T 0933/18 - (I) Agreeing with CPA, waiving attacks

Key points

•  "Appellant I [opponent] advanced two lines of arguments as regards a violation of right to be heard. Firstly, ...  secondly, no reasoning under inventive step was provided based on documents D15a and D23 as alternative closest prior art. Both failures deprived appellant I of the opportunity to give reasoned arguments on these issues."
• The Board: " it is established practice under the EPC to use the problem-solution approach to examine inventive step; according to this approach, the most promising document to arrive at the claimed invention, i.e. the closest prior art, should be selected in a first step. "
• "The case law has established that if a piece of prior art can be identified as the closest prior art or the most promising springboard and it can be shown that, starting from this prior art, the claimed invention is non-obvious, then the invention must be even less obvious starting from any other prior art. In these circumstances a detailed inventive step assessment starting from the other prior art document(s) can be dispensed with (see e.g. T 1742/12, Reasons 6.3)."
• "While document D15a was advanced by appellant I in their notice of opposition as an alternative starting point under inventive step (see page 38, point 4 to page 40, point 4.2), this line of argument was never referred back to, let alone further substantiated or defended in reply to the preliminary opinion of the opposition division"
• "The minutes of the oral proceedings report under inventive step on page 2, in point 5 that "After O1's request for a short break to deliberate on the strategy, OD announced a break from 15:10 to 15:20". After resuming the oral proceedings the minutes disclose that "all parties agreed on D5a as closest prior art document" (see page 2, point 5, emphasis added). Thus appellant I had been given the opportunity to consider their case and decided to continue with document D5a as the closest prior art. This course of events does not imply that appellant I maintained their line of arguments under inventive step based on document D15a. Nor are any other indications derivable from the documents on file in this respect."
• "As set out above, all parties agreed on document D5a as the closest prior art. There was thus no need for the opposition division to assess inventive step starting from any other prior art document. Therefore, appellant I's second objection is not convincing either."
  
  
• "Appellant II submitted a sweeping reference to the opposition case as regards further added subject-matter issues against claims 2 to 5 and 7 (see statement of grounds of appeal, page 7, point 2.5.3). Such a reference is insufficient for establishing why the contested decision should be overturned on this point. Under Article 108 EPC, Rule 99(2) EPC, and Article 12(3) RPBA 2020, appellant II has to present a complete case in their statement of grounds of appeal so as to allow the board and the other party to understand why the contested decision should be overturned without having to make any further investigations of their own (see, inter alia, T 1566/12, Reasons 20, and T 989/16, Reasons 1). Appellant II's submission against claims 2 to 5 and 7 is thus disregarded."
• As a comment, there is no concept of partial admissibility of the appeal under Rule 99(2) EPC. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t180933eu1.html