T 0169/12 - New attacks in appeal

EPO T 169/12

For the decision, click here.

Key points

• The opponent-appellant cited two new documents for the first time in appeal.
• The Board finds that this in principle could be allowed, if it was a normal reaction to a late turn of events in the opposition proceedings, or some other exceptions. None of the exceptions applies in the particular case. 
• " The objections are such as to confront the Board with further fresh cases, in particular in the present situation of the claims subject of the decision under appeal being the independent granted claims 1 and 34, i.e. without any amendments.
  The procedural behaviour of the appellant is comparable with the behaviour of a patent proprietor who has not submitted necessary (auxiliary) requests at the opposition stage which in effect prevented the Opposition Division from giving a reasoned decision on their critical issues. In the present case this would compel the Board either to give a first ruling on those issues or to remit the case to the Opposition Division. This is, however, not in line with the nature of the appeal proceedings, leading the Board to exercise its powers under Article 12(4) RPBA" (further referring to T 1067/08; T 936/10; T 1125/10; T 1500/10; T 911/11; T 1400/11).

Reasons for the Decision

1. Sufficiency of disclosure (Article 100(b) EPC)

The Board considers that the skilled person, when reading the entire disclosure of the patent as granted, would understand what is meant by the definition "configured to allow each shaving aid portion to deflect when pressure is applied to a surface of the shaving aid portion during shaving" as contained in claims 1 and 34 of the patent as granted and how a razor with the claimed shaving cartridge is to be used.

First of all, the skilled person is well aware that the surface of a razor cartridge is used to shave and would not attempt to use the edge of the cartridge, which would be considered highly unusual. Consequently, it is clear to the skilled person where force will be applied to the surface of the shaving aid portion when using the cartridge of claim 1 during shaving, in order to result in deflection of the shaving aid portions as described in the description. He is taught by paragraph [0015] and the drawings of figures 3D and 3E what is meant by said deflection of the shaving aid portions 31A and 31B. Furthermore, paragraph [0025] of the patent in suit, in the context of the resilient mounting of the shaving aid portions, explains in considerable detail the nature of the hinges 52 and 54 (see figure 4A) which achieve this deflection. Preferably they can be formed of an elastomeric material (i.e. inherently they have elastic property), and have a thickness from about 0.5 to 2.0 mm. Therefore, they are considered to be thin enough to permit deflection in the direction taught by the patent in suit. Considering that the connecting members 56 may also be made from said elastomeric material (see paragraph [0026]) it is credible that they may also be somewhat deflected.

The first alternative interpretation (see point VIII) is incorrect, as the term "configured" does not apply to the shaving aid portions, but to the holder.

Therefore the appellant's objections under Article 100(b) EPC cannot hold.

2. Novelty (Article 54 EPC)

2.1 In its statement of grounds of appeal the appellant has not explained why the impugned decision should be set aside with respect to novelty and the documents as discussed in the decision, apart from a discussion with regard to D10, it "maintains the lack-of-novelty arguments based on D8, D14, and D11".

2.2 It is consistent jurisprudence of the Boards of Appeal that simple references to earlier submissions in opposition do not suffice for the purposes of Article 108, third sentence, EPC (see Case Law of the Boards of Appeal, 7**(th) edition 2013, chapter IV.E.2.6.4) in providing the legal and factual reasons (i.e. the substantiated arguments) for setting aside the impugned decision.

The Board might see an exception to this principle, where the decision simply does not take account of any of the arguments of the appellant based on D8/D14 and D11. However, that is not the case since the decision extensively deals with these documents.

2.3 Concerning D10 dealt with in the decision and in the statement setting out the grounds of appeal (statement) the appellant's arguments cannot hold, for the following reasons.

2.3.1 The embodiment of the wet shaving assembly according to figures 10A-10C of D10 does not concur with claim 1 requiring a shaving cartridge housing and a shaving aid holder mounted on said housing and being configured to allow each of the first and second shaving aid portion to deflect when pressure is applied to a surface of the shaving aid portion during shaving.

