T 0450/13 - Public prior use in appeal

EPO T 450/13 

For the decision, click here [C]


EPO headnote

1. Submitting new documents together with the statement of grounds of appeal without discussing them may obscure any argument the appellant may have intended to make in the statement of grounds of appeal.

It is in particular not acceptable if it is then necessary for the board and any other party to read the new documents, to identify the possibly relevant passages in them and then to knit them together to understand why, in view of these documents, the decision of the opposition division was in the appellant's view wrong (see in particular point 4.4 of the Reasons).

2. Not substantiating a public prior use in opposition proceedings but attempting to substantiate it in the statement of grounds of appeal may lead to the inadmissibility of this attack under Article 12(4) RPBA (see point 3 of the Reasons).

Key points

• "The above lack of substantiation [of the Statement of Grounds] with regard to the public prior uses [] is aggravated by the fact that with the statement of grounds of appeal, 83 new documents were submitted in relation to the public prior uses of which only 8 documents were discussed in the statement of grounds of appeal. This obscured any argument the appellant may have intended to make in the statement of grounds of appeal."  [4.4]
• " The board therefore decided not to admit the public prior use attacks BASF, Fabo and Straptech into the proceedings." [4.7]

Summary of Facts and Submissions

I. This decision concerns the appeal filed by the opponent against the interlocutory decision of the opposition division that European patent No. 1 923 441 as amended met the requirements of the EPC.

II. The opponent had requested revocation of the patent in its entirety on the grounds that the claimed subject-matter was neither novel nor inventive (Article 100(a) EPC), and that the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC).

The documents submitted during the opposition proceedings included:

D1 [-] D19

S05: Report of S. Martina of her visit to Straptech-Maillis (1 February 2005);

S10a: "BI-DCP Distribution Table" of sample BASF DS 3547X;

S10b: Weight Distribution Job 28/Run 128 of sample BASF DS3547X;

S10c: Volume distribution of Acronal**(TM) DS3457X; and

S12c: "Herstellvorschrift: Plextol D260". [...]

IV. The opposition division's decision can be summarised as follows:

[...]

The claimed subject-matter was also novel over the public prior uses Fabo, Straptech and BASF (for details, see points 3 and 4 below).

[...]

V. On 21 February 2013, the opponent (hereinafter: the appellant) filed an appeal. The statement setting out the grounds of appeal was filed on 30 April 2013 including the following documents:

A01: Overview of documents and evidence;

A02a: Overview of the documents filed with regard to the public prior uses Fabo, Straptech and BASF;

A02b: Overview of the documents filed with regard to the public prior use MAC;

A03: Test report "Messergebnisse Geräuschentwicklung";

D3a: US 4,456,726 A;

D26 - D38: 

Supplementary evidence concerning the prior use "Fabo"

F12: Way bill "KVO-Frachtbrief für den Güterfernverkehr";

F13: "Speditions-Übergabeschein-Nr IE/00103056/0001";

F14: International way bill, signed on 12 July 2006;

F15: Delivery note, dated 12 July 2006;

F16: "Attestato di controllo specifico" for 0602B0008, dated 16 April 2013;

F17: "Attestato di controllo specifico" for 0607B0037, dated 5 November 2009;

F18: Copies of data base entries concerning deliveries to Fabo, delivery date 7 March 2006;

F19a: Affidavit of M Fagni, signed on 26 March 2013;

F19b: Invoice for 1000 kg Plextol**(TM) D260, material code 900916084, dated 3 March 2006;

F19c: Invoice for 1000 kg Plextol**(TM) D260, material code 900916084, dated 12 May 2006;

F19d: Invoice for 20000 kg Plextol**(TM) D260, material code 900916084, dated 12 July 2006;

F19e: Invoice for 2000 kg Plextol**(TM) D260, material code 900916084, dated 5 October 2006;

F19f: Test certificate dated 22 June 2006, control number 889;

F19g: Test certificate dated 20 July 2006, control number 907;

F19h: Test certificate dated 20 July 2006, control number 908;

F19i: Test certificate dated 30 August 2006, control number 965;

F19j: Test certificate dated 29 August 2006, control number 947;

