Key points
- "In the decision under appeal, the opposition division found that D1 was not only the closest prior art for the subject-matter of claim 1 but that it was also the only suitable starting point to be used in the context of the problem-solution-approach."
- " The Board does not agree with this finding. As a general rule, the claimed invention must be non-obvious having regard to the prior art, which can only be understood to mean any prior art (see e.g. T261/19, Reasons 2.5, citing T1742/12, points 6.3 and 6.6 of the reasons and T967/97, point 3.2 of the reasons). Considering the broad scope of claim 1, the Board sees no reason as to why D8 or D9 should not represent a suitable starting point for considering inventive step, whether it be the absolute "closest" prior art in some sense, or not. The term "closest prior art" is simply a label given to the prior art from which the inventive step analysis is started."
- " Starting the inventive step analysis from prior art which is (possibly) further away from the claimed invention (e.g. by having less features in common), can merely be expected to make it more difficult to arrive at the claimed subject-matter without involving an inventive step. In order to be allowable, the claim must therefore define subject-matter involving an inventive step also when considering D8 or D9 as the closest prior art starting point."
- "During the oral proceedings before the Board, the Board furthermore concluded that the ground for opposition under Article 100(a) and 56 EPC did prejudice maintenance of the patent (according to the now withdrawn main request) when starting from D9 as the closest prior art (for further details, see the minutes of the oral proceedings before the Board), and notably without reference to any further prior art document. Since the main request was found not to be allowable, the contested decision to reject the opposition has to be set aside."
- "Whether inventive step would also have been lacking when starting from D1 or D8 as being the closest prior art was not decided. The Board's decision to remit the case (see below) should not be understood such that only D9 might now be considered as the closest prior art when considering inventive step."
- "D8 and D9 were filed late in the proceedings before the opposition division. Both documents were admitted into the proceedings by the opposition division" The Board does not overrule this decision.
- Auxiliary Requests 6 to 9, filed with the appeal reply brief of the patentee as respondent, are admitted. "At the start of the oral proceedings the Chairman stated that the Board could see no reason for excluding any of the auxiliary requests and made reference to its preliminary opinion (see item 4.1), whereby in particular "convergence" of the subject-matter in the auxiliary requests and the possible lack of procedural economy resulting therefrom were not factors to be considered when applying Article 12(4) RPBA 2007. "
- The Board remits the case, noting that there are no objections under Art. 123(2) and Art. 84 for auxiliary request 6. "The added feature common to auxiliary requests 6 to 9 (i.e. the discontinuous portions) however raises questions to which the opposition division had no opportunity to give its opinion. The appellant had additionally cited further prior art (see e.g. its submission of 4 December 2019 in relation to the sixth auxiliary request) which it considered relevant in this regard."
EPO
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/2022/10/t-230018-considering-broad-scope-of.html
