T 1179/23 - Not a realistic starting point

Key points

• " in the Board's view, the "simple mixture" mentioned on page 14 of D1 does not represent a realistic starting point. The starting point for assessing inventive step starting from D1 is therefore the multilayered compositions of examples C1 or C2. 
• The reasons are as follow.
• " Both appellants-opponents considered that the embodiment mentioned in the sentence on page 14 lines 7 to 8 of D1 relating to a simple mixture of isolated tartaric acid pellets and dabigatran represented the closest prior art embodiment."
•  The Board disagrees and is of the opinion that the skilled person reading the sentence on page 14 lines 7 to 8 of D1 understands it as speculative and as not referring to an actual concrete realisation of simple mixtures. The reasons are the following: ... the "simple mixture" ... is disclosed at one single occurrence in D1 in one single sentence, namely "Alternatively, the simple mixture of isolated pellets and dabigatran is filled into capsules or sachets" ... There is no further mention or description of this "simple mixture" in the entire document. 
• "the core of the invention [of D1] is indeed the "isolated pellets" but for the further preparation of multilayered compositions. Indeed claim 1, the "summary of the invention" (see page 6 of D1) and the examples of final compositions exclusively concern multilayered pellets containing tartaric acid and the active ingredient [ dabigatran etexilate mesylate (DEM) ] in different layers."
• "The starting point for assessing inventive step starting from D1 is therefore the multilayered compositions of examples C1 or C2."

EPO 

The link to the decision is provided after the jump.

T 1965/23 - Starting from wrong document, clueless choice

Key points

• Under the PSA, the CPA or starting point document must be a 'feasible' document. What happens if you try the PSA from a document that is not suitable?

• Claim 1 as granted defines: "A medical device containing a separately prepared freeze-dried cake composition comprising aripiprazole as an active ingredient in a storage container whose inner wall is treated with silicone, wherein there is a space between the inner wall of the storage container and the cake composition."

• "The patent addresses the specific issue of the agglomeration of aripiprazole following resuspension when it is provided as a cake composition in a storage container of a medical device, such as a syringe, of which the inner wall is treated with silicone"

• " The patent teaches in this context that by reducing the contact of the cake composition comprising aripiprazole with the silicone this agglomeration can be suppressed  ... . The patent presents experimental results in support of this teaching"

• "According to the established jurisprudence (see [CLBA] I.D.3.4) a central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the claimed invention; otherwise, it cannot lead the skilled person in an obvious way to the claimed invention. "

• "if an inventive step can be acknowledged starting from a particular prior art that is convincingly identified as the most promising starting point and therefore indeed constitutes the closest prior art, the attempt to deny an inventive step starting from a less promising starting point must fail"

• The concept of the closest prior art in the problem solution approach not only obviates the need to address repetitive lines of argument, it also allows for the due appreciation of specific effects in relation to the prior art that may be associated with the distinguishing features

• Document D2 describes the preparation of a formulation comprising aripiprazole by freeze-drying a suspension in a vial 

• "documents D12, D11 and D18 describe silicone-treated medical devices comprising freeze-dried formulations without mention of aripiprazole or problems resulting from the presence of silicone. Documents D12, D11 and D18 therefore do not address a similar purpose or effect as the patent. Arriving at the development of a freeze-dried composition comprising aripiprazole in a silicone-treated container of a medical device as disclosed in the patent starting from these documents would require the clueless choice of aripiprazole from all possible candidates of active ingredients, which the Board does not consider a reasonable proposition."

• The Board therefore considers that documents D12, D11 and D18 do not represent reasonable alternative starting points in the assessment of inventive step, irrespective of the number of other features shared with the claimed subject-matter.

• Now, as a question: how could a national court assess inventive step over D12, assuming the court cannot disregard D12 as a starting point, as the Board did?

EPO 

The link to the decision is provided after the jump.

T 0749/23 - Any embodiment as starting point (Mite composition)

Key points

• Claim 1 of AR-3 at issue  “is for a composition comprising (i) a population of individuals from a Phytoseiid mite species, (ii) a food source for the mite individuals selected from rearing prey from the suborder Astigmata and (iii) stacked carrier elements selected from millet husks, where the carrier elements comprise shelters for mite individuals”
• Documents D3/D9 describe five mite compositions comprising, as equal alternatives, the carrier elements wheat bran, buckwheat husks, rice husks, saw dust and corn cob grits”
• “The patent proprietor contended that the composition comprising rice husks of documents D3/D9 was not a suitable starting point for the assessment of inventive step for various reasons. First, they argued that buckwheat husks, rather than rice husks, should be taken as the starting point since buckwheat husks were used in the examples of documents D3/D9 and were therefore highlighted.”
• The Board: “The starting point for assessing inventive step is normally a set of features disclosed in combination in a document, typically in the form of an embodiment or example.”
• “the board considers that each of these embodiments [of the five compositions] can be used as the starting point for assessing inventive step. All embodiments are presented as suitable, and there is nothing in documents D3/D9 that would disqualify any of them. Since each embodiment can be used, the board also agrees with the opponents that the assessment of inventive step can be based on a mite composition containing rice husks as carrier elements as the starting point.”
• “the board does not concur with the patent proprietor's view [that the rice husk embodiment of D3 is not a starting point].  First, Article 56 EPC requires that an invention, having regard to the state of the art, not be obvious to a person skilled in the art. The state of the art for the purpose of considering inventive step is the entire state of the art as defined in Article 54(2) EPC, without any ranking or distinction (T 2140/22, Reasons 1.9.1).”
• “if inventive step is to be acknowledged, the claimed subject-matter must be inventive starting from any starting point in the prior art. Conversely, if the invention is obvious to the skilled person from at least one starting point, an inventive step is lacking (Case Law, I.D.3.3). Neither the EPC nor the case law of the boards stipulate that the starting point for assessing inventive step must be the entire disclosure, an example, or a preferred embodiment in the prior art. Rather, the starting point may be any disclosure in the prior art.”
• Still, it may not be obvious to a skilled person to develop a non-preferred embodiment.
• “There is also no requirement that an embodiment must be exemplified for it to be considered in the assessment of inventive step. There is, likewise, no requirement that the prior art contain any pointer, suggestion or incentive to select a particular embodiment for further development for this embodiment to qualify as the starting point in the problem solution approach”.
• “as a matter of principle and in agreement with T 2001/23 (Reasons 3), that if the subject-matter of a claim is found to lack an inventive step starting from a particular disclosure, as is the case here (see below), it is not possible to establish inventive step by proposing that the assessment be started from a different starting point.”
• The Board then distinguishes T 1126/19 on the facts.
• “Third, G 1/23 does not support the patent proprietor's argument that the skilled person is the relevant point of reference in selecting the starting point for the inventive step analysis. Points 93 to 95 of decision G 1/23 are concerned with the impact on novelty and inventive step of accessible but not fully reproducible products which the Enlarged Board of Appeal accepted as being part of the prior art. According to these considerations, the relevance of such a product for assessing inventive step, namely its suitability as a starting point or secondary source of information, depends on the available information associated with the product, i.e. it depends on what is disclosed to the skilled person.”
• “ The Enlarged Board of Appeal [in G 1/23] did not make any finding that the choice of starting point in the problem-solution approach requires motivation by the skilled person. In the case in hand, all carrier elements disclosed in documents D3/D9 are available, and all can be used. Indeed, the patent proprietor never argued that rice husks would be obviously defective or not enabled.”
• In view of T 2759/17: “In the case in hand, as correctly noted by opponent 2, the starting point for assessment of inventive step, namely a composition comprising rice husks, is disclosed for the same purpose as the compositions comprising other carrier materials disclosed in documents D3/D9, namely the rearing of predatory mites, which is also the purpose to which the patent is directed. The board concludes that in the case in hand, a composition comprising rice husks would also be a realistic starting point under the approach set out in T 2759/17.”
• “The patent proprietor's assertion that documents D3/D9 did not disclose a list of equal alternatives to the skilled person is based on the results in Example II of the [opposed] patent, in which millet husks performed better than bran. Since the closest prior art must be assessed from the skilled person's point of view on the day before the filing or priority date valid for the claimed invention, the assertion must be rejected for this reason alone.”
• One would expect that, starting from the embodiment of D3 with rice husk as the carrier element, the distinguishing feature would lie in the other components of the composition. However, the difference is that the patent claims the use of millet husk as the stacked carrier elements. The Board does not acknowledge any technical effect of that difference. “the patent describes that millet husks have a sheltering effect in comparison with the non-sheltering carriers wheat bran and vermicullite (paragraphs [0005] and [0006], experiments I and II). The patent does not indicate any advantageous effect of millet husks over rice husks.” A post-published document was not admitted, as filed late (namely, in appeal).
• The patent is revoked.
• “The objective technical problem is the provision of alternative carrier elements for a mite composition comprising a population of a phytoseiid predatory mite species and a factitious host population which comprises at least one species selected from the family of the Carpoglyphidae.”
• I think a key question could have been whether the OTP was indeed simply providing an alternative, given that the advantages of risk husk were unrecognised in the prior art document D3.
  