F19k: Invoice Nr. 936, dated 21 July 2006;

F19l: Invoice Nr 937, dated 21 July 2006;

F19m: |Invoice Nr 4071, dated 1 September 2006; |

F20: |Affidavit of S. Menegato, signed on 30 April 2013; |

F21: |"Materialkalkulation", delivery number 83135495; |

F22: |"Materialkalkulation", delivery number 83144046; |

F23: |"Kunststoffanalytik", sample "Fabo Anlage 03; transparent"; |

Supplementary evidence concerning the prior use "Straptech" |

S10d: |Analysis of PL-PSDA data of Acronal**(TM) DS 3457 X Pr.0403200501; |

S14: |Inspection certificate for Plextol**(TM) X4500CA.57% IBC, dated 16 April 2013; |

S15: |E-mail of G. Steuernagel to D. Wolters and K. Greiner, dated 7 March 2013; |

S16: |"Kunststoffanalytik", sample "Straptech Anlage S08"; |

S17: |"Materialkalkulation", delivery number 83109838; |

S18: |"Materialkalkulation", delivery number 83114463; |

Supplementary evidence relating to prior use "Mac" |

M1: |Invoice for 1000 kg Plextol**(TM) X4500CA.57% IBC, material code 900915694, dated 28 January 2005; |

M2: |Delivery note dated 28 January 2005; |

M3: |"Attestato di controllo specifico" for 0411A0622, dated 29 January 2013; |

M4: |"Referenzen Abfüllungen/Lieferungen zu internen Chargennummern MacFralex", dated 25 January 2005; |

M5: |"Weight Distribution Job 95/Run 96"; |

M6i: |Test report "Su Adesivo: Polymer Latex Plextol X4500" by of A. Capaccioli, signed on 8 March 2005; |

M6e: |English translation of M6i; |

M7i: |Test report "Relazione Prove Su Adesivo: Polymer Latex Plextol X4500" by A. Capaccioli, signed on 19 December 2005; |

M7e: |English translation of M7i; |

M8: |"Materialkalkulation", delivery number 83112387; |

M11: |Invoice for 6000 kg Plextol**(TM) X4500CA.57% IBC, material code 900915694, dated 22 March 2005; |

M12: |Delivery note dated 22 March 2005; |

M13: |"Attestato di controllo specifico" for 0503A0142, dated 29 January 2013; |

M14: |"Referenzen Abfüllungen/Lieferungen zu internen Chargennummern MacFralex", dated 25 January 2005 (seems to be identical to M4); |

M15: |"Kennzeichnung des Prüfstatus" dated 10 March 2005; |

M16: |"Weight Distribution Job 30/Run 130"; |

M17: |Sample "avena adhesive tape"; |

M18: |Sample "transparent adhesive tape"; |

M19: |"Materialkalkulation", delivery number 83115780; |

M21: |Invoice for 24000 kg Plextol**(TM) X4500, material code 900915693, dated 16 January 2006; |

M22a: |Shipping order from 12 January 2006; |

M22b |Way bill for Rinnen GmbH & Co KG, dated 12 January 2008; |

M23: |"Attesto di controllo specifico" for 06/M002A, dated 7 February 2013; |

M24: |"Referenzen Abfüllungen/Lieferungen zu internen Charbennummern MacFralex", dated 27 November 2006; |

M25: |Filtration analysis ("Filtrationsblatt") on Plextol**(TM) D260, dated 14 January 2006; |

M26: |"Weight Distribution Job 44/Run 44"; |

M27: |"Materialkalkulation", delivery number 83132822; |

M31: |Invoice for 23600 kg Plextol**(TM) D260, material code 900916083, dated 24 January 2006; |

M32a: |Shipping order dated 20 January 2006; |

M32b: |Way bill for Rinnen GmbH & Co KG, dated 20 January 2006 |

M33: |"Attesto di controllo specifico" for 06/M004A, dated 24 January 2006; |

M34: |"Referenzen Abfüllungen/Lieferungen zu internen Charbennummern MacFralex", dated 26 January 2006; |

M35: |Filtration analysis ("Filtrationsblatt") on Plextol**(TM) D260, dated 21 January 2006; |

M36: |"Weight Distribution Job 43/Run 43"; and |

M37: |"Materialkalkulation", delivery number 83133281. |

VI. With its letter of 6 June 2013, the appellant filed:

M38: Affidavit of R. Lastrucci, signed on 8 May 2013.