2.3.2 First of all, the cartridge of D10 has no holder on which the shaving aid is placed. When the cartridge housing is the part around the blades then the feature that the "shaving aid holder is mounted on the housing" as required by claim 1 is not fulfilled since in D10 it is the other way round. In fact the base 422 holding the shaving aid is actually housing the shaving cartridge, i.e. would be its housing. Designating the base as mounted on the part around the blades is not in agreement with reality.

2.3.3 Secondly, the shaving cake 448 is a single piece which does not "allow each of the first and second shaving aid portions to deflect". The shaving cake of figures 10A-10C is contained in the base 422 in such a way that it cannot "deflect". This is due to the fact that there is actually only a single shaving aid portion which is made in one solid body which therefore can only be moved axially, i.e. it can only "undulate" (see D10, column 12, lines 9 to 12) as a whole if pressure is applied during the shaving operation to its top surface 450.

The embodiment of figures 1-7 of D10, with two separate shaving aid portions cannot be relevant in this respect since these portions make no movement during application of pressure and its teaching is not extended to include "undulation".

The Board remarks in this context that the appellant did not present any counter argument at the oral proceedings with respect to the meaning of the term "to deflect". Consequently, its arguments cannot hold.

2.4 Thus the subject-matter of the claims 1 and 34 as granted is novel over the available prior art, in particular over D8, D11, and D14 as decided in the decision under appeal as well as D10, on appeal.

3. Admission of new objections into the proceedings (Article 12(4) RPBA)

Concerning the admission of new objections into the appeal proceedings the Board taking account of the course of events in the present case has the following considerations:

3.1 The opposition had been filed against the patent in suit in its entirety under Articles 100(a) EPC, for lack of novelty and inventive step.

3.1.1 The notice of opposition relied on twenty nine documents and contained arguments with respect to lack of novelty over D7, D8, D10, D11 (either alone or with D12 stated to be incorporated by reference), and D14.

3.1.2 The arguments concerning lack of inventive step were based on combinations of D6 with D15, or a combination of D16 with either D17 or D18, or a combination of D19 with D20 or vice versa.

3.1.3 At the oral proceedings before the Opposition Division the opponent considered D8/D14, D10 and D11 (alone) as novelty destroying. The Opposition Division acknowledged novelty of the subject-matter of claims 1 and 34 as granted over these documents.

3.1.4 Concerning inventive step the opponent considered D6 as the closest prior art and argued that the teaching of either D6 alone or when taken in combination with D15 or D21 would make the claimed subject-matter obvious to the person skilled in the art while the patent proprietor argued that none of the combinations of teachings brought forward leads to the subject-matter of claims 1 and 34 of the patent as granted. The Opposition Division then came to its conclusion that the subject-matter of the claims 1 and 34 of the patent involves inventive step.

3.1.5 The decision under appeal dealt with the following objections:

a) lack of novelty based only on D7, D8, D10, D11 (alone or with D12 stated to be incorporated by reference) and D14; and

b) lack of inventive step based only on D6 alone, or on combinations of the teachings of D6 and D15; or D19 and D20, or D16 with either D17 or D18.

3.2 The appellant filed its appeal against the decision of the Opposition Division to reject the opposition and presented in its statement the following substantiated (see point 2.2 above) objections under Article 100(a) EPC:

3.2.1 The subject-matter of claim 1 lacks novelty with respect to D10, and D12/D12' now incorporating by reference D11.

3.2.2 The subject-matter of claim 1 lacks inventive step over a combination of the teachings of D16 and D10, or a combination of D16 and D6, or of D30 taken alone or of D30 in combination with D17, D18, or D27.

3.2.3 The objections emphasised above therefore represent new objections compared to those of the preceding opposition proceedings.

No lack of novelty objection had been raised in the opposition proceedings on the basis of D12, let alone on the basis of D12' with D11 being incorporated by reference, and no inventive step objections based on D10 or D12/D12' as the closest prior art had been raised in the opposition proceedings.

3.3 Taking account of the aforementioned course of events the Board considers that the appellant has not made full use of the opportunities available to it in the opposition proceedings and now intends to file objections which it should have filed in opposition, for the reasons below.