  
• Partiality of the OD?
• “opponent 2 submitted that the chairman of the opposition division stated during oral proceedings that in coming to the conclusion that auxiliary request 3 was inventive over document D9 as the closest prior art, it was also taken into account that the claims were restricted to particular mites and that, from the perspective of a work-around, there were sufficient possibilities.”
• The Board dismisses the objection on the ground that the reasoning about the workaround is not part of the OD’s written decision. Furthermore, “an objection on the ground of suspected partiality before the department of first instance can be disregarded if it is not raised immediately after the party concerned becomes aware of the reason for the objection (G 5/91, Reasons 4 [...]”

EPO 

The link to the decision is provided after the jump.

T 1902/23 - Twelve documents as the CPA

Key points

• “The [proprietor/respondent] argued that D11 should be considered as the closest prior art for assessing inventive step, contrary to the [opponent’s/appellant’s] position that all documents D2-D12 and D16 were suitable alternatives to be taken as the closest prior art [...]. Using twelve documents as [the] closest prior art constituted an impermissible "shotgun" approach. Reference was made to the Guidelines for Examination (G. VII. 5.1) and decision T 320/15 (point 1.1.2 of the reasons), which established that multiple starting points were only permitted when documents were equally valid springboards, and that opposition proceedings should not become a forum for unlimited inventive step attacks.”
• “ the Board concurs with the appellant for the following reasons: (a) Firstly, on the question of whether only one piece of prior art should be selected for the purpose of assessing inventive step, it is settled case law that there are often several reasonable starting points, each offering a different route that might lead to the invention without the need of hindsight”
• “In practice, the number of suitable prior art documents may also depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same is true in a highly competitive technical field where many closely related prior art documents have been published. However, as mentioned above, the fact that several documents are proposed as the closest prior art is per se not incompatible with the problem-solution approach.”
• “In any event, although the [opponent] started from 12 different documents for their objections of lack of inventive step, it is clear from their arguments that these objections actually boil down to two main lines of attack: ...”
• Claim 1 is found to be obvious over D2. None of the auxiliary requests is admissible and allowable over D2.

EPO 

The link to the decision is provided after the jump.

T 2463/22 - (III) Public prior use as CPA

Key points

• "The appellants [opponents] argued that product 5 was a suitable starting point for assessing inventive step of the subject-matter of claim 1 and referred to case law in which prior uses constituted the closest prior art, for instance, T 1464/05 (Reasons 5.2) and T 1054/18 (Reasons 4.2)."
• Product 5 is: "The prior uses referred to by appellant 1, in particular the prior use of product 5 (Pektin Classic CM 203, lot number 0 05 11 114, sold to Condio GmbH in January 2006) "
• "Product 5 concerns a sample from a lot of a powder mix of pectin and dextrose produced and marketed under the name "Pektin Classic CM 203" by appellant 1, Herbstreith & Fox GmbH & Co. KG (in the following, Herbstreith & Fox or the manufacturer). The lot number in question is 0 05 11 114."
• The Board: " There is sometimes reluctance in the case law of the EPO to treat an object of a prior use as the closest prior art in an assessment of obviousness. Often, neither the technical context of such an object nor how it was produced is disclosed. In such a situation, there is neither information on what the object does and what properties it has in the technical environment in which it is applied nor on how the process for its manufacture could be modified. These considerations indeed speak against regarding a prior use as a suitable starting point for assessing inventive step."
• As a comment, I think the remark about "neither the technical context of such an object nor how it was produced is disclosed" is mostly applicable to chemical substances, which could be seen as e.g. just a white powder on their own. It seems less relevant to a public prior use of an apparatus, e.g. of a bike or chair.
• The Board: "However, in the case in hand, the skilled person would face a different situation. They would know the property that the powder mix of product 5 is soluble in cold water and would also consider processing the powder mix further. The product specification of Pektin Classic CM 203 (D80) discloses that the product is used as a protein protective colloid in thermally treated sour milk drinks. Such a product is used during the manufacturing of drinks and is added while the drink is still cold. The pectin is used to protect the milk protein during the heating step that follows."
• Indeed, the powder was sold with a label, "Pektin Classic CM 203", and that provides additional information. 
• "The parties agree that there is no information in product 5 on the particle size of the pectin. Thus, the subject-matter of claim 1 differs from product 5 in the particle size of the pectin."
• Well, we don't know if the particle size in product 5 is outside the range (150 mym or less) defined in claim 1, i.e. if it "differs". On the other hand, the objective technical problem is not "reducing to practice" the teaching of a document which leaves the particle size open, either. 
• The Board finds the choice of the particle size to be obvious. The Board carefully establishes that "solubility in cold water is a known, observed property of product 5. In other words, the skilled person would be aware of what the powder mix does when put in the technical environment of its intended purpose: the powder is soluble in cold water."
• The Board finds that using a particle size in the claimed range was obvious to solve the objective technical problem of "to provide a powder mix comprising pectin that easily dissolves in cold water".

