T 0046/13 - Honest but not admitted

Key points

• The Board does not admit a new attack based on D13. " In their statement of grounds of appeal the appellant [=opponent] did not challenge this finding and did not in any way base their case on document D13." 
• " After oral proceedings had been arranged the appellant amended their case, referring to document D13 for the first time in the appeal" 
• " The appellant [=opponent] confirmed during the oral proceedings before the Board that they had only come across this passage in document D13 when preparing their response to the Board's summons and that they had not referred to this passage in the first-instance proceedings." 
• "In the present case the Board considered that it would not be reconcilable with the need for procedural economy to admit this change to the appellant's case at this stage of the appeal proceedings. The Board considered that were the change to be admitted, it would be appropriate to remit the case to the opposition division for further examination, as had been requested by the respondent. That would entail a lengthy delay in the proceedings, caused purely by the failure of the appellant to submit their case fully both before the opposition division and with their appeal grounds."

EPO T 0046/13 - link

Hence, the claimed invention involves an inventive step in the sense of Article 56 EPC over the prior art cited in the grounds for appeal, i.e. documents D7, D8, D12 and D2.

2. Admittance of document D13 and the inventive step objections based on it

2.1 In the first-instance proceedings the opposition division decided pursuant to Article 114(2) EPC to disregard inter alia document D13 as it had not been submitted in due time and prima facie it was not relevant to the decision (see reasons, 9.3.2). They held that although D13 showed an oscillation circuit on a circuit board and a detection circuit on a circuit board, both connected to each other via a flexible connection member, the skilled person would not take D13 into account because the mechanical arrangement of the sensor in D13, which showed multiple housings was incompatible with the arrangement of D7/D8 (see reasons, 9.3.1).

2.2 In their statement of grounds of appeal the appellant did not challenge this finding and did not in any way base their case on document D13.

After oral proceedings had been arranged the appellant amended their case, referring to document D13 for the first time in the appeal and arguing that in view of the statement at page 7, lines 20 and 21, that the wall portion between the chambers of the housings 31 and 41 can be absent, the mechanical arrangement of D13 was not incompatible with that of documents D7/D8.

The appellant confirmed during the oral proceedings before the Board that they had only come across this passage in document D13 when preparing their response to the Board's summons and that they had not referred to this passage in the first-instance proceedings.

2.3 According to Article 12(2) RPBA the statement of grounds of appeal ... shall contain a party's complete case, but according to Article 13(1) RPBA any amendment to a party's case after it has filed its grounds of appeal ... may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia ... the current state of the proceedings and the need for procedural economy.

2.4 In the present case the Board considered that it would not be reconcilable with the need for procedural economy to admit this change to the appellant's case at this stage of the appeal proceedings. The Board considered that were the change to be admitted, it would be appropriate to remit the case to the opposition division for further examination, as had been requested by the respondent. That would entail a lengthy delay in the proceedings, caused purely by the failure of the appellant to submit their case fully both before the opposition division and with their appeal grounds. For these reasons the Board decided not to exercise their discretion under Article 13(1) RPBA to admit this change to the appellant's case. Consequently, document D13 and the arguments based thereon have to be disregarded.

3. Conclusion

In view of the above the Board considers that the case submitted by the appellant does not give cause to set aside the contested decision and accedes to the respondent's request to dismiss the appeal.

Order

For these reasons it is decided that:

The appeal is dismissed.