Key points
- This opposition appeal case demonstrates how the choice of the CPA can be important.
- As a preliminary procedural point, the decision also illustrates that the appellant can use a rejoinder to submit evidence in reply to assertions that the respondent makes in his statement of reply.
- "The admittance of D12, D12a and D13 which were filed by the appellant after the statement of grounds of appeal, but before notification of the summons to oral proceedings, is subject to the stipulations of Article 13(1) RP[]showing the publication date of D12 and D13 were submitted to refute the respondent's assertions according to which [...]. On that basis and in view of the absence of any objection to their admittance by the respondent, the Board makes use of its discretion pursuant to Article 13(1) RPBA 2020 and admits D12, D12a and D13 into the proceedings."
- On to the inventive step over D1. "According to the case law [...] ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving. The aim thereof is that the assessment process should start from a situation as close as possible in reality to that encountered by the inventor, avoiding ex post facto considerations."
- "According to paragraph [0014] of the specification, the aim of the present invention was to provide VDF-TrFE copolymer materials which can efficiently undergo crosslinking under thermal or UV exposure conditions, yielding a uniformly cured material which still maintains outstanding piezoelectric, ferroelectric, pyroelectric and dielectric properties."
- "D1 merely address the use of the materials described in D1 "in the areas of curable elastomers and elastoplastics, adhesion enhancement, coatings, thermosetting resins, grafting polymers and the like" (paragraph [0013]). It does not address electric properties of the materials described in D1, let alone piezoelectric, ferroelectric, pyroelectric and dielectric properties which are at the core of the invention described in the patent in suit."
- "Summing up, reading into D1 that this prior art discloses copolymers comprising VDF and TrFE repeating units or using that document as starting point for assessing inventive step when it does not relate to the aim of the present invention, i.e. crosslinking VDF-TrFE copolymer materials while maintaining their piezoelectric, ferroelectric, pyroelectric and dielectric properties, can only be the result of an inadmissible analysis of D1 made with the hindsight knowledge of the invention described in the patent in suit, as is submitted by the respondent."
- "Therefore, the appellant's objection that the subject-matter of claim 1 lacks an inventive step starting from the disclosure of D1 fails to convince."
- The Board then finds the claim to be inventive starting from D2 and starting from D4.
- As a comment, it seems remarkable that the Board begins with "ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving", and seems to find that because D1 fail to mention the purpose, it is not a suitable starting point at all and any inventive step argument starting from it must fail.
EPO T 0058/19
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/08/t-005819-ideally-cpa-should.html
