T 0327/13 - Appeal with broader claims inadmissible

EPO T 327/13

For the decision, click here. [C]

Key points

• The OD found claim 1 of the patent as granted (Main Req.) to be not novel, and held claim 3 (Aux. Req. 1) to be allowable.
• In appeal, the patentee submits a main request, with two independent claims, corresponding to claims 2 and 3 of the patent as granted. 
• Hence, the patentee does not defend the Main Request as filed before the OD. 
• The Board decides that the appeal is inadmissible under Article 107 (not adversely affected) and Rule 99(2) (no substantiation).
• Compare T 1682/13 for a different result of the admissibility an appeal with broader claims in appeal.

Reasons for the Decision

1. The contested decision

1.1 The Opposition Division refused the proprietors' main request for lack of novelty of claim 1 in view of D1, and held that claim 1 of the proprietors' auxiliary request 1 was allowable.

1.2 The subject-matter of claim 1 of the main and auxiliary request 1 addressed in the decision corresponds essentially to that of granted claim 1 and granted dependent claim 3, respectively.

2. Admissibility of the appeal

2.1 Article 107 EPC, first sentence, states that any party to proceedings adversely affected by a decision may appeal.

2.2 The Board considers that, to establish whether a party has been adversely affected by a decision, it is not enough to consider the end result in isolation, but to consider the party's complete case, as is defined in Article 12(2) RPBA, in conjunction with the substance of the decision.

2.3 In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request. However, as follows from the statement setting out the grounds of appeal and the two new set of claims filed with it as main and auxiliary request, that this decision has not been contested with the appeal.

2.3.1 On page 1 of the grounds of appeal, the appellants state their satisfaction with "the Decision in that claim 3 as granted was maintained". The appeal is actually against the decision of the Opposition Division that "claim 2 as granted was not maintained". The appellants have filed two new sets of claims with the grounds of appeal, each comprising a new independent claim 2 that includes "the subject matters of claims 1 and 2 as granted with further limitations being added thereto" (see page 1, paragraph 1 of the grounds of appeal). In pages 2 to 5 of the grounds of appeal, the appellants only indicate why the subject-matter of this newly filed independent claim based on claim 2 as granted is novel and inventive in view of D1.

2.3.2 The appellants do not defend the main request as filed before the Opposition Division, wherein claim 2 as granted figured. The grounds of appeal do not address this request at all, let alone indicate any reason for setting aside or amending the decision of the Opposition Division's decision that claim 1 of this request lacks novelty over D1. On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division.

2.3.3 Each of the new sets of claims according to the main and auxiliary requests comprise:

- an independent claim 1, which corresponds to a combination of claims 1 and 3 as granted;

- an independent claim 2, which corresponds to a combination of claims 1 and 2 as granted, with further features taken from Figure 2; and

- dependent claims 3 and 4, which correspond to dependent claims 8 and 9 as granted.

Thus, these new claim sets differ essentially from the set of claims according to the auxiliary request 1 as filed during the opposition proceedings only in that an additional new independent claim based on claim 2 as granted has been incorporated.

2.3.4 All this can only be understood to mean that the patent proprietors are not adversely affected by the Opposition Division's decision to dismiss the main request filed in the opposition proceedings, but by the non-maintenance of an independent claim based on claim 2 as granted, in addition to the duly filed (and maintained) independent claim based on claim 3 as granted.

However, the subject-matter of claim 2 as granted was not the subject of an individual request in the opposition proceedings, so that it has not been addressed as such in the decision of the Opposition Division. It is reminded that requests stand or fall as a whole, not as individual claims. In the present case, it was enough for independent claim 1 not to be allowable for the entire main request to fall, so that it cannot be considered that claim 2, which defines an alternative preferred embodiment to that defined in claim 3 as granted, has been dealt with per se with the rejection of the main request.

2.3.5 The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division.

2.4 Therefore, in view of the appellants' case, the Board considers that they cannot be regarded as "adversely affected" by the decision of the Opposition Division and thus are not entitled to appeal under Article 107 EPC.

2.5 The appellants referred to T 528/93 in support of their submissions. In this case, a request was withdrawn during opposition proceedings and was thus not the subject of the contested decision; the board decided that a virtually identical request filed during appeal proceedings was not the subject of the appeal, because the appellant was not adversely affected by the decision of the opposition division as far as this request was concerned. The appellants in the present case relied on this legal argument and argued that, when the premise of T 528/93 is false, i.e. when a patent proprietor does not withdraw a claim request in opposition, then the conclusion of T 528/93 is inevitably false, i.e. the proprietor is adversely affected by a decision dismissing this request. In this Board's opinion this argument is logically flawed: it is an example of the so-called "denying the antecedent" logical fallacy (in terms of formal logic: if P, then Q; not P, therefore not Q). In addition, the Board finds that the circumstances are not comparable, since - as explained above - in the present case the appellants' main and auxiliary requests were filed for the first time with the grounds of appeal, so that the issue of (non) withdrawal cannot play a role in the evaluating the case.

2.6 Finally, the present appeal is not sufficiently substantiated to satisfy the requirements of Article 108, third sentence, together with Rule 99(2) EPC. It is established case law, see e.g. T 760/08 and T 1708/08 as cited by the appellants, that an appeal can be based on new amended claims in so far as the amendments are intended to address the reasons of the contested decision. In the present case, however, it is readily apparent that the new sets of amended claims are not intended to address the reason in the Opposition Division's decision to refuse the main request (see point 2.3 above).

2.7 In conclusion, the appeal does not meet the requirements of Articles 107 and 108 EPC and is thus not admissible.

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.