[...]

Reasons for the Decision

3. The public prior use attack Mac

3.1 According to the statement of grounds of appeal, the public prior use Mac Autoadesivi s.r.l. ("Mac") destroys the novelty of the claimed subject-matter.

3.2 The respondent requested that this public prior use attack not be admitted into the proceedings, because no documentation or proof of any kind had been submitted during the opposition proceedings as regards the alleged Mac public prior use. In fact, this objection had been raised for the first time during the appeal proceedings.

3.2.1 It is established case law (see, e.g., decision T 328/87) that in order to substantiate a public prior use, information must be provided as to what was made available, when it was made available, where it was made available, by whom it was made available and, finally, how it was made available.

3.2.2 The public prior use Mac was mentioned in the notice of opposition under the heading "8.3. Weitere offenkundige Vorbenutzungen" on the last page, together with the following information:

Delivery date: 24 March 2005

Client name: MAC AUTOADESIVI srl

Article: PLEXTOL X 4500 CA.57.

This information does not address at all the questions "what, when, where and how", needed for the substantiation of a public prior use. At no point during the opposition proceedings did the opponent provide any such substantiation and, accordingly, this public prior use was not dealt with in the decision of the opposition division at all.

Therefore, the attack on the basis of the public prior use Mac in the statement of grounds of appeal constituted a new attack, made for the first time in the appeal proceedings.

3.3 The essential nature of appeal proceedings is to determine whether the decision reached by the department of first instance was correct (G 9/91, point 18; G 4/93, point 5; G 1/99, point 6.1). Appeal proceedings are not a means of continuing the first instance proceedings whereby a party is free to improve or repair holes in its case by filing additional material. In this respect, it lies within the discretion of the board to hold inadmissible evidence which could have been presented in the first instance proceedings.

As set out above, the alleged public prior use Mac was mentioned in the opposition proceedings but not pursued by the opponent: it is not even mentioned in the decision of the opposition division. It is not acceptable to substantiate the alleged public prior use Mac for the first time with new evidence in the appeal proceedings, i.e. the numerous documents submitted under the heading "Supplementary evidence relating to prior use Mac" (point V above). The board therefore saw no reason to admit new evidence relating to the alleged public prior use Mac and the novelty attack associated therewith into the proceedings.

3.4 The present board is aware that in exceptional cases, a new novelty objection based on a new document in appeal proceedings has been admitted on the ground that it was prima facie relevant (see, e.g., T 2542/10, point 2.2.2). However, in the present case, all that is contained in the statement of grounds of appeal with regard to the alleged public prior use Mac is a reference to tables A02a and A02b, without further explanation. Table A02b, which deals with four public prior uses relating to Mac, namely Mac-1, Mac-2, Mac-3 and Mac-4 does not contain any information as regards, e.g., the questions of when, where, by whom and how the adhesive tape mentioned in this table ("avana" (M17) and "transparent" (M18)) had been rendered accessible to the public before the priority date of the patent. Consequently, the alleged public prior use Mac is not prima facie relevant.

3.5 In the exercise of its discretion under Article 12(4) RPBA, the board therefore decided not to admit the public prior use attack Mac into the proceedings.

4. The further public prior use attacks

4.1 The statement of grounds of appeal relied on three further public prior use attacks, namely:

- the alleged public prior use of the product Acronal**(TM) DS 3547 X from BASF, which was handed over to PolymerLatex (see S05), hereinafter referred to as the public prior use "BASF";

- the alleged public prior use based on the delivery of the product Plextol**(TM) D260 to Fabo, hereinafter referred to as the public prior use "Fabo"; and

- the alleged public prior use based on the delivery of the product Plextol**(TM) X4365 to Straptech, hereinafter referred to as the public prior use "Straptech".

