Key points
- " The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent", in addition to inventive step attacks starting from other documents.
- " In appeal, [the opponent] presented a new [inventive step] objection based on the fact that D6 did not disclose feature [1.3](c)."
- " The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12)."
- " This [that D6 did not disclose feature [1.3](c)] is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6."
- The fact/argument distinction is a rather subtle one. The distinction is, however, important because new arguments that do not involve new facts might not be covered by Art. 114(2) EPC. The decision treats the admissibility under Art. 12(4) RPBA 2007, and "the board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments."
- "Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings."
- As a comment, the appeal decision also notes that: "the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)").
- As a comment, it is unclear to me how this - D6 does not disclose feature 1.3.c - could be a new fact presented for the first time in appeal, given the remark in the minutes that "the opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). "
- The impugned decision and the minutes are a part of the basis of the appeal under Art.12(1)(a) RPBA 2020.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2023/11/t-156919-from-novelty-to-inventive-step.html
