EP 3 152 066 B1 relates to a tyre with low rolling resistance.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The opponent had argued lack of N over D3, as well as lack of IS over D18+D3. The OD’s decision took D5’ as CPA, and not D3, when rejecting the opposition.
During the OP before the BA, both opponent and proprietor requested that, after the N of claim of the MR=as granted vis-à-vis D3 had been recognized and D3 had been considered a reasonable starting point for the analysis of IS, the case be remitted to the OD.
The board thus remitted for further prosecution in view of the absence on a decision of inventive step at least over D3.
The proprietor’s point of view
The proprietor argued that, in view of the large number of objections of lack of IS presented by the opponent, the objection based on D3 should only be considered if it was more relevant than other objections. The proprietor further argued that D3 could not be considered as CPA.
The board’s decision
Novelty of claim 1 of the MR over D3
The board held that claim 1 of the MR was novel over D3 as the combination of features according to claim 1 of the MR could at best only be obtained by combining multiple passages of D3 specifically chosen from all the alternatives proposed in D3.
D3 as CPA
The patent in suit seeks to provide a tire with low rolling resistance while maintaining good wet grip.
The board acknowledged that, although it was true that D3 does not seek to provide tires with good wet grip like the patent in suit, there was no doubt that D3 belongs to the same technical field as the patent in suit and that it deals with a problem that is at least related to that (or those) derivable from said patent.
For the board, it was also clear from the novelty analysis that the subject matter of claim 1 of the MR differed from the disclosure constituted by examples A and A + glycerol of D3 by only one feature.
The board therefore considered that D3 is a document that can be regarded as a reasonable and promising starting point for the analysis of IS.
The fact that at least one other prior art document could be used as a starting point for analysing IS, cf. D5′ and D18 considered in the contested decision and/or documents D1 or D6 considered during OP before the OD, is not a sufficient condition for not considering D3 as a possible alternative starting point. Thus, according to established case law, when two documents are both adequate to serve as the closest prior art, an IS must necessarily be demonstrated for both of them.
For these reasons, the board considered that D3 can be regarded as a reasonable and promising starting point for the analysis of IS.
The board thus remitted for further prosecution.
Comments
T 131/01 is not dead
Although T 131/01 was not mentioned in the decision, the present board applied its teaching and spirit.
The board decided that the N objection based on D3 was not valid, but then accepted to remit in order for the opponent and the proprietor to discuss an IS objection on the basis of D3 as CPA. In doing so, the board was up to its duties to ensure that possibly invalid patents are not maintained.
The case might come back before the board, but the present board did not stifle the discussion for very formalistic reasons.
Divergent case law
The present decision is in clear contradiction with T 1242/21, commented in this blog, and with T 1042/18, also commented in this blog.
In both decisions, the change of an objection of lack of N to an objection of lack of IS, as foreseen in T 131/01, and many more similar decisions, was refused.
In T 1042/18, the board took pretext that T 131/01 was an isolated decision, which is not true, moreover taken under the RPBA07, for not admitting the change of objection from N to IS under the valid RPBA..
In T 1242/21, the board agreed that the change, during the OP before the board, from an objection of lack of N to a lack of IS, once the board had decided that N was given, was not a new ground of opposition, according to G 10/91, G 1/95 and G 7/95.
The board nevertheless considered that this change of argumentation, allowed under T 131/01, was not in accordance with Art 13(2) RPBA and thus not admissible. On top of it, the board refused to submit a referral to the EBA about the change of objection.
In both T 1042/18 and in T 1242/21, the boards could have remitted to the OD in order to assess IS, but by stifling the discussion, both boards made sure that the case disappeared for good from their input.
On the procedure
The ISR established by the EPO only mentioned four A documents.
None of the documents brought forward by the opponents were mentioned in the ISR.
It is thus rather surprising that neither D5’ nor D3 were found during the initial search.
Comments
2 replies on “T 364/22 – A document might not be novelty destroying but can be used as CPA – T 131/01 is not dead”
Why is this decision surprising/interesting? Why shouldn’t a document that does not disclose all features of the invention be used as closest prior art?
In principle a document that does not disclose all features of the invention can be used as closest prior art. There is no doubt about this.
The decision is surprising/interesting due to the fact that some boards of appeal took pretext that going from a lack of N objection to a lack of IS on the basis of the same document, might not be a new ground of opposition as ascertained in G 10/91, G 1/95 and G 7/95, but was an amendment in the opponent’s appeal case, and hence not admitted at the discretion of the board. See for instance T 1042/18 and T 1242/21 quoted in the comments.
T 131/01 correctly allowed this switch as it made clear that one and the same document cannot be novelty destroying and at the same time closest prior art. In T 131/01, the board decided during OP that N was given and then allowed an attack on lack of IS, whereby the same document was then used as CPA.
By stifling any serious and necessary discussion, this is a good way for boards to increase their production/productivity. No wonder when the re-appointment of members is made dependent from performance criteria, which on top of it are not pubic. Where is the independence of the boards?