T 1608/14 - All inventive step attacks

Key points

• In this opposition appeal, the Board concludes that claim 1 is novel, unlike the OD's decision. The Board then remits the case.
• " the Opposition Division did not examine and decide the ground of inventive step. Though in appeal the respondent challenged inventive step starting from D1, in opposition they had contested inventive step in view of various other combinations of prior art not considered in the decision under appeal (D4 with D6 or D7 with D6 or D1)." 
• " Remittal also appears equitable under the circumstances of the present case so that both parties can be in a position to argue on inventive step at the least in view of all attacks presented in opposition." (emphasis added).
• As a comment, the above remark of the Board indicates that (also) the opponent should be brought in "a position to argue on inventive step at the least in view of all attacks presented in opposition" 

EPO T 1608/14 - link

4. Remittal

4.1 The Board has considered the opposition grounds based on Article l00(c) together with Article 123(2) EPC, and Article 100(a) together with Articles 52(1) and 54(1) EPC for the main request, and has reached the conclusion that claim 1 of that request is thus allowable in this respect.

4.2 However, the Opposition Division did not examine and decide the ground of inventive step. Though in appeal the respondent challenged inventive step starting from D1, in opposition they had contested inventive step in view of various other combinations of prior art not considered in the decision under appeal (D4 with D6 or D7 with D6 or D1). Both parties request remittal if inventive step is to be fully examined in the light of these combinations. Indeed the Board has not had opportunity to consider these other combinations.

Remittal also appears equitable under the circumstances of the present case so that both parties can be in a position to argue on inventive step at the least in view of all attacks presented in opposition.

4.3 In view of the above, the Board decided to exercise its discretionary power under Article 111(1) EPC to remit the case to the department of first instance, especially as both parties also agree on remittal for a full examination of the question of inventive step, where this examination should also based on other documents.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.