5 Jan 2018

T 1287/14 - CPA is an embodiment, not entire document

Key points

  • In this opposition appeal, the opponents submitted that the entire document D5 was the closest prior art, not only Example 1 thereof.
  • " The board agrees with the [opponents] only insofar as example 1 of D5, when taken as a starting point for assessing inventive step, should not be considered in isolation but rather in the overall context of D5. The specific starting point for assessing inventive step is however normally a set of features disclosed in combination in a document, e.g. an embodiment or example. [] For assessing inventive step it is therefore necessary to establish the distinguishing features over that specific starting point and to assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point." The Board adds that D5 can be " also referred to as "the closest prior art" in a more general sense". 
  • This post was published earlier on 24.12.2017 for a short time.


EPO T 1287/14 - link


5. Main request - inventive step
5.1 The invention concerns a gas treatment article.
5.2 The parties and the board agree that D5 is the closest prior art. The respondents [opponents] have also submitted arguments for lack of inventive step starting from D7, should the appellant [patentee] regard the latter document as the closest prior art. As this is not the case, it is not necessary to address inventive step based on D7 as the closest prior art.
5.2.1 The [opponents] were of the opinion that the closest prior art was the disclosure of D5 in its entirety, not a single embodiment such as its example 1. The board agrees with the respondents only insofar as example 1 of D5, when taken as a starting point for assessing inventive step, should not be considered in isolation but rather in the overall context of D5. The specific starting point for assessing inventive step is however normally a set of features disclosed in combination in a document, e.g. an embodiment or example, the latter document being also referred to as "the closest prior art" in a more general sense (see for instance T 888/96, reasons 5, T 507/98, reasons 5.1.1 to 5.1.3; T 319/08, reasons 8.2; T 99/10, reasons 3.2). For assessing inventive step it is therefore necessary to establish the distinguishing features over that specific starting point and to assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point.

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