27 Oct 2017

T 0420/14 - As brief and concentrated as possible

Key points

  • In connection of admissibility of the auxiliary requests in this opposition appeal, the Board recalls that "[it] is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible" .
  • The auxiliary requests were submitted before the opposition division, but the OD did not decide on them (neither for admissibility nor for allowability) as the opposition was rejected (patent maintained as granted). Hence, admittance of these requests needs to be decided on by the Board. 
  • "If auxiliary requests are submitted, reasons usually have to be given to explain how they overcome those objections (at least if this was not obvious from the amendments made)." Merely indication basis under Article 123(2) EPC is not sufficient, and also indicating the distinguishing features is not sufficient. 
  • "[The] merits of these auxiliary requests with respect to inventive step could only be considered in a meaningful manner if the reasons presented in support of those auxiliary requests had been stated fully in order for the Board firstly to allow to understand the chain of logic leading the [patentee] to the conclusion that the amendments submitted overcame the objection raised by the [opponent], and secondly to study and evaluate whether the argumentation presented was persuasive. This in the present case did not only require arguments concerning whether those amendments represented further distinguishing features over the closest prior art, could lead to a different formulation of the problem successfully solved and to a different assessment of the obviousness of the claimed solution, but also a clear indication of the pertinent passages of the relevant prior art, i.e. of the closest prior art and the other documents relied on by the respondent in combination thereof, in order to allow for the Board and the other party to take position with respect to those auxiliary requests. " 


EPO T 0420/14 -  link


9.1 It is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible and ready for decision at the conclusion of oral proceedings, if scheduled. As indicated in the Case Law (supra, IV.E.4.2.4), the RPBA taken as a whole make it clear that appeal proceedings are primarily written in nature, an important aim of Article 12 and Article 13 RPBA being that the parties' submissions are concentrated at as early a stage as possible so that the case is as complete as possible when it comes to examining it, oral proceedings being in principle appointed at a point in time when the written submissions of all parties are complete (see decision G 4/95, reasons Nr 4).


9.2 Under Article 12(2) RPBA, it must be set out why it is requested that the decision under appeal be reversed, amended or upheld. In this context, it is not only for the appellant to substantiate its appeal, but equally for the respondent to show at an early stage why it considers that the objections raised in the grounds of appeal do not withstand scrutiny. If auxiliary requests are submitted, reasons usually have to be given to explain how they overcome those objections (at least if this was not obvious from the amendments made)(see Case Law, supra, IV.E.4.2.4, citing T 0217/10).
9.3 In the present case the respondent in relation to auxiliary requests 1 to 9 stated in the reply to the statement setting out the grounds of appeal (point 52) that "a clear description of the support for these amended claims" had been provided upon their filing before the opposition division. However, no indication as to how the amendments introduced with those auxiliary requests would overcome the various objections for lack of inventive step raised by the appellant was given.
9.4 With respect to auxiliary request 10 and the inclusion in claim 1 of a mixing step the respondent indicated in the reply to the statement setting out the grounds of appeal that "This step further emphasizes that the product obtained in the heating step is still a glucan solution. The process as such is not disclosed in the cited documents and the combination of documents is not solving the objective technical problem" (point 55 of the rejoinder). Concerning the inclusion in claim 1 of auxiliary request 11 of the conversion into a form of a powder the respondent stated "The additional step is further emphasizing that the product obtained in the heating step is a solution which can be converted into a powder, as is shown in this request. The additional step is not disclosed in the cited art and it is inventive over the combined references" (point 56 of the rejoinder). Concerning the arguments brought forward in the rejoinder in support of the existence of an inventive step it was indicated for auxiliary request 12 "This request has a more narrow temperature range that is nowhere disclosed in the cited art. Its inventive step is also confirmed" (point 57) and for auxiliary requests 13 "a similar reasoning as for auxiliary request 12 is applicable to confirm novelty and inventive step of this request" (point 58). Further arguments in support of inventive step were not provided in the reply to the statement setting out the grounds of appeal.
9.5 However, the merits of these auxiliary requests with respect to inventive step could only be considered in a meaningful manner if the reasons presented in support of those auxiliary requests had been stated fully in order for the Board firstly to allow to understand the chain of logic leading the respondent to the conclusion that the amendments submitted overcame the objection raised by the appellant, and secondly to study and evaluate whether the argumentation presented was persuasive. This in the present case did not only require arguments concerning whether those amendments represented further distinguishing features over the closest prior art, could lead to a different formulation of the problem successfully solved and to a different assessment of the obviousness of the claimed solution, but also a clear indication of the pertinent passages of the relevant prior art, i.e. of the closest prior art and the other documents relied on by the respondent in combination thereof, in order to allow for the Board and the other party to take position with respect to those auxiliary requests. In the present case, no analysis, including references to pertinent passages, of the closest prior art and the additional documents relied upon by the opposing party, was provided concerning the pH or the concentration of the initial solution of beta-(1,3)-D-glucan, the obtaining of a product which is still a glucan solution and can be converted into a powder, the ability of the additives used in those prior art documents to fulfill the functional definition of a calcium complexing agent or the functional definition of a precipitation agent and the temperature used during the heating step.
9.6 Hence, the submissions made in respect of auxiliary requests 1 to 13 constituted at most an invitation to the Board and the other party to explore the various diverging approaches proposed by the respondent leaving up to them to guess the assessment made by the respondent of the prior art invoked in respect of those features and its significance on the analysis of inventiveness of the claimed process. Accordingly, the arguments provided in support of inventive step of auxiliary requests 1 to 13 did not constitute a proper substantiation within the meaning of Article 12(2) RPBA.
9.7 In the letter of 25 April 2017, the respondent listed the additional features used with respect to auxiliary requests 1 to 9, 12 and 13. It was stated that "it goes immediately that a claim to an inventive process which is further limited by an amendment, must be considered inventive; and if one may say so "more" inventive" (last paragraph on page 4). The letter contained the statement that "the temperature-range limitation proposed in AR13 is not disclosed in D3 nor in D2 and Example demonstrates that by working within this temperature range, the process disclosed thereof produces a purified beta-(1,3)-D-glucan (not a gel) having a high viscosity, i.e. close to the initial non-filtered beta-(1,3)-D-glucan solution. The concentration range limitation proposed by AR1 is also not disclosed by D2 nor by D3 and Example demonstrates that the process disclosed therein us able to handle such high concentration beta-(1,3)-D-glucan solutions to purify and recover their viscosity, i.e. the process is a high yield process. The use of a calcium complexing agent is also not disclosed in D2 nor in D2 and the use thereof improves filtration. The ARs containing combinations of the above mentioned features further define the invention in more precise terms, distancing it even more from the cited prior art". The substantiation for the auxiliary requests provided by the respondent during the oral proceedings did in essence not go beyond that given in the letter of 25 April 2017 and it still did not link the arguments presented to an appropriate analysis of the relevant passages of the prior art, making it not possible for the Board to understand and consider why the various amendments inserted should change the assessment of inventive step with respect to the main request.
9.8 Accordingly, the Board finds it appropriate to make use of the power pursuant to Article 12(4) RPBA by holding auxiliary requests 1 to 13 inadmissible, even in view of the latest submissions of the respondent which do not heal the lack of substantiation of these auxiliary requests, which is contrary to the requirements of Article 12(2) RPBA.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

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