23 Sep 2016

T 1890/13 - In time but not admitted

Key points

  • D28 was filed with the Notice of opposition, but is not admitted into the appeal proceedings.
  • In response to the summons before the Board, the appellant had based a new line of argument on D28. "Hence, this new line of argument based on D28 was submitted after the appellant had filed its statement setting out the grounds of appeal and after the board had arranged oral proceedings, i.e. at a very late stage in the overall proceedings. Therefore, the question of admitting the substantiated document D28 into the appeal proceedings is subject to Article 13(1) and (3) RPBA in the present case." 



T 1890/13 - link

4. Novelty and inventive step (Articles 54 and 56 EPC)
At the oral proceedings before the board, the appellant did not challenge the novelty of the opposed patent's independent claims (Article 54 EPC). For the purpose of attacking inventive step, the appellant relied essentially on three prior-art documents, namely D28, D19 and D29. Since the appellant first requested that D28 be introduced into the appeal proceedings, this issue was discussed and decided first.
4.1 Admission of D28 as substantiated into the appeal proceedings
4.1.1 Document D28 was initially filed with the notice of opposition. Thus, it was filed in due time within the meaning of Article 114(2) EPC. However, it was discussed neither during the oral proceedings before the opposition division nor in the impugned decision.
4.1.2 As regards appeal proceedings, Article 12(2) RPBA clearly states that the statement setting out the grounds of appeal or the corresponding reply shall contain a party's complete case, and in particular should specify expressly all the facts, arguments and evidence relied on.
4.1.3 Concerning substantiation of the filing of D28, the statement setting out the grounds of opposition made the following reference to it (cf. page 11, second paragraph, third sentence; emphasis added by the board):
"Documents D27, D28 and D29 provide specific proposals for consideration. D27 and D28 develop the D23 and D24 approaches respectively ...",
while the statement setting out the grounds of appeal (cf. page 6, last paragraph, third sentence; emphasis added by the board) includes the following statement:
"D19 provides a worked-out scheme for managing key refresh in transitions ... and discusses a number of alternative approaches for providing nonce or counter (as noted in D28, a counter is merely a specific example of a nonce) data to achieve key refresh."
The board concurs with the respondent that this kind of incidental citation of D28 within a line of argument in support of lack of patentability amounts to mentioning a prior-art document merely as background information for standardisation developments, but fails to deliver any information as to whether it is intended to be used, for example, as a starting point for attacking inventive step or as evidence of common general knowledge or anything else. Moreover, no specific passage of D28 had been cited in the written procedure. Thus, D28 remained unsubstantiated throughout the entire written proceedings.
It was only at the oral proceedings before the board that the appellant argued for the very first time that D28 [] was extremely relevant for the assessment of inventive step, since it demonstrated on page 2, first paragraph, that a number used only once, i.e. "NonceUE", could indeed be derived from a counter, i.e. "CountNASint" here. Hence, this new line of argument based on D28 was submitted after the appellant had filed its statement setting out the grounds of appeal and after the board had arranged oral proceedings, i.e. at a very late stage in the overall proceedings. Therefore, the question of admitting the substantiated document D28 into the appeal proceedings is subject to Article 13(1) and (3) RPBA in the present case.
4.1.4 In the light of the above and in accordance with the respondent's request, the board decided to exercise its discretionary power to refuse the appellant's request that D28 be introduced into the appeal proceedings under Article 13(1) RPBA, for the following reasons:
- the late substantiation of D28 was not an appropriate and immediate reaction to unforeseeable developments in the proceedings which did not lie in the responsibility of the appellant, rather it was submitted by the appellant entirely of its own volition;
- the teaching of D28 was not prima facie more relevant than the other prior-art documents on file or highly likely to prejudice the maintenance of the opposed patent, since the use of a counter for NAS integrity protection, i.e. CountNASint, in no way corresponds to a sequence number associated with uplink transmissions of NAS service request messages as claimed;
- admitting into the appeal proceedings such a new line of argument based on D28 would run counter to the principle of procedural economy and fairness.

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