21 Feb 2018

T 2100/14 - The essentiality test still alive

Key points

  • Board 3.2.03: "For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims (compared to PCT claim 1) without infringing Article 123(2) EPC"
  • As a comment, see my earlier post about T 0046/15 about Board 3.2.04 no longer applying the essentiality test, following T 1852/13 of Board 3.2.05. 
  • The Auxiliary Request is  not admitted. "First it is to be noted that the second auxiliary request is late-filed and that the appellant has neither indicated the amendments made to the claims nor explained where these amendments find support for their disclosure in the application as originally filed. [] These deficiencies alone could lead to the non-admittance of the second auxiliary request." 
  • Furthermore, the AR corresponds to a request withdrawn before the ED. "If the board were to admit such a [previously withdrawn] request, it would be contrary to the main purpose of ex-parte appeal proceedings, which are primarily concerned with examining the contested decision [...]. [The] fact that the request was withdrawn before the issue of a reasoned decision on its merits by the examining division means that reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, [] or to remit the case to the department of first instance for further examination, which is clearly contrary to procedural economy. It is precisely with the purpose of forestalling these unsatisfactory options that Art. 12(4) RPBA provides the board with the discretionary power to hold inadmissible requests which could have been presented (and examined) (or were not admitted) in the first-instance proceedings."
EPO T 2100/14 -  link


Reasons for the Decision
1. Main request and first auxiliary request
Features A and B of claim 1 as filed or as published in WO-A-2007/006872 (WO):
A) a unit formed by at least a corrugated plate (10) of steel sheet mounted to be supported by steel support beams (14);
B) in which the corrugated plate (10) of steel sheet is mounted in the longitudinal direction of the balcony"
are omitted in claim 1 of both the main and the first auxiliary requests.
Corresponding features of independent method-claim 10 as filed/published have also been deleted in independent claim 10 of both the main and the auxiliary requests.
1.1 In its decision to refuse the application, the examining division arrived at the conclusion that the omission of features A and B in the independent device and method claims constituted a violation of Article 123(2) EPC by applying the essentiality test referred to in the EPO Guidelines H-V, 3.1.
1.2 For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims without infringing Article 123(2) EPC (see Case Law of the Boards of Appeal, 8th edition, 2016, II.E1.1.2.4, page 409).


