paragraph [0059] as well as other passages in D1 may indeed refer to the use of a history of consumed power. It is also true that D1 in paragraph [0027], fifth indent, discloses switching on or off of individual power consumers, and that paragraph [0012] discloses recognising energy use habits and a prognosis for future energy usage. However, none of these passages, either explicitly or implicitly, discloses directly and unambiguously the determination of characteristic time curves of the consumption of energy of individual consumers and making a plan for apportioning of electric power based on these curves.

To the contrary, the board agrees with the appellant that document D1 is primarily concerned with the determination and smoothing of the overall power consumption (see for example paragraph [0010], first indent: "Gesamtenergieverbrauch", paragraph [0009]: "...Lastkurven beim Energieverbrauch optimal zu glätten..."). The board is thus convinced that the skilled person would understand the respective passages on the determination of the consumption of electric power of the individual consumers in the context of the determination and smoothing of the overall power consumption. This is also supported by the fact that, as the appellant has correctly submitted, the teaching of document D1 centres on the use of mobile energy sources to smooth the overall load curve. For this purpose, the determination of characteristic time curves of the consumption of electric power of individual consumers and the provision of a plan for apportioning electric power to the individual consumers based on characteristic time curves is neither provided for nor required in the overall teaching of document D1. The skilled person would therefore not read these features into document D1.

2.3.5 Furthermore, the board cannot accept the respondent's argument that the switching on and off of individual consumers, as disclosed in paragraph [0027], fifth indent, necessarily requires the determination of characteristic time curves of individual consumers as defined in feature 1.3.2. As the appellant has correctly pointed out, the passage in question generally refers to a regulation of an energy flow, in particular by switching on and off individual consumers and it does not provide any detail on either the type of control structure or on the controlled variable such as the overall energy flow or the energy flow to the individual consumers. Therefore, it cannot be derived directly and unambiguously from this paragraph that characteristic time curves of the consumption of electric power of individual consumers are determined and a plan for the apportioning of electric power to the individual consumers is provided on the basis of these characteristic time curves.

2.3.6 Furthermore, the board is not convinced by the respondent's argument, according to which feature 1.3.2 represents a non-restrictive statement of purpose and had thus to be considered as an optional feature in the context of claim 1. The board rather considers feature 1.3.2 to limit claim 1 in the sense that the measured electrical power consumed by the individual consumers (feature 1.3.1) is not only suitable to be used for determining characteristic time curves according to feature 1.3.2. In the overall context of claim 1, feature 1.3.2 is clearly to be understood as actually determining characteristic time curves, because these form the basis for establishing the plan according to features 1.5.1 and 1.5.2 as well as the apportionment of electric power according to feature 1.6. Concerning the latter feature 1.6, the skilled person, in the overall context of claim 1, would not understand this feature to be optional in the sense that an apportionment of power could or could not involve a flow of energy to the individual consumers. Rather, it is evident that an apportionment of power in the sense of feature 1.6, especially in conjunction with feature 1.8, implies an actual flow of power to the individual consumers.

2.3.7 Finally, also the respondent's argument that the preamble of claim 1 had been accepted by the appellant to be delimited with respect to document D1, does not convince the board. The patent under appeal in paragraph [0009] may acknowledge document D1 to disclose a known method and an apparatus for optimising a chronological developing of consumption of electric power by a group of different consumers. However, this passage does not give rise in anyway to the assumption that document D1 discloses all features of the preamble of claim 1. To the contrary, the passage in question provides an appropriate summary of D1, which particularly refers to the overall power consumption and stationary power sources that are considered in D1 for the purpose of an optimised utilisation of energy. Moreover, even if this were the case, in the appeal proceedings the appellant explicitly did not acknowledge features 1.3.2 and 1.5.2 as being disclosed in D1, and the respondent's argument is therefore irrelevant.

2.3.8 The board has therefore come to the conclusion that document D1, in addition to features 1.7 and 1.8, does not disclose features 1.3.2 and 1.5.2., according to which characteristic time curves of the consumption of electric power by the individual consumers are determined and a plan for apportioning electric power to the individual consumers is made based on the characteristic time curves of the consumption of electric power by the individual consumers.

