In a leading decision, BGH X ZR 137/22 – Moisture and Ash Analysis, the Federal Court of Justice (BGH) again commented on inventive step.

The BGH confirmed that the subject matter of the patent in dispute involves inventive step. The legal assessment focused on whether the subject matter of claim 1 would have been obvious to a person skilled in the art based on the prior art.

• The BGH examined, in particular, documents N1 (US patent 4,522,788) and N2 (US patent 6,203,760) in detail. Regarding the combination of N1 and N2, the BGH found that there would have been no obvious inspiration for a person skilled in the art to combine the device described in N1 with the autosampler from N2 to achieve the solution claimed in the patent in dispute. This was because N1 pursued a different method for sample analysis (filling in the furnace), and N2 offered no suggestion as to how a furnace with already filled crucibles could be loaded essentially in a closed manner. The mere possibility that N2 could also be suitable for moisture and ash analysis devices was not sufficient. Even based on N2 alone, the Federal Court of Justice saw no suggestion as to combining the autosampler described there with a furnace of the type used in N1, particularly with regard to filling the crucibles. Furthermore, N2 provided no indication of analytical devices that could accommodate a large number of crucibles. The disclosure content of N2 was no more extensive in this respect than that of N6, which was already deemed insufficiently stimulating.
• Document N3 (German patent application 38 14 959) was assessed as not providing any further stimulating information, as it is only suitable for moisture analysis and not for ash analysis.

In summary, the Federal Court of Justice concluded that the combination of known elements in the manner of the patent in dispute was not obvious to the skilled person, as the individual documents pursued different technical approaches and there was no sufficient incentive to combine them in the manner of the invention. The inventive solution required inventive consideration that went beyond the mere combination of known features.

The Federal Court of Justice thus clarified that the mere possibility of combining technical solutions from the prior art is not sufficient in itself unless there is a specific reason for doing so. Accordingly, appropriate suggestions and indications are required that would encourage such a combination. The decision thus confirms the well-known case law on inventive step.

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