Unlike the public prior use Mac, these three public prior uses were to at least some extent discussed in the notice of opposition and were all dealt with in the decision of the opposition division. Hence, the above considerations made with regard to the public prior use Mac do not necessarily lead to the conclusion that the three public prior uses BASF, Fabo and Straptech are inadmissible.

As set out above when discussing the public prior use Mac, appeal proceedings aim at contesting a decision. This implies that reasons must be given in the statement of grounds of appeal why the decision under appeal should be reversed, amended or upheld (Rule 99(2) EPC and Article 12(2) RPBA). The submissions in the statement of grounds of appeal must be such as to enable the board (and any other party) to understand immediately why the decision is alleged to be incorrect, without first having to make investigations on their own (T 2532/11, points 2.2.1 and 2.2.5 and decisions cited therein: T 220/83, OJ EPO 1986, 249, headnote; T 213/85, OJ EPO 1987, 482, points 2 and 3; T 145/88, OJ EPO 1991, 251, headnote; T 169/89, points 2 and 3 and T 1581/08, point 3). Even assuming that laborious sequences of exercises would tell the reader what the appellant's case against the decision might be, such conjecture is exactly what the statement of grounds of appeal is designed to prevent (T 2532/11, point 2.5.1). It cannot be expected that a board fills in the missing links of the chain of reasoning of an appellant and thereby establishes a coherent and complete chain of argument for the appellant, no matter how straightforward it may seem in light of the particulars of the specific case (T 922/05, point 16).

4.2 The public prior use: BASF

4.2.1 Turning now to the present case, the opposition division considered the claimed subject-matter to be novel over the public prior use BASF, which consisted of the handing over of the product Acronal**(TM) DS3547X as specified in S10a-c to PolymerLatex (see S05).

The opposition division based its decision on the grounds that, firstly, the composition of Acronal**(TM) DS3547X referred to in S05 was not mentioned anywhere in the file, secondly, that the nature of the film used for preparing the adhesive product, i.e. onto which the Acronal product was applied, was not mentioned in any document on file and, thirdly, that there were several gaps in the chain linking the public availability of the product Acronal**(TM) DS3547X and the analysis sheets S10a-c.

4.2.2 The only argument in the statement of grounds of appeal as regards this public prior use was the following:

"Auch der Verkauf des Klebebandes BASF Acronal DS 3547 zerstört die Neuheit der Patentansprüche. Hierzu wird eine detailliertere TGV (S10d) des Nassmusters vorgelegt. Die Zusammensetzung von Acronal DS 3547 ist aus der D25 ersichtlich."

4.2.3 This argument leaves the board at a loss as to the appellant's case about the opposition division's first point, namely what the composition of the product Acronal**(TM) DS3547X was. It is to be noted in this respect that any explanation is missing in the grounds of appeal as to why document D25 shows the composition of this product. For instance, the appellant did not specify any passage in D25 where in its opinion Acronal**(TM) DS3547X is disclosed. Even if one searches in D25 for such a passage - an exercise that should not be necessary if the appellant's attack is admissible - one does not find any relevant text. All that one can identify in D25 is a reference to the product Acronal**(TM) DS3547, which is not the one of the alleged public prior use (Acronal**(TM) DS3547X), and for which no glass transition temperature of the fine mode is given (first paragraph on page 17).

The appellant's line of argument furthermore is entirely silent as regards the opposition division's second point, namely what the nature of the film used for preparing the adhesive product was.

Finally the appellant's line of argument does not address the opposition division's third point. It is in particular not explained at all what is the link between Acronal**(TM) DS3547X having been the subject of the alleged public prior use according to S05 and the analysis sheets S10a-d.

4.2.4 Prior to referring to the public prior use BASF in the statement of grounds of appeal, the appellant referred to certain tables ("Die Tabellen detaillieren die Beweismittel anhand von 8 Vorgängen"). One of the tables filed with the grounds of appeal, namely table A02a, contains some information on the public prior use BASF but does not however address the opposition division's reasoning. In particular, there is no information contained in the table as regards the composition of the Acronal product, the nature of the film and the link between the product referred to in S05 and that of the analytical sheets S10.

