T 2005/16 - Documents of lesser apparent relevance

 Key points

• The Board concludes that the claims are not obvious in view of D4 or D8 as starting point, in this opposition appeal case.
• “[opponent] also mentioned other documents as being relevant and, possibly, as being alternative starting points for discussing inventive step. It also referred generically to arguments discussed during the opposition proceedings; however, respondent 1 did not present any reason as to why these documents should be more suitable than D4 or D8 as the closest prior art or should be more relevant than D1.”
• “The problem-solution approach as applied in proceedings before the EPO and cemented in established case law requires the most relevant prior art document to be selected as a starting point. If an attack from this most promising basis fails, it is considered that documents of lesser apparent relevance will have considerably diminished chances of success. In the absence of any detailed or convincing arguments in support of the alternative lines of attack, the board does not consider it appropriate to consider them further. ”
• As a comment, I note that the ground “In the absence of any detailed or convincing arguments in support of the alternative lines of attack” appears to include both a priori considerations for 'detailed' (i.e., no substantiation, see also Art. 12(2) RPBA) and ex post considerations for 'convincing'. It is a bit remarkable that the Board appears to say that the other inventive step arguments are not convincing without discussing their substance at all. 
• “Along the same line of thought, respondent 1's [opponent] conditional request to remit the case to the opposition division for further consideration, should the claimed subject-matter be found to involve an inventive step over D4 or D8 in combination with D1, is to be rejected.”

T 2005/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t162005eu1.html

6.17 Accordingly, the claimed subject-matter involves an inventive step over D4 or D8, alone or in combination with D1.

6.18 Respondent 1 [opponent] also mentioned other documents as being relevant and, possibly, as being alternative starting points for discussing inventive step. It also referred generically to arguments discussed during the opposition proceedings; however, respondent 1 did not present any reason as to why these documents should be more suitable than D4 or D8 as the closest prior art or should be more relevant than D1.

6.19 The problem-solution approach as applied in proceedings before the EPO and cemented in established case law requires the most relevant prior art document to be selected as a starting point. If an attack from this most promising basis fails, it is considered that documents of lesser apparent relevance will have considerably diminished chances of success. In the absence of any detailed or convincing arguments in support of the alternative lines of attack, the board does not consider it appropriate to consider them further. Along the same line of thought, respondent 1's [opponent] conditional request to remit the case to the opposition division for further consideration, should the claimed subject-matter be found to involve an inventive step over D4 or D8 in combination with D1, is to be rejected.