3 Nov 2016

T 0587/12 - Scope of appeal

Key points

  • The OD found that claims 1-12 and 13-17 were novel, inventive and sufficiently disclosed. In the Statement of grounds, the opponent substantiated only lack of novelty over D9 for claims 13-17 and otherwise expressly referred to the arguments already provided before the OD. The Board decides that the scope of the appeal is limited to novelty and inventive step of claims 13-17 in view of D9. Hence, the Board does not examine patentability of claims 1-12, sufficiency of disclosure of all claims, and novelty in view of D2 of claims 13-17.



EPO T 0587/12 - link

Reasons for the Decision
[] Substantiation of the appellant's appeal (Article 108 EPC and Rule 99(2) EPC)
2. Article 108 EPC, third sentence, in conjunction with Rule 99(2) EPC stipulates that in the statement of grounds of appeal the appellant must indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. In line with established jurisprudence of the Boards of Appeal this is understood to mean that the arguments have to be clearly and concisely presented to enable the board - and any other party or parties - to understand immediately why the impugned decision is alleged to be incorrect, and on what facts the appellant bases its arguments, without first having to make investigations of their own (Case Law of the Boards of Appeal, 7th edition 2013, section IV.E.2.6.3 and decision T 220/83, OJ EPO 1986, 249).


3. In the present case, the impugned decision held that the subject-matter of claims 13 to 17 as granted was novel vis-à-vis the disclosure in documents D2 and D9; that the subject-matter of claims 1 to 12 as granted was inventive over the disclosure in document D2 in combination with the disclosure in document D5 or D6; that the subject-matter of claims 13 to 17 as granted was inventive over the disclosure in document D9 in combination with the common general knowledge and over the disclosure in document D1 in combination with the teachings in documents D4 or D7; and that the patent sufficiently disclosed the claimed invention.
4. The appellant submitted in the statement of grounds of appeal the following:
4.1 Under the heading "Grounds for Appeal", that "We maintain our arguments already provided during the Opposition procedure. We request revocation of the patent, on the grounds of lack of novelty, lack of inventive step, and insufficiency (Art. 100(a) and (b), Art. 54, 56 and 83 EPC). The objections have been put forward in detail in the opposition and further documents filed during the opposition procedure, which we maintain, but will not repeat in detail here."
4.2 Under the heading "Novelty", that "we maintain the objections put forward during the opposition procedure. In addition, we would like to further substantiate the objections based on document D9 against claims 13 to 17 here". The appellant also submitted new documents D12 and D13 and based objections as regards lack of novelty on these new documents (see also below, points 16 to 21).
4.3 Under the heading "Inventive step", that document D9 could be considered to represent the closest prior art for the subject-matter of claims 13 to 17 as granted. The appellant based its arguments on the disclosure in document D9 in combination with the teachings in newly filed documents D14 and D15.
4.4 No arguments were submitted to substantiate the objection of lack of sufficiency of disclosure.
5. The appellant's argumentation (see points 4.1 to 4.4 above) in relation to the reasons given in the decision under appeal (see section IV) for finding that document D2 does not anticipate the subject-matter of claims 13 to 17 as granted does not fulfil the criterion set out in point 2 above. It neither explains why the opposition division's reasoning was incorrect, nor is this self-evident by implication. The same applies for the opposition division's decision as regards inventive step of claims 1 to 12 as granted over the disclosure in document D2, inventive step of claims 13 to 17 as granted over the disclosure in document D1, and sufficiency of disclosure (see points 4.1 to 4.4 above).
6. However, the board considers that the arguments provided by the appellant as regards novelty and inventive step of the subject-matter of claims 13 to 17 as granted vis-à-vis the disclosure in document D9 enable the board and the respondent to understand why it regarded the contested decision as incorrect on those points.
Scope of the appeal proceedings
7. In view of its considerations above regarding substantiation of the appellant's appeal, the board decided that the appeal proceedings were limited to the issues of novelty and inventive step of the subject-matter of claims 13 to 17 as granted vis-à-vis the disclosure in document D9.

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