T 1329/15 - Convergent requests

Key points

• The Board decides on admissibility of AR's filed four weeks before the oral proceedings.
• " An approach frequently adopted by the Boards when exercising their discretion in admitting an amendment filed during oral proceedings can be summarised as follows: Unless good reasons exist for filing the amendment so far into the proceedings - for example if it is occasioned by developments in the proceedings - it will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable" 
• " Regarding the framework of discussion, new auxiliary requests filed in appeal proceedings are, in accordance with settled jurisprudence (cf. CLBA, IV.E.4, 4.4.4), expected to be convergent with the previous requests on file, i.e. to develop and increasingly limit the subject-matter of the independent claim in the same direction and/or in the direction of a single inventive idea." 
• " Furthermore, in the Board's view, auxiliary requests 1 and 2 are neither convergent with the main request, nor with each other. Claim 1 of the main request concerns the idea of adding a cyclone separator to the hand held vacuum cleaner (see characterising portion). Rather than further developing this idea, claim 1 of the first auxiliary request adds the feature of a floor nozzle and its flexible hose connection. Likewise, instead of adding features of the cyclone separator or the floor nozzle, the second auxiliary request abandons the floor nozzle features and instead adds features concerning the position of air outlet openings in the housing of the hand held vacuum cleaner." 
• As a comment, it is unity of invention does not apply to opposition procedures, but these AR's are deemed non-convergent by adding limiting features which do not "develop the idea"  of the Main Request.
• Moreover, the appeal is admissible even though the Notice of appeal contained no request.

EPO T 1329/15 - link

Reasons for the Decision

1. Admissibility of the appeal

The respondent-proprietor argued in their reply to the appeal that the appeal was not admissible because the notice of appeal contained no request and it was questionable whether the notice of appeal contained the appellant's address. Furthermore, they argued that the statement of grounds of appeal did not clearly indicate the reasons for setting aside the impugned decision and was structured more like an opposition notice than a grounds of appeal.

In a communication to the parties of 15 June 2018 (see section 2) the Board set out its reasoned preliminary opinion as to why the appeal of the opponent II was admissible. The opinion is reproduced in italics below:

"2. Admissibility of the appeal

2.1 In the Board's opinion, the appeal is admissible.

The impugned decision is appealable, Article 106 EPC. The appellant-opponent is adversely affected, Article 107 EPC and the notice of appeal and grounds were timely filed and the fee paid on time, Article 108 EPC. The notice of appeal carried the name of the appellant and both the postal and physical addresses of the appellant-opponent II (see top and bottom of page). Furthermore, the impugned decision is identified by file and patent numbers. Therefore the requirements of Articles 106 to 108 and Rule 99(1)(a) and (b) EPC are fulfilled.

2.2 In accordance with established jurisprudence (see Case Law of the Boards of Appeal, 8th edition, 2016 (CLBA), IV.E.2.5.2.c, and the decisions cited therein), if the ruling in an opposition division decision relates to a single issue, a statement that this decision is appealed is implicitly a request for the decision to be set aside in its entirety.

In the present case, the impugned decision concerned solely the maintenance of the Patent No. 1969988 in amended form. Thus, although the notice of appeal contains no explicit request, the Board interprets the appellant-opponent II's statement that they appeal this decision as an implicit request to have the decision set aside in its entirety, thus that the patent be revoked. This is also consistent with their request in opposition (see notice of opposition, received 30 December 2011, page 1, first bullet-point). Therefore the notice of appeal fulfils the requirements of Rule 99(c) EPC.

2.3 The Board is also of the view that the statement of grounds of appeal fulfil the requirements of Rule 99(2) EPC. In this respect, the Board notes that Rule 99(2) EPC does not specify any particular structure for appeal grounds. Whether or not the reasoning given addresses particular points of the impugned decision, it sets out over 19 pages and with reference to the facts and evidence relied on, why, in the appellant-opponent II's view, inter alia claim 1 as maintained lacks inventive step, in other words why the impugned decision should be set aside. Therefore the requirements of Rule 99(2) EPC are fulfilled.

2.4 In view of the above, none of the reasons for rejecting the appeal as inadmissible according to Rule 101 EPC apply. Therefore, the Board considers that the appeal is admissible".

1.1 Following the communication, the respondent-proprietor made no further comment on this issue in subsequent letters of 8 and 12 October 2018. At oral proceedings before the Board, their only comment in this regard was to refer the Board to their written submissions.

1.2 In view of the above, the Board sees no reason to deviate from their previous preliminary opinion on this issue, as expressed above. Therefore, the Board concludes that the appeal is admissible.

[...]

