5 Oct 2016

T 1005/14 - Fresh ground: amended claims

Key points

  • The Board acknowledges that in this opposition case, features of the amended independent claims of the main request were taken from the dependent claims of the patent as granted. Still the objection of insufficient disclosure is not admitted because it would be a fresh ground of opposition in appeal (G10/91). 
  • As a comment, established case law is that amendments must be examined fully for compatibility with the EPC (G9/91, point 19), however introducing a feature from the dependent claims into the independent claims is not an amendment that justifies such examination (T1053/05). The case hence illustrate another advantage of dependent claims (in addition to the advantages regarding the examination of clarity in opposition).

T 1005/14 - link

Reasons for the Decision
1.3 Admission of objections under Article 83 EPC into appeal proceedings
1.3.1 Appellant II submitted at the oral proceedings before the board that present claim 1 did not comply with Article 83 EPC, since
1) as regards feature j), it was not clear to the skilled person from the opposed patent how a programmable control system should be able to allow or disallow the user to couple the corresponding replaceable component mechanically with the medical apparatus;
2) the skilled person would not know how to resolve the contradiction arising from the "allowing" step of feature j) and the "coupling" step of feature h), according to which the coupling step could be performed irrespective of the outcome of the "allowing" step.
1.3.2 It appears from the file that objection 1) had essentially been raised for the first time at the oral proceedings before the opposition division on 23 September 2013 (see minutes of those oral proceedings, sections 3.1 and 3.2). Thus, it had not been raised in due time within the meaning of Article 114(2) EPC in conjunction with Rule 76(2)(c) EPC and must be considered a "fresh ground for opposition" (cf. G 7/95, OJ EPO 1996, 626, Reasons 5.4 and G 10/91, OJ EPO 1993, 420, Reasons 18). Moreover, the opposition division did not admit that fresh ground into the opposition proceedings on the grounds that it prima facie did not prejudice the maintenance of the opposed patent (cf. appealed decision, Reasons 22). Nevertheless, appellant II resubmitted this objection in its statement setting out the grounds of appeal (cf. section 3) and its letter of reply dated 20 May 2016 (cf. section 7, first paragraph).
In appeal proceedings, the admissibility of submissions filed with the statement setting out the grounds of appeal is subject to Article 12(4) RPBA, according to which a board has the discretionary power "to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings". Further, it is established jurisprudence of the Boards of Appeal that for the assessment of the admissibility in the appeal proceedings under Article 12(4) RPBA of submissions not admitted by the first-instance department, only the exercise by that first-instance department of its discretion in not admitting those submissions is to be reviewed by the board in accordance with G 7/93 (OJ EPO 1994, 775, Reasons 2.6).
In the present case, the board holds that the opposition division exercised its discretion on the basis of the relevant facts (i.e. submission of a fresh ground for opposition), according to the right principle (i.e. criterion of "prima facie relevance"), and in a reasonable way (i.e. by taking into account that the objection related to features of a claim as granted; see appealed decision, Reasons 22). Hence, the board does not see any reason to overrule the way in which the opposition division exercised its discretion in the case at issue.
1.3.3 Objection 2) was raised by appellant II for the first time in the appeal proceedings in its letter of 20 May 2016 (cf. section 7, second paragraph) in response to the board's communication under Article 15(1) RPBA. Thus, it is likewise late-filed within the meaning of Article 114(2) EPC. Moreover, it is apparent that features j) and h) are taken from dependent claims 14 and 17 as granted and, consequently, this objection has likewise to be considered a "fresh ground for opposition". However, in appeal proceedings, such an objection may only be admitted if the patent proprietor (i.e. appellant I) agreed to it (G 10/91, Reasons 18). This was not the case here.
1.3.4 In view of the above, the board decided not to admit objections 1 and 2) under Article 83 EPC into the appeal proceedings pursuant to Article 12(4) RPBA and Article 114(2) EPC.
1.4 Admission of objections under Article 84 EPC into appeal proceedings
1.4.1 Appellant II further submitted that present claim 1 did not comply with Article 84 EPC, since
3) it was unclear to the skilled reader in view of various possible interpretations of feature j) how the control system should actually be able to allow or disallow the user to couple the corresponding replaceable component to the medical apparatus (see also objection 1) above);
4) the "coupling" step according to feature h) and the "allowing" step according to feature j) were contradictory to each other and thus introduced a lack of clarity (see also objection 2) above).
1.4.2 According to G 3/14, the claims of an opposed patent as amended may be examined for compliance with Article 84 EPC only when, and then only to the extent that, the corresponding amendments introduce non-compliance with Article 84 EPC (cf. G 3/14, OJ EPO 2015, 102, Order).
1.4.3 In the present case, added feature j) underlying objection 3) is taken from claim 14 as granted, while the combination of features h) and j) underlying objection 4) arises from claims 14 and 17 as granted. Thus, those amendments to present claim 1 amount to a literal insertion of certain elements of dependent claims (namely claims 14 and 17) as granted into an independent claim (so-called "Type A(ii) amendment") within the meaning of G 3/14 (see Reasons 3 and 84).
1.4.4 As to the question whether the above amendments indeed introduce a lack of clarity, the board notes that the skilled reader would understand from the wording of claim 1 and his common general knowledge that allowing the coupling of a replaceable component according to feature j) is not considered to be confined to allowing (or disallowing) the coupling of a component in a mechanical (i.e. hardware-based) manner but also covers, for example, a visual or audible (i.e. software-based) indication through the user interface to the user as to whether or not the coupling of a certain component is generally allowed. Also, the skilled reader would comprehend that the coupling step according to feature h) is merely further specified by a definition of conditions under which the coupling is indeed performed within the terms of feature j) of claim 1.
1.4.5 In view of the foregoing, the board decided that present claim 1 is not open to examination and objections under Article 84 EPC.

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