EPO 

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

T 2554/22 - D1 is not a realistic starting point

Key points

• "The Board considers the Opposition Division's approach to select D7 as closest prior art document and to analyse inventive step starting from this document to be correct."
• "D7 deals with the same problem as the patent, namely adherence of colour to hair by means of forming a film around them, using aminosilicone polymers. This is extensively described throughout D7, as set out above. This problem is not addressed in the general part of D1, neither with respect to pigments nor with respect to any other type of coloured material. As outlined above, D1 is mainly concerned with the avoidance of storage stability problems of hair conditioner compositions containing direct dyes and proposes a specific surfactant combination for this purpose."
• " It is correct that D1 mentions prevention of colour fading using aminosilicone polymers on page 16. However, this disclosure is part of a three page description of silicone polymers as optional ingredients for the provision of "smoothness and softness on dry hair" (page 13 second paragraph). One out of nine example compositions uses a film-forming aminosilicone, "aminosilicone-2", but film-forming properties neither of "aminosilicone-2" nor of the resulting composition are mentioned in D1. One has to refer to the product data sheet D2 in order to obtain this information."
• A skilled person would have to deeply dig into D1, supplemented by D2, to realize that part of this document may be directed to the same purpose than the patent and was using similar means, i. e. film-forming compositions containing aminosilicones for adherence of pigments or coloured materials to the hair.
• "The Board does not deny that in case of several "close" prior art documents a skilled person may have used any of them as a starting point and it may be necessary to assess inventive step from multiple angles. However, in the present case a skilled person addressing the problem of the patent would not have started from D1, but from D7. In this sense, in the present situation D1 is not a "realistic starting point"."
  
  
• "The appellant did not contest the Opposition Division's conclusion that the provision of the compositions defined in the patent claims were based on an inventive step when starting from D7. Thus, this issue is not object of the appeal proceedings."
• "The appellant argued that, independent from the selection of the closest prior art discussed above, the claimed compositions would still be obviously derivable when starting from D1. The Board disagrees, for the reasons outlined below. "
• "To be obviously derivable from D1 a skilled person would have to start from D1 in the first place. That this is not realistic in the present circumstances has been reasoned above."
• "if one nevertheless takes example 4 of D1 as a starting point, claim 1 of the patent does not differ from this example composition only in that the molecular weight of the aminosilicone is not known, as submitted by the appellant. Claim 1 of the patent also requires the presence of components (c) and (d), i. e. an ether of a polyhydric alcohol and a thickening system comprising a deposition enhancer and a thickening polymer as defined in the claim. 
• "The objective technical problem starting from D1 was the provision of alternative compositions useful for enhancing colour adhesion to the hair. "
• "even if a skilled person would have used D1 a starting point it would not have arrived at the compositions defined in the claim. This confirms that D1 is not "closer" to the claimed invention than D7, as argued by the appellant. It also confirms that the Opposition Division's choice of D7 as the document representing the closest state of the art was not flawed, as argued by the appellant [opponent]."
• The patent is maintained as granted. 

EPO 

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

T 1629/23 - If the alternative starting points represent alternative and different routes to the invention

Key points

• "The board agrees with the appellant [opponent] that document D9, and in particular its example 6, is such a suitable starting point for the discussion of inventive step. The respondent's [proprietor's] arguments that the opposition division had correctly considered the disclosure in document D8 to represent the closest prior art and that the disclosure in document D9 was not suitable as the closest prior art are not convincing for the following reasons. "
• "  Although assessing inventive step from only one "closest" prior-art disclosure may constitute a suitable approach for addressing the situation in which multiple similar disclosures are presented as starting points for the assessment of inventive step, it is not an appropriate approach if the alternative starting points likewise represent (alternative and different) routes to the invention, as document D8 and D9 do in the case in hand. In such a situation, each starting point needs consideration because, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the (complete) state of the art, i.e. any prior-art disclosure excluding documents under Article 54(3) EPC (see e.g. decisions T 694/15, points 13 to 15 of the Reasons, T 816/16, point 3.7.1 of the Reasons and T 261/19, point 2.5 of the Reasons)." 
• "example 6 of document D9 differs from the claimed subject-matter solely on account of the requirement in claim 1 that the classification step (e) and the estimation step (f) "are performed on one or more processors running under program instructions for the determining, classifying and estimating"."
• "the appellant [opponent] is correct that, considering the number of data points and the workflow disclosed in document D9, the skilled person, on the relevant date, would have taken computer implementation as an obvious route for improvement. 

EPO 

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

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.

T 2241/19 - Choosing CPA when requested is no abandonment other attacks

Key points

• "In the notice of opposition, in point V. on page 14, the appellant [opponent]  raised an objection that the subject-matter of dependent claim 2 as granted, which is identical to claim 1 of the sole request in opposition and appeal, did not involve an inventive step in view of document E8 as closest prior art in combination with document E6. The decision under appeal does not contain any reasoning and conclusion concerning this objection, be it explicit or implicit. Therefore the decision does not meet the requirements of Rule 111(2), first sentence, EPC."
• "the final decision must address all those objections which could potentially have led to a different outcome in order to comply with the requirement of Rule 111(2) EPC. The objection in question had at least the potential to change the outcome of the case.

• " The board currently cannot discern any declaration or action by the opponent that could be taken to be an explicit or implicit abandonment of the objection of lack of inventive step in view of E8 as closest prior art in combination with document E6. In the board's view, neither the minutes nor the decision under appeal contain any explicit declaration by the opponent to this effect."

