T 2415/13 - Late requests before OD

T 2415/13
For the decision, click here. 13.11.2015

Key points

• Board: "In the present case, the opposition division admitted the first auxiliary request since the amendment made in this request was "neither unforeseeable nor difficult to grasp" . This implies that according to the opposition division, the opponent could be expected to deal with the amendment during the oral proceedings. This is an appropriate criterion to apply when deciding on the admissibility of late-filed requests and the board has no reason to assume - and none has been brought forward by the appellants - that the opposition division applied it in an unreasonable way." 
• Also discussion of Art 123(2) EPC:
  " This finding cannot be altered by the fact that, as argued by the respondents, two instances of the EPO, namely the examining division and the opposition division, had already found that claim 1 did not contain added matter. If this were to stop the board from overturning the opposition division's decision on Article 100(c) EPC, there would be no point in an opponent appealing on the ground of Article 100(c) EPC." 

Reasons for the Decision

Main request

1. Admissibility

1.1 The claims of the main request are those of the first auxiliary request found allowable by the opposition division. These claims had been filed during the oral proceedings before the opposition division and had been admitted into the proceedings.

1.2 Appellant 1 requested that this decision of the opposition division be reversed. Although the discussion on novelty and inventive step during the entire written opposition proceedings had focused on a potential difference in layer structure, this request had put the focus for the first time on a difference in the chemical nature of one of the layers.

1.3 Pursuant to Article 114 EPC, it was at the discretion of the opposition division whether or not to admit such a late-filed request. In the event of such a discretionary decision being contested in appeal, the board of appeal should overrule the way in which the opposition division has exercised its discretion only if it comes to the conclusion either that this discretion was not exercised in accordance with the right principles or that it was exercised in an unreasonable way (G 7/93; point 2.6).

In the present case, the opposition division admitted the first auxiliary request since the amendment made in this request was "neither unforeseeable nor difficult to grasp" (point 5.1 of the decision). This implies that according to the opposition division, the opponent could be expected to deal with the amendment during the oral proceedings. This is an appropriate criterion to apply when deciding on the admissibility of late-filed requests and the board has no reason to assume - and none has been brought forward by the appellants - that the opposition division applied it in an unreasonable way.

1.4 The board therefore decided not to set aside the opposition division's decision to admit the first auxiliary request (now main request) into the proceedings.

2. Amendments - Article 100(c) EPC

[The Board notes that claim 1 is in fact directed to only two types of stackings of layers, these
these two possibilities can be visualised as follows:
glass/--/second IL/framed SPD/third IL/glass
glass/second IL/framed SPD/third IL/--/glass.]

2.5 The respondents argued that these two embodiments were covered by claim 1 as filed, and therefore Article 100(c) EPC did not prejudice the maintenance of the patent. The same argument was used in the decision of the opposition division.

2.5.1 Claim 1 as filed reads as follows:

"A laminated glazing comprising first and second plies of glass having an interlayer structure laminated therebetween, the interlayer structure comprising a first sheet of an interlayer material framing a suspended particle device film incorporated therein, wherein the interlayer material components do not comprise a plasticizer, or comprise a plasticizer that does not migrate into the suspended particle device film".

2.5.2 The board accepts the respondents' and opposition division's position that claim 1 as filed covers the above two plasticiser-containing layer structures of claim 1 of the main request, among many others.

However, this argument and all the other arguments presented by the respondents and the opposition division and summarised in point XIII above are actually irrelevant.

As set out in G 2/10 (point 4.3), the only permissible and generally accepted standard to be applied when examining whether a claim contains added matter is whether the subject-matter of this claim is clearly and unambiguously derivable from the application as filed. This is also referred to as the "gold standard" in G 2/10 and it is this standard, rather than the criterion that the embodiments are covered by claim 1 as filed, that has to be applied in the present case.

2.5.3 This finding cannot be altered by the fact that, as argued by the respondents, two instances of the EPO, namely the examining division and the opposition division, had already found that claim 1 did not contain added matter. If this were to stop the board from overturning the opposition division's decision on Article 100(c) EPC, there would be no point in an opponent appealing on the ground of Article 100(c) EPC.

2.6 Applying the standard of clear and unambiguous derivability, the respondents argued that the two embodiments of claim 1 as per the graphical representations in point 2.4 above were clearly and unambiguously derivable from the explicit and implicit disclosure of the application as filed, in particular from claim 2, the second paragraph of page 3 and figure 5 of the application as filed.

[...]

2.8 The subject-matter of claim 1 of the main request including embodiments with a plasticiser-containing layer is thus not based on the application as filed. The ground under Article 100(c) EPC thus prejudices the maintenance of the patent on the basis of the main request.