T 0170/14 - Novelty as a new ground

Key points

• In this opposition case, the only ground of opposition in the first instance opposition proceedings was lack of inventive step. The opponent raises a novelty attack in appeal. The Board looks at the headnote of G 7/95 about lack of novelty and lack of inventive step being separate grounds of opposition, and the finding therein that "the 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 lack of inventive step " 
• The present Board: "The Enlarged Board considered only the case of the closest prior art destroying novelty; other documents were not mentioned. In the Board's opinion, however, it would seem odd not to apply this principle to other documents, since other such documents could always be used in a discussion of lack of inventive step".
• As a comment, the underlying issue is G10/91, hn.3: "Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee" with the underlying reasoning in G9/91, r.18. Under current Art.12(4) RPBA 2007, novelty attacks based on documents (evidence) newly cited in appeal can already be held inadmissible. Under Art.12(6) RPBA 2020, the new attack (objection) can still be held inadmissible if it could have been submitted earlier, even if based on documents already cited during the first instance proceedings. 
• The difficulty is the Enlarged Board opted for a prohibition of new grounds - not a discretionary power - in G 10/91 whereas Art. 12 RPBA sets a discretionary power. I'm not sure if the Boards can make further exceptions to G10/91 besides the one of G7/95. If G10/91 is considered as too restrictive, a new referral may be considered. I also note that for the closest prior art document, the whole teaching of that document is considered in order to determine the distinguishing features whereas secondary references can be cited for only teaching the  distinguishing feature(s) at issue. 

T 0170/14 - link


3. Main request - novelty

The appellant/opponent considered that both D3 and D5 anticipated the subject-matter of claim 1.

The only ground for opposition present in the notice of opposition and used in the opposition proceedings was lack of inventive step. Pursuant to G 7/95 (OJ EPO 1996, 626), the respondent/patent proprietor considered that the only document which could be used for a lack of novelty objection under the ground for opposition of lack of inventive step was the closest prior art as mentioned in the above decision.

In decision G 7/95, the Enlarged Board of Appeal decided that: "In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the 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 lack of inventive step."

More explicitly, in the reasons for the decision the following was stated:
"7.2 Nevertheless, in a case such as that under consideration in the decision of referral in case G 7/95, if the closest prior art document destroys the novelty of the claimed subject-matter, such subject-matter obviously cannot involve an inventive step. Therefore, a finding of lack of novelty in such circumstances inevitably results in such subject-matter being unallowable on the ground of lack of inventive step."

The Enlarged Board considered only the case of the closest prior art destroying novelty; other documents were not mentioned. In the Board's opinion, however, it would seem odd not to apply this principle to other documents, since other such documents could always be used in a discussion of lack of inventive step, so lack of novelty in view of D3 or D5 could be examined in the present case under the ground for opposition of lack of inventive step.