• "According to the minutes, point 10 "[the opponent] was then [after a discussion of novelty] requested to begin his arguments with the grounds relating to Art. 100(a) EPC by identifying the most promising closest prior art document and using the feature analysis as appended to the summons". In the following, objections based on E1 in combination with E10 as well as E3 in combination with E10 were discussed.

• By discussing these objections, the opponent merely followed the chairman's conduct of the oral proceedings but did not implicitly abandon any or all further objections besides those discussed. The opposition division accepted a discussion of inventive step starting from documents E1 or E3 as starting point. Due to this fact, the opponent could not assume that the opposition division had implicitly dealt with the further objection based on E8 in combination with E6 by only accepting a single piece of prior art or only exclusively accepting E1 or E3 as the starting point for the assessment of inventive step.

• According to point 28 of the minutes, the opponent declared that he had no "further objections to raise". However, objections presented in writing do not need to be repeated at the oral proceedings in order for the deciding body to have an obligation to taken them into account in the final decision, see for example decision R 5/19, reasons 3.6. Therefore, this statement also can not be considered an implicit abandonment.

• There was thus at least no clear abandonment. Therefore, the opposition division could not legitimately assume that the objection in question was abandoned. Rather in case of doubt it would have been incumbent on them to clarify the procedural situation.

It follows that the decision under appeal does not contain reasons concerning the objection of lack of inventive step based on E8 as closest prior art in combination with document E6. Not presenting reasons in the decision under appeal concerning this objection adversely affected the opponent-appellant's right to a sufficiently reasoned decision."

• The appealed decision is set aside, the case remitted, and the appeal fee reimbursed. 
• As a comment, the OD could possibly have proceeded by explicitly deciding that E1 was the closest prior art, not E8. 
• The Board does not comment on inventive step over E1. I don't know if that attack was maintained in appeal. Possibly E1 takes away inventive step, and the consideration of E8 would not change the outcome in appeal. At least the present decision leaves open the possibility that E8 is not essential for the decision in appeal because the Board, in a second appeal, revokes the patent as obvious over E1.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0419/16 - Inventive step of first medical use

Key points

• The decision deals with inventive step of a first medical use claim in the format of Article 54(4) EPC.
• "The purpose given in the claim is "for use as a medicament". The board also notes that according to the patent, the claimed antagonist is useful specifically in the treatment of "a disorder or condition selected from the group consisting of asthma; allergy; multiple sclerosis; or arthritis" (see paragraph [0011] and claim 4 of the patent as granted). "
• Claim 1 is, moreover, a functional antibody claim: "1. An antagonist of IL-33 for use as a medicament, wherein the antagonist comprises a binding composition from an antibody that specifically binds to IL-33."
•  The opposition division came to a positive decision on inventive step, assessed solely when starting from the disclosure in document D6 representing the closest prior art. The appellants [opponents] however consider the disclosure in several (different) documents (documents D3, D4 or D6/D10) as starting points for assessing inventive step."" 
• "Although assessing inventive step only from one closest prior art disclosure may constitute an efficient approach to address the situation where multiple similar disclosures were presented as starting points for the assessment of inventive step, it is, however, not an appropriate approach if the alternative starting points represent alternative and different routes to the invention, as they do in the case at hand. In such a situation, each starting point needs consideration because under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the state of the art, i.e. any prior art disclosure with the exclusion of documents under Article 54(3) EPC (see T 694/15, Reasons 13 to 15, T 816/16, Reasons 3.7.1 and T 261/19, Reasons 2.5)."
• For inventive step over D6: "the difference between this [antibody of D6] and the claimed antibody is the target (ST2/IL-33 receptor) and its medical use(s) both in general and the specific uses identified in the description of the patent (treating asthma, allergy, multiple sclerosis and arthritis)."
• "The objective technical problem that arises out of the above differences and their technical effects can be formulated as the provision of a medicament, e.g. for treating asthma, allergy, multiple sclerosis and arthritis."
• The decision is interesting because for inventive step of product claims, we normally consider only at the use mentioned in the description. 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1654/22 - Counting to two with the Boards

Key points

• If a claim is novel by involving two selections from two lists, how many distinguishing features does it have?
• D2, claim 36 teaches a preparation method with as one component, "a local anaesthetic selected from the group consisting of amide and ester type local anaesthetics or a combination thereof
  
• The Board: "Mepivacaine is explicitly disclosed in the list of suitable anaesthetics recited in [the description of D2]. An embodiment of the method of claim 36 wherein the local anaesthetic is mepivacaine thus results from a single selection in D2 and is part of the direct and unambiguous disclosure of D2. " The Board refers to this embodiment as embodiment a).
• "The opposition division concluded that the subject-matter of the main request and auxiliary requests 1-8 was anticipated by the method of claim 36 of D2 as applied to mepivacaine, and thus clearly considered this embodiment a) to belong to the state of the art under Article 54(2) EPC. Nonetheless, the opposition division disregarded the same embodiment a) as starting point for the assessment of inventive step, for lack of an example or pointer to this embodiment. The appellant - proprietor also submits that embodiment a) is not a suitable starting point for the assessment of inventive step."
• "The Board does not concur with these positions.

  There is no requirement in the case law that an embodiment of the state of the art must be exemplified for it to be considered in the assessment of inventive step. There is likewise no requirement that the prior art contains any pointer, suggestion or incentive to select a particular embodiment for further development for this embodiment to qualify as a starting point in the problem solution approach."

• "The mere fact that the use of mepivacaine is not exemplified does not mean either that D2 is speculative or not enabled in this respect. This is because D2 discloses examples showing the successful use of other anaesthetics, namely bupivacaine, tetracaine and, especially, the closely related lidocaine, whose physicochemical and pharmaceutical properties are very similar to those of mepivacaine"

• "For these reasons, the above embodiment a), i.e. the method of claim 36 of D2 as applied to mepivacaine, is taken as starting point for the assessment of inventive step."

• The Board hence considers the embodiment a) to be disclosed and finds that claim 1 add two further distinguishing features. However, these features are deemed to be obvious.

• The answer to the question at the beginning of this post is, therefore, one distinguishing feature.

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1255/21 - Close reading of the clinical trial document

Key points

• A clinical trial registration document kills the patent.
• Note, I understand clinical trial pre-registration is mandatory and is public.  Whether and how that will benefit or negatively affect medical research is beyond the scope of this blog post. 
• Document D25 is a print-out from the website "International Clinical Trials Registry Platform" maintained by the WHO. It refers to a clinical trial with the title "A Phase I/II Trial of TG01 and Gemcitabine as adjuvant therapy for treating patients with pancreatic cancer" registered with EUCTR, the EU Clinical Trials Register. The proposed trial aims to "assess the potential for interference of Gemcitabine on immune responses to TG01 [...] in patients receiving TG01 and GM-CSF after primary resection of pancreatic adenocarcinoma", to "assess the safety of Gemcitabine given concomitantly with TG01/GM-CSF vaccination" and to "assess the efficacy of TG01 and GM-CSF in patients with resected pancreatic cancer" (see under "Primary Outcome(s)"). The exploratory objective is to "assess the relationship between KRAS status and recurrence".
  
