T 1180/18 - Alternative solution inventive

 Key points

• The Board, at the end of a lengthy decision: “the Board is of the opinion that the fact that the alternative solution offered in the present claims might appear a priori more cumbersome does not necessarily deprive it of inventiveness. The present process, for the reasons stated above, solves the problem posed and is not suggested by the prior art, which is, in the present case, sufficient to render it inventive.  Accordingly, the subject-matter of claim 1 of auxiliary request 32 involves an inventive step.”
• Claim 1 of AR-32 differs only from the Main Request in that product claims 9 and 10 are cancelled.
• The opposition was filed 21.08.2008 (!). This is the second appeal after decision T 0598/13 of 14.07.2016. In that first appeal, the Board admitted new evidence in connection with sufficiency of disclosure and remitted the case to the opposition division. The Board then did not take any substantive decision on the grounds of opposition.
• “The Board further notes that the interpretation by the opposition division of the results of the patent's example changed following the admittance of new evidence filed during appeal case T 598/13. The disputed amendments being based on a feature of said example, the opposition division was led to re-examine the issue of compliance with Article 123(2) EPC. The Board considers that the change of underlying facts constitutes a sufficient reason for the opposition division to re-examine the issue of compliance with the requirements of Article 123(2) EPC.”
• The substantive decision seems thorough, but the question remains if it is acceptable that the EPO needs 13 years to arrive at the final decision in opposition.

https://www.epo.org/law-practice/case-law-appeals/recent/t181180eu1.html

T 1180/18

(decision text omitted)