T 0181/17 - Inventive step attack after novelty attack

Key points

• In this opposition appeal, the Board does not admit the inventive step based on D17. " The board notes that, over the course of the appeal proceedings, the opponent has submitted four substantive written submissions, all of which referred to D17, but only in the context of novelty. Introducing an attack based on D17 as the closest prior art at such a late stage in the proceedings confronts both the board and the patent proprietor with a completely new case." 
• The opponent argued that, since D17 had been used to attack novelty, it could have been expected that this document would also be used for an inventive-step attack. This does not convince the board. In view of the duty of a party to present its complete case, there is no obligation on the board (or on the patent proprietor) to speculate on other attacks. Novelty and inventive step are different grounds of opposition, and documents useful in attacking novelty are not necessarily the same as those that qualify as the closest prior art. Thus, the attack based on D17 as the closest prior art is not admitted into the proceedings in accordance with Article 13(1) Rules of Procedure of the Boards of Appeal." 
• The Board also confirms that in a claim for "method for the production of a composition according to any one of the preceding claims", the reference to the composition can provide for novelty (over a prior art document disclosing all the method steps, but not the product). The Board cites T 304/08. The Guidelines F-IV 4.13 were amended last year (2017) in order to omit the reference to T 304/08. The Guidelines now say the opposite at F-IV 4.13: "Consequently, a prior disclosure of the same method, which is suitable for producing said specific product but does not indicate that the specific product is produced with it, anticipates a claim to the method for the production of that specific product."

EPO T 0181/17 - link

6. Novelty of method claim 20

6.1 Claim 20 relates to a "[m]ethod for the production of a composition according to any one of the preceding claims, comprising the steps of: [...]". The opponent argued, citing T 304/08, that such a claim must be read as being directed to a process suitable for the production of one of the claimed composition.

6.2 In decision T 304/08, the board examined a claim directed to a "method for reducing malodor associated with a disposable absorbent product intended for the absorption of body fluids, said method comprising the steps of: [...]". The intention of such a claim was to protect a specific purpose (namely, reducing malodor associated with a disposable absorbent product intended for the absorption of body fluids). To sum up, the activity claim examined in T 304/08 was aimed at achieving an effect and not at producing a product.

6.3 However, claim 20 is directed to a different type of activity claim, namely to the production of a product. In particular, claim 20 relates to a production process resulting in the product of claim 1 (and its dependent claims 2 to 19). Thus, a product having the features of claim 1 must be the result of the method of claim 20, which means that not only the features of steps (i) to (iv) but also the features of the product of claim 1 are features limiting the subject-matter of method claim 20.

6.4 The opponent also cited D2, D21 and D22 against the novelty of the subject-matter of claim 20. However, none of these documents discloses compositions comprising 30 g fat (or more) per 100 ml. Consequently, these documents do not disclose the method of claim 20, which is a method for manufacturing a shelf-stable liquid aqueous nutritional composition comprising, among other things, more than 30 g fat per 100 ml of the composition.

6.5 D1 was also cited against the novelty of the subject-matter of claim 20. However, D1 does not disclose the preparation of a sterilised composition comprising more than 30 g of fat per 100 ml.

6.6 Thus, the subject-matter of claim 20 is also novel over the cited prior art.

7. Admissibility of the attack using D17 as the closest prior

7.1 At the oral proceedings, the opponent stated - for the first time in the appeal proceedings - that it would present an inventive-step attack based on D17 as the closest prior art. The patent proprietor objected to this new attack.

7.2 The board notes that, over the course of the appeal proceedings, the opponent has submitted four substantive written submissions, all of which referred to D17, but only in the context of novelty.

7.3 Introducing an attack based on D17 as the closest prior art at such a late stage in the proceedings confronts both the board and the patent proprietor with a completely new case.

7.4 The opponent argued that, since D17 had been used to attack novelty, it could have been expected that this document would also be used for an inventive-step attack. This does not convince the board. In view of the duty of a party to present its complete case, there is no obligation on the board (or on the patent proprietor) to speculate on other attacks. Novelty and inventive step are different grounds of opposition, and documents useful in attacking novelty are not necessarily the same as those that qualify as the closest prior art.

7.5 Thus, the attack based on D17 as the closest prior art is not admitted into the proceedings in accordance with Article 13(1) Rules of Procedure of the Boards of Appeal.