T 0810/12 - Inventive step and novelty attack

Key points

• The opponent  raises an inventive step attack during the oral proceedings before the Board.
• " The [opponent] argued that it did not advance the objection earlier because this could have been considered by the board as an implicit concession by the [opponent] that the subject-matter of feature (A) was not disclosed in document E5 thereby weakening the objection of lack of novelty over E5." 
• The Board is not convinced and does not admit the new attack. " In any case, since the novelty objection was explicitly raised and argued by the appellant, it would have been manifestly unreasonable by the board to assume any hypothetical implicit concession as speculated by the appellant." 

EPO T 0810/12 - link

Reasons for the Decision

3. Main request - inventive step

3.1 Amendment to the appellant's case

3.1.1 The appellant stated for the first time at the oral proceedings before the board that it would prefer to argue inventive step on the basis of document E5 in combination with document E10. The latter document had already been admitted into the proceedings by the opposition division.

The respondent requested that this new line of attack not be admitted into the proceedings.

3.1.2 According to Article 12(2) RPBA, the statement of the grounds of appeal must contain a party's complete case.[] 

In the present case the objection of lack of inventive step on the basis of document E5 in combination with document E10 was submitted for the first time during the appeal proceedings at the oral proceedings before the board. Hence this objection was submitted after the statement of the grounds of appeal and is therefore an amendment to the appellant's case within the meaning of Article 13(1) and (3) RPBA. Consequently, the admission of this objection is at the board's discretion.

3.1.3 The appellant argued that it did not advance the objection earlier because this could have been considered by the board as an implicit concession by the appellant that the subject-matter of feature (A) was not disclosed in document E5 thereby weakening the objection of lack of novelty over E5.

The board does not find this argument convincing. The appellant did in fact argue in the statement of the grounds of appeal that the subject-matter of granted claim 1 lacked inventive step in relation to the combination of documents E5 and E3. Since the appellant evidently did not consider that the lack of novelty objection was weakened by the submission of this inventive step objection, the board does not see any reason why the other objection of lack of inventive step over documents E5 and E10 could not have been advanced at that stage as well.

In any case, since the novelty objection was explicitly raised and argued by the appellant, it would have been manifestly unreasonable by the board to assume any hypo­thetical implicit concession as speculated by the appellant.

[...] By contrast, if the new objection were admitted into the proceedings, complex discussions might well ensue, e. g. in relation to the above questions and the proprietor might find that it cannot properly argue its case within the limited time available at the oral proceedings. Hence, according to the board's assessment the proprietor cannot [reasonably] be expected to deal with the new objection during the scheduled oral proceedings.

 3.1.5 In view of the above considerations, exercising its discretion under Article 13(1) and (3) RPBA, the board did not admit the new objection of lack of inventive step on the basis of document E5 in combination with document E10 into the proceedings.