T 0816/16 - The purpose of the CPA

Key points

• The Board finds the patent to be obvious in view of D7.
•  “ The [patentee] has stressed that other documents, especially documents mentioning all three mandatory ingredients, are closer to the claimed subject-matter than document [D7].”
• The Board: “the question of whether a particular disclosure is closer or further removed in relation to the subject-matter claimed is irrelevant. Starting the assessment of inventive step from the "closest prior art" serves the purpose of avoiding the need to consider a multitude of potential starting points as it can be assumed that wherever a particular claimed subject-matter involves an inventive step having regard to this "closest prior art", it will all the more involve an inventive step when the assessment is based on a disclosure which is not the "closest" prior art.”
• The Board: “ Under Article 56 EPC, a claimed invention can only be considered as involving an inventive step if it is not obvious to the skilled person having regard to the state of the art, i.e. any prior art disclosure subject to Article 56, second sentence, EPC. The board considers that in view of the outcome of the assessment of inventive step, it is irrelevant that other documents might potentially be closer.”
• As a comment, let me quote Szabo EIPR 1986 p.293-303 (the original source, so to say): “If the invention is, on the other hand, upheld in spite of the existence of the closest art, other less relevant citations need hardly be considered as starting points for such challenge. In case of more than one specific disclosure with virtually equal “closeness”; in this respect, it is worthwhile checking the results of the investigation from each starting point, since the outcome should be the same if eventually the same documents are considered together. An opponent may nevertheless always try to launch an attack based on a different document, and if successful, this would become the closest art in the given circumstances.” (note, 'always' here does not mean 'late in the procedure').

 T 0816/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160816eu1.html

3.7 Further arguments

3.7.1 The respondent has stressed that other documents, especially documents mentioning all three mandatory ingredients, are closer to the claimed subject-matter than document (7).

In the board's opinion, the question of whether a particular disclosure is closer or further removed in relation to the subject-matter claimed is irrelevant. Starting the assessment of inventive step from the "closest prior art" serves the purpose of avoiding the need to consider a multitude of potential starting points as it can be assumed that wherever a particular claimed subject-matter involves an inventive step having regard to this "closest prior art", it will all the more involve an inventive step when the assessment is based on a disclosure which is not the "closest" prior art. Under Article 56 EPC, a claimed invention can only be considered as involving an inventive step if it is not obvious to the skilled person having regard to the state of the art, i.e. any prior art disclosure subject to Article 56, second sentence, EPC. The board considers that in view of the outcome of the assessment of inventive step, it is irrelevant that other documents might potentially be closer.