2.4 Objective technical problem

The respondent has considered the objective technical problem starting from D1 and in view of the distinguishing features 1.3.2 and 1.5.2 to be that of how to provide a more accurate control of the power consumption of individual consumers. The board finds the objective technical problem to be appropriate and the appellant has not objected to it. It therefore forms the basis for the further assessment of inventive step.

2.5 Obviousness

2.5.1 The subject-matter of claim 1 is not rendered obvious in view of the closest prior art document D1.

2.5.2 The board agrees with the appellant that the person skilled in the art, when starting from document D1 and in view of the objective technical problem, would not have modified the method of D1 such as to arrive at the claimed invention.

Document D1 concentrates on the overall power consumption and smoothing of load peaks, in particular by means of mobile energy sources (see for example paragraph [0009]). A plan is particularly disclosed as forming the basis for discharging the mobile energy sources in order to achieve an optimised energy usage in the system (see in particular paragraph [0010]). Thus, document D1 strongly concentrates on taking into account the total energy use and also uses measurements of the consumption of individual consumers exclusively for this purpose. The determination of characteristic time curves of the electric power consumption by individual consumers, in particular in connection with a high measurement sample rate (feature 1.7) and a resulting high temporal resolution of the apportionment of power (feature 1.8), is therefore in contrast to the teaching of D1. Accordingly, figures 4 to 8 disclose time blocks having a length of 40 minutes, being in contrast to the present invention, which focuses on apportioning of electric power according to a plan, which is based on characteristic time curves of the individual consumers, and which has a temporal resolution equal to at least 0.1 Hz.

2.5.3 Since the measurement of a consumption of electric power by the individual consumers is carried out with a comparatively higher sample rate as defined in feature 1.7, the determined characteristic time curves and the plan based on them also have a higher resolution (features 1.3.2 and 1.5.2), and consequently, the apportionment of the electric power to the individual consumers can be carried out with a higher temporal resolution (feature 1.8). The objective technical problem is thus solved in an advantageous manner by the specific combination of features 1.3.2, 1.5.2, 1.7 and 1.8. The board therefore recognises a synergistic effect of features 1.3.2, 1.5.2, 1.7 and 1.8.

2.5.4 The solution to the objective technical problem according to the aforementioned combination of distinguishing features is neither described in the prior art nor is it suggested by any of the prior art documents.

2.5.5 In particular, the person skilled in the art does not receive a hint towards the solution from paragraph [0014] of document D1, which discloses a permanent monitoring of data structures ("...durch diese Datenstrukturen ständig überwacht und überprüft werden..."). The board does not recognises any interrelation between the solution according to the distinguishing features and this paragraph.

2.5.6 Furthermore, document O3 on page 6, third paragraph may disclose a sampling rate according to feature 1.7. However, the board does not see any hint here either to the combination of features 1.3.2, 1.5.2, 1.7 and 1.8, defining the solution to the objective technical problem underlying the invention.

2.5.7 Moreover, under point 2.3.4 above, the board has already set out that the person skilled in the art would derive from the overall disclosure of document D1 a teaching which does not use the measured power consumption of the individual consumers to determine characteristic time curves and to establish a plan for apportioning of electric power to individual consumers based on these characteristic time curves. Document D1 rather teaches to consider the total energy consumption of the system as well as smoothing of load peaks substantially by switching mobile energy sources and/or individual consumers on and off. The fact that the consumption of electric power by the individual consumers is measured in this context is not equivalent to the determination of characteristic time curves and the establishment of a plan for apportionment of electric power based on these time curves. Thus, D1 does not provide any hint to the person skilled in the art to modify the method disclosed in it in such a way that the solution according to the invention is implemented in a manner departing from the consideration of the total energy consumption.

2.5.8 The subject-matter of claim 1 therefore is not rendered obvious by document D1 either in combination with the common general knowledge of the skilled person or in combination with document O3. The same applies to the independent apparatus claim 8, which comprises device features corresponding to the method features of claim 1.

