T 2140/22 - (I) The CPA as a shortcut

Key points

• Claim 1 is directed to: " A pharmaceutical preparation of T4 thyroid hormone, in ready-to-use packaging, [the packging] consisting of a container pre-filled with an alcohol-free water-glycerol solution of hormone T4, said container being a one-component LDPE plastic container, placed in a sealed sachet consisting of laminated films made of polyethylene, aluminium and polyethylene terephthalate."
• Inventive step is at issue.
• " Article 56 EPC provides that an invention (i.e. the claimed subject-matter under consideration) involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The state of the art here is any prior disclosure that is eligible under Article 56 EPC, i.e the entire state of the art as defined in Article 54(2) EPC, without any ranking or distinction. Any such prior disclosure may be used as the starting point for the assessment of inventive step, and also as supplementary prior art in alternative scenarios with different starting points."
• " The selection of a starting point serves the purpose of assessing inventive step and is performed by the body deciding on inventive step, which makes its selection from the cited prior-art disclosures that are eligible under Article 56 EPC. Depending on the circumstances of the individual case, either only one starting point or several alternative starting points will have to be considered."
• "In the case at hand, the only line of argument presented by the appellant [opponent] in the appeal proceedings with regard to a lack of inventive step is based on an approach using the disclosure of D1 as the starting point. In this situation, no selection between different potential starting points is required. The only starting point to be considered by the board for the purpose of examining the merit of the appellant's inventive step objection is D1."
•  "The practice of selecting, in cases where this is appropriate, one among several potential starting points on the basis of its greater similarity to the claimed subject-matter and its intended purpose (the so-called closest prior art) serves efficiency by permitting a combined assessment."
• "The test is to establish if the claimed subject-matter would have been non-obvious even when starting from such a particularly "promising" starting point. Thus, in a situation where inventive step is ultimately to be acknowledged, carrying out a detailed assessment of inventive step according to the problem-and-solution approach with the closest prior art as the starting point may avoid having to perform an equally detailed assessment also for numerous alternative starting points that are comparatively more remote. "
•  The consideration in such a case is that since an inventive step can be acknowledged in a scenario starting from the closest prior art, it can also be acknowledged, for at least the same reasons, starting from the more remote alternative starting points, without the need for a detailed analysis in each of these cases.
• "Obviously, this shortcut only works in cases where it can be confirmed that the same reasons for acknowledging an inventive step are indeed also applicable to the scenarios based on the alternative starting points. The reasoning addressing the alternative scenarios must at least set out why this criterion is met.
• "Nonetheless, comparative remoteness does not prohibit the consideration of any prior disclosure as a starting point in a detailed step-by-step assessment according to the problem-and-solution approach. If a chosen starting point is "too remote" from the claimed subject-matter in terms of structural features and purpose, the problem-and-solution approach will simply not result in a finding of obviousness."
• As a comment the phrase "will simply not result" may hide some complexity.
• "In view of its purpose as described above, the concept of the "closest prior art" is not relevant in a situation where an inventive step cannot ultimately be acknowledged (see point 1.9.1 above, last sentence). If the assessment of inventive step from a given starting point results in a finding of obviousness, this starting point is evidently close enough to the claimed invention to lead to a conclusion that decides the question of inventive step."
• "Since, in the case at hand, the assessment with D1 as the starting point resulted in a finding of obviousness (as set out below), it is not relevant whether another piece of prior art might be even closer to the claimed subject-matter.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t222140eu1