T 0261/19 - Non-obvious having regard to any prior art

 Key points

• The Board: “ In any case, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the state of the art, i.e. any prior art disclosure with the exclusion of documents under Article 54(3) EPC. ”
• I think the emphasis on  “any prior art” in this decision is noteworthy.
• “The determination of the "closest prior art" within the problem-solution approach is an efficient way to address the available prior art disclosures because if inventive step of a claimed invention can be acknowledged when starting the assessment having regard to the "closest" prior art, this will apply all the more so when starting the assessment from a prior art disclosure which is more remote and, hence, such further assessments can be dispensed with. On the other hand, inventive step has to be denied if, having regard to a particular prior art, the claimed solution was obvious to the skilled person.”
• “ In such a case, the choice of that prior art as the starting point for the assessment of inventive step needs no specific justification as the claimed invention must, as a general rule, be non-obvious having regard to any prior art”

T 0261/19 -
https://www.epo.org/law-practice/case-law-appeals/recent/t190261eu1.html

2.5 In any case, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the state of the art, i.e. any prior art disclosure with the exclusion of documents under Article 54(3) EPC. The determination of the "closest prior art" within the problem-solution approach is an efficient way to address the available prior art disclosures because if inventive step of a claimed invention can be acknowledged when starting the assessment having regard to the "closest" prior art, this will apply all the more so when starting the assessment from a prior art disclosure which is more remote and, hence, such further assessments can be dispensed with. On the other hand, inventive step has to be denied if, having regard to a particular prior art, the claimed solution was obvious to the skilled person. In such a case, the choice of that prior art as the starting point for the assessment of inventive step needs no specific justification as the claimed invention must, as a general rule, be non-obvious having regard to any prior art (see also in this context T 1742/12, points 6.3 and 6.6 of the reasons and T 967/97, point 3.2 of the reasons).

Therefore, although D5 may relate to the same purpose as the patent (D5, paragraph [0008]), this does not disqualify disclosures relating to a similar purpose such as D4 being considered as a valid starting point in the assessment of inventive step.