Tuesday, January 07, 2020 T 405/14 - Closest prior art does not need to be the closest

Which springboard(s) can be used?

In the present opposition appeal case, inventive step was challenged. A key element in the debate was whether the presence of a document D1 which would be closer to the claimed invention than a document D2 would require any inventive step objection to start from D1 as the closest prior art, or whether an attack starting from D2 as the closest prior art would also be admissible and allowable - as well as whether doing so would not only not be correct, but would -if applied by the Examining Division- account to  a substantial procedural violation. "Concerning inventive step, the appellant (applicant) argued that the skilled person would not consider D2 as closest prior art, since it did not disclose magneto-resistive speed-sensors or sensing elements relying on the Hall effect. This appeared all the more true under the present circumstances, considering that document D1 was available. D1 appeared to be a much more suitable starting point, since it addressed problems regarding the testing of speed sensors based on Hall effect or magneto resistive sensors, which was exactly the problem addressed by the claimed invention." The Board came to conclude, with reference to an earlier decision from this same Board, that "Experience teaches that a document which shares a common purpose with a claimed invention, as well as a large number of features, in order to solve the same or a similar problem, will not necessarily allow a convincing objection of obviousness to be raised against that invention, whereas said invention may indeed result, without hindsight, in an obvious manner from an apparently less promising item of prior art. In this respect, all items of prior art considered as starting points which allow the elaboration of a realistic attack under Article 56 EPC may be considered to qualify as "closest prior art", although this currently accepted terminology is somewhat misleading." One could understand this as that this Board seems to consider the term "closest" meaningless. The Board does, unfortunately, not discuss other case law that does give (or at least seems to give) a meaning to the term "closest", e.g., by using terminology such as "most promising" springboard (see e.g. Case Law Book (2019) I.D.3.1 "Determination of closest prior art in general",  3.2 "Same purpose or effect" and 3.4 "Most promising starting point"), nor does the Board comment on its deviations from the quite clear guidance in Guidelines G-VII, 5.1 (despite Article 20(2) RPBA 2007).