The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits and to obtain a judicial ruling on whether the decision of the Opposition Division is correct (G 9/91 and G 10/91, OJ EPO 1993, 408 and 420, respectively). The appeal proceedings are not about bringing an entirely fresh case; rather the decision of the Board of Appeal will in principle be taken on the basis of the subject of the dispute in the opposition proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in appeal proceedings.

3.4 Documents D12' and D30 and arguments based thereon were submitted by the appellant for the first time with the statement [of grounds in appeal].

In principle this could be allowed, if it is e.g. a normal reaction to a late turn of events in the opposition (oral) proceedings, an exceptional interpretation by the Opposition Division at a late stage or in the decision, or an evident non-allowability in view of the newly cited documents and/or objections.

None of these exceptions is, however, applicable in the present case. The objections are such as to confront the Board with further fresh cases, in particular in the present situation of the claims subject of the decision under appeal being the independent granted claims 1 and 34, i.e. without any amendments.

The procedural behaviour of the appellant is comparable with the behaviour of a patent proprietor who has not submitted necessary (auxiliary) requests at the opposition stage which in effect prevented the Opposition Division from giving a reasoned decision on their critical issues. In the present case this would compel the Board either to give a first ruling on those issues or to remit the case to the Opposition Division. This is, however, not in line with the nature of the appeal proceedings, leading the Board to exercise its powers under Article 12(4) RPBA (compare in this context for example the decisions T 1067/08, points 3 and 5.3 of the reasons; T 936/10, point 9 of the reasons; T 1125/10, points 1.2 and 1.3 of the reasons; T 1500/10; T 911/11; T 1400/11, points 2 to 2.2 and 3.2 of the reasons; all not published in OJ EPO).

3.4.1 Therefore, at the oral proceedings it was discussed with both parties whether the new lines of attack concerning lack of novelty (D12/D12' with D11 being incorporated by reference) and inventive step (D16 and D10, D6 alone, D16 and D6, or starting from D30, D10 or D12/D12') should be admitted.

3.4.2 In this context the Board notes that the appellant in the written procedure only gave the reason that the additional search for D30 was carried out "in view of the misleading and incomplete lack-of-inventive step discussion in the contested decision".

The Board cannot establish such a kind of discussion in the impugned decision, nor that at any time in the proceedings there was a discussion on the exchangeability of shaving aids on electric razors with the same on shaving cartridges, or on the skilled person being working in both fields, transferring teachings from one to the other. D30 and the submissions based on it are therefore not admitted.

3.4.3 Concerning the new novelty attack based on D12/D12' the Board considers that the appellant's arguments, presented for the first time at the oral proceedings, cannot hold either. The consequence would be that any document cited in a prior art document on which substantiated submissions were made in the opposition proceedings (in this case D11) would form part of the file and could be later simply referred to in the (appeal) proceedings.
In this respect, the Board takes recourse to the existing jurisprudence on which documents can later form part of the opposition proceedings, see in this context the Case Law of the Boards of Appeal, 7**(th) edition 2013, chapter IV.C.1.5). There, only the document cited as closest prior art in the patent in suit, has a chance of being accepted when filed (or introduced by the Opposition Division or Board of Appeal) later on in the proceedings.

It is clear that D12 nor D12' fulfil that requirement.

Just as importantly, it is neither D12 nor D12' to which reference was made in D11 but only the provisional application US 60/455646 which D11 actually states to be incorporated by reference into its teaching (see page 6, line 8 and page 16, line 25). A copy of US 60/455646 has never been presented by the appellant.

This novelty objection therefore represents a complete new line of attack at the appeal stage without the right supporting evidence. When asked by the Board at the oral proceedings the appellant did not wish to further argue in this context.

The Board therefore decides that all the objections based on D12/D12', and with it the late-filed document D12', are not admitted into the proceedings.

3.4.4 Concerning the new inventive step objections based on D16 and D10, D6 on its own, and D16 and D6 the Board, in view of the appellant's arguments, holds that at least in that respect there exists a link to the impugned decision wherein D16 and D6 have been considered as closest prior art and as starting points for the person skilled in the art (see point 5 of the reasons). D10 is anyway in the proceedings. Therefore its use in an inventive step attack, starting from D16 does not pose problems either. Therefore, in the present case these new lines of attack are admitted.