  Mulitiple starting points for inventive step
• The OD analyzed inventive step starting only from another document, D23, as the closest prior art. The Board: "according to the established case law of the boards, the assessment of inventive step should be done from all documents that could represent alternative workable routes to the invention (see Case Law of the Boards of Appeal, 10th edition 2022, I.D.3.1). Moreover, if a piece of prior art is "too remote" from an invention, it should be possible to show that the invention would not have been obvious to a skilled person starting from this piece of prior art (ibid.).'
• "The product code "TG01" is not commonly known. It is followed by a list of seven components, each of which has a "Current sponsor code" ("12A", "12C" etc.), an "Other descriptive name" (e.g. "12-A-p21 RAS(5-21)","12-C-p21 RAS(5-21)"), a "Concentration unit" ("mg milligram(s)") and a "Concentration number" ("0.1-")."
• "It was disputed between the parties whether the skilled person would have been able to determine what the composition identified as "TG01" actually consisted of, in particular, whether they would have known that it referred to a peptide vaccine with a specific composition.  "
• " In a fast-moving field such as medical research, and in particular the field of oncology, review articles can be considered to reflect the skilled person's common general knowledge (see e.g. decision T 1110/03, point 2.3 of the Reasons). Document D15 is such a review article and it discloses that the seven most common KRAS mutations in codons 12 and 13 were "p.G12D","p.G12V", "p.G12C", "p.G12A", "p.G12S", "p.G12R", "p.G13D" (see document D15, Abstract and Figure 2). In the light of their common general knowledge, the skilled person at the relevant date of the patent would therefore have recognised that the seven one-letter-code amino acid designations in the descriptive names and in the sponsor codes of the p21 Ras peptide components of TG01 used in document D25 corresponded exactly to the seven most common KRAS mutations in positions 12 and 13. The skilled person would also have recognised that the designations "12" (six times) and "13" (once) in the descriptive names and in the sponsor codes corresponded to the positions of the mutations in the RAS peptide ("12-A-p21 RAS(5-21)", "13-D-p21 RAS(5-21)" etc.). " 
• " In conclusion the skilled person having common general knowledge in mind would have recognised that the "TG01" composition referred to in document D25 contained seven peptides consisting of residues 5 to 21 of the p21 RAS oncoprotein and carrying each one of the seven most frequent mutations at positions 12 and 13."
• "The full sequence of the 17 amino acid long peptides is disclosed on lines 1 to 3, left-hand column of page 1123 of document D6. Because of the reference to "K-ras 5-21" and the identical amino acid abbreviations at positions 12 and 13, the skilled person would understand that the peptides disclosed in document D6 are identical to the seven components of TG01 in D25 named "12-A-p21 RAS(5-21)", "12-C-p21 RAS(5-21)", "12-D-p21 RAS(5-21)", "12-R-p21 RAS(5-21)", "12-S-p21 RAS(5-21)", "12-V-p21 RAS(5-21)" and "13-D-p21 RAS(5-21)". "
• " In conclusion, the use of the code-name "TG01" in document D25 does not affect the status of this document as a realistic starting point for assessing inventive step because the skilled person would have been able to determine what the composition identified as "TG01" consisted of."
• Turnging to the distinguishing feature: "Document D25 discloses a proposal for a clinical trial for "TG01 and Gemcitabine as adjuvant therapy for treating patients with pancreatic cancer" (see "Public title"), i.e. of a composition falling under the definition in the claim. The only difference between the disclosure in the patent and the disclosure in document D25 is that the former [=the patent] discloses that the therapeutic effect which the trial is set up to test, is actually obtained. The evidence in the patent that said effect is obtained comes from the results of the DTH skin tests disclosed in the examples. It is common ground that this test is a suitable indicator for the existence of the relevant therapeutic effect."
• I.e., even if D25 explicitly discloses the claim, the claim is still novel, because for a second medical use claim, "it works" is an implicit feature that can provide for novelty (and inventive step, possibly).
• "the objective technical problem can be seen as providing an effective treatment for (pancreatic) cancer."
• "In view of these positive reports of gemcitabine in combination with peptide or nucleic acid vaccines, the board cannot conclude that there was any prejudice or teaching away from combining peptide vaccines with gemcitabine in the art, which would have dissuaded the skilled person to put the clinical trial proposal of document D25 into practice. Rather, based on the teaching in the prior art and their common general knowledge, the skilled person is judged to have had a reasonable expectation of success when putting the proposal of document D25 into practice."
• Therefore, the subject-matter of claim 1 is not inventive.
• 
  

EPO 

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

T 1845/21 - CPA is a set of features disclosed in combination; multiple CPA

Key points

• "The specific starting point for assessing inventive step is normally a set of features disclosed in combination in a document, e.g. an embodiment or example."
• " For assessing inventive step it is necessary to establish the distinguishing features over that specific starting point and assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point (T 1287/14, Reasons 5.2.1)."
• Disclosure, however, can be implicit.
• D3, Example 3 is the closest prior art.
• "The combination of all these features (toddler milk of example 3, which in view of the above [considerations] implicitly comprises LC-PUFA, and [implicitly ] for use in preventing infections) is considered the closest prior art for examining the inventive step of claim 1."
  
  
• "Prior to identifying the closest prior art in its statement setting out the grounds of appeal, appellant 1 extensively outlined what it deemed to be common general knowledge. While a brief introduction of the common general knowledge prior to identifying the closest prior art may occasionally be helpful, an extensive discussion on this matter bears the risk of adding hindsight to a party's argument. Such a discussion might undo the desired effect of the problem-solution approach, namely to assess inventive step as objectively as possible, although the assessment is unavoidably made in full knowledge of the invention. Nevertheless, the board understands appellant 1's submissions ..."

