T 0002/23 - On the basis of the prior art provided

Key points

• This case is about exceptional circumstances under Art. 13(2) (admitted) and a non-obvious alternative (also acknowledged)
• The reasoning on inventive step set out in the statement of grounds of appeal [of the opponent], while it started from D2 as the closest prior art, exclusively relied on a combination with documents D1 or D9 to arrive at a conclusion of lack of inventive step of granted claim 1 (statement of grounds of appeal, sections I.5.1 and I.5.2). 
• While the preliminary opinion of the Board was mainly based on paragraph 49 of D2 which was amply discussed in the decision under appeal [...] and by the appellant in appeal [...], it shed a new light on the analysis of inventive step by drawing a preliminary conclusion that there was lack of inventive step on the basis on document D2 alone, while considering unsuccessful the attacks of the appellant based on the combination with D1 or D9. 
• On this basis, the Board sees the presence of exceptional circumstances which justify the reaction of the respondent and the filing of a further set of claims after the communication addressing inventive step based on D2 alone. Under these circumstances, the Board finds it appropriate to admit auxiliary request set B into the appeal proceedings (Article 13(2) RPBA)."
• The auxiliary request, filed one month before the oral proceedings, is admitted.
•  It was undisputed that claim 1 of auxiliary request set B additionally differed from D2 in the selection of the anionic surfactant a1) among a list of options which are not mentioned in paragraph 49 of D2. The limitation of the anionic surfactant a1) according to operative claim 1 was not associated with any new effect over D2. The problem defined for the main request, namely the provision of further heat-sealable polyester films with anti-fogging properties, is therefore also valid for claim 1 of auxiliary request set B."
• " Paragraph 49 of D2 contains a list of anti-fogging agents among which the only anionic surfactants are anionic fluorinated surfactants, like quaternary ammonium salt of perfluoroalkylsulfonates. There is no further teaching in D2 from which it could be concluded that anionic fluorinated surfactants could be replaced by any of the anionic surfactants defined in operative claim 1." 
•  The appellant [opponent] argued at the oral proceedings before the Board that the presence of fluorine atoms on the anionic surfactant was irrelevant and would not change the question of inventive step over D2. Evidence that a skilled person would consider any of the specific anionic surfactants listed in operative claim 1 in place of the anionic fluorinated surfactants mentioned in D2 was however not provided. It follows that the Board cannot conclude on the basis of the prior art provided that a skilled reader of D2 would have considered using any of the anionic surfactants listed in claim 1 of auxiliary request set B in place of the anionic fluorinated surfactants disclosed in D2."
• "The Board can therefore only conclude that on the basis of the evidence provided it was not shown that the composition of claim 1 of auxiliary request set B lacks an inventive step over D2 alone. As the attacks based on a combination of D2 with either D1 or D9 do not lead to the subject-matter of claim 1 for the reasons detailed for the main request (see point 1.19, above), the objection of lack of inventive step of the appellant is unsuccessful."
• As a comment, I suppose that the opponent did not request a remittal in order to have an opportunity to file more prior art about non-fluorinated anionic surfactants. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230002eu1