T 0864/12 - Res judicata

Key points

• In this decision, it is res judicata that claim 1 is novel over D1 (from an earlier appeal decision). The opponent submits evidence showing that example 16 of D1 upon reworking anticipates claim 1. The Board decides that therefore claim 1 lacks inventive step, in analogy to G 7/95. 

EPO T 0864/12  - link

Reasons for the Decision

1. Inventive step

1.1 The novelty of claim 1 of the present request over the same disclosure of example 16 of D1 has been addressed and has been decided upon by the board in decision T 859/06. It appears to the board in its present composition that the facts of the case have not changed since that decision. The decision provided in T 859/06 on novelty is res judicata and the present board consequently has no power to reconsider whether the requirements of Article 54 EPC have been met.

[...]

1.4 According to the decision G 7/95 of the Enlarged Board of Appeal, an allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of inventive step (G 7/95, Order, second paragraph). Therefore, a finding of lack of novelty in these circumstances may inevitably result in such subject-matter being unallowable on the ground of lack of inventive step. Although the circumstances of the present case differ from those of G 7/95 and the associated decision G 1/95, in that the reasons for the lack of availability of the ground pursuant to Article 54 EPC are not the same, the Board is of the opinion that the conclusion drawn up by the Enlarged Board of Appeal may be applied here. Following the decision G 7/95, should Example 16 of D1 be found to disclose a composition according to claim 1 of the patent in suit, that claim may be found to lack an inventive step.

[] 1.8 [] As a result, it was convincingly shown by the repetition of D1, example 16 submitted in D27 that the polypropylene composition disclosed in example 16 of D1 was according to claim 1 of the operative request.

1.9 In G 7/95, it was decided that if the closest prior art document destroys the novelty of the claimed subject matter, such subject-matter obviously cannot involve an inventive step. A finding of lack of novelty in such circumstances was then considered to result in such subject-matter being inevitably unallowable on the ground of lack of inventive step.

As shown above, the subject matter of claim 1 cannot be distinguished from example 16 of D1 which represents the closest prior art. The subject matter of claim 1, following the considerations of G 7/95 therefore lacks an inventive step.

The operative request does not fulfil the requirements of Article 56 EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.