Multiple starting points

• 
  
• D45a was also proposed as the closest prior art.
• "A discussion of the entire problem-solution approach starting from a document as a further starting point may be dispensed with if, following a discussion on whether the document is suitable as the closest prior art, the board concludes that this is not the case (see T 1230/15, point 2.4)."
• "The understanding that a party is not generally entitled to orally present an entire problem-solution approach at oral proceedings is also conveyed in R 5/13 (Reasons, 14 and 15). Such an approach ultimately serves procedural economy."
• " D45a relates to an announced study on the effect of growing-up milk on the occurrence of infections in toddlers. The hypothesis underpinning the study is the expectation that drinking growing-up milk with added "prebiotics and LCPUFA" results in a lower occurrence of infections."
• "without the benefit of hindsight, D45a would have provided the skilled person with next to no useful information. ... It is worth noting that in the current case, hindsight is particularly difficult to put aside, the reason being that the results of the study are described in D35, published after the filing date of the patent. D35 is also the document that appellant 1 discussed in detail throughout the appeal proceedings, e.g. in the context of sufficiency of disclosure. Moreover, the results of the study are summarised in example 1 of the patent."
• " To conclude, the disclosure of D45a is vague and blurred, so this document is not considered a more promising springboard than D3 for assessing the inventive step of claim 1." 
• Inventive step over D45a is no further discussed.

EPO 

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

T 1126/19 - The whole list as starting point

Key points

• The decision was taken on 21.07.2023 and the written decision was issued on 03.01.2024. A communication under Art.15(9) was sent (link).
• The file does not show any communication under Art. 15(9) RPBA to inform the parties about the delay, and the written decision itself does not acknowledge the delay in any way. 
• One can only hope that compliance with Art. 15(9) RPBA will become more visible after the amendment of Art. 15(9) as of 01.01.2024. 
• Is the starting point for an inventive step analysis under the problem-solution approach a single document, or a single embodiment of a document, or something else? 
• "Claim 1 is directed to a camsylate salt of rucaparib which is crystalline and has a PXRD pattern comprising the characterising peaks 12.2±0.2, 14.8±0.2 and 22.4±0.2."
• "The invention is based on the finding that crystalline rucaparib camsylate is particularly suitable for the preparation of solid dosage forms due to its physical stability and low hygroscopicity (paragraph [0045]). The patent identified three crystalline forms of rucaparib camsylate, which were designated as Forms A, B and C (paragraph [0054]). "
• "claim 1 defines a rucaparib salt that contains Forms A and/or B, and [optionally] Form C."
• "document D1 [is] the closest prior art. As set out in point 4.1 above, D1 relates to the use of rucaparib as a chemosensitiser: it is combined with chemotherapeutic agents for potentiating the effect of the latter in the treatment of cancer. In paragraph [0043], D1 discloses a list of about 60 pharmaceutically acceptable salts of rucaparib that can be used in therapy. The list includes camsylate, although the preferred salts are phosphate and gluconate."
• "The parties agreed that D1 was the closest prior art but disagreed on whether inventive step should be assessed starting from the whole list in paragraph [0043] or the specific disclosure of the camsylate salt in that paragraph."
• " The board agrees with the appellant-patent proprietor [] that the starting point should be the whole list rather than the specific option of the camsylate salt. As explained in decision T 970/00 (Reasons 4.1.2), cited by the appellant-patent proprietor, the disclosure of the closest prior art must be considered on the basis of its technical information, without distorting or misrepresenting it by the knowledge of the invention."
• "In paragraph [0043] of D1, the camsylate salt of rucaparib is not singled out. D1 neither illustrates the camsylate salt of rucaparib nor presents it as a standalone embodiment. Paragraph [0043] is merely a notional disclosure in which camsylate is one among a long list of possible options, but not among the preferred ones. The isolation of one of the non-preferred options from paragraph [0043] would distort the teaching of D1, putting an inappropriate weight on that option."
• "Starting from the list of pharmaceutically acceptable salts in paragraph [0043] of D1, the subject-matter of claim 1 differs in the selection of camsylate as the rucaparib salt and the additional requirements that the salt be crystalline and show three specific PXRD peaks."
• "the board agrees with the objective technical problem proposed by the appellant-patent proprietor, i.e. the provision of a solid form of rucaparib having a suitable combination of properties for development into a solid dosage form."
" On the issue of obviousness, D1 does not deal with the formulation of solid forms of rucaparib. It contains no teaching on whether any of the salts in the long list of paragraph [0043] might possibly be suitable for preparing an oral solid formulation. The skilled person would have needed to study each of the salts for assessing: first, whether they are solid; second, how many solid forms they may adopt; and third, whether there are forms with properties suitable for a solid formulation."
• As noted by the appellant-patent proprietor, it is common general knowledge that finding a salt of an active compound which has a balance of properties making it suitable for an oral solid formulation is generally a difficult semi-empirical task which requires non-routine experimentation and has an uncertain outcome. "
• "the salt of claim 1 involves an inventive step and claim 1 meets the requirements of Article 56 EPC. "

EPO 

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

T 1090/21 - Breadth of claim and closest prior art

Key points

•  "On the question of whether only one piece of prior art should be selected for the purpose of assessing inventive step, it is settled case law that there are often several reasonable starting points, each offering a different route that might lead to the invention without the need of hindsight (see Case Law, I.D.3.1). In that case, the rationale of the problem and solution approach requires that the invention be assessed relative to all these possible routes, before an inventive step can be acknowledged, even if in some cases the number of routes might be substantial."

• "For example, the number of suitable prior art documents may depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same is true in a highly competitive technical field where many closely related prior art documents have been published. However, as mentioned above, the fact that several documents are proposed as the closest prior art is not incompatible with the problem-solution approach."

•  "For these reasons, the Board considers that D19, and in particular its example 4, is a reasonable starting point for assessing inventive step."

• The claimed subject matter of the request is found to be obvious. Turning to an auxiliary request, the Board notes the following: "the Board cannot follow the respondent's argument that, given the large number of possible starting points, it could not be required to provide evidence of effect in each case. As noted previously (see point 1.1.5), the number of suitable prior art documents may, for example, depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same applies in a highly competitive technical field where many closely related prior art documents have been published. In such a situation, the Board considers that it would be an unjustified advantage to exempt an applicant or proprietor from providing evidence of a technical effect merely because the claims are broad and/or the number of possible starting points is relatively high."

• Turning to a further auxiliary request: "According to established case law, the objective technical problem must be derived from effects directly and causally related to the distinguishing features of the claimed invention. In particular the comparison with the closest prior art has to show convincingly that the effect is attributable to the feature distinguishing the invention. The aim of such a comparison is to demonstrate that the technical effect has its exclusive origin in the feature characterising the invention in the claims" 

• "the question to be answered is whether a technical effect can be inferred from the available experimental evidence that is related to distinguishing feature (iii), i.e. the presence of a fast-reacting crosslinker and a slow-reacting as defined in claim 1 (instead of the fast-reacting crosslinker as disclosed in D19)."

