T0481/21 - OD selects CPA, other attacks not abandoned

Key points

• The opponent appeals.
• " the appellant formulated an objection against the then pending main request starting from document D1 as the closest prior art. The proprietor argued that this objection should not be admitted because the only document cited as closest prior art in the appealed decision was D5, so this objection was not part of the appealed decision under Article 12(2) RPBA.
• "The Board however notes that document D1 was extensively discussed both under novelty and under inventive step in the first instance proceedings. "
• "It is apparent from the contested decision and the minutes that at the oral hearing document D1 was discussed in order to assess the novelty of the method and the product claims. As also explained in the minutes, D5 was however considered as representing the closest prior art because it addressed the same technical problem and had certain features in common with the invention."
• "Since there is no indication that the inventive step objections starting from D1 discussed during the written proceedings were explicitly or implicitly abandoned at the oral hearing, they are effectively part of the first instance proceedings, implying that the appealed decision was at least implicitly based on them as required by Article 12(2) RPBA. In particular, the Board considers that the decision to contemplate D5 as the closest prior art implicitly involves the selection of D5 over D1 as closest prior art, which does not imply that the objections starting from D1 were no longer maintained, but simply that it was decided (in view of the conclusions on novelty in view of D1) that D5 represented a more promising springboard. Since the inventive step objection is considered to be part of the first instance proceedings, there is no basis not to admit this objection under Article 12(4) and (6) RPBA."
• The patent is revoked.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t210481eu1

1. Admittance of the inventive step objection starting from D1

1.1 In the grounds of appeal, the appellant formulated an objection against the then pending main request starting from document D1 as the closest prior art. The proprietor argued that this objection should not be admitted because the only document cited as closest prior art in the appealed decision was D5, so this objection was not part of the appealed decision under Article 12(2) RPBA.

1.2 The Board however notes that document D1 was extensively discussed both under novelty and under inventive step in the first instance proceedings. First, D1 was cited in the notice of opposition (as E1) not only to attack novelty of the product and the process claims, but also as closest prior art to raise an inventive step objection against the subject-matter of claim 4 as granted, which was subsequently combined with claim 1. The proprietor also formulated his inventive step argumentation starting from D1 as the closest prior art for the method and the independent product claims (see pages 8 to 11 of the submission dated 27 November 2020).

1.3 It is apparent from the contested decision and the minutes that at the oral hearing document D1 was discussed in order to assess the novelty of the method and the product claims. As also explained in the minutes, D5 was however considered as representing the closest prior art because it addressed the same technical problem and had certain features in common with the invention.

1.4 Since there is no indication that the inventive step objections starting from D1 discussed during the written proceedings were explicitly or implicitly abandoned at the oral hearing, they are effectively part of the first instance proceedings, implying that the appealed decision was at least implicitly based on them as required by Article 12(2) RPBA. In particular, the Board considers that the decision to contemplate D5 as the closest prior art implicitly involves the selection of D5 over D1 as closest prior art, which does not imply that the objections starting from D1 were no longer maintained, but simply that it was decided (in view of the conclusions on novelty in view of D1) that D5 represented a more promising springboard. Since the inventive step objection is considered to be part of the first instance proceedings, there is no basis not to admit this objection under Article 12(4) and (6) RPBA.

1.5 Moreover, the Board also notes that even if the objection was considered to be new, the criteria set out in Article 12(4) RPBA would have to be applied. In this respect, the Board reiterates the conclusions presented in the preliminary opinion, namely that the inventive step argument starting from D1 i) is not complex (D1 is similar to D5 and its content was extensively addressed during first instance proceedings), ii) is prima facie relevant (i.e. it addresses the issues which led to the contested decision) and iii) is unlikely to have a significant impact on procedural economy.

1.6 The Board also notes that at the oral proceedings the patent proprietor no longer objected to discussing the inventive step of the product claim starting from D1 as the closest prior art.

1.7 The Board therefore admitted into the proceedings the inventive step objection starting from D1 as the closest prior art.