3.13 From the above, the Board concludes that the subject matter of claim 1 lacks inventive step.

4. Admissibility of auxiliary requests 1 and 2

4.1 The auxiliary requests 1 and 2 were filed with letter of 12 October 2018, just four weeks prior to the oral proceedings before the Board.

4.2 The requests thus amount to an amendment to the Appellant-proprietor's case in the sense of Article 13 of the Rules of Procedure of the Boards of Appeal (RPBA). Under paragraph (1) of that article the Board exercises discretion in admitting such amendments in view of, inter alia, complexity of the subject-matter, the state of the proceedings and the need for procedural economy. Furthermore, under Article 13(3) RPBA any amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the parties cannot reasonably be expected to deal with without an adjournment.

4.3 An approach frequently adopted by the Boards when exercising their discretion in admitting an amendment filed during oral proceedings can be summarised as follows: Unless good reasons exist for filing the amendment so far into the proceedings - for example if it is occasioned by developments in the proceedings - it will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable, see CLBA IV.E. 4.2.6 b) and the case law cited therein.

4.4 Regarding the framework of discussion, new auxiliary requests filed in appeal proceedings are, in accordance with settled jurisprudence (cf. CLBA, IV.E.4, 4.4.4), expected to be convergent with the previous requests on file, i.e. to develop and increasingly limit the subject-matter of the independent claim in the same direction and/or in the direction of a single inventive idea. Whether the claims of auxiliary requests converge is to be understood in the sense that the subject-matter of the lower ranking requests is further defined i.e. with the intention to counter objections with regard to the preceding requests (see T 1134/11, see reasons 10.6).

4.5 Moreover, in accordance with established jurisprudence, amended claims are clearly allowable if the Board can quickly ascertain that they overcome all outstanding issues without raising new ones (see for example T 183/09, reasons 4).

4.6 In the present case, no circumstances are apparent to the Board which would justify such a late filing of the auxiliary requests. The respondent-proprietor has argued (letter of 12 October 2018, page 3, section 2) that the requests are filed because the Board's communication expressed a preliminary opinion that differed significantly from the line taken in the impugned decision.

In whatever way the Board's communication differed from the decision, the underlying framework of discussion remains the same as in first instance, namely inventive step, inter alia, starting from D2 in combination with D1. Therefore, the Board considers that the respondent-proprietor was in a position to file suitable auxiliary requests with their reply to the appeal.

4.7 Furthermore, in the Board's view, auxiliary requests 1 and 2 are neither convergent with the main request, nor with each other. Claim 1 of the main request concerns the idea of adding a cyclone separator to the hand held vacuum cleaner (see characterising portion). Rather than further developing this idea, claim 1 of the first auxiliary request adds the feature of a floor nozzle and its flexible hose connection. Likewise, instead of adding features of the cyclone separator or the floor nozzle, the second auxiliary request abandons the floor nozzle features and instead adds features concerning the position of air outlet openings in the housing of the hand held vacuum cleaner.

4.8 In this regard, the Board is not convinced by the respondent-proprietor's argument that the features added to each request optimise airflow through the vacuum cleaner and this common idea makes the requests convergent. The patent (see published specification, column 2, lines 35 to 39 and paragraph [0019], last sentence) is silent as to how air-flow might be optimised by using a flexible tube passageway to connect the floor nozzle, nor does it disclose any other advantage to this feature. By the same token, the patent (see specification, column 3, lines 14 to 16 and column 5, lines 8 to 10 with figure 7, reference 26) discloses no particular advantage or technical effect associated with positioning air outlet openings on the top of the vacuum cleaner.

The Board is also unconvinced by the respondent-proprietor's suggestion that discussing the requests in a particular order might render them convergent. The Board examines convergence based on the features of the claims, independently of the order in which they are considered.

4.9 Furthermore, the Board is not convinced that these requests are clearly allowable.

Regarding the first auxiliary request, the idea of using a floor nozzle is known from D1 and D2 (see for example D2, figure 10 and D1 figures 2 and 3). If, as it appears from the patent (see above), a flexible hose is merely an alternative form of hose having no particular technical advantage, this feature, prima facie, does not appear to render claim 1 clearly allowable in the sense of its subject matter being non-obvious vis-à-vis D2 with D1.

Similarly, concerning the second auxiliary request, locating the air outlet on top of the vacuum cleaner appears, prima facie, merely to be an alternative to a side location as is known from D2 (see sentence bridging columns 6 and 7 and figure 1, reference 9). Therefore, the Board is not able to immediately see that this feature renders the subject matter of claim 1 to involve an inventive step. In other words the claim is not clearly allowable.

4.10 For all these reasons the Board decided to exercise its discretion under Article 13(1) and 13(3) RPBA and not to admit Auxiliary requests 1 and 2 into the proceedings.