T 0320/15 - Closest prior art and GL2018

Key points

• This decision was already published on 24.11.2016, but I missed it back then, and now it is in the Guidelines 2018 (G-VII, 5.1). 
• The Guidelines make this out of it:
  "Applying the problem-solution approach from different starting points, e.g. from different prior-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards. In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding (T 320/15, Reasons 1.1.2)." 
• The Board (in translation):  "The board notes that according to the problem-solution approach, the appellant should select, in a first step, the most promising document to arrive at the claimed invention. [...] Moreover, the structure of the problem-solution approach does not consist in a forum where the appellant can at will develop various attacks starting from various documents of the state of the art in the hope that one of them would have a chance to succeed. Therefore the second objection must also be rejected." 
• As first comment, the sentence in the GL that " Applying the problem-solution approach from different starting points [] is only required if it has been convincingly shown that these documents are equally valid springboards. " does not follow from T 320/15. 
• As a second comment, I am not sure whether the problem-solution-approach as developed in the case law is a valid legal basis for curtailing the right to be heard of Article 113 EPC.
• As a third comment, the next sentence of the GL says that "In the event of refusal or revocation [or revocation is added in GL2018], it is sufficient to show, on the basis of one relevant piece of prior art that the claimed subject-matter lacks an inventive step:there is no need to discuss which document is "closest" to the invention". How this is to be reconciled with T 320/15 is an interesting exercise.
  

EPO T 0320/15 - link

Edited machine translation from French:

Reasons for the decision

1. The right to be heard under Article 113 (1) EPC

1.1 The appellant [opponent] considered that the Opposition Division failed to respect his right to be heard for a number of reasons. First, the [appellant] submits that during the oral proceedings he only had the opportunity to explain why D4 was the closest state of the art without having had the opportunity to develop his argument according to the problem-solution approach. Secondly, the applicant did not, in his view, have the opportunity during the oral proceedings to present further attacks against the inventive step of the claimed subject-matter by considering other documents, such as D8 or product SIGRAFLEX UNIVERSAL V30010C1l (first public prior use), as the closest state of the art. Thirdly, in the written decision the reasoning of the Opposition Division in relation to the closest prior art D4 was based on arguments which had not been previously cited in the proceedings. Fourthly, again according to the applicant, the Opposition Division did not admit the series of documents D13 and D14 concerning an alleged second prior use, without knowing the relevance of the first prior use SIGRAFLEX and therefore without knowing whether this second previous use was more relevant than the first.




1.1.1 With regard to the first objection, the Chamber notes that, with regard to the conduct of the oral proceedings, it must rely on the minutes of this procedure, which has not been disputed by the applicant. [...]  It therefore follows from the minutes that the applicant applied the problem-solution approach and that he argued on the combination of D4 as the closest state of the art with D5 / D5 '. Thus the Applicant's first objection that he did not have the opportunity to develop his argument about the problem-solution approach must be rejected as unfounded.

1.1.2 Concerning the second objection, the board notes that according to the problem-solution approach, the appellant should select, in a first step, the most promising document to arrive at the claimed invention. The appellant complains that the Opposition Division did not allow him to make several selections of the closest prior art document and to support several attacks from each of those documents. However, there is no indication in the record that the applicant did not have the opportunity to choose a document other than D4 as the closest prior art. Moreover, the structure of the problem-solution approach does not consist in a forum where the appellant can at will develop various attacks starting from various documents of the state of the art in the hope that one of them would have a chance to succeed. Therefore the second objection must also be rejected.

1.1.3 As to the third objection, the complainant does not specify which argument is presented for the first time in the contested decision, but refers in general terms to points VI.d and VI.f of the decision, which nevertheless concern the factual analysis of D4 by referring to specific passages. However, the respondent later stated in his observations on the appeal that points VI.d and VI.f of the contested decision had been discussed (point 2.3 of the observations), which was not subsequently contested by the applicant. Therefore, the board must reject this objection as well.

1.1.4 The fourth objection relates to the fact that the Opposition Division did not admit the series of documents D13 and D14, relating to an alleged second public prior use, because it considered that they had been filed late, in particular on 13 August 2014, ie approximately one month before the oral proceedings of 17 September 2014, and that their relevance had not been established. This point was discussed in detail during the oral proceedings before the Opposition Division (under "Admissibility of D13 and D14" in the minutes) and was dealt with in the grounds of the contested decision (point I). It follows that the Opposition Division respected the applicant's right to be heard. Therefore this objection is also rejected.