4. Inventive step (Article 56 EPC)

4.1 The Board reviewed the impugned decision on the issue of inventive step.

In that respect, no fault can be found with the conclusion of the presence of inventive step as drawn by the Opposition Division in the impugned decision, when starting either from D6 or D16.

4.2 D16 discloses a razor blade assembly which can be used in either of two directions and which contains a fixedly mounted shaving aid 36 in front of and behind the blades which therefore is not deflectable when pressure is applied during shaving (see column 2, line 50 to column 3, line 46; figures 1-2 and 8). Claims 1 and 34 are thus distinguished from D16 by shaving aid portions which each are deflectable when pressure is applied to a surface of these shaving aid portions during shaving.

4.3 The technical effect of the deflection of the shaving aid portions is on the one hand that the razor can be easily used in hard to reach or confined areas, such as the armpit (axilla) or behind the knee. The deflection also prevents premature wear of the shaving aid portion and discomfort to the user in cases where the user applies excessive pressure during shaving (see patent in suit, paragraphs [0005] and [0015]). Furthermore, as remarked by the Board at the oral proceedings this deflection influences the curvature of upper surface of the razor cartridge (see patent in suit, Figure 3E). This was not disputed by the appellant at the oral proceedings.

4.4 The objective technical problem to be solved is thus defined as the provision of an improved razor cartridge being comfortable to use and allowing to influence the curvature when pressure is applied during shaving.

4.5 This technical problem problem is solved by the subject-matter of claims 1 and 34 of the patent as granted.

Contrary to the appellant's arguments this solution is not obvious as follows.

4.6 The appellant argued that the person skilled in the art when starting from the teaching of D16 as the closest prior art and combining it with the teaching of D10 or D6 would arrive at the subject-matter claimed. These arguments cannot hold for the following reasons.

4.6.1 The embodiment according to the Figure 10 of D10 (identically to that of Figure 8) has the effect that the shaving preparation 448 is able to "undulate" in an effort to conform better to the shaving surface (see column 12, lines 9 to 12). Therefore the shaving aid cake 448 (or cake 348) is only suitable for making an axial movement of the shaving aid during shaving when pressure is applied (see point 2.3.3 above). Therefore, in case that the skilled person were to incorporate the teaching of this axial movement into the razor assembly of D16 with the fixedly mounted shaving aid portions he would not arrive at the claimed subject-matter, which requires them to be deflectable. Consequently, he would not solve the aforementioned technical problem.

4.6.2 Furthermore, the teaching of the rigid shaving aids on the razor cartridge of D16 is incompatible with that of the shaving assembly of D10. The appellant at the oral proceedings only stated that it could imagine what should be done by the skilled person but has neither shown nor credibly explained how the skilled person could or should apply the shaving aid cake embodiment according to the Figure 10 of D10 into the limited space in the razor cartridge of document D16.

4.6.3 A similar conclusion - incompatible teachings which even when combined would not result in two deflectable shaving aid portions - applies to the combination of the teaching of the razor cartridge D16 with the teaching of the shaving aid 8 of D6. The shaving aid portion 8 in front of the blades is flexibly mounted on the rear wall of the cartridge, opposite the blades via a flat spring 10. How that can be included in the limited space of the razor cartridge of D16 was not further supported by technical arguments.

4.7 Concerning the appellant's arguments based on D6 alone, the Board considers that this document does neither disclose nor suggest that the fixedly mounted second shaving aid 27 after the blades (see figures 1 and 2; column 1, line 66 to column 2, line 36) could be flexible since column 2, lines 43 to 45 refers to a second or "fixedly mounted, soluble body at 27". The Board cannot read this as implying that body 27 can also be deflectable, as body 8. There is no further indication in D6 that the second portion, similar to the first portion 8, should be flexibly mounted.

4.8 Taking account of the above the Board therefore considers that the subject-matter of claims 1 and 34 of the patent as granted involves inventive step.

Order

For these reasons it is decided that:

The appeal is dismissed.