The present decision is a useful reminder that Board of appeal decisions can be very quick, in particular in ex parte proceedings where no oral proceedings (OPs) have been requested.
[1.1] The examining division (ED) in its decision explained why in its opinion the subject-matter of claim 1 lacks an inventive step.
[1.2] In its grounds of appeal the appellant explained why it disagreed with that decision. The appellant did not file any new request. It is therefore the task of the Board to decide whether it is convinced by the arguments of the appellant that the decision was wrong.
[1.3] In accordance with Article 12(1)(a) Rules of Procedure of the Boards of Appeal (RPBA) the appeal proceedings is based on the notice of appeal and the grounds of appeal. Paragraphs (b) and (c) of that article do not apply in the present case as there is only one party and the Board has not issued a communication.
[1.4] In accordance with Article 12(3) RPBA the Board may decide the case in proceedings with only one party at any time after the statement of grounds has been filed, subject to A 113 and A 116. No request for OPs under A 116 has been made by the appellant. With regard to A 113 the present decision is based on the set of claims filed by the appellant with letter of 19 June 2008 during the first appeal proceedings. The impugned decision of the ED was also based on this set of claims. No amendments have been filed in the present appeal proceedings and the appellant expressly requested in its notice of appeal dated 29 June 2009 that a patent be granted on the basis of this set of claims. The present decision is also based on grounds and evidence on which the appellant has had a chance to comment. No new documents or grounds have been cited during the present appeal proceedings and only the reasoning of the examining division and the appellant have been considered, as will become apparent below.
[1.5] The Board concludes therefore that it may take the present decision without recourse to a preceding communication to the appellant.
As the claims on file were found to lack an inventive step, the appeal was finally dismissed.
Overall duration of the appeal proceedings: less than 11 months.
Of course, if the appellant had requested OPs in its notice of appeal, the Board would have been obliged to grant this request, which would have given the appellant one last opportunity to persuade the Board.
To read the whole decision, you may click here.
3 comments:
This decision also contains an interesting statement on selecting the closest prior art (see below). I was under the impression that the correct choice must be independent of the outcome of the problem-solution approach. But maybe that's just me...
[2.1] [...] If starting from a particular piece of prior art the conclusion is reached by the examining division that the subject-matter of the claim in question lacks an inventive step then the question of whether there is an even closer piece of prior art is clearly not relevant. In the present case the examining division came to the conclusion that starting from a particular embodiment of the aerosol product disclosed in D1 the subjectmatter of claim 1 lacks an inventive step. The question of whether the subject-matter of this claim would or would not lack an inventive step starting from a different prior art disclosure is clearly of only academic interest.
The assessment of inventive step is not a mathemathical proof.
There is nothing like a "correct" or "incorrect" choice of the starting point (even the expression "closest state of the art" is somehow misleading, since it presuposes that a "distance" can be defined).
The starting point should belong to the same technical field and possess as many features as posible, but this is nearly all. However, as not all features are present (otherwise it would lack novelty), some prior art shows one combination of features and other prior art shows another. So which is closer? You start arguing from the different prior arts and see which argumentation is more convincing. If none is, the invention is "inventive". If one argumentation line is convincing, then not, and it does not matter if there are further argumentation lines which are even more convincing.
As said by the board, this is only of academic interest ...
I fully agree with pat-agoni-a. It would be against common sense that newly discovered "better" prior art could invalidate the former "closest prior art" thereby possibly turning the invention inventive.
That said, the EQE Examination Boards certainly do give the impression that there can only be one closest prior art.
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