4.2.5 Consequently, the statement of grounds of appeal leaves the board and the respondent at a loss as to why in the appellant's view the opposition division's decision on the public prior use BASF is not valid. The appellant's statement of grounds of appeal is therefore not sufficiently substantiated with regard to this public prior use attack.

4.3 The public prior uses: Fabo and Straptech

4.3.1 In the same way as for the public prior use BASF, it needs to be decided whether the statement of grounds of appeal is sufficiently substantiated as regards the remaining two public prior uses, namely that based on the delivery of the product Plextol**(TM) D260 to Fabo (public prior use "Fabo") and the delivery of the product Plextol**(TM) X4365 to Straptech (public prior use "Straptech").

4.3.2 The opposition division's first ground for not considering the alleged public prior uses Fabo and Straptech to be relevant was that it was doubtful whether the allegedly prior used product, namely the batches sold to Fabo and Straptech, had been prepared with the recipe given in S12c (which the appellant had relied upon as regards the composition of the allegedly prior used batches). These doubts were based on the fact that the SAP-number "900916083" in S12c did not correspond to any of the delivery numbers of these batches.

All that the statement of grounds of appeal contains in this respect is that declaration D35 takes account of the SAP numbers and declaration D36 of the charge number, batch number, delivery number and mixing number and that F20 concerns the issue of public availability ("Die eidesstattliche Versicherung D35 nimmt sich der SAP-Nummern an, die eidesstattliche Versicherung D36 der Verwendung der Chargennummer, Ansatznummer, Auslieferungsnummer und Mischungsnummer. F20 macht nochmal Ausführungen zur Öffentlichkeit und zur Monomerzusammensetzung"). However, the SAP numbers mentioned in D35 and the numbers referred to in D36 are all different from the SAP number in S12c. Furthermore, no explanation is given and none is contained in F20 how the product referred to therein is related to the recipe disclosed in S12c.

The appellant furthermore referred to tables A02a and A02b in the grounds of appeal ("... , insofern wird auf die nunmehr weiter ergänzten Tabellen A02a und A02b verwiesen... Die Tabellen detaillieren die Beweismittel anhand von 8 Vorgängen."). However, these tables do not mention S12c, let alone they explain the relation between the product described in S12c and that of the alleged public prior use.

Hence, reading the statement of grounds of appeal, it is not possible to understand why the opposition division's decision that it was doubtful whether the batches sold to Fabo and Straptech had been prepared with the recipe given in S12c, is said to have been wrong.

4.3.3 The opposition division's second ground for not considering the alleged public prior uses Fabo and Straptech to be relevant was that the monomer composition and thus the glass transition temperature of the fine mode of the product resulting from the recipe of S12c was unknown, due to the fact that several data in S12c were blackened, while others were coded with acronyms (such as NAPS) without definition of their meanings, and at least one line had been deleted at the bottom of the table in S12c, thereby creating doubt as to the presence or not of other constituent(s).

In the statement of grounds of appeal, the appellant referred to D34, D38 and F20 with regard to the monomer composition ("D34 und D38 weisen nun zweifelsfrei die Monomerzusammensetzung der Klein- und Großpartikelfraktion nach und die Einheitlichkeit des Tg. D34 ist eine ,,Blindanalyse" eines Dritten, die nachweist, dass der Tg und die Monomerzusammensetzung für Dritte durch Erwerb der Klebebänder nachweisbar war... F20 macht nochmal Ausführungen zur Öffentlichkeit und zur Monomerzusammensetzung").

In the declaration D34, Mr Wolters states that the composition of the comonomer feed for the product Plextol**(TM) D260 remains constant during the whole time of feeding and is composed of certain amounts of butylacrylate, acrylic acid, hydroxyethylmethacrylate and methylmethacrylate and that the bimodal particle size distribution of the product is obtained by the use of two seed portions, one being added to the feed at the beginning and one during the time of feeding. The declaration concludes with the statement that because the composition of the comonomer mixture is constant during the whole time of feeding, the fine and large modes have the same comonomer composition and thus the same glass transition temperature. D38 discloses the particle size distribution of a product denoted Plextol**(TM) D261. In F20, Ms Menegato states that she knew in July 2006 that Plextol**(TM) D260 consisted to a great share (> 90 wt.% of the solid content) of butyl acrylate.

