Zusammenfassung von Article 056 EPC für die Entscheidung T1044/23 vom 24.09.2025

In case T 1044/23 the opposition division found that commercial products DMDA resins were not prior art under Art. 54(2) EPC because the manufacture of these products was not enabled. In the board’s view, it was clear following the ruling of G 1/23 that the reproducibility requirement was no longer a valid condition to assess whether a product put on the market before the date of filing of the opposed patent was state of the art (Art. 54(2) EPC). As reproducibility is no longer a criterion, the board evaluated the public availability of the DMDA resins and the evidence on file clearly showed that the resins were commercialised before the priority date and therefore these resins were state of the art. Claim 1 of the main request lacked novelty. As to claim 1 of the auxiliary request II where the density differed, the only objections were objections of lack of inventive step. The appellant (opponent) considered that D6, D7, and the DMDA resins could each be taken as the closest prior art. The central point of dispute between the parties was whether a non-reproducible product could be selected as the closest prior art for assessing inventive step. In that regard, it was first assumed (for the benefit of the party arguing that the DMDA resins could not be selected as the closest prior art) that these resins could not be reproduced. It was not in dispute that a public prior use may be selected as the closest state of the art according to the case law, such as T 1464/05, T 0660/16 or T 2463/22. The question was, however, whether this also applied to commercial products which could not be reproduced by the skilled person. The board stated that G 1/23 (points 95-96 of the Reasons) does not exclude that a non reproducible product can be selected as the closest prior art. Instead, the specific circumstances of the case should be analysed. In the case in hand the technical information in D1 and D9 about the DMDA resins made said commercial DMDA resins immediately relevant for the skilled person. Even assuming that the skilled person would not know how to reproduce these resins, the board did not consider this point to be a sufficient reason to disregard them as closest prior art. First, the DMDA resins being commercially available, the skilled person could use them as such or modify these resins, within the limits of its competence, to obtain different properties. This situation essentially corresponds to the example in G 1/23 (point 96 of the Reasons). In any case there was no apparent reason why the skilled person would have excluded the product as a possible starting point. Accordingly, even if the DMDA resins were not fully reproducible, they were nevertheless a realistic starting point for further developments in the present technical field. In this regard, it should be noted that a non-reproducible commercial product was not comparable to a defective or speculative disclosure. The board understood from the respondent’s (proprietor’s) line of argument that the knowledge of the method used to obtain the DMDA resins would be essential in order to achieve a resin composition as defined in operative claim 1. While this may indeed be the case in the present context, the board did not regard this consideration as a valid criterion for the selection of the closest prior art. In this respect, the extent to which a non-reproducible product must be modified to obtain the claimed subject-matter, and the level of knowledge about that product and its manufacture required to achieve it, were not considered relevant for determining whether the product could be regarded as the closest prior art. These aspects instead related to later stages of the problem–solution approach, namely identifying the distinguishing features between the product and the claimed subject-matter and/or assessing whether the skilled person, starting from that product, would have been able to obtain the claimed one (see Catchword). The question of reproducibility was central at a later stage, i.e. to the assessment of obviousness and the board in detailed reasons concurred with the respondent’s conclusion that the invention was not obvious to a skilled person starting from any of the DMDA resins as closest prior art.