1.3 The mere fact that features A and B were specified in the preamble portion of the independent claims does not mean that the presence of a corrugated plate was not mandatory for the invention. A feature of the preamble portion of an independent claim is part of the definition of the claimed subject-matter which is deemed to solve the technical problem assessed in the application. Therefore, features A and B, relating to the corrugated plate, contribute to the definition of the invention as originally filed and are thus presented as essential in the application as originally filed.
1.4 The skilled reader understands from the introductory part of the application that the provision of a corrugated plate in the balcony slab provides important
advantages, such as reduction of manufacturing and mounting costs, which are presented as being the main aims of the present invention (see page 2, line 17 to 20).
The person skilled in the art further recognises that by providing a corrugated plate of steel sheet, especially if mounted in the direction specified by feature B, strength and fire resistance of the balcony slab are improved, which are also mentioned as being aims of the present invention (see WO publication, page 2, line 27 to page 3, line 1). The essential character of features A and B is also confirmed by the fact that feature B was comprised in the characterising portion of independent claim 10 as originally filed.
1.5 The general indication in the description (see page 3, line 17 to 23 of the WO publication or page 4, line 8 to 10 of the application as filed), that the "features of the different embodiments of the invention can also be applied in connection with other embodiments within the scope of the basic inventive idea" does not provide a basis for demonstrating that features A and B were presented as being non-essential.
1.6 The skilled reader also receives a clear indication that the presence of a corrugated plate is mandatory at the end of the description, page 8, line 5 to 7 of WO publication, where it is stated after a series of generalisations that "However, what is essential is that the ends of the corrugated plate 10 abut either directly or indirectly to the support beam 14".
1.7 The appellant argues that the balcony slabs shown in figures 2 and 3 concern two separate alternative embodiments; one with a corrugated plate (figure 3) and the other without (figure 3), thereby providing in its opinion a basis for the disclosure of the invention without features A and B.
However, this argument is not convincing because the skilled reader unambiguously derives from the application that figure 3 does not illustrate a second and alternative embodiment, but rather is a top view of the same and unique embodiment of figure 2.
This interpretation is supported by the text at page 4, lines 30-31:
"Figure 3 depicts part of the balcony solution 1 in accordance with the invention in a simplified top view"
together with the definition given page 4, line 16 of the "solution 1":
"Figure 2 depicts a typical balcony solution 1 in accordance with the invention".
1.8 In summary, the board considers that, even if the description were not to mention features A and B explicitly as being essential, the person skilled in the art directly and unambiguously recognises that the balcony structure disclosed in the application requires a corrugated plate as defined by features A and B.
Therefore, the first criteria of the three-step essentiality test, which requires that the features were not presented as being essential in the disclosure is not met. Consequently, the requirements of Article 123(2) EPC are not met.
1.9 Erroneous translation from Finnish to English
1.9.1 The board agrees with the appellant concerning the correct position of English expression "e.g." in the sentence of lines 1 to 5 of page 5 of the published application WO ("a unit comprising a corrugated plate 10 of steel sheet, as known e.g. from Finnish publication").
As requested by the appellant, the positioning of the expression "e.g.", which is obviously wrong in the published WO-text, is to be corrected within the terms of the translation dated 28 September 2012 made by the authorized translator [X] and annexed to the applicant's letter of 1 October 2012 of the examination proceedings.
Consequently, the board agrees that the corrected text of page 5, lines 1 to 5 of WO should read:
"Figure 3 shows the balcony slab 2 which is the load-bearing structure of the balcony solution 1 in accordance with the invention and which is a unit comprising e.g. a corrugated plate 10 of steel sheet as known from Finnish publication FI 921642, or a corresponding ("vastaavan" = "equivalent") corrugated plate mounted to abut to steel support beams 14 at both ends, auxiliary reinforcement and concrete, said unit forming a connection plate ("liittolaatta" = "composite slab") known per se after the concrete has set."
1.9.2 However, the board disagrees with the interpretation made by the appellant of the teaching or content of the corrected text.
In the board's view, the sentence defines the components of the unit forming the balcony slab.
The skilled reader unambiguously derives from the text that the unit is defined as comprising three mandatory components listed as follows:
- a corrugated plate, either as known from FI publication or any other equivalent corrugated plate,
- auxiliary reinforcement, and
- concrete.
If the expression "e.g." referring to "the corrugated plate 10 of steel sheet as known from Finnish publication FI 921642" applied also to the other features of the unit, that is "a corresponding ("vastaavan" = "equivalent") corrugated plate mounted to abut to steel support beams 14 at both ends, auxiliary reinforcement and concrete", as suggested by the appellant, the unit defined would be empty/void. Such an interpretation is clearly based on an erroneously applied syntax of the text.
Moreover, the sentence as interpreted by the appellant would de facto lack any meaningful content.
Therefore, in the board's view, there can be no real doubt that the text unambiguously defines the list of the components forming the "unit forming a composite slab known per se after the concrete has set" as set out above
1.9.3 In conclusion, the corrected wording of the sentence at page 5, lines 1 to 5, does not form a basis for omitting from the amended claims the feature defining the corrugated plate of steel sheet comprised in claim 1 as filed.
1.10 The board took note of the appellant's argument that the Finnish Patent Office eventually reconsidered its position and agreed with the applicant that the feature of a "corrugated plate" was not relevant to the invention as filed and therefore decided to grant the patent on the basis of a set of claims corresponding to the first auxiliary request on file.
Besides the fact that decisions of national patent offices are in no way binding on the Boards of Appeal of the EPO (see for instance T2496/11), it is in the present case not clear what kind of examination criteria the Finnish Patent Office applied and for which reasons it changed its first opinion and granted a patent on the basis of independent claims in which features A and B were omitted. 
1.11 Thus, the board concludes that the grounds and arguments supporting the impugned decision of the examination division were correct, namely that independent claims 1 and 10 of the main request and of the first auxiliary requests infringed the requirements of Article 123(2) EPC. 
2. Second auxiliary request
As indicated by the appellant, the set of claims of the second auxiliary request filed with letter dated 4 August 2017 corresponds to the set of claims submitted on 9 March 2009 during examination proceedings.
2.1 The board decides not to admit the second auxiliary request for the following reasons.
2.2 First it is to be noted that the second auxiliary request is late-filed and that the appellant has neither indicated the amendments made to the claims nor explained where these amendments find support for their disclosure in the application as originally filed. Consequently, the board is not in a position to conclude that the set of claims of the second auxiliary request prima facie meets the requirement of Article 123(2) EPC, unique ground of the contested decision. These deficiencies alone could lead to the non-admittance of the second auxiliary request.
Additionally, the board notes that in the event that the revised set of claims were to be finally considered as fulfilling the requirements of Article 123(2) EPC, the board would necessarily have to remit the case to the examining division for further examination as requested by the appellant.
The admission of such a belated request would therefore clearly contravene Articles 13(1) and (3) of the Rules of Procedure of the Boards of Appeal (RPBA).
2.3 Furthermore, the set of claims according to the second auxiliary request is a resubmitted request. Indeed, as confirmed by the appellant itself in the letted dated 4 August 2017, the same set of claims was submitted by the applicant with letter of 9 March 2009 during the examination proceedings.
This request was then withdrawn by the applicant of its own volition with letter dated 14 June 2010, prior to any examination of its merits by the examination division.
In application of the established case law (see Case Law IV.E.4.3.3.c, 8th edition 2016, page 1150) the board, by using its discretion pursuant to Articles 12(4) and 13 RPBA, decides not to admit the second auxiliary request which has been withdrawn during first instance proceedings.
If the board were to admit such a request, it would be contrary to the main purpose of ex-parte appeal proceedings, which are primarily concerned with examining the contested decision (cf. G 10/93, OJ 1995, 172), i.e. with providing the adversely affected party (the applicant) with the opportunity to challenge the decision on its merits and to obtain a judicial ruling as to whether the first-instance decision was correct (see also T 2278/08, T 1306/10).
Even if the withdrawal of the present second auxiliary request during the examination procedure were not considered an abandonment of this request for subsequent appeal proceedings, the fact that the request was withdrawn before the issue of a reasoned decision on its merits by the examining division means that reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, which runs contrary to the purpose of a second-instance ruling, or to remit the case to the department of first instance for further examination, which is clearly contrary to procedural economy.
It is precisely with the purpose of forestalling these unsatisfactory options that Art. 12(4) RPBA provides the board with the discretionary power to hold inadmissible requests which could have been presented (and examined) (or were not admitted) in the first-instance proceedings.
Order
For these reasons it is decided that:
The appeal is dismissed.

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