Novelty on a mental level does not count T 2191/13

The decision T 2191/13 relates to a two-component adhesive system wherein the amount of one of the components B is supposed to be adapted to the respective substrates and processing conditions.

The two-component adhesive system as such was disclosed in the closest prior art but disclosure on whether or not the amount of component B was adapted to anything was lacking.

The board found that the claim was not novel nonetheless. The headnote (in an unofficial translation) reads:

A difference to the prior art existing only on a mental level, which is exclusively based on the existence of an insight, cannot render the subject-matter a claim novel unless the insight is reflected in the technical features of the claimed subject-matter (points 12.3 and 12.4 of the reasons)

The board adds that accepting that features of this type would have a limiting effect would require the assessment of insights an alleged infringer had when selecting component B and the amount thereof when judging on the infringement.  

Conveying information and Inventive Step BGH "Entsperrbild"

In the case X ZR 110/13 "Entsperrbild", the BGH had do decide on a patent relating to the unlocking of a mobile phone. The key feature is that an icon (unlock image - the small arrow 402 in the figure on the rhs) is moved together with the finger when executing the unlock gesture.

The Bundespatentgericht had disregarded the icon in the assessment of inventive step and judged that it did not contribute to the solution of a technical problem.

The BGH did not agree. According to the headnote, features relating to the conveying of information in a patent claim need to be subject to a special treatment:

1. Statements relating to the conveying of certain information contents and hence aim at having impact onto the human imagination or intellectual power are, as such, disregarded in the assessment of inventive step. Statements relating to information which shall be conveyed according to the technical teaching of the invention are apt to support the patentability in view of inventive step only insofar as they determine or at least influence the solution of a technical problem by technical means.
2. Information-related features of a patent claim are to be examined as to whether the information to be conveyed is, at the same time, an embodiment of a means for a technical solution, which must not already be indicated as such elsewhere in the patent claim. In such a case, the means for the technical solution as to be considered in the assessment of inventive step.

This decision is likely to be discussed in more detail later on.