2.6 Inventive step in view of document O1 - Admissibility (Article 13(2) RPBA 2020)

2.6.1 During the oral proceedings before the board, the respondent for the first time has raised an objection under Articles 100(a) and 56 EPC against the main request based on document O1 as the closest prior art document.

2.6.2 The respondent's reply to the proprietor's appeal did not include an objection against the main request under Articles 100(a) and 56 EPC based on document O1 as the closest prior art document. Nor was this an objection on which the decision under appeal was based.

2.6.3 The appellant in the statement setting out the grounds of appeal under point F on page 11 had stated the following:

"In fact, O1 discloses no less features of the present invention than D1, compare Point 5 of the Summons to the oral proceedings, in which the Opposition Division assumes that (in addition to features 1, 1.1., 1.2 and 1.6) features 1.3 and 1.5 are also be given in O1. Thus, O1 might be considered closest prior art at least equally well as D1."

2.6.4 In a communication annexed to the summons to oral proceedings, the board under point 12 had noted that the appellant seemed to have referred to document O1 as an alternative starting point in the assessment of inventive step, which might therefore become a point for discussion at the oral proceedings.

2.6.5 With letter of 26 February 2021, the respondent replied to the board's preliminary opinion set out in the communication annexed to the summons to oral proceedings. Despite the board's remark under point 12, document O1 was not addressed in this letter, particularly no objection of lack of inventive step starting from this document was raised and substantiated.

2.6.6 According to Article 13(2) RPBA 2020, which in the present case is applicable under Article 25(1) RPBA 2020, any amendment to a party's appeal case made after notification of the summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances.

2.6.7 The reference to document O1 in the statement setting out the grounds of appeal concerns the appellant's appeal and is limited to referring to this document as a possible closest prior art. The respondent could have adopted and developed the appellant's statement with regard to document O1 as the closest prior art in their own appeal case when filing the reply to the proprietor's appeal. However, the respondent failed to do so. It was not until the oral proceedings that the respondent referred to document O1 for the first time in the appeal proceedings and presented a substantiated objection under Articles 100(a) and 56 EPC based on document O1, which went far beyond what the appellant had submitted in their statement setting out the grounds of appeal. This therefore constitutes an amendment of the respondent's appeal case, filed at the last stage of the appeal, in the sense of Article 13(2) RPBA 2020.

2.6.8 As set out above, in the present case, the appellant in the statement setting out the grounds of appeal referred to document O1 as a possible closest prior art document, which was however not referred to as a starting point in the assessment of inventive step in the decision under appeal. Contrary to the respondent's view, these circumstances may be unusual, but they are not exceptional within the meaning of Article 13(2) RPBA 2020 such that they could justify a new objection under Articles 100(a) and 56 EPC on the basis of O1, to be raised in substance for the first time at the oral proceedings before the board.

2.6.9 The respondent substantially argued that the appellant had introduced the objection based on document O1 into the proceedings themselves and that they were therefore entitled to adopt this objection. The board is not convinced by this argument for the reasons set out above. In particular, given that the jist of the appellant's argument in the statement of grounds of appeal was that the subject-matter of the patent did involve an inventive step over O1, the respondent's objection based on that document could and should have already been raised and substantiated with the reply to the appeal. This is particularly valid since this objection would have involved a completely new discussion, due to the fact that it had not formed part of the appealed decision. The respondent at least would have had reason to provide a substantiated objection based on document O1 in the letter of 26 February 2021. No exceptional circumstances are therefore apparent that would justify the new objection raised for the first time during the oral proceedings before the board.

2.6.10 In light of the above, the board has exercised their discretion under Article 13(2) RPBA 2020 not to take into account the respondent's objection under Articles 100(a) and 56 EPC based on document O1 as the closest prior art document in the appeal procedure.

2.7 Conclusion

Consequently, the board has come to the overall conclusion that the ground for opposition under Article 100(a) in combination with Article 56 EPC does not prejudice the maintenance of the patent as granted.

3. Result

Given that the ground for opposition under Article 100(a) in combination with Article 56 EPC does not prejudice the maintenance of the patent as granted and further considering that the respondent did not raise any further objections against the main request, the board had to accede to the appellant's main request.