• "In order to provide evidence of an effect over the closest prior art, the parties do not necessarily have to reproduce embodiments of the closest prior art. It is true that, according to the boards' established case law, tests comparing the invention with the prior art have to be conducted in such a way that any effect can be attributed to the distinguishing feature. However, it is also permitted - and might even be necessary - to modify prior-art embodiments in line with the invention to such a degree that the only remaining difference was the feature distinguishing the claim"

• This claim request is held to be inventive.

EPO 

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

T 0763/20 - Baking ovens and steam ovens

Key points

• A decision on novelty and inventive step in opposition with a certain EQE Paper C vibe:  "E1 and E4 both disclose a steam cooking oven. A steam cooking oven is not the same as a baking oven as defined in claim 1 of the patent. Steam cooking is limited to 100°C (normal pressure) and does not result in browning of the food but leaves the surface of the cooked food with a moist, soft surface. In contrast to this, baking achieves browning and results in the formation of a crust on the surface of the baked food. Hence, a baking oven has to be suitable for achieving a Maillard reaction on the surface of the food, which typically proceeds from around 140 to 165°C. This is not the case for a steam cooking oven. E1 and E4 do not disclose that the steam cooking oven can be heated to such an extent that the oven is suitable as a baking oven, i.e. is suitable for achieving a temperature required for a baking process."
• "It is true that E4 discloses, in column 4, lines 7 to 11, that the side walls and the bottom wall of the steam cooking oven can be heated to minimise condensation: ... However, heating elements which are adapted to avoid condensation are neither foreseen nor suitable for heating the oven to the temperatures required for baking. This is also confirmed by the low power (120 W, 50 W) disclosed in E4 in this context, which is far lower than the power usually consumed by a baking oven (more than 1 kW). Hence, E4 also does not contain any additional disclosure which could imply that the steam cooking oven could be used at temperatures higher than 100°C, contrary to the conventional understanding that the skilled person has of a steam cooking oven."
• The claim is novel over E4.
• Inventive step, starting from E2: "E2 discloses a baking oven with a water evaporation system."
• "the subject-matter of claim 1 differs from the disclosure in E2 in that the baking oven comprises

  - an outlet section of the tubular conduit that is external to the volume generated by a translation of the opening of the reservoir along the physical vertical; - means for conveying the water from said outlet section of the tubular conduit to the reservoir; - a portion of the delimiting walls that comprises the means for conveying the water; - said conveying means being exterior to said volume."

• "the objective technical problem could be formulated as that of providing a baking oven which is easier to clean after use."
• "El and E4 are documents which would not be considered by the skilled person because they do not relate to the same type of device as that in E2, i.e. a baking oven. Even if the skilled person considered the disclosure in relation to a steam cooking oven according to E1 or E4 for modifying the baking oven in E2, neither E1 nor E4 would prompt them to make the necessary structural changes in order to solve the underlying problem."
• Inventive step starting from E4: "E1 and E4 relate to steam cooking devices, and therefore, do not have the same purpose as the patent, which can be considered to be providing a baking oven. Hence, E1 and E4 do not represent an appropriate starting point for the assessment of inventive step, since the skilled person would not consider them when seeking to provide a baking oven.

  Even if the skilled person started from either E1 or E4, they would not completely change the nature of the cooking device and redesign it to be suitable as a baking oven, as the cited prior art gives them no motivation or incentive to do so.

  Therefore, in line with the finding in point II.3.2.3 of the contested decision, the Board concludes that the subject-matter of claim 1 is not obvious when starting from E1 or E4."

• 
  
• EPO 

The link to the decision is provided after the jump. 

T 1654/19 - The CPA should ideally

Key points

•  The Board, on the selection of the closest prior art: "t is established case law that the closest prior art should ideally be a document which mentions the purpose or objective indicated in the [patent under examination] as a goal worth achieving (Case Law, supra, I.D.3.2). The aim thereof is that the assessment process should be based on a situation that is as close as possible to that faced in reality by the inventor, avoiding ex post facto considerations."
  
  
• On the procedure: two opponents appealed. One later withdrew the appeal. The other opponent relies on the former appellant's earlier arguments in the appeal. 
• The Board: "The appellant and the other party [the other opponent] submitted that the claimed composition lacks an inventive step over D1, which was contested by the respondent.  From a procedural point of view, the respondent submitted during the oral proceedings that only opponent 1, as a former appellant and now other party, filed a reasoned objection starting from D1 as the closest prior art. Opponent 2, as the only remaining appellant, would have merely referred in the said letter ... to the submissions made in the statements of grounds of appeal of opponent 1, i.e. to the submissions of the former appellant and now other party. The respondent [patentee] considers that the objection of inventive step based on document D1 as the closest prior art is therefore no longer part of the appeal proceedings. This is not convincing. As recalled in decision T 1820/18 (point 4 of the Reasons), it is not possible to split the appeal proceedings into different procedures, each dealing separately with the grounds for opposition and the facts, evidence and arguments presented by the individual opponents concerned (T 790/03, point 2.1 of the Reasons). Therefore, each opponent can rely on any grounds, facts, evidence and arguments duly submitted by other opponents (see also T 620/99, point 1 of the Reasons; T 1657/14, point 2.4.3 of the Reasons)."