No explanation is given in the statement of grounds of appeal as to how these documents D34, D38 and F20 are related to the objections of the opposition division as regards S12c. There was in particular nothing in the statement of grounds of appeal that addresses the opposition division's concerns about the blackened passages, acronyms and deletions in S12c.

During the oral proceedings, the appellant stated that D34 replaced S12c, such that the problems the opposition division had with S12c were no longer relevant. The statement of grounds of appeal does however not contain any indication that D34 was indeed intended as a replacement of S12c. That D34 is to replace S12c is in fact in contradiction to the sentence subsequent to the reference to D34, where it is stated that declaration D35 took account of the SAP numbers, which can only be the SAP number mentioned in S12c. Had the appellant had the intention to replace S12c by D34, any reference to the SAP number of S12c would not make sense. Finally, if S12c was replaced by D34, then the link between the product referred to in D34 and that of the alleged prior use would be entirely unclear such that the opposition division's first objection would still not be addressed.

The appellant said during the oral proceedings that the second reference to D34 in the statement of grounds of appeal ("D34 ist eine "Blindanalyse" eines Dritten, die nachweist, dass der Tg und die Monomerzusammensetzung für Dritte durch Erwerb der Klebebänder nachweisbar war.") was erroneous and that, actually, this sentence referred to F23. However, no indication at all can be found in the statement of grounds of appeal that the sentence is erroneous and that actually F23 rather than D34 was meant.

Finally, in the same way as for the opposition division's first ground, the reference to tables A02a and A02b in the statement of grounds of appeal is not sufficient to substantiate the appellant's submissions as regards the question of what the composition of the product in S12c was.

The board and the respondent thus were left completely in the dark as to whether, and if so how, D34, D38 and F20 address the opposition division's objection that the monomer composition and thus the glass transition temperature of the fine mode of the product prepared according to the instructions contained in S12c was unknown.

4.3.4 Consequently, the statement of grounds of appeal is not sufficiently substantiated with regard to the public prior uses Fabo and Straptech.

4.4 The above lack of substantiation with regard to the public prior uses BASF, Fabo and Straptech is aggravated by the fact that with the statement of grounds of appeal, 83 new documents were submitted in relation to the public prior uses of which only 8 documents were discussed in the statement of grounds of appeal. This obscured any argument the appellant may have intended to make in the statement of grounds of appeal.

The appellant in this respect argued that one can expect that the board and the other party will read any document filed with the statement of grounds of appeal. This is however off the point. In a case as complicated as the present one, it is certainly not sufficient to just read all documents filed by the appellant and not discussed at all in the statement of grounds of appeal. On the contrary, it would be necessary to read all 83 documents filed with the statement of grounds of appeal, to identify the possibly relevant passages in them and then to knit them together to understand why the opposition division's decision on the public prior uses was in the appellant's view wrong. To ask the board to do this would mean that the board has to make up the appellant's case in breach of the principle of impartiality.

4.5 The appellant argued that the respondent had brought forward its arguments concerning the public prior uses only during the oral proceedings before the opposition division and had submitted new auxiliary requests at the last second during opposition proceedings. Therefore the appellant should be allowed to file further evidence with the statement of grounds of appeal in reaction to the respondent's arguments and auxiliary requests.

This is however of no relevance since it is the lack of argument and thus substantiation in the statement of grounds of appeal rather than the presentation of new arguments, facts or evidence (as such) that is a problem for the admissibility of the appellant's prior use attacks.

4.6 The appellant finally referred in the statement of grounds of appeal to the submissions in the opposition proceedings ("Die Vorbenutzung gegenüber den Kunden Fabo, Strabtech und Mac ist bereits in der ersten Instanz ausführlich erörtert worden,..."). A reference back to first instance proceedings is, however, not a sufficient reasoning to render a submission in the statement of grounds of appeal admissible (see, e.g., point 1.4 of T 473/09).

4.7 The board therefore decided not to admit the public prior use attacks BASF, Fabo and Straptech into the proceedings.