EPO 

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

T 2610/19 - Too many inventive step attacks

Key points

• Credits to T. Schürmann and M. Wachenhausen for highlighting this decision in epi Information 3/2022.
• The Board, in translation: "It is not possible to state in general how many starting points an opposition division has to take into account when examining inventive step. The answer to this question depends on the circumstances of each case, in particular on the distinguishing features of the different starting points proposed."
• "However, it is clear that in practice only a limited number of lines of attack can be examined. An opponent is therefore required to select from the multitude of possible starting points those which, in his opinion, most clearly call into question the patentability of the claimed subject-matter. If the number of attacks exceeds a reasonable level, an opposition division must have some discretion"
• As a comment, it would be useful if the Board had identified the legal basis for this discretion. Article 114(2) EPC  only refers to facts or evidence not submitted "in due time". 
• However, in the present case, the OD's had not correctly exercised this discretion. 
• The opponent had presented two inventive step attacks in the Notice of opposition, one starting from F3 and the other from F5. The OD in the preliminary opinion considered F4 to be the closest prior art.
• During the oral proceedings, the OD had decided that F5 was the closest prior art and had forbidden the opponent to present arguments regarding its attack starting from F3. In the written decision, the attack starting from F5 as well as the attack starting from F3 was considered by the OD." In the case of document F3, [the OD] only took into account the opponents' written submissions. It prevented the opponent from using any document other than document F5 as a starting point for examining inventive step during oral proceedings, relying on the third paragraph of Section G-VII, 5.1 of the Guidelines"
• ""When choosing the F5 as the closest prior art, the chairman of the opposition division pointed out that this choice determines the sole starting point.
• "Since the decision acknowledges the arguments put forward in the written procedure based on F3, the opposition division is of the opinion that the right to be heard of the opponents has not been violated (Article 113(1) EPC)."
• The Board: "the opposition division should have given the opponents the opportunity during the oral proceedings to comment orally on the attack based on document F3 and on the opposition division's preliminary view expressed in the summons."
"In this context, it is noted that the right to be heard under Article 113(1) EPC is not already fulfilled if a party who has requested oral proceedings under Article 116 EPC has only been able to submit comments in writing (see T 1077/06, points 10 and 14 of the reasons for the decision). Under the circumstances, the passage of the Guidelines cited by the opposition division cannot justify denial to the [opponent] to comment at the oral proceedings on inventive step on the basis of document F3. It is also not clear from items 23 and 24 of the minutes that there was any discussion of the relevance of other starting points at all. The opposition division's refusal to hear the opponent on those points before the opposition was rejected, constitutes a violation of the right to be heard"

EPO 

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

T 2300/18 - Considering the broad scope of claim 1

Key points

•  "In the decision under appeal, the opposition division found that D1 was not only the closest prior art for the subject-matter of claim 1 but that it was also the only suitable starting point to be used in the context of the problem-solution-approach."
• " The Board does not agree with this finding. As a general rule, the claimed invention must be non-obvious having regard to the prior art, which can only be understood to mean any prior art (see e.g. T261/19, Reasons 2.5, citing T1742/12, points 6.3 and 6.6 of the reasons and T967/97, point 3.2 of the reasons). Considering the broad scope of claim 1, the Board sees no reason as to why D8 or D9 should not represent a suitable starting point for considering inventive step, whether it be the absolute "closest" prior art in some sense, or not. The term "closest prior art" is simply a label given to the prior art from which the inventive step analysis is started."
• " Starting the inventive step analysis from prior art which is (possibly) further away from the claimed invention (e.g. by having less features in common), can merely be expected to make it more difficult to arrive at the claimed subject-matter without involving an inventive step. In order to be allowable, the claim must therefore define subject-matter involving an inventive step also when considering D8 or D9 as the closest prior art starting point."
• "During the oral proceedings before the Board, the Board furthermore concluded that the ground for opposition under Article 100(a) and 56 EPC did prejudice maintenance of the patent (according to the now withdrawn main request) when starting from D9 as the closest prior art (for further details, see the minutes of the oral proceedings before the Board), and notably without reference to any further prior art document. Since the main request was found not to be allowable, the contested decision to reject the opposition has to be set aside."
  
• "Whether inventive step would also have been lacking when starting from D1 or D8 as being the closest prior art was not decided. The Board's decision to remit the case (see below) should not be understood such that only D9 might now be considered as the closest prior art when considering inventive step."
• "D8 and D9 were filed late in the proceedings before the opposition division. Both documents were admitted into the proceedings by the opposition division" The Board does not overrule this decision.
• Auxiliary Requests 6 to 9, filed with the appeal reply brief of the patentee as respondent, are admitted. "At the start of the oral proceedings the Chairman stated that the Board could see no reason for excluding any of the auxiliary requests and made reference to its preliminary opinion (see item 4.1), whereby in particular "convergence" of the subject-matter in the auxiliary requests and the possible lack of procedural economy resulting therefrom were not factors to be considered when applying Article 12(4) RPBA 2007. "
• The Board remits the case, noting that there are no objections under Art. 123(2) and Art. 84 for auxiliary request 6.  "The added feature common to auxiliary requests 6 to 9 (i.e. the discontinuous portions) however raises questions to which the opposition division had no opportunity to give its opinion. The appellant had additionally cited further prior art (see e.g. its submission of 4 December 2019 in relation to the sixth auxiliary request) which it considered relevant in this regard."

EPO 

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

T 0058/19 - Ideally the CPA should

Key points

• This opposition appeal case demonstrates how the choice of the CPA can be important.
• As a preliminary procedural point, the decision also illustrates that the appellant can use a rejoinder to submit evidence in reply to assertions that the respondent makes in his statement of reply.
• "The admittance of D12, D12a and D13 which were filed by the appellant after the statement of grounds of appeal, but before notification of the summons to oral proceedings, is subject to the stipulations of Article 13(1) RP[]showing the publication date of D12 and D13 were submitted to refute the respondent's assertions according to which [...]. On that basis and in view of the absence of any objection to their admittance by the respondent, the Board makes use of its discretion pursuant to Article 13(1) RPBA 2020 and admits D12, D12a and D13 into the proceedings."
• On to the inventive step over D1. "According to the case law [...] ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving. The aim thereof is that the assessment process should start from a situation as close as possible in reality to that encountered by the inventor, avoiding ex post facto considerations."
• "According to paragraph [0014] of the specification, the aim of the present invention was to provide VDF-TrFE copolymer materials which can efficiently undergo crosslinking under thermal or UV exposure conditions, yielding a uniformly cured material which still maintains outstanding piezoelectric, ferroelectric, pyroelectric and dielectric properties."
• "D1 merely address the use of the materials described in D1 "in the areas of curable elastomers and elastoplastics, adhesion enhancement, coatings, thermosetting resins, grafting polymers and the like" (paragraph [0013]). It does not address electric properties of the materials described in D1, let alone piezoelectric, ferroelectric, pyroelectric and dielectric properties which are at the core of the invention described in the patent in suit."
• "Summing up, reading into D1 that this prior art discloses copolymers comprising VDF and TrFE repeating units or using that document as starting point for assessing inventive step when it does not relate to the aim of the present invention, i.e. crosslinking VDF-TrFE copolymer materials while maintaining their piezoelectric, ferroelectric, pyroelectric and dielectric properties, can only be the result of an inadmissible analysis of D1 made with the hindsight knowledge of the invention described in the patent in suit, as is submitted by the respondent."
• "Therefore, the appellant's objection that the subject-matter of claim 1 lacks an inventive step starting from the disclosure of D1 fails to convince."
• The Board then finds the claim to be inventive starting from D2 and starting from D4.
• As a comment, it seems remarkable that the Board begins with "ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving", and seems to find that because D1 fail to mention the purpose, it is not a suitable starting point at all and any inventive step argument starting from it must fail